IBG LLC, et al. v. Trading Technologies International, Inc.

The America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), and its attendant regulations establish a program for review of the eligibility and validity of “covered business method” patents, known as CBM review. Patents for “technological inventions” are excepted from the class of “covered business method” patents that are eligible for CBM review. AIA § 18(d). Pursuant to express statutory authority, the Patent Office defined a “technological invention” as a patent that “recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b). This petition presents the following question that has sharply divided panels of the Federal Circuit: Whether a patent that does not satisfy the first prong of § 42.301(b)—that is, that does not recite a novel and non-obvious technological feature—claims a “technological invention” under AIA § 18(d).