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Compass Bank, American Express, Discover, and State Farm v. Maxim Integrated Products: Granting Institution in Part Utilizing the Broadest Reasonable Interpretation Claim Construction Standard CBM2015-00102

Takeaway: Under current, but proposed-to-be-revised, 37 C.F.R. § 42.300(b), the Board may utilize the broadest reasonable interpretation (BRI) claim construction standard in instituting a covered business method review of an unexpired patent but then rely on the Phillips standard in its final written decision if the patent is expired at that time.

In its Decision, the Board instituted a covered business method patent review of claims 1-6 and 8 of the ‘095 patent. The Board did not institute any covered business method review for claim 7, since it was the subject of a statutory disclaimer referenced by Patent Owner in its Preliminary Response.

The ‘095 patent relates to a module or apparatus for electronically transferring money or digital cash, in the course of which the apparatus/module sends and received encrypted data. Petitioner had sought a covered business method review of claims 1-8 of the ‘095 patent on the following grounds, all based on prior art: (1) obviousness of claims 1, 2, 4-6, and 8 under 35 U.S.C. § 103(a) in view of Hawkes taken alone or in combination with Chaum and/or Ciarcia; and (2) obviousness of claim 3 under 35 U.S.C. § 103(a) in view of Hawkes taken alone or in combination with Brown and/or Ingalls.

The subject ‘095 patent had not expired at the time of this Decision, but it was expected to expire by the time the Board would issue its Final Written Decision. Thus, Petitioner urged the Board to conduct its claim construction analysis using the broadest reasonable interpretation (BRI) standard associated with unexpired patents, while Patent Owner asserted that the Board should use the Phillips standard for expired patents.

Although the Board noted that the USPTO recently proposed an amendment to 37 C.F.R. § 42.300(b), which would address Patent Owner’s argument regarding the claim construction standard[,]” because this amendment was “merely proposed and is not in effect[,]” the Board ended up applying the broadest reasonable interpretation standard (BRI) standard under the current version of 37 C.F.R. § 42.300(b). The Board did go on to state, however, that if the ‘095 patent expired before the Board’s issuance of the final written decision, then at that time the Board would apply the Phillips claim construction standard in rendering the final written decision (after giving the parties the opportunity to brief any different interpretations under the two standards).

The Board next concluded that Petitioner had standing to seek a covered business review of the ‘095 patent. In doing so, the Board concluded that the apparatus recited in claim 1 “[encompassed] an apparatus for managing financial products or delivering financial services, as evidenced by the financial embodiments disclosed in the Specification.” Moreover, Petitioner provided arguments and the testimony of its expert Peter Alexander, Ph.D. in support of its position that the claims of the ‘095 patent recited technological features that were conventional and known at the time of the filing of the application for the ‘095 patent, with which the Board agreed. The Board determined in view of these conclusions that the ‘095 patent was eligible for covered business method patent review.

Regarding the obviousness challenges, the Board instituted a covered business method patent review with respect to Petitioner’s unpatentability challenges based on obviousness under 35 U.S.C. § 103 in view of the following proposed prior art references/combinations: claims 1-6 and 8 in view of Hawkes by itself; claims 1, 2, 4-6, and 8 in view of Hawkes and Chaum; claims 1, 2, 4-6, and 8 in view of Hawkes and Ciarcia; claim 3 in view of Hawkes and Brown; and claim 3 in view of Hawkes and Ingalls. The Board sided with Patent Owner in not instituting any covered business review of any claims of the ‘095 patent in view of the combination of Hawkes, Chaum, and Ciarcia, or the combination of Hawkes, Brown, and Ingalls, however.

Compass Bank, American Express Company, American Express Travel Related Services Company, Inc., Discover Financial Services, Discover Bank, Discover Products Inc., and State Farm Mutual Automobile Insurance Company v. Maxim Integrated Products, Inc., CBM2015-00102
Paper 16: Decision on Institution of Covered Business Method Patent Review
Dated: October 7, 2015
Patent 6,237,095 B1
Before: Trevor M. Jefferson, Mitchell G. Weatherly, and Kerry Begley
Written by: Weatherly
Related Proceedings: Patent Owner had asserted the ‘095 patent against all Petitioners other than Discover Products Inc. (“DPI”) in the U.S. District Court for the Western District of Texas, and against numerous other defendants in more than thirty cases filed in various district courts; PNC Bank, N.A. v. Maxim Integrated Prods., Inc., (CBM2014-00041); and JP Morgan Chase & Co. v. Maxim Integrated Prods., Inc., (CBM2014-00177)

© 2022 Faegre Drinker Biddle & Reath LLP. All Rights Reserved.National Law Review, Volume V, Number 286
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About this Author

The Intellectual Property Litigation Practice at Drinker Biddle & Reath LLP recognizes that a successful IP enforcement strategy can make an important contribution to a company's bottom line. Our attorneys help a wide variety of clients protect what is theirs and police the marketplace against infringements and unfair competitive practices.

Our attorneys have litigated infringement suits across a broad range of industries and technologies, including pharmaceuticals, medical devices, dental methods, computer software, automobile designs,...

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