May 23, 2022

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May 20, 2022

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Patent Trial and Appeal Board (PTAB) Issues First Precedential Opinion

In its first precedential opinion, the Patent Trial and Appeal Board has denied  institution of a covered business method review based on a prior-filed civil suit. Except for provisions specifically excluded, the CMB statute incorporates all the statutory standards and procedures of a post-grant review.  These standards include the provision barring review if the petitioner has instituted a civil action before filing its petition for review.  35 USC § 325(a)(1).  In Securebuy, LLC v. Cardinal Commerce Corporation, No. CBM 2014-00035, petitioners filed a declaratory judgment action 2 weeks prior to filing for CBM review.  Relying on the above-cited provision of the AIA, the Board denied SecureBuy’s petition.   Despite the apparent clear language of the statute, several CBM petitions have been filed after institution of civil actions.  In each case, petitioners have argued that this section of the AIA does not apply to CBM petitions.

PTO copy of the order: http://www.uspto.gov/ip/boards/bpai/decisions/prec/cbm2014-00035_4-25-2014_325a.pdf

© Copyright 2022 Armstrong Teasdale LLP. All rights reserved National Law Review, Volume IV, Number 216
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About this Author

Jennifer E. Hoekel, Intellectual Property Attorney, Armstrong Teasdale law firm
Partner

A member of the firm’s Intellectual Property Litigation practice group and a registered U.S. patent attorney, Jennifer Hoekel focuses on patent litigation.

Finding her general litigation background to be an asset in this practice area, she has litigated patents, trademarks, copyrights, trade secrets, unfair competition and license acquisition matters, in state, federal and appellate courts throughout the U.S. Her cases involve mechanical, electrical, chemical and business method patents in such varied subject matter as cholesterol inhibiting substances, highway roadside safety...

314-342-4162
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