Denying Institution CBM2014-00166

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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.”

The Board noticed inconsistencies between the parties’ descriptions of the status of the related litigation in their respective Mandatory Notices. In this regard, Petitioner in its first updated Mandatory Notice stated that the ‘222 patent “was previously involved in the following proceeding, which was dismissed with prejudice: Securus Technologies, Inc. v. Global Link Corporation, 3:13-cv-03009 (N.D. Tex.).” On the other hand, Patent Owner described in its Mandatory Notice that “Patent Owner is also asserting the ‘222 patent against Petitioner” in the related litigation. Noticing the discrepancy, the Board contacted the parties and “instructed the party that had not identified correctly the status of the related case to submit an updated mandatory notice.”

In response to the Board’s instruction, Petitioner filed a second updated Mandatory Notice providing additional details concerning the related litigation. Petitioner’s filing explained that the lawsuit “was dismissed with prejudice on July 10, 2014, with an order granting Defendant’s Motion for Summary Judgment.” In response to Patent Owner’s (plaintiff in the related litigation) request for reconsideration of the dismissal, the court vacated its prior judgment “because the court’s judgment did not fully dispose of all claims asserted by the parties.” Thus, Petitioner explained, “Patent Owner’s claim of infringement of the ’222 patent in Civil Action 3:13-cv-03009 stands dismissed, but the judgment dismissing the claims with prejudice has been vacated by the Court.” Patent Owner later filed a second lawsuit on December 1, 2014 alleging infringement of the ’222 patent by Petitioner.

Standing, which is a threshold issue, must be set forth in the petition. Standing to file a petition for CBM review requires that “the petitioner, the petitioner’s real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.” 37 C.F.R. § 42.302(a). This further requires that “a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” Id. Quoting the final rules governing CBM review, the Board stated that a petitioner must “certify with explanation” that the standing requirements are met, and that a petitioner must make that showing “through sufficient proof.”

Analyzing the Petition, the Board found that the only proof of standing was the description of the status of the related litigation and the complaint filed in that case. The Board then addressed whether Petitioner “has been sued” or “has been charged” with infringement. With respect to whether Petitioner had been sued for infringement at the time of filing the Petition, the Board determined that Petitioner’s assertion of standing was not supported. In this regard, the Petition “states unconditionally that the previous suit was dismissed with prejudice on the date that the Petition was filed.”

Regarding whether Petitioner was charged with infringement when filing the Petition, Petitioner argued that Patent Owner’s request for reconsideration in the litigation and the filing of another litigation evidenced Patent Owner’s intent to charge Petitioner with infringement. The Board was not persuaded, finding that because the court dismissed the complaint with prejudice, Petitioner was no longer charged with infringement. The court’s later vacating the dismissal of the suit and Patent Owner’s later-filed action were not relevant to the sufficiency of proof of standing in the Petition.

Global Tel*Link Corp. v. Securus Tech., Inc., CBM2014-00166
Paper 17: Decision Denying Institution of Covered Business Method Patent Review
Dated: February 6, 2015
Patent: 7,860,222 B2
Before: Kevin F. Turner and James B. Arpin
Written by: Arpin Related Proceeding: Securus Technologies, Inc. v. Global Link Corporation, 3:13-cv-03009 (N.D. Tex.)