Monday, August 4, 2014

PTAB Rejects Petition for Covered Business Method Patent Review Because Previously Filed DJ for Invalidity

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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