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Federal Circuit Tightens Standard for AIA Review

November 21, 2016

Fenwick litigation partner Darren Donnelly was quoted in The Recorder article “Federal Circuit Tightens Standard for AIA Review” as well as in the Law360 article “CBM Reviews A Less Potent Tool As Fed. Circ. Limits Scope​” (subscriptions required).

Both publications reported that the U.S. Court of Appeals for the Federal Circuit ruled that a test the Patent Trial and Appeal Board used to determine what types of patents can be challenged in covered business method (CBM) reviews ran afoul of limits Congress set under the America Invents Act (AIA).

Donnelly told The Recorder that the decision appears to foreclose the U.S. Patent and Trademark Office (USPTO) from applying an "incidental or complementary to a financial activity" rule for deciding a patent is subject to a CBM review.

“Now patent owners who feel they've had a patent subjected to CBM as a result of an aggressive interpretation of the statute have something to point to. The decision certainly prevents [PTAB] panels from going as broadly as this panel did,” Donnelly told Law360.​