PTAB Decisions on Instituting CBM Review Are Based Only around the Petition and Preliminary Response – American Express Company v. Signature Systems, LLC
Addressing whether a petitioner seeking a covered business method (CBM) review could file an answer towards the patent owner’s preliminary response, the Patent Trial and Appeal Board (PTAB or Board) clarified within the negative, explaining that the decision to institute a CBM review relies only upon the data and claims presented within the petition. American Express Company v. Signature Systems, LLC, Situation No. CBM2015-00153 (PTAB, March. 23, 2015) (Tierney, APJ).
In June of 2015, American Express filed a petition requesting CBM overview of a patent associated with a technique and system for electronic exchange of reward points. The patent owner filed an initial response quarrelling the institution of the CBM review is moot since the claims where the papers are based happen to be either amended or cancelled, as suggested for a Notice of Intent to Issue Ex Parte Reexamination Certificate that issued in September of 2015.
American Express requested to file for supplemental briefing around the mootness issue elevated within the preliminary response. American Express contended the amended claims would likewise be unpatentable and requested to file for an answer brief that need considering through the PTAB during the time of institution. The patent owner opposed the request, quarrelling the issues are fully briefed which the Board can render a choice on whether or not to institute a CBM in line with the petition and preliminary response. Further, the patent owner contended when the Board enables American Express to file for an answer brief, then your patent owner should fairly be afforded an chance to file for a sur-reply.
Based on 35 U.S.C. § 324(a), a CBM review ought to be implemented if “the information presented within the petition…, if similarly info isn’t rebutted, would show it is more probably these days that a minimum of one of the claims challenged within the papers are unpatentable.” (Emphasis added.) The Board construed § 324(a) to imply that decisions on if you should institute a CBM review are based only around the petition and also the preliminary response, if your are filed. Accordingly, the Board denied American Express’s request additional briefing.
Practice Note: Within this situation the patent owner beat American Express towards the PTO, declaring ex parte re-study of the patent under consideration three several weeks just before American Express requesting inter partes review of the identical patent. By so doing, the patent owner might have additional control within the supplemental examination process, which could yield cost and proper advantages.