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.

Please see full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.


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.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

Written by:

more+
less-

Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×
Loading...
×
×