Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BRANCH BANKING AND TRUST COMPANY
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`
`Case CBM2013-00059
`Patent 5,949,880
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MITCHELL G. WEATHERLY, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BRANCH BANKING AND TRUST COMPANY
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`
`Case CBM2013-00059
`Patent 5,949,880
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MITCHELL G. WEATHERLY, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`Case CBM2013-00059
`Patent 5,949,880
`
`I.
`
`INTRODUCTION
`
`Branch Banking and Trust Company (“BBT” or “Petitioner”) filed a
`petition (Paper 1, “Pet.” or “Petition”) to institute a covered business method
`patent review (a “CBM review”) of claims 1–4 (the “challenged claims”) of
`U.S. Patent No. 5,949,880 (Exhibit 1001, “the ’880 patent”) pursuant to 35
`U.S.C. § 321. Maxim Integrated Products, Inc. (“Maxim” or “Patent
`Owner”) timely filed a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`II. ANALYSIS
`
`As a threshold issue, Maxim contends that the Petition should be
`denied because “the Board is statutorily barred from instituting review by 35
`U.S.C. § 325(a)(1).” Prelim. Resp. 1. Section 18(a)(1) of the Leahy-Smith
`America Invents Act (“AIA”) establishes the transitional program for
`covered business method patents as follows:
`SEC. 18. TRANSITIONAL PROGRAM FOR COVERED
`BUSINESS METHOD PATENTS.
`(a) TRANSITIONAL PROGRAM.—
`(1) ESTABLISHMENT.—[T]he Director shall issue
`regulations establishing and implementing a transitional post-
`grant review proceeding for review of the validity of covered
`business method patents. The transitional proceeding
`implemented pursuant to this subsection shall be regarded as,
`and shall employ the standards and procedures of, a post-grant
`review under chapter 32 of title 35, United States Code, subject
`to the following:
`(A) 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.
`AIA, Pub. L. No. 112-29, 125 Stat. 329 (2011). The AIA, thus, provides
`that a CBM review proceeding shall employ all the standards and procedures
`
`2
`
`
`
`Case CBM2013-00059
`Patent 5,949,880
`
`of a post-grant review under Chapter 32 of title 35 of the United States Code
`(i.e., 35 U.S.C. §§ 321–29) except for those expressly carved out (i.e., 35
`U.S.C. §§ 321(c) and 325(b), (e)(2), and (f)). Therefore, this CBM review is
`governed by the requirements of 35 U.S.C. § 325(a)(1), which states:
`(a) INFRINGER’S CIVIL ACTION.—
`(1) POST–GRANT REVIEW BARRED BY CIVIL ACTION.—A
`post-grant review may not be instituted under this chapter if,
`before the date on which the petition for such a review is filed,
`the petitioner or real party in interest filed a civil action
`challenging the validity of a claim of the patent.
`35 U.S.C. § 325(a)(1).
`On June 18, 2012, BBT filed a civil action seeking a declaration
`pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202,
`“that each and every claim of the [’880 patent] is invalid.” Ex. 2001, 7.
`BBT filed its complaint in Branch Banking & Trust Co. v. Maxim Integrated
`Products, Inc., No. 2:12-cv-00945-JFC (E.D.N.C. filed June 18, 2012) (“the
`NC DJ Action”). Id. at 1. The NC DJ Action was incorporated into In re
`Maxim Integrated Products, Inc., No. 2:12-mc-00244-NBF, MDL No. 2354
`(W.D. Pa.) (“the PA MDL”) for pretrial proceedings by order of the Judicial
`Panel on Multidistrict Litigation. Ex. 1005, 6–7, n.2. In counterclaims filed
`in the PA MDL, Maxim alleges that BBT infringes claims of the ’880 patent.
`Id. at 9–10. The evidence of record establishes that the NC DJ Action is
`ongoing. Based on our review of the record before us, we understand that
`trial of BBT’s request for a declaration of invalidity of claims of the ’880
`patent and Maxim’s counterclaim for infringement will occur, if at all, in the
`United States District Court for the Eastern District of North Carolina. Id.
`at 3.
`
`3
`
`
`
`Case CBM2013-00059
`Patent 5,949,880
`
`Section 325(a)(1) precludes the Board from instituting a review of a
`challenged patent when the petitioner filed a civil action challenging the
`validity of a claim of the patent. 35 U.S.C. § 325(a)(1). BBT is such a
`petitioner.1 We conclude that under 35 U.S.C. § 325(a)(1), BBT’s filing of
`the NC DJ Action almost 15 months before filing its Petition on September
`16, 2013, bars us from instituting a CBM review of the ’880 patent.
`Therefore, we deny the Petition in all respects. We express no opinion
`regarding the likelihood that BBT would prevail in establishing that any of
`the challenged claims are unpatentable for the reasons set forth in the
`Petition.
`
`III. ORDER
`
`For the reasons given, it is:
`ORDERED that the Petition is DENIED.
`
`
`1 We also note that Rule 42.304(a) requires that BBT demonstrate in the
`Petition that it “meets the eligibility requirements of § 42.302.” 37 C.F.R.
`§ 42.304(a). Rule 42.302(b) specifies that a “petitioner may not file a
`petition to institute a covered business method patent review of the patent
`where the petitioner, . . . is estopped from challenging the claims on the
`grounds identified in the petition.” 37 C.F.R. § 42.302(b). BBT asserts that
`“[p]ursuant to §§ [42.304 and 42.302(b)], Petitioner, Petitioner’s real party
`in interest, and Petitioner’s privies are not estopped from challenging the
`claims on the grounds identified in this Petition.” Pet. 80. Nonetheless,
`BBT does not address whether its filing of the NC DJ Action precludes the
`Board under 35 U.S.C. § 325(a)(1) from instituting a covered business
`method review of the ’880 patent. The evidence of record establishes that
`BBT filed the NC DJ Action in which it challenged the validity of a claim of
`the ’880 patent before it filed the Petition and that the NC DJ Action is
`ongoing.
`
`4
`
`
`
`Case CBM2013-00059
`Patent 5,949,880
`
`PETITIONER:
`
`J. Steven Baughman
`Leslie M. Spencer
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`leslie.spencer@ropesgray.com
`
`PATENT OWNER:
`
`Kenneth Weatherwax
`Parham Hendifar
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`weatherwax@glwllp.com
`Parham@glwllp.com
`
`5
`
`
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