The first day of the Patent Trial and Appeal Board was a Sunday, but that did not prevent companies from filing eight challenges to issued patents through procedures made available on the Sept. 16 one-year anniversary of enactment of the America Invents Act.
All eight petitions were submitted by defendants faced with patent infringement lawsuits in U.S. district courts.
Erika H. Arner of Finnegan, Henderson, Farabow, Garrett & Dunner, Reston, Va., filed the first challenge to a “covered business method” (CBM), the AIA's “transitional” procedure to invalidate “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”
The real party in interest, SAP America Inc., is challenging a patent (6,553,350) assigned to Versata Software Inc. Versata won a $345 million judgment in the U.S. District Court for the Eastern District of Texas after a jury found infringement of the '350 patent and one other patent (5,878,400). Versata Software Inc. v. SAP America Inc., No. 2:07-cv-00153-CE, 2011 BL 232146 (E.D. Tex., Sept. 9, 2011).
The lower court issued an injunction as to the '350 patent. 2011 BL 231512 (E.D. Tex., Sept. 9, 2011). The case is now on appeal, No. 2012-1029 (Fed. Cir.), and the injunction has been stayed.
SAP is challenging the '350 patent, a continuation of the '400 patent, on the grounds of patent ineligibility, inadequate written description, indefiniteness, and anticipation.
The case will immediately test the breadth of the CBM definition. When the AIA was enacted, some observers believed Congress meant the transitional program to be geared specifically to products and services supplied by the financial services industry. Others argued that a CBM challenge could be made against any product or service that related to financial issues, such as, SAP is apparently arguing, a pricing tool that could be used in any industry, including those that are manufacturing-based.
Two other CBM patent challenges were filed, both on behalf of Liberty Mutual Insurance Co. The challenges, initiated by J. Steven Baughman of Ropes & Gray, Boston, are against patents (6,064,970 and 8,140,358) assigned to Progressive Casualty Insurance Co.
The patents are directed to the use of data from motor vehicle monitoring systems to determine the cost of automobile insurance. The companies are litigating Progressive's patents in the U.S. District Court for the Northern District of Ohio. Progressive Casualty Insurance Co. v. Safeco Insurance Co. of Illinois, No. 1:10-cv-01370 (N.D. Ohio).
Five petitions seeking inter partes review--the AIA replacement for inter partes reexamination--were filed as well.
Jennifer C. Bailey of Hovey Williams, Overland Park, Kan., had the distinction of receiving the first numbered IPR challenge. Garmin International Inc. is challenging a patent (6,778,074) issued to Giuseppe A. Cuozzo, who is doing business as Cuozzo Speed Technologies LLC. The patent is titled “Speed limit indicator and method for displaying speed and the relevant speed limit,” and is being asserted against Garmin in the U.S. District Court for the District of New Jersey, No. 2:12-cv-03623-CCC-JAD (D.N.J.).
A patent (6,422,291) on a “Roll-up blind with stowable guiding members for the window of a vehicle” is being challenged by Macauto U.S.A., in an IPR petition filed by Scott A. Chambers of Patton Boggs, Washington, D.C. Assignee BOS GmbH & KG asserted patent infringement by Macauto in the U.S. District Court for the Western District of New York. BOS GmbH & KG v. Macauto U.S.A. Inc., No. 6:12-cv-06294-DGL (W.D.N.Y.).
Matthew A. Smith of Foley & Lardner, Washington, D.C., filed an IPR petition on behalf of Nichia Corp., challenging a patent (6,653,215) assigned to Emcore Corp. covering semiconductor technology. That patent is the basis for a patent infringement lawsuit in the U.S. District Court for the Eastern District of Michigan. Emcore Corp. v. Nichia Corp., No. 2-12-cv-11758 (E.D. Mich).
Finally, two IPR petitions were filed by Illumina Inc. against patents (7,713,698 and 7,790,869) assigned to Columbia University and titled “Massive parallel method for decoding DNA and RNA.” Columbia is asserting those patents and others against Illumina in the U.S. District Court for the District of Delaware. Trustees of Columbia University in the City of New York v. Illumina Inc., No. 1:12-cv-00376-GMS (D. Del.).
By Tony Dutra
PTAB records at http://www.uspto.gov/ip/boards/bpai/index.jsp
Chambers is a member of this journal's advisory board.
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