USPTO Issues First Decision Instituting CBM

On January 9, 2013, the Patent Trial and Appeal Board (PTAB) issued its first decision in a Covered Business Method Patent Review (CBM) proceeding, instituting the trial on all claims requested.

The decision issued in Trial No. CBM2012-0001, and was written by Chief Judge Tierney. SAP America, Inc. is the petitioner, who filed the CBM request on the first available day against a patent owned by Versata Development Group, Inc. While the full decision is an instructive read, we note some highlights below:

Standing -

In the corresponding District Court litigation, a validity decision had already been made. The PTAB found that SAP still had standing, and disagreed with Versata’s position that the statute required ongoing litigation. Here, the case was on appeal to the CAFC, so there was no “final decision” for purposes of issue preclusion. As a result, the PTAB held that the district court’s judgment was not sufficiently firm to be given conclusive effect.

All It Takes Is One -

The PTAB confirmed that “the presence of a single claim is sufficient to institute a covered business method review.” The PTAB only analyzed one claim for CBM eligibility, but instituted trial for all requested claims.

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