PNC Bank, N.A., JP Morgan Chase & Co: Order Denying Institution of CBM Review
Thursday, June 5, 2014

Takeaway: A post-grant proceeding may be barred by a prior declaratory judgment action brought by one of the petitioners even if there are multiple petitioners, and filing a motion for adverse judgment against the petitioner that brought the declaratory judgment action does not cure the defect.

In its Decision, the Board denied the Petition and declined to institute a CBM review, and dismissed as moot PNC’s Motion for Adverse Judgment against itself.  Petitioners PNC and JP Morgan jointly filed their Petition on November 22, 2013.  At the time they filed the Petition, PNC was a plaintiff in a declaratory judgment action filed on January 25, 2012 seeking a declaration that the claims of the ’510 Patent are invalid.

Patent Owner contended that the Board cannot institute a CBM review because Petitioner had filed a civil action challenging the validity of at least one claim of the ’510 Patent in violation of 35 U.S.C. § 325(a)(1).  Because PNC is both a petitioner and a real party-in-interest, the Board agreed with Patent Owner and denied the Petition in all respects.  Patent Owner also contended that § 325(a)(1) would continue to bar institution of review even if PNC were to cease control and participation of the case because PNC has already exerted substantial control over the case.  The Board agreed, finding that PNC had already exerted control in the proceeding, therefore, the Motion for Judgment did not alter its conclusion that § 325(a)(1) precludes institution of review.

PNC Bank, N.A., JP Morgan Chase & Co., and JP Morgan Chase Bank, N.A., CBM2014-00038
Paper 19: Decision Denying Institution of Covered Business Method Patent Review
Dated: June 3, 2014
Patent 5,940,510
Before: Sally C. Medley, Mitchell G. Weatherly, and Miriam L. Quinn
Written by: Weatherly
Related Proceeding: PNC Financial Services Group, Inc. and PNC Bank, National Association v. Maxim Integrated Products, Inc., No. 2:12-cv-00089-JFC (W.D. Pa.)

 

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