In Ticketnetwork, Inc. v. Ceats, LLC, CBM2018-00004 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“the Board”) held that Ticketnetwork failed to establish standing under 37 C.F.R. § 42.302, and accordingly did not institute a covered business method (“CBM”) review of U.S. Patent No. 8,229,774 (the “’744 Patent”).
In 2010, Ceats sued Ticketmaster and others for infringement of a patent related to the ‘744 Patent. While the case ultimately resulted in the Federal Circuit affirming invalidation of the related patent, the parties to the instant CBM settled – Ticketmaster was granted a license to certain Ceats patents including the ‘744 Patent, wherein Ticketmaster was to pay a royalty to Ceats. (Decision, pages 6-7).
About a year and a half after the Federal Circuit affirmance, Ticketmaster sent a letter to Ceats purporting to terminate the license agreement. Ceats responded in a July 2015 letter and noted that they “have determined that [Ticketmaster is] . . . infringing on CEATS’ patent rights, including. . . [the ‘744 Patent]” . . . “. (Id., page 7).
Ticketmaster subsequently filed a declaratory judgment action against Ceats, arguing that: (1) the license agreement was unenforceable; (2) Ticketmaster does not infringe any of the patents referenced in Ceats ‘ letter; and (3) that the patents referenced in Ceats’ letter were invalid. (Id., page 7).
In June 2017, Ticketmaster moved to voluntarily dismiss the claims regarding non-infringement and invalidity. ((Id., pages 8-9).
Finally, in November 2017, Ticketnetwork filed a petition to instate CBM review on all eight claims of the ‘744 Patent. (Id., page 9).
Under § 42.302, only parties who “have been sued or charged with infringement . . . are permitted to file a petition seeking a CBM  review”. The Board defines “charged with infringement as ”a real and substantial controversy regarding infringement . . .[,] such that the petitioner would have standing to bring a declaratory judgment action in Federal court”. (Id., pages 4-5).
In support of their standing position, Ticketnetwork argued that at the time of filing the CBM petition (November 2017), Ceats’ July 2015 letter, coupled with Ceats’ statements in a summary judgment hearing for claims related to the licensing dispute, show that, under the totality of the circumstances, Ticketmaster was “charged with infringement” of the ‘744 Patent by Ceats. (Decision, pages 9-10).
Ceats on the other hand argued that “the letter and the statement at the summary judgment hearing [(wherein Ceats conceded that if the agreement was held unenforceable, Ticketnetwork would infringe]) are together or apart, not specific enough to meet the “charged for infringement” prong for CBM standing.” (Id., page 10).
Regarding Ceats July 2015, letter the Board held that since nearly 28 months had passed since Ceats sent the letter and when Ticketmaster filed the instant CBM petition, “whatever weight in favor of standing the July 2015 Letter had . . . has been considerably diminished”. The Board also gave little weight to the letter since the letter didn’t assert infringement of specific patent. (Id., page 14; see id., page 12; see also, Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir. 2009)).
As to Ceats statements at the Summary Judgment hearing, the Board explained that although Ceats indicated that it could sue for infringement if the agreement was terminated, Ceats never indicated that it actually planned to sue if the agreement was terminated. (Decision, page 15).
The Board also briefly touched upon a covenant not to sue provided by Ceats after the filing of the petition. Without reaching the issue of whether post petition filing conduct is relevant to the standing issue, the Board noted in apparent dicta that it does “not believe offering of a covenant not to sue weighs in favor of standing.” (Id., page 14).
Thus, the Board held that under the totality of the circumstances, Ticketnetwork had failed to demonstrate a “real” and “substantial” controversy sufficient to bring a declaratory judgment action or in this case, to file a CBM review petition.
Board finds Internet advertising patent not eligible for CBM Review under Federal Circuit Secure Access and Unwired Planet standard
The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and billing advertisers as the only reasons for the retaining the records. See Google Inc. v. KlausTech, Inc., CBM2016-00096, Paper 12 at 5-9 (PTAB April 6, 2017) (Decision Denying Request for Rehearing). However, the Board disagreed, focusing on only the language of the claims themselves:
The America Invents Act (AIA) provided several mechanisms for reviewing the validity of issued patents. While Inter Partes Review (“IPR”) is commonly used, a review of Covered Business Method (“CBM”) patents is another mechanism for reviewing validity. Moreover, challenging a patent using CBM can be more desirable than in an IPR, since CBM provides the petitioner more bases for review than in an IPR.
