Covered Business Method Proceedings

News & Analysis as of

Business Litigation Report -- December 2014

In This Issue: Main Article: - Cloud Computing: Legal Issues on the Horizon Noted With Interest: - Stays Pending Covered Business Method Patent Review: VirtualAgility v....more

Getting It Right the First Time

United State Postal Service v. Return Mail, Inc.; Conopco, Inc. v. The Proctor & Gamble Co. - Two recent orders by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) emphasize...more

Federal Circuit Says District Courts Should Freely Grant Stays When CBM Proceeding Instituted

On November 20, 2014, the Federal Circuit issued its decision in Versata Software, Inc. v. Callidus Software, Inc. reversing the district court’s denial of a motion to stay pending a Covered Business Method (“CBM”) review of...more

Versata Software, Inc. v. Callidus Software, Inc.: Guidance on Stays Pending Post-Issuance Proceedings

In a recent decision, Versata Software, Inc. v. Callidus Software, Inc., No. 2014-1468 (Fed. Cir. Nov. 20, 2014), the Federal Circuit ordered the District of Delaware to stay district court litigation pending a covered...more

MBHB Snippets: Review of Developments in Intellectual Property Law: Fall 2014 - Vol. 12, Issue 4

In This Issue: - Prior Art Redefined Under the AIA - PTAB Holds a Firm Line on Additional Discovery - The Art of Prior Art Searching - Anticipating a Federal Trade Secret Law - Trademark...more

Versata Software, Inc. v. Callidus Software, Inc. (Fed. Cir. 2014)

The Federal Circuit made it clear earlier today that district courts should freely grant stays in view of Covered Business Method ("CBM") patent reviews instituted by the Patent Trial and Appeal Board ("PTAB"). In Versata...more

Federal Circuit Weighs in on Stay in View of Covered Business Method Review

The first few decisions from the Federal Circuit are starting to trickle in and are sure to bring more upheaval to Patent Office post-grant procedures. In Versata Software, Inc., et al. v. Callidus Software, Inc., the Court...more

PTAB Holds a Firm Line on Additional Discovery

When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more...more

PTAB Does Not Rely on District Court’s Markman Decision in Construing Claim Terms

SAP America, Inc. v. Arunachalam - Addressing allegations of impropriety of district court judges that purportedly led to a “tainted” claim construction ruling, the U.S. Patent and Trademark Office’s Patent Trial and...more

To Stay or Not to Stay…

The Federal Circuit recently decided its second case on the issue of staying a district court patent infringement litigation pending Covered Business Method (CBM) review. In Benefit Funding Systems v. Advance America Cash,...more

Federal Circuit Applies "Searching Review" of Stay Pending CBM Proceeding

In Benefit Funding Systems, LLC v. Advance America Cash Advance Centers, Inc., the Federal Circuit upheld the district court’s decision to stay patent infringement litigation while the USPTO Patent Trial and Appeal Board...more

PTAB Update -- A Review of the First Round of Comments (Part 1)

The USPTO has been seeking feedback on the PTAB trial proceedings established by the Leahy-Smith America Invents Act. A Federal Register Notice from June 27, 2014 contained the "Request for Comments on Trial Proceedings...more

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

Institution Decisions for August 12, 2014

Dispositions - In Google Inc. Jongerius Panoramic Technologies, LLC, IPR2013-00191, Paper 70 (August 12, 2014) the Board issued a final written decision that claims –6, 10–15, 17– 19, 21, 23–25, 27, and 28 (all of the...more

PTAB Issues Its First Precedential Opinion in CBM Review Proceeding Litigated by Goodwin Procter

On July 31, 2014, the Patent Trial and Appeal Board (PTAB) designated as “precedential” its decision in Covered Business Method Review (CBM) proceeding SecureBuy, LLC v. CardinalCommerce Corporation, CBM 2014-00035 (Pat. Tr....more

Board Issues First Precedential Opinion

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. ...more

Motion to Stay Pending CBM Review Granted Where Non-Practicing Entity Did Not Seek Preliminary Injunction

Boku, Inc. ("Boku") filed a CBM petition with the PTAB seeking review of the patentability of Plaintiff's U.S. Patent No. 7,273,168 (the "'168 patent"). The petition challenged all claims of the '168 patent on grounds that...more

New Guidance From the Federal Circuit on Motions to Stay Litigation Pending a PTAB Proceeding

In VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232 (July 10, 2014), the Federal Circuit issued its first opinion directed to the issue of when it is appropriate to grant a stay of a district court patent...more

Federal Circuit Orders Stay Pending Completion of CBM Review

Applying section 18(a)(1) of the America Invents Act (AIA) to an issue of first impression, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a district court, ordering a stay of the district court...more

Board Accelerates Covered Business Method Review to Reduce Duplicative Litigation

In Fidelity National Information Services, Inc. v. DataTreasury Corporation, CBM2014-00020, Paper 23 CBM2014-00021, Paper 24 (July 11, 2014...more

Federal Circuit Favors Stay of Litigation Pending CBMR

In Virtualagility Inc. v. Salesforce.com, Inc., [2014-1232] (July 20. 2014), the Federal Circuit reversed the district court’s denial of a stay of an infringement suit pursuant to AIA § 18(b)(1) pending disposition of a...more

Federal Circuit: Eastern District of Texas Should Have Stayed Litigation Pending USPTO Covered Business Method Review Proceeding

Covered Business Method Review (CBM) proceedings for challenging patents at the USPTO are more attractive than ever now that the Federal Circuit reversed an Eastern District of Texas judge’s denial of a motion to stay pending...more

Liberty Mutual Achieves Total Knockout of Progressive Patents in Series of Post-Grant CBM Proceedings

A recent dispute involving major automobile insurance companies resulted in the invalidation of five patents through the initiation of post-grant Covered Business Method Patent Review proceedings. The dispute demonstrates...more

It’s Not All that Bleak for Patent Owners at the PTAB

LKQ Corp. v. Clearlamp, LLC; MicroStrategy, Inc. v. Zillow, Inc.; Kyocera Corp. v. Softview LLC - In addition to the many IPRs and CBM reported in this issue, the Patent Trial and Appeal Board (PTAB) has now issued...more

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