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.