Proceedings Not Terminated After Federal Circuit Appeal Dismissed CBM2015-00022


Takeaway: If claims in an instituted trial are held unpatentable in a co-pending district court case and the patent owner dismisses its appeal after the Board institutes trial, the Board is not required to terminate its own proceedings.

In its Final Written Decision, the Board determined that all challenged claims (claims 8-12) of U.S. Patent No. 8,301,466 are unpatentable under 35 U.S.C. § 101. The ’466 patent relates to “providing a method for consumers to request their medical records from health care providers and store their medical records for online access.”

The Board began by considering Patent Owner’s argument that the Board should terminate the covered business method (“CBM”) patent review “because of activity that occurred in [a related] District Court Case.”

Prior to the Board’s institution of trial, Patent Owner advised the Board that the U.S. District Court for the Central District of California had “determined that each of the challenged claims of the ’466 Patent is directed towards patent-ineligible subject matter under 35 U.S.C. § 101 . . . and that the District Court Decision was on appeal to the United States Court of Appeals for the Federal Circuit.” Later, “after institution of trial, Patent Owner filed an Updated Mandatory Notice informing [the Board] that the Federal Circuit issued a Mandate, based on a voluntary motion by Patent Owner, dismissing all the appeals.”

Patent Owner did not file a Patent Owner Response and, in response to an Order to Show Cause, Patent Owner argued that “[t]he appropriate action is for the Board to terminate this matter under 37 C.F.R. § 42.72, rather than enter a judgment” on the grounds that “the current CBM proceeding is moot” and “[t]here is nothing left for the Board to decide.” In response, Petitioner argued that terminating the trial without a final written decision would be inappropriate and that the CBM was “not in a preliminary stage, and the Board has already issued a decision to institute review.”

The Board determined that “Petitioner seeks relief beyond what was requested from the District Court”––specifically, “a judgment against the challenged claims as unpatentable.” The Board was not persuaded that there was “nothing . . . left for [it] to decide.” It explained that “[t]he covered business method patent review that we instituted for claims 8–12 of the ’466 Patent (Inst. Dec. 31–32) is distinct and independent from the appeal of the District Court’s determination that each of the challenged claims of the ’466 Patent is directed towards patent-ineligible subject matter under 35 U.S.C. § 101.” Under the circumstances here––where trial had already been instituted because the Board had “determined that the information presented in the Petition demonstrates that it is more likely than not that each of the challenged claims is unpatentable”––the Board concluded that it would not be appropriate to terminate the proceeding under § 42.72.

Turning to the substantive issues, the Board noted that Patent Owner “has not filed a response to the petition after [it] authorized the covered business method patent review and has not submitted any factual evidence or expert opinions.” The Board maintained the claim constructions that it adopted in its Decision on Institution. The Board then determined that the challenged claims are unpatentable under 35 U.S.C. § 101 because the claimed invention is directed to the abstract idea of “privately managing files by the user” and the elements of the claim do not “transform the nature of the claim into a patent-eligible application.” Accordingly, the Board concluded that Petitioner showed “by a preponderance of the evidence that each of claims 8-12 of the ’466 Patent is unpatentable under 35 U.S.C. § 101, as being directed to non-statutory subject matter” and ordered that the challenged claims “are determined to be unpatentable.”

Allscripts Healthcare Solutions, Inc. v. MyMedicalRecords, Inc., CBM2015-00022
Paper 20: Final Written Decision
Dated: August 26, 2015
Patent: 8,301,466 B2
Before: Fred E. McKelvey, James T. Moore, and Barbara A. Parvis
Written by: Parvis
Related Proceedings: MyMedicalRecords, Inc. v. Jardogs, LLC, No. 2:13-cv-03560 (C.D. Cal.)