By Scott A. McKeown
| September 17, 2012
First Covered Business Method (CBM) Challenges & Inter Partes Review Petitions Filed
The new Patent Trial & Appeal Board (PTAB) web portal, known as the Patent Review Processing System (PRPS) went live at 12:01AM Sunday morning. At the time of this writing, 7 petitions for Inter Partes Review (IPR) have been filed, as well as 4 petitions for Covered Business Methods (CBM). Another group of petitions will be filed over the next several days.
Of the filings I am able to discuss, the IPR petition of Macauto USA challenging U.S Patent 6,422,291 (assigned to Bos Gmbh) is of interest from a standing perspective (filing here). The parent company of the petitioner, Macauto Taiwan, was first sued by Bos GmBh on the '291 Patent back on April 7, 2011. However, the Bos complaint was voluntarily dismissed on November 3, 2011. Apparently, jurisdiction was at issue in the litigation dispute and it is unclear if service of the complaint was ever perfected. The time of service of the complaint is key since the April date would take Macauto USA (assuming privity with Macauto Taiwan) outside the 12 month window for IPR. One would expect that Bos will explore these issues, if applicable, in their preliminary response.
Details on the previous litigation dispute can be found in the May 2012 complaint filed against Macauto USA. (here)