Settlement of an IPR Proceeding Does Not Necessarily Stop Review the Patent

By Reza Mollaaghababa

In an inter partes review (IPR) proceeding, a petitioner challenging a patent and the respective patent owner can reach a settlement and request that the Patent Trial and Appeal Board (PTAB) terminate the proceeding.  In particular, Section 317(a) of the America Invents Act (AIA) states that an IPR “… shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.”

Recently, in Blackberry Corporation and Black Berry Limited v. MobileMedia Ideas, LLC (IPR2013-00036; US Patent No. 6,871,048), the PTAB, in response to a joint motion by the petitioner (Blackberry) and the patent owner (MobileMedia) to terminate the IPR, allowed the termination of the proceeding with respect to the petitioner, but not with respect to the patent owner.  The PTAB indicated that “[W]hile the parties may agree to settle their issues related to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability.” See, 37 C.F.R. §42.74(a).

The advanced stage of the proceeding was an important factor in the PTAB’s decision not to terminate the proceeding with respect to the patent owner.  The PTAB indicated that after its decision on March 18, 2013 to institute the trial, MobileMedia had filed a patent owner response, and Blackberry had filed a reply to that response.  In addition, an oral hearing was held on October 18, 2013.  “In sum, the issues for trial had been briefed fully at the time the parties moved to terminate the proceeding.”  The PTAB thus decided that “… in view of the advanced stage of this proceeding, rather than terminate this proceeding the Board will proceed to a final written decision.”

In view of this PTAB’s decision, a patent owner involved in an IPR proceeding who has an interest in reaching a settlement with the petitioner must take into account the possibility that the PTAB may not agree to terminate the proceeding even if the petitioner agrees to do so.  In particular, such a patent owner should consider engaging the petitioner in serious settlement discussions before the proceeding reaches an advanced stage, and especially before an oral hearing is held.

PTAB Rejects Covered Business Method Claims

By Ben Snitkoff

On January 21, 2014, the Patent Trial and Appeal Board issued its second Final Written Decision in a Covered Business Method (CBM) Proceeding under the America Invents Act. CBM Proceedings allow for the review of a business method patent on any ground of patentability, and fill a gap between Inter-Partes Review (IPR) which only allows for review based obviousness or novelty, and Post-Grant Review (PGR), which is applicable only to patents issued based on applications filed on or after March 15, 2013, though it allows for review on any ground of patentability.

In this proceeding, CRS Advanced Technologies alleged that certain claims of U.S. Patent No. 6,675,151 were invalid as patent ineligible subject matter under 35 U.S.C. § 101. Broadly, the patent covers systems and methods for placing temporary workers in open positions. The PTAB granted review of all of the challenged claims and held a hearing in August, 2013. The Final Written Decision invalidated all six challenged claims as “directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment.” This is the second time in as many decisions in which the PTAB invalidated business methods claims.

Broadly, the claims are directed toward a method of using a computer to find temporary workers. Claim three, specifically, provides:
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The Time Limit for Filing an IPR After Commencement of Patent Litigation Applies to Counterclaims

By Reza Mollaaghababa

A petition for inter-partes review (IPR) will be time barred if it is “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  35 U.S.C. §315(b).  In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corporation (IPR2013-00258), the Patent Trial and Appeal Board (PTAB) ruled that a counterclaim alleging infringement of a patent is a complaint within the meaning of Section 315(b) and hence starts the clock on the one year time period for filing an IPR to challenge that patent.  Continue reading “The Time Limit for Filing an IPR After Commencement of Patent Litigation Applies to Counterclaims”