Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

ARElaw Patent and Litigation Alert:
Federal Circuit Reviews PTAB's First CBM Final Written Decision and Affirms

July 13, 2015
Author(s): Charles R. Macedo, Jung S. Hahm

(July 13, 2015).  In Versata Development Group, Inc. v. SAP America, Inc., No. 2014-1194, Slip op. (Fed. Cir. July 9, 2015), the U.S. Court of Appeals for the Federal Circuit issued a decision reviewing the first final written decision by the Patent Trial and Appeal Board ("PTAB") in a covered business method ("CBM") patent case under § 18 of the AIA.

By way of background, the PTAB had instituted a CBM patent review of Versata’s patent directed to a price calculation method under 35 U.S.C. §§ 101 and 102 (CBM2012-00001). At the petitioner’s request, the PTAB subsequently agreed to forego the review under Section 102 and expedite the review solely under Section 101. On June 11, 2013, the PTAB issued a final written decision finding all of the challenged claims unpatentable under 35 U.S.C. § 101. Versata appealed the PTAB’s decision to the Federal Circuit. The U.S. Patent Office intervened in the appeal.

In the majority decision drafted by Judge Plager and joined by Judge Newman, the Federal Circuit affirmed the PTAB’s final written decision. The decision addressed not only the substantive merits of the case, but also, more importantly, the permissible scope of the Federal Circuit’s review over the PTAB’s final written decisions in CBM cases:

We will continue to monitor further developments in practice before the PTAB.



Charles R. Macedo is a partner and Jung Hahm is a senior counsel at Amster, Rothstein & Ebenstein LLP. Their practice includes practice before the PTAB.  They can be reached at [email protected] and [email protected].

Mr. Macedo is the author of the Corporate Insider's Guide to US Patent Practice (originally published by Oxford University Press in 2009).


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