John J. Penny, V, chair of Nutter's Intellectual Property Department, and Michael P. Visconti, a lawyer in the group, evaluated a question recently revisited by the Federal Circuit—when is a patent eligible for Covered-Business Method Review (CBM review) under AIA §18?—in IP Litigator. In the article, "SightSound v. Apple: When Is a Patent a CBM Patent?," Jack and Mike detail how the court is taking up the question in the case SightSound Techs., LLC v. Apple Inc. Jack and Mike point out that in light of recent decisions, those contemplating a challenge to a granted patent should consider whether CBM review is available as an option. They note that patent applicants should consider whether it is feasible to define their invention in a manner that avoids CBM eligibility, for example, by including the in the claims "specific, unconventional software, computer equipment, tools or processing capabilities" beyond mere generic hardware devices.
Originally published in March/April 2016
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