As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September summarizing implementation of the AIA in the four years since the Act went into effect. The report proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is available here.Continue Reading PTO Requests Congress Change AIA Proceedings
Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post Grant Proceedings at the USPTO” offered a wide-ranging, lively discussion of the current state of post-grant proceedings and proposed solutions to perceived weaknesses in the current system.
Continue Reading IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
In a non-precedential decision issued on August 24, 2015, the Federal Circuit affirmed the final decisions of the PTAB in seven overlapping covered business method patent reviews. In those reviews, Liberty Mutual Insurance Company challenged claims in five patents owned by Progressive Casualty Insurance Company, all directed to pricing automobile insurance based on vehicle use or online adjustment of insurance policies. In the Federal Circuit’s decision—its second addressing the merits of a CBM review—the court affirmed the PTAB’s decisions that certain claims were anticipated and others were obvious, and addressed several issues.
Continue Reading Federal Circuit Affirms Seven CBM Decisions
In several recent decisions, the PTAB has clarified the standing required to file petitions seeking Covered Business Method review. Under the AIA, standing to seek Covered Business Method review is limited to those charged with infringement and their “privies.” “Privies,” however, do not encompass merely any party with whom the petitioner is in “privity.” “Privies” is effectively synonymous with “customers”– and, not merely any customers, but customers who the petitioner is legally obligated to indemnify for their alleged infringement.
Continue Reading Suppliers Can Lack Standing to Seek CBM Review on Behalf of Customers
Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%). In denying the petition, the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened with suit), or be a privy to a party that has been sued (or been threatened with suit). And “privy” in this context is synonymous with customer. In other words, suppliers have a right to step in for their customers with a CBM, but not the other way around.
Continue Reading PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
As reported earlier, the Federal Circuit recently affirmed the PTAB’s final written decision in SAP v. Versata, No. 2014-1194 (Fed. Cir. 2015), its first final written decision in a CBM review. As part of that decision, the Court determined that it had jurisdiction to determine whether the patent at issue was a “covered business method patent” within scope of the PTAB’s authority for a CBM review under Section 18 of the American Invents Act (“AIA”), and that such review by the Court was not precluded by 35 U.S.C. § 324(e), which provides that a decision to institute a CBM review is “final and nonappealable.”
Continue Reading Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review
Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new CBM petition directed to the same patent (CBM2015-00004) but containing a more extensive section addressing the CBM standard.
Continue Reading PTAB Allows Second Chance to Prove Patent is a Covered Business Method
The Federal Circuit recently issued its opinion deciding SAP v. Versata, an appeal of the first PTAB final written decision in a post grant AIA trial. The court’s opinion (split on one issue) is significant because it decides a number of issues that will guide pending and future AIA trials, especially CBM proceedings. Below is a short summary of who—patent owners or petitioners—can claim victory in the court’s five major conclusions.
Continue Reading Who Benefits from the Federal Circuit’s SAP v. Versata Decision?
Prior t
o the Federal Circuit’s opinion in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), software and Internet patents seemed on a relentless march towards ineligibility. The Federal Circuit’s decision in DDR Holdings tapped the brakes on this skid towards elimination, and suggested that claims to the implementation of long established economic practices on computers might survive where those claims focused on overcoming obstacles in the implementing technologies themselves.
Continue Reading Digital Rights Patent Declared Patent Eligible Under DDR Holdings
In appealing the denial of its request that further litigation in the Eastern District of Texas be stayed in favor of recently instituted CBM review, Apple has urged the Federal Circuit to ignore the fact that trial had already occurred, and a jury verdict rendered, in the Texas action. In its appeal brief, Apple argues that it was unfairly denied a stay that was granted to other parties facing litigation on the same patents who have yet to proceed to trial.
Continue Reading Apple Argues to Federal Circuit a Stay of Litigation in Favor of CBM