United States: Disclaimed Claims May Be Considered When Determining Eligibility For CBM Review

Compass Bank et al. v. Maxim Integrated Products, Inc.

Addressing the issue of whether disclaimed subject matter may be considered in determining if a patent is eligible for a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) found that a statutory disclaimed subject matter may be considered as part of a CBM review but cannot be the basis for institution. The Board also found that claims of a non-expired patent should be construed using the broadest reasonable standard at institution, even if the Phillips standard will be applied in construing the claims of that patent in a final written decision. Compass Bank et al. v. Maxim Integrated Products, Inc., Case No. CBM2015-00102 (PTAB, October 7, 2015) (Weatherly, APJ).

Compass Bank filed a petition seeking a CBM review of a patent that was assigned to Maxim Integrated Products (Maxim). Compass Bank focused its petition on a single claim of the challenged patent, as one claim is all that is necessary to render the patent eligible for CBM review. After the petition was filed, Maxim filed a statutory disclaimer, under 35 U.S.C. § 253(a), of the challenged claim. Maxim then argued in its response to Compass Bank's petition that the Board must treat the disclaimed claim like it "never existed."

The Board noted that the disclaimed claim cannot be the basis for institution of a CMB review under 37 CFR 42.207(e), but disagreed with Maxim that it must treat the disclaimed claim like it never existed. Instead, the Board found that the disclaimed claim was simply used as an example, and Compass Bank's arguments were likewise applicable to the rest of the challenged claims. The Board found the rest of the requirements under § 18(d)(1) of the America Invents Act (AIA) met and concluded that the challenged patent was eligible for review as a CBM patent.

Maxim also argued that the Board should apply the Phillips claim construction standard, as the patent will expire "months before" any final written decision. According to Maxim, applying the broadest reasonable interpretation standard of 37 CFR § 42.300(b) at institution in this instance would be contrary to 35 U.S.C. §324, would improperly favor institution, and waste resources of the Board and the parties. The Board found that Maxim failed to articulate a compelling reason for the Board to use its authority to "waive or suspend" § 42.300(b). Because the challenged patent has not yet expired, the Board applied the broadest reasonable claim construction standard for purpose of its institution decision. However, as the Board explained, if the patent does indeed expire prior to the issuance of the final written decision, then the Board will apply the Phillips standard in any final written decision.

Disclaimed Claims May Be Considered When Determining Eligibility For CBM Review

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