Posts Tagged ‘covered business method patent review’

4 Tips to Make Your Patent Portfolio AIA-Ready

Wednesday, July 13th, 2016

The America Invents Act (AIA) has changed the way that patents are enforced. In traditional patent litigation, a patent was drafted to perform in district court. After the AIA, when patents are asserted, they are first challenged in administrative proceedings before the Patent Trial and Appeal Board (PTAB). These proceedings, called IPRs (inter partes reviews), PGRs (post-grant reviews), and CBMs (covered business method reviews), are conducted by skilled administrative law judges who have both scientific and legal experience. Patents that fail in these more-stringent reviews will never get a day in court, so patent applicants should be adapting their patent strategies to make their patents AIA-ready.

Check out our video for tips on how to make stronger patents that will withstand AIA reviews.

Pro Hac Vice Admission Denied in SAP v. Versata CBM Patent Review

Friday, November 9th, 2012

My prior post described the pro hac vice admission dispute between SAP and Versata Development Group in PTAB matter CBM2012-00001.  The PTAB wasted no time and issued an order denying the motion for pro hac vice admission of Versata’s litigation trial counsel on November 6, 2012.  The PTAB essentially found that Versata failed to demonstrate “good cause” for why its litigation counsel should be admitted pro hac vice in the PTAB proceeding.

Versata, as the party moving for pro hac vice admission, bears the burden of showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding. Based upon the facts presented, the Board concludes that Versata has failed to meet its burden.

It is:

Ordered that Versata’s motion for pro hac vice admission of Mr. Scott L. Cole is denied.

The Board also referenced documents from the earlier litigation that indicated some sort of noted violations of a protective order in that litigation, and noted that Versata did not identify or explain the noted violations in its motion for admission:

Versata’s motion for pro hac vice admission of Mr. Cole and Mr. Cole’s declaration in support thereof are premised in part on Mr. Cole’s position as lead counsel in the related Versata v. SAP litigation. Versata’s motion and Mr. Cole’s declaration do not address or mention the district court’s finding of a pattern of protective order violations in the related litigation for which Mr. Cole was lead counsel.

As of this posting, no other entries were found in the record after this order, so this might be the final word on this dispute.

 

PTAB PRPS Trials Portal Gets Software Improvements

Saturday, October 6th, 2012

The PTAB PRPS Trials Portal just got better.  If you login to the system (depending on what browser you are using), you will see that PRPS now provides much better access to all public documents in each case.  This upgrade replaces the more clunkier version of the website and allows for ready access to the public documents associated with a case.  Before the improvement, it was common with current browsers to find it difficult to view subsequent screens of documents.  This is fixed in the recent upgrade, making the system much easier to use.

The system is showing 35 petitions to date:  10 CBM and 25 IPR.  In speaking with my colleagues there is a lot of interest in how the petitions are being drafted and even more curiosity how the trials will be instituted and conducted.  I will address some strategies for petitions in future posts.

 

New Petitions Filed for AIA Inter Partes Reviews and Covered Business-Method Patent Reviews

Thursday, October 4th, 2012

Based on a today’s count, the PTAB Patent Review Processing System (PRPS) is now showing 34 petitions for patent review.  There are 10 pending petitions for covered business-method (CBM) patent review and 24 petitions for inter partes review (IPR).

What is confusing is that the PRPS system is assigning Trial Numbers that have changed from a prefix of IPR2012 to IPR2013 in recent days (and the prefix of CBM2012 has shifted to CBM2013 recently, as well).  It is not clear if this was an intended change or a software issue, but appears to be observed as PRPS original filing dates shifted from September filing dates to October filing dates.  It will be interesting to see if these matters are reassigned a 2012 prefix in the future.

So far, the new petitioners in October include Micron Technology, Inc. and Kyocera Corporation.   Additional petitions were filed by Illumina Inc. and by Liberty Mutual.

Parallel Litigation and PTAB Review Create Complex Interplay of Patentability and Validity

Sunday, September 30th, 2012

A company called CoreLogic Solutions, LLC owns U.S. Patent No. 5,361,201, relating to a process for appraising real estate property.  The ‘201 patent was filed on Oct. 19, 1992 and issued on Nov. 1, 1994.  Absent some kind of patent term extension, the ‘201 patent will expire soon.  The ‘201 patent is the subject of both a litigation and a covered business-method (CBM) patent review with an accused infringer/petitioner Interthinx, Inc.  The litigation is CoreLogic Information Solutions, Inc. v. Fiserv, Inc., et al., Civil Action No. 2:10-CV-132-RSP (E.D. Texas).  The CBM patent review is CBM2012-00007.  Claim 1 of the ‘201 patent is as follows:

1. A computer-implemented process for appraising a real estate property, comprising the steps of:

collecting training data;

developing a predictive model from the training data;

storing the predictive model;

obtaining individual property data for the real estate property;

generating a signal indicative of an appraised value for the real estate property responsive to application of the obtained individual property data to the stored predictive model;

developing an error model from the training data;

storing the error model; and

generating a signal indicative of an error range for the appraised value responsive to application of the individual property data to the stored error model.

PACER reveals a jury verdict form just entered in the Texas litigation on September 28, 2012, where Interthinx was found to not have infringed claims 1 and 10 of the ‘201 patent, and that Interthinx failed to show claims 1 or 10 invalid.  This jury decision comes only 9 days after the CBM petition was filed in the USPTO/PTAB.

What will happen next is anyone’s guess.  Interthinx may elect to wait and see if a CBM trial is instituted.  It may settle with CoreLogic to avoid appeal.  Or it may do a little of both.  It may also pursue the CBM in an effort to challenge the patent  and extinguish any possible reversal and remand by the Federal Circuit on appeal of the trial court action by CoreLogic.

If the CBM PTAB trial is pursued, it will be interesting to see how the PTAB regards a prior litigation decision, such as the one in this case, given the differences between administrative review and litigation.  The differences in  interpretive standards and burdens of proof are  summarized in the slide below:

We already learned from cases such as  In re Baxter International (Fed. Cir. 2012), that the PTO can find a patent unpatentable even after the Federal Circuit affirmed a lower court decision that the patent was not invalid.  As stated in Baxter:

“[T]he PTO in reexamination proceedings and the court system in patent infringement actions “take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.’[citing Swanson, quoting Ethicon]”

But that does not mean that the PTAB trial judges will ignore district court decisions and that courts will ignore PTAB decisions.  It remains to be seen how much one process defers to the other.

PTAB Patent Review Processing System (PRPS) Update

Thursday, September 20th, 2012

If you are a registered user of the Patent Review Processing System (PRPS) you may have encountered the same problem I did.  When logging in, I can see some matters where the petitions can be viewed, but other matters where the petitions are not viewable.  It is my understanding that this is due to a limitation in the current software that allows for views of up to 10 documents.  The petition may well be scanned into the system, but is not viewable because it is entered after 10 other scanned documents.

It is my understanding that there is a software update to be implemented in the next couple of days that will fix this issue.