C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart D—Transitional Program for Covered Business Method Patents

37 C.F.R. § 42.300

Procedure; pendency

Read at: eCFRecfr.gov CornellLII GovInfogovinfo.gov CasesGoogle Scholar

(a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200, 42.201, 42.202, and 42.204.

(b) In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221, shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the covered business method patent review proceeding will be considered.

(c) A covered business method patent review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year. The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.

(d) The rules in this subpart are applicable until September 15, 2020, except that the rules shall continue to apply to any petition for a covered business method patent review filed before the date of repeal.

[77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 81 FR 18766, Apr. 1, 2016; 83 FR 51359, Oct. 11, 2018]
Notes of Decisions
Cited in 9 cases, 2013–2020 · leading case: In Re Cuozzo Speed Technologies, LLC
Sort: Relevance Newest Treatment
In Re Cuozzo Speed Technologies, LLC (2015) cafc · cites it 2× “In promulgating 37 C.F.R. § 42.300 (b) to authorize and require the broadest reasonable interpretation for these new proceedings, the PTO departed from the pur- pose of the America Invents Act to create a surrogate for district court litigation.”
Apple, Inc. v. Ameranth, Inc. (2016) cafc “…to their broadest reasonable construction in light of the patent’s specification. 37 C.F.R. § 42.300 (b); cf. Cuozzo Speed Techs., LLC v. Lee, — U.S. -, <a href="/opinion/3214886/cuozzo-speed-technologies-llc-v-lee/#2142" aria-description="Citation for case: Cuozzo Speed…”
Versata Development Group, Inc. v. SAP America, Inc. (2015) cafc “See 37 C.F.R. §§ 42.300 -.304. Thus the regulations, in addition to a definition of “technological invention,” id.”
Intellectual Ventures II LLC v. Jpmorgan Chase & Co. (2015) cafc · cites it 2× “Compare 37 C.F.R. § 42.300 (c) (“A covered business method patent review proceeding shall be ad- INTELLECTUAL VENTURES II LLC v.”
In Re Cuozzo Speed Technologies, LLC (2015) cafc · cites it 2× “In promulgating 37 C.F.R. § 42.300 (b), the PTO de- parted from the purpose of the America Invents Act to create a reliable substitute for district court litigation.”
Versata Software, Inc. v. Callidus Software, Inc. (2014) ded · cites it 2× “Callidus filed its administrative challenges to the validity of the patents-in-sdt in August 2013, pursuant to the “covered business method” (“CBM”) patent review process provided for under the AIA § 18(a), 37 C.F.R. 42.300(a). The CBM petitions were filed by Callidus some 13…”
Intertainer, Inc. v. Hulu, LLC (2016) cafc “” 37 C.F.R. § 42.300 (b); see also Cuozzo Speed Techs.”
Arunachalam v. United States (2020) uscfc “…35 U.S.C. § 311 ; 37 C.F.R. § 42.300 (2018). Among these post-issuance review proceedings are inter partes review proceedings. “Inter partes review is a ‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings.’” Arthrex, <”
In Re Joseph GIUFFRIDA (2013) cafc “2005) (emphasis added); cf 37 C.F.R. § 42.300 (b), adopted at 77 Fed.”
— 37 C.F.R. § 42.300(a) — 1 case
Versata Software, Inc. v. Callidus Software, Inc. (2014) ded “Callidus filed its administrative challenges to the validity of the patents-in-sdt in August 2013, pursuant to the “covered business method” (“CBM”) patent review process provided for under the AIA § 18(a), 37 C.F.R. 42.300(a). The CBM petitions were filed by Callidus some 13…”
— 37 C.F.R. § 42.300(c) — 1 case
Versata Software, Inc. v. Callidus Software, Inc. (2014) ded “Callidus filed its administrative challenges to the validity of the patents-in-sdt in August 2013, pursuant to the “covered business method” (“CBM”) patent review process provided for under the AIA § 18(a), 37 C.F.R. 42.300(a). The CBM petitions were filed by Callidus some 13…”
Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.