No surprise in the first precedential decision of the Patent Trial and Appeal Board (PTAB) SecureBuy, LLC v. CardinalCommerce Corporation. PTAB denied a petition to institute a covered business method patent review, because petitioner had previously filed a declaratory judgment action in court that challenged the validity of the patent claims.
I say no surprise, since 35 USC 321-329 states covered business method patent review shall employ all statutory standards and procedures of post-grant review (i.e., 35 U.S.C. §§ 321–29) except for those expressly excluded (i.e., 35 U.S.C. §§ 321(c); 325(b), (e)(2), (f)).
Of course, this left the door open to applying 35 U.S.C. § 325(a)(1) which wiped the petition in all respects: (1) POST-GRANT REVIEW BARRED BY CIVIL ACTION-- A post-grant review may not be instituted under this chapter if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.
Yes it's first love or no love when it comes to the USPTO.
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