In its Decision, the Board denied Patent Owner’s request for rehearing of the Final Written Decision holding claims 1-20 of the patent unpatentable. At the request of both parties, the trial schedules for CBM2013-00003 and CBM2013-00009 were synchronized, as they involved the same patent and parties. The Board then issued final written decisions in both reviews on the same day. Patent Owner asserted in its motion for rehearing that the Board lacked statutory authority to issue the Final Written Decision in the instant proceeding because it was posted electronically by the Board’s paralegal after the Final Written Decision in CBM2013-00003.
37 C.F.R. § 42.71(d) states that “the burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Patent Owner argued that (1) posting to the Board’s public electronic system “enters” a final written decision; (2) the Board misapprehended or overlooked the estoppel provision of 35 U.S.C. § 325(e)(1); and (3) the Board misapprehended or overlooked the prohibition on issuing an advisory opinion.
The Board clarified that the date of the Final Written Decision is the entry date on the first pages of the decision, regardless of the mode of delivery or notification. The time of day is not relevant to when the final written decision is entered, only the day.
The Board clarified the estoppel provision as to a final written decision in a covered business method patent review as provided in 35 U.S.C. § 325(e)(1). The estoppel provision could not terminate the instant proceeding prior to issuance of the Final Written Decision, because the Final Written Decisions were issued concurrently. The Board further stated that nothing in 35 U.S.C. § 325(e)(1) precludes the Board from proceeding to a final written decision when a petitioner can no longer maintain a proceeding, or requires the Board to terminate the second proceeding with respect to both the petitioner and patent owner when a final written decision has issued in a first proceeding on the same claims of the same patent. The estoppel provision is only with respect to whether petitioner can request a new proceeding or to maintain a proceeding, not whether the Board can continue a proceeding. Further, 35 U.S.C. § 328(a) requires the Board to issue a final written decision if the instituted covered business method patent review is not dismissed.
The Board clarified that an order set forth in a final written decision to cancel claims is not effective until the Director issues a certificate under 35 U.S.C. § 328(b), canceling those claims. Such a certificate cannot be issued until the time for appeal has expired or any appeal has terminated. Therefore, even if a final written decision canceling all claims is issued in one concurrent proceeding, the claims are still pending with regard to a second concurrent proceeding until the certificate is issued. Thus, the Board would not be issuing an advisory opinion in a second proceeding when the first proceeding resulted in a final written decision ordering all claims be canceled, but the certificate had not yet issued.
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-00009
Paper 78: Denial of Motion to Reconsider Final Written Decision
Dated: April 1, 2014
Patent 8,140,358
Before: Jameson Lee, Joni Y. Chang, and Michael R. Zecher
Written by: Chang
Related Proceeding: CBM2013-00003