Denying institution For Not Qualifying for Covered Business Method Review CBM2015-00019


Takeaway: When determining whether a patent is eligible for covered business method patent review, the focus is on what the patent claims.

In its Decision, the Board denied institution of the Petition as to all challenged claims of the ’279 patent. Consequently, a Covered Business Method patent trial was not instituted. The Petition had sought covered business method patent review of claims 1–4, 6–11, 13–21, 24, 27–35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63 of the ’279 patent. After Patent Owner had shown that it had filed a statutory disclaimer of claims 19, 24, 27, 33, 34, 53, 58, 61, 67, and 68 in the USPTO, the Board indicated that no covered business method patent review would be instituted for these disclaimed claims. Thus, the focus of the Board’s Decision was on whether to instituted covered business method patent review of remaining claims 1–4, 6–11, 13–18, 20, 21, 28–32, 35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63. Continue reading

Denying Request for Rehearing CBM2014-00157

Takeaway: A request for rehearing is not an opportunity to reiterate arguments previously addressed in the Board’s Decision on Institution, and merely express disagreement.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Decision to institute covered business method patent review of claims 1-21, 24-27, 29, 30, 32, 33, and 36-39 of the ’409 patent, and denied Patent Owner’s request for an expanded panel. Continue reading

Expunging Preliminary Response IPR2015-00009

Takeaway: A party claiming to have all substantial rights to a challenged patent must set forth evidence to support its assertion for the Board to consider papers filed by the party.

In its Order, the Board ordered that the Preliminary Response filed by Fluidigm will be expunged unless within five business days of the Board’s Order, a paper is filed “that shows cause why Fluidigm should be entitled to file a preliminary response to the Petitions.” Continue reading

Denying Institution IPR2014-01242

Takeaway: A grant of summary judgment in a related district court litigation does not function as a dismissal without prejudice for purposes of calculating the one year time bar under 35 USC 315(b); instead, the time period will continue to run.

In its Decision, the Board found that Petitioner Johnson Health Tech North America, Inc. (“JHTNA”) lacked standing because it was time-barred under 35 USC 315(b). In addition, because Petitioner Johnston Health Tech Co. Ltd. (“JHT”) is a privy of JHTNA, JHT was also found to lack standing. Therefore, the Petition was denied. Continue reading

Denying Institution CBM2014-00166

Takeaway: A petitioner may not have sufficient standing for filing a petition for CBM review as having been sued for infringement or charged with infringement where the court in the related proceeding dismissed the complaint alleging infringement with prejudice.

In its Decision, the Board found that Petitioner failed to satisfy the standing requirements under 37 C.F.R. § 42.304(a) to a file a Petition for covered business method patent review because the Petition did not provide sufficient proof that Petitioner was “charged with infringement of the patent.” Continue reading

Final Written Decision CBM2013-00033

Takeaway: A petitioner must establish that a document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 7-16 and 23-27 of the ‘679 patent are unpatentable but failed to demonstrate that claims 1-6 and 17-22 are unpatentable.  The ‘679 patent “relates to a system and method for peer-to-peer advertising between mobile communication devices.”  Continue reading

Decision Denying Request for Rehearing CBM2014-00119

Takeaway: A dispute concerning whether the record owner is the actual owner of a challenged patent does not preclude the board from instituting or continuing a CBM review.

In its Decision, the Board denied Patent Owner’s request for rehearing of the Board’s decision to institute trial in a covered business method patent review of U.S. Patent No. 8,370,211 B2. Continue reading

Denying Additional Discovery IPR2014-01257, 1260

Takeaway: A party seeking additional discovery should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful – not merely relevant or admissible, but favorable in substantive value to a contention of the party moving for discovery – will be found.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion for additional discovery.  Patent Owner had wanted additional discovery in order to ascertain further details as to any relationship between Petitioner and a third party referred to as “Royal Cup.” Continue reading

Decision Denying Institution of Covered Business Method Patent Review CBM2014-00101

Takeaway: Board found standing for a petition to file a petition for covered business method patents review where a petitioner was not sued, but customers were sued for infringement for using the petitioner’s systems and software and the petitioner was required to indemnify those customers.

In its Decision, the Board denied institution of covered business method review because Petitioner did not show that claims 1-19 of the ’894 Patent do not recite solving a technical problem using a technical solution. Because the covered business method patent review was denied based on a threshold question, the Board provided no position with regard to the merits of Petitioner’s challenges to the patentability of claims 1-19. The ’894 Patent relates to facilitating real-time two-way transactions, as opposed to deferred transactions, e.g., e-mail. Continue reading