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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for October 16th, 2012

The Asymmetric Estoppel of Business Method Patent Challenges

Posted On: Oct. 16, 2012   By: Scott A. McKeown
CBM EstoppelUnsuccessful CBM Challengers Forced Back into Court?

As discussed last week, the Transitional Program for Covered Business Method Patents, or “CBM” proceeding offers significant advantages to qualifying patent challengers. While technically a Post Grant Review (PGR) proceeding, CBM is free of the Draconian estoppel provision applied to PGR. CBM estoppel is limited to those grounds actually raised in the proceeding (that is, there is no “reasonably could have raised” estoppel as in PGR).

More specifically, Sec. 18 of the America Invents Act (AIA) defines a CBM proceeding as following the “standards and procedures of PGR with the following exceptions:

Section 321(c) of title 35, United States Code, and subsections (b), (e)(2), and (f) of section 325 of such title shall not apply to a transitional proceeding.

-Section 321(c) is the nine month window employed in PGR.
-Section 325(b) precludes stays of court actions when a motion for preliminary injunction is pending.
-Section 325 (e)(2) defines PGR estoppel (”raised or reasonably could have been raised”)
-Section 325 (f) precludes PGR for certain reissue patents.

By eliminating the “reasonably could have been raised”  aspect of PGR estoppel the CBM proceeding ostensibly presents a  “free shot” proposition for patent challengers….but, unsuccessful CBM challengers may be surprised to learn that PGR estoppel will apply to the challenger in later, USPTO proceedings. Read the rest of this entry »