Wednesday, September 9, 2015

CBM Standing Does Not Require Continuing Controversy

The Board denied the patent owner's post-institution request to file a motion to terminate the review. "In related litigation, [Credit Acceptance Corp. v. Westlake Services, LLC, CV 13-01523 SJO (C.D. Cal.)], the district court granted Patent Owner’s motion to voluntarily dismiss with prejudice, concluding that no case or controversy remained after Patent Owner gave a covenant not to sue Petitioner for infringement of the ’807 patent. According to Patent Owner, we have the discretion, under 37 CFR § 42.72, to terminate a proceeding 'where appropriate.' Patent Owner seeks authorization to file a motion to terminate this proceeding, arguing that, after giving its covenant not to sue, there is no case or controversy sufficient to maintain this proceeding. . . . In this case, standing is conferred by AIA Section 18(a)(1)(B). This statute places a restriction on who may 'file' a petition for covered business method patent review, limiting it to a person who 'has been sued for infringement of the patent or has been charged with infringement under that patent.' The statute is unambiguous. By its terms, it specifies a requirement evaluated at the time a petition is filed. Patent Owner points us to no language in the statute, and we see none, imposing a requirement of a continuous infringement controversy between the parties in order to maintain a proceeding."

Petition for Covered Business Method Patent Review by Westlake Services, LLC d/b/a Westlake Financial Services, CBM2014-00176 (PTAB September 3, 2015, Order) (McKone, APJ)

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