SecureBuy, LLC v. CardinalCommerce Corp., Case CBM2014-00035, Paper 12 (Apr. 25, 2014)

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Takeaway (Precedential):

The Board may not institute a covered business method patent review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed.

Summary

Petitioner SecureBuy, LLC filed an petition challenging U.S. Patent No. 7,051,002 (“the ’002 patent”) under the transitional program for covered business method patents on November 15, 2013.

Two weeks earlier, on November 1, 2013, SecureBuy filed two separate civil actions seeking a declaratory judgment that the claims of the ’002 patent, including at least claim 1, are invalid under 35 U.S.C. §§ 101, 102, 103, and 112.

The Board denied institution, because the AIA provides covered business method patent review proceedings shall employ all the statutory standards and procedures of a post-grant review (i.e., 35 U.S.C. §§ 321–29) except for those expressly excluded, and 35 U.S.C. § 325(a)(1) provides that the Board may not institute post-grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed.