PTAB Issues Second Ruling on Scope of Estoppel After Final Decision

Authored by Brian S. Mudge

In its second ruling on the scope of estoppel,1 the Board has rejected a patent owner’s attempt to terminate an AIA trial based on a final written decision involving the same patent. The case, Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176 (PTAB May 14, 2015) (paper 28), involved a covered business method (CBM) proceeding brought in connection with U.S. patent no. 6,950,807. Although the ’807 patent was the subject of a final decision in a prior CBM case, the PTAB ruled that estoppel did not bar the second CBM proceeding because the specific claims of the ’807 patent at issue were not addressed in the prior final decision.

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PTAB Warriors: The Top 10 Petitioners for Inter Partes and Covered Business Method Review

In a previous post, we discussed the top patent owners in PTAB inter partes and covered business method review proceedings. We now turn our attention to the petitioners, to see which companies have been filing the most petitions for inter partes and covered business method review. In order to get a more recent snapshot of the state of the PTAB, we considered only petitions filed during the USPTO’s Fiscal Year 2014 (i.e., October 1, 2013 to the present). Again, we come across some surprising results. A table of the results is below.

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Not So Fast! PTAB Rules Patent Not Covered Business Method

Authored by Brian S. Mudge

The Patent Trial and Appeal Board recently ruled, in a case of first impression, that a patent challenged under the Covered Business Method (“CBM”) transitional review program was not directed to a financial product or service. In PNC Financial Services Group, Inc. v. Intellectual Ventures I, LLC, CBM2014-32 (“PNC Financial”), the petitioners challenged U.S. patent 7,757,298 on grounds that claims 1-16 were unpatentable under 35 U.S.C. §101. But the Board did not even reach the merits of the dispute because it determined, as a threshold matter, that the challenged patent failed to qualify for CBM review.

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The Top 10 Patent Owners at the PTAB: A Who’s Who of IPR and CBM Proceedings

Authored by Michelle Carniaux and Michael E. Sander

As inter partes review and covered business method proceedings become more popular, it is becoming the norm for patent owners to face an IPR or CBM challenge during any patent monetization campaign. Below we provide a ranking of the top 10 patent owners having the most IPR or CBM petitions filed against their patents.

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Statistics for Stays In View of IPR and CBM Proceedings

Authored by Michelle Carniaux and Julia Tanase

When a motion for a stay in view of an inter partes review (“IPR”) or covered business method review (“CBM”) is filed in a related district court litigation, the district court will grant the motion more often than it will deny it. Our study1 indicates that orders for disputed motions to stay litigation in view of IPR or CBM are granted 73.4%2 of the time.

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