The Federal Circuit reversed an order of Judge Rodney Gilstrap of E.D. Texas denying a stay of district court litigation pending USPTO review of U.S. Patent No. 8,095,413 under the Transitional Program for Covered Business Method Patents (CBM). AIA § 18(b)(2) provides for immediate interlocutory appeal to the Federal Circuit from a district court’s decision regarding a stay. VirtualAgility Inc. v. SalesForce.com, Appeal No. 2014-1232, (Fed. Cir. July 10, 2014) was the first such appeal.
The PTO published “Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board” (Federal Register / Vol. 79, No. 124 / Friday, June 27, 2014, p. 36474). Comments are requested by Sept. 16, 2014 on a variety of issues, such as which Claim Construction Standard to use, motions to amend, and a variety of other questions.
An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) says the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation. The question then becomes should you join, and if so, how? The classic way to join is to simply file a new IPR and copy the pending one. Some differences in new arguments and new prior art on dependent claims have been allowed in certain cases, but significant changes will result in denial of the joinder petition. Recent cases give some examples which provide guidance.
CBM Qualification requires both an Invention that is financially related (e.g., described as used for financial services) and does not have novel elements of at least one claim that are technical. A review of recent cases shows that even tangential relation to something financial has been found sufficient, so there is a very low bar for this part. For example, representing items in a database hierarchically was found financially related because the items displayed may be associated with financial services. The nontechnical part is a bit trickier, but recent cases give some guidance. Examples of non-novel elements from the cases include “memory,” “telecommunications line,” “transmitter,” “receiver,” “terminals,” “workstations,” “controller computer,” and “software to synchronize handheld computing device displays.” Examples of non-technical methods include appraising real estate, determining a cost of vehicle insurance and organizing data into hierarchies.
For the first time, the Patent Trial and Appeal Board (PTAB) granted a Patent Owner’s Motion to Amend Claims to add substitute claims. In International Flavors & Fragrances, Inc. v. The United States, IPR2013-00124, Petitioner International Flavors & Fragrances challenged U.S. Patent 7,579,016 (the ‘016 patent), which claimed a method of repelling arthropods, such as mosquitos, using isolongifolenone analogs. The proposed substitute claims were limited to specific analogs that Patent Owner argued would not have been obvious over the prior art. In finding some of the substitute claims patentable, PTAB found that the Patent Owner demonstrated the level of ordinary skill in the art and provided evidence regarding what would have been understood by the ordinary artisan regarding the features being relied upon to demonstrate patentability, i.e., minor structural changes to a known insect repellant. PTAB granted the motion as to one independent and 17 dependent claims, but denied the motion as to another independent claim.
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