On March 3, 2018, Judge Nelson of the District of Minnesota issued an order explaining the scope of estoppel resulting from a Covered Business Method (CBM) review.
Solutran, Inc. filed suit against U.S. Bancorp, Inc. in the District of Minnesota for infringement of U.S. Patent No. 8,311,945 (the “’945 Patent”), which claims a system and method for processing check transactions. In response, Bancorp petitioned the Patent Trial and Appeal Board (PTAB) for CBM review of the ’945 Patent, arguing that its claims were invalid as obvious under 35 U.S.C. § 103. Bancorp based its obviousness argument on the combination of admitted prior art in the ’945 patent and a patent application publication (“Randle ’283”). The PTAB found that the asserted combination did not render the ’945 patent obvious, and the Federal Circuit affirmed.
In a June 28, 2016 final written decision, the Patent Trial and Appeal Board (PTAB) found all claims at issue unpatentable under § 101 in a Covered Business Method (CBM) review. Petitioner Life Technologies Corp. sought a CBM review of U.S. Patent No. 6,996,538, which relates to methods and systems of electronic inventory tracking by a third party via the Internet. Petitioner argued that the patent is a CBM patent because at least one claim is directed to a financial product or service. Petitioner also relied on the United States Patent and Trademark Office’s classification of the patent, and on claim language, such as “collecting and storing . . . inventory and cost information.” The patent owner, Unisone Strategic IP, argued in response that the patent distinguishes between the act of ordering and paying for the inventory and that as such, it does not recite a CBM. The PTAB agreed with the petitioner and found that the claims only need to be broad enough to cover a financial product or service. Here, at least one claim recites “cost information” and “ordering inventory,” which encompass financial activities.
The PTAB has recently designated two of its prior decisions as precedential. These are only the second and third decisions from AIA reviews to be designated as such by the Board. The first decision, LG Electronics Inc. v. Mondis Tech Ltd., relates to the meaning of the term “served with a complaint” in 35 USC § 315(b). In its decision denying institution of LG’s IPR petition, the Board held that LG’s petition, filed within one year of Mondis’s second complaint, but more than a year after Mondis’s first complaint alleging infringement of the patent at issue, fell outside of the one-year time bar for filing an inter partes review. The Board declined “LG’s invitation to amend § 315(b) by inserting either ‘latest’ or ‘second’ into the statute,” and instead interpreted “a complaint” plainly as any complaint. LG had also argued that the settlement agreement following the first lawsuit did not cover all of its accused products and that, following dismissal of that suit, the parties were left in the same legal position with respect to the “unreleased products” as before the complaint was filed. The Board rejected that argument, finding that at least some of the claims were dismissed with prejudice, and it was LG’s decision to exclude products from its settlement.
In a January 22, 2016 decision, the Patent Trial and Appeal Board (PTAB) denied institution of covered business method (CBM) review of an ATM patent under 35 U.S.C. § 101. Petitioner NRT Technology sought review of U.S. Patent No. 6,081,792, which relates to a modified ATM terminal that allows a user to obtain cash from a bank account through one of multiple alternative networks. According to the patent, when a cardholder attempts to withdraw money via an ATM network and fails because she has exceeded her daily limit, the request is routed through a different type of transaction, such as a point-of-sale (POS) network. When the POS transaction is approved, the ATM terminal informs a nearby money location—for example, a hotel concierge or a cash window at a casino—of the approved transaction, and the cardholder obtains the money from that location instead of the ATM terminal itself.