In J.P. Morgan Chase v. Intellectual Ventures (CBM2014-00157), the PTAB held that a patent owner cannot remove the standing of a petitioner in a covered business method (CBM) patent review, and therefore halt the CBM review entirely, by disclaiming all CBM claims after the review has been instituted.
When a Final Written Decision has been received in an America Invents Act (AIA) patent office trial, the Petitioner is estopped from “request[ing] or maintain[ing] another proceeding before the Office on any ground that the petitioner raised or reasonably could have raised” during the proceeding. This estoppel also applies to real parties in interest and privies of the Petitioner. See 35 U.S.C. §§ 315(e)(1) and 325(e)(1).
In recent decisions and orders, the PTAB has applied this estoppel to Petitioners involved in later filed patent office trials in different ways. The estoppel does not prohibit the PTAB from reaching a Final Written Decision in a subsequent patent office trial. The PTAB has the discretion to (1) allow the subsequent trial to proceed without the Petitioner’s participation, (2) terminate the subsequent trial, or (3) terminate certain claims from the subsequent trial when appropriate.
Analyzing AIA reviews of Orange Book-listed patents to date – strategic considerations in filing and conducting AIA review proceedings
Attorneys from Sughrue Mion and other international law firms recently participated in the annual Symposium for Managing Pharmaceutical, Biotechnology and Chemical Patent Portfolios, hosted by the Institute of Intellectual Property Research and Development. As a member of the group from Sughrue Mion, I presented two lectures – one on strategic considerations in deciding whether to file AIA reviews of pharmaceutical patents (i.e., patents listed in the Orange Book), and a second on strategies and pitfalls in conducting an inter partes review of a pharmaceutical patent, including analysis of each of the unique final written decisions to date.
In a covered business method review proceeding the PTAB canceled all 23 claims of U.S. Patent No. 7,603,392 (“the ’382 patent”) as directed to ineligible subject matter under 35 U.S.C. § 101. Bank of America, N.A. v. Intellectual Ventures I, LLC, CBM2014-0030, Paper No. 32, April 24, 2015, at p. 20. The ’382 patent is titled “Advanced Internet Interface Providing User Display Access of Customized Webpages.” Id. at 2. Fig. 3 is reproduced below:
House Reintroduces Bill that would Eliminate BRI standard in IPR and PGR Proceedings one day after Federal Circuit finds BRI standard is proper
On February 5, 2015, the Judiciary Committee of the House of Representatives’ re-introduced an anti-patent troll bill (Innovation Act of 2015, H.R. 9). This bill is essentially the same as the bill that was passed by Congress in December, 2013 but stalled in the Senate.
In Par Pharm., Inc., et al. v. Jazz Pharm., Inc., CBM2014-00149, 00150, 00151, and 00153, three generic drug companies challenged four Orange Book listed patents – 7,895,059 (“the ʼ059 patent”), 8,457,988 (“the ʼ988 patent), 7,668,730 (the ʼ730 patent), and 8,589,182 (“the ʼ182 patent”) – in a Covered Business Method (CBM) Review. These patents are listed in the Orange Book under NDA 021196 for Xyrem®, which contains the API sodium oxybate.
In proceedings before the Patent Trials and Appeals Board (PTAB or Board), Patent Owners are allowed to propose substitute claims in the event that one or more claims is cancelled. 35 U.S.C. §§ 316(d)(1), 326(d)(1). As discussed in previous blog articles, the proposed claims are not entered automatically or subjected to examination. Respironics, Inc., v. Zoll Medical Corporation, p. 20 (IPR2013-00322, Paper No. 46, September 17, 2014). Rather, a Patent Owner has the burdens of proof to show that the proposed claims are both adequately supported by the specification and patentably distinct from prior art.