January 2014

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

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:

Continue Reading PTAB Rejects Covered Business Method Claims

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

Since we last discussed joinder in inter partes review (IPR) proceedings, the Patent Trial and Appeals Board (PTAB) has released two interesting orders that expand the case law on the topic.

In Fifth Third Bank v. Stambler, IPR2014-00244, Fifth Third Bank filed a petition for inter partes review, along with a motion to join IPR2013-00341. The petition was filed on December 9, 2013, more than a year after Fifth Third Bank was served with a complaint alleging infringement of the patent. On December 12, 2013 the Board granted a joint request by the parties to IPR2013-00341 to terminate.


Continue Reading Lack of Speed Kills – The Dangers of Waiting in the PTAB