In Verstata Software, Inc. v. Callidus Software, Inc., 2014-4682 (November 20, 2014), the Court of Appeals for the Federal Circuit reversed the District of Delaware’s denial of a motion to stay the district court case during a transitional Covered Business Method (CBM) Review. The decision shows how valuable a CBM proceeding can be for a defendant accused of infringing a business method patent.
In a recent Inter Partes Review (IPR) proceeding, patent owner Click-To-Call Technologies LP failed in its attempt to prevent the institution of an IPR of U.S. Patent No. 5,818,836 sought by petitioner YP Interactive LLC. 35 U.S.C. § 315(b) bars a petitioner from pursuing an IPR of a certain patent if that petitioner was served with a complaint alleging infringement of that certain patent more than one year before the petition was filed. Here, the PTAB instituted the IPR even though YP Interactive’s predecessor was previously sued in 2001 for allegedly infringing the ‘836 Patent. (Pp. 12-13).
The Patent Trial and Appeal Board (PTAB) recently entered final written decisions in Ariosa Diagnostics v. Verinata Health, Inc., IPR 2013-00276, Paper No. 43 (“Ariosa”) and Athena Automation Ltd. v. Husky Injection Molding Systems Ltd. IPR2013-00290, Paper No. 45 (“Athena”) that denied grounds based on anticipation and obviousness. These decisions emphasized a similar analytical shortcoming the Petitioners’ invalidity analyses ̶ how a person of ordinary skill in the art would have combined the cited prior art elements to arrive at the claimed invention. As quoted in Ariosa, “[a] brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (Fed. Cir. 1999).