An ongoing and (surprisingly) often-raised issue in Covered Business Method Reviews has led the Board to issue its first Precedential opinion in an AIA post-grant proceeding.  In Securebuy, LLC v. CardinalCommerce Corp., CBM2014-00035, Paper 12, the Board issued a Precedential Opinion denying a petition for covered business method review on the grounds that the petition was barred pursuant to 35 USC § 325(a)(1), which requires that a post-grant review will not be instituted if, before the filing of the petition, a civil action challenging the validity of the subject patent was filed.

To date, at least several CBM petitions have been filed, despite a prior-filed declaratory judgment action seeking patent invalidity, all with the Petitioner arguing that the one-year bar of 35 USC § 325(a)(1) did not apply to CBM petitions.  See, e.g., PNC Bank, et al., v. Maxim Integrated Prods., Inc., CBM2014-00038, Paper 19.  In an apparent attempt to settle the issue once and for all, given a slight vagueness in the CBM implementing statute, the Board took the opportunity of the Securebuy case to issue its first precedential order.  For future reference, a list of all Board precedential orders can be found here: PTAB List of Precedential Opinions.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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