Low Demand To Date for Specialized PTAB
The new post grant patentability trials of the America
Invents Act (AIA) are designed to serve as alternatives to costly patent
litigation. One of the new post grant options is the very specialized,
Transitional Program for Covered Business Method Patents, or "CBM" proceeding.
This proceeding, like Inter Partes Review (IPR), is conducted before the
administrative patent judges of the USPTO's Patent Trial & Appeal Board.
As the name implies, a CBM proceeding is limited in scope
to "business method" patents. Assuming a subject patent qualifies as a
business method, and is asserted against a petitioner in a litigation (or a
petitioner is otherwise charged with infringement), a CBM filing is available
as an alternative to the litigation. Indeed, Congress devised CBM proceedings
to virtually guarantee
the stay of the higher cost litigation proceeding. The CBM provision
was added to the AIA as a compromise between those that did not want a
"second window" for Post Grant Review (PGR) (bio/pharma lobby) and those
(financial/software) that felt the change in 101 case law (Bilski) should
be applied to the multitude of patents that resulted from the State
Street Bank decision.
CBM is an especially powerful tool to combat business
method patent assertions, yet only 17 have been pursued to date. Why?
Of course, CBM filings will never rival IPR filing
numbers (225+ at the time of this writing) based upon their specialized
standing requirements and subject matter restriction. Also, with so many business
method patents relying on divided infringement theories, since the
CAFC's decision in Akamai, it may simply be that fewer such patents are
Still, even with such filtering it is surprising that
only a handful have been pursued to date. Given the significant petitioner
benefits of a CBM proceeding, and the significant lobbying effort that was
expended to provide this option, it seems there should be more of them.
In fact, there are some IPR filings that target patents
that would seem to have been eligible for CBM. Certainly, a CBM is far
more attractive if the strategy is to seek a stay. And with CBM
estoppel being narrower than IPR (i.e., restricted to only those
issues actually raised), why choose IPR instead?
Perhaps some petitioners choose IPR rather than risk the
denial of a CBM petition on subject matter grounds outside of their 12 month
window. (Note the USPTO's interpretation of a "business method" is being challenged
in the EDVA). Or, perhaps the more liberal standard for securing additional
discovery in a CBM, coupled with the availability of strong grounds of
unpatentability on patents and printed publications tips the scales in
favor of IPR over a CBM.
Until recently, the "stay guarantee" of the CBM statutes
was largely theoretical. However, with courts now demonstrating their
willingness to stay
a parallel litigation upon the mere filing of a CBM petition, and
more courts considering such issues everyday, I expect CBM filings to inch
up going forward.
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