America Invents Act
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`POST-GRANT PROCEEDINGS
`BRIDGING THE GAP
`GLOBAL HARMONIZATION
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`PATENT APPLICANT CENTRAL
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`JUN 18 2013
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`AIA DID YOU KNOW?
`POST-GRANT
`PROCEEDINGS
`
`CAN A DECLARATORY JUDGMENT
`PLAINTIFF FILE A CBM PETITION?
`Author: Elizabeth A. Laughton
`Editor: Kathleen A. Daley
`
`While the Transitional Program for Post Grant Review of Covered Business Method (“CBM”)
`proceedings and Post Grant Review (“PGR”) proceedings are governed by many of the same
`statutory and regulatory provisions, several distinctions exist between them. One of those
`appears to be whether a declaratory judgment plaintiff in a corresponding civil suit may file a
`petition.
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`The statute and regulations on PGR make clear that a declaratory judgment plaintiff may not
`file a petition for PGR. In particular, 35 U. S. C. § 325(a)(1) states that a “post-grant review
`may not be instituted . . . if, before the date on which the petition for such review is filed, the
`petitioner or real party in interest filed a civil action challenging the validity of a claim of the
`patent. ” 37 C. F. R. § 42. 201(a), which governs “[w]ho may petition for a post-grant review,”
`mirrors this language.
`
`By contrast, 37 C. F. R. § 42. 302(a), which governs “[w]ho may petition for a covered
`business method patent review,” provides:
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`A petitioner may not file with the Office a petition to institute a covered business method
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`Maxim Exhibit 2003 - PNC/JPMC, CBM2014-00038 - Page 2003-001
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`Can a Declaratory Judgment Plaintiff File a CBM Petition? - AIA Blog - Finnegan
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`patent review of the patent unless the petitioner, the petitioner’s real party-in-interest, or
`a privy of the petitioner has been sued for infringement of the patent or has been charged
`with infringement under that patent. Charged with infringement means a real and
`substantial controversy regarding infringement of a covered business method patent
`exists such that the petitioner would have standing to bring a declaratory judgment action
`in Federal court.
`
`(Emphasis added). This regulation does not preclude a declaratory judgment plaintiff from filing
`a petition for CBM.
`
`Of note, the AIA, in section 18(a)(1) provides that CBM proceedings “shall be regarded as, and
`shall employ the standards and procedures of, a post-grant review” subject to certain
`exceptions. Section § 325(a) of the statute, which provides that declaratory judgment plaintiffs
`may not file for PGR, is not among the listed exceptions.
`
`In contrast, the USPTO’s rules covering CBMs do except the rule precluding a declaratory
`judgment plaintiff from filing a PGR. Specifically, 37 C. F. R. 42. 300(a) provides that a
`“covered business method patent review is a trial subject to the procedures set forth in subpart
`A of this part and is also subject to the post-grant review procedures set forth in subpart C
`except for §§42. 200, 42. 201, 42. 202, and 42. 204. ” (emphasis added). As a result, the
`USPTO’s rules do not bar a declaratory judgment plaintiff from filing a CBM petition. The
`USPTO has commented that it believes “[t]his is consistent with section 18(a)(1) of the AIA,
`which provides that the transitional proceeding shall be regarded as, and shall employ the
`standards and procedures of, a post-grant review with certain exceptions. ” See 77 Fed. Reg.
`48693.
`
`To date, only one DJ plaintiff has filed a CBM petition. See SAP America, Inc. v. Pi-Net
`International, Inc., CBM2013-00013 (filed Mar. 22, 2013). The patent owner has not yet filed a
`preliminary response in that proceeding, nor has the USPTO issued a decision regarding grant.
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`Tagged CBM , Covered Business Method , declaratory judgment , plaintiff , Post Grant
`Review , PRG
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`http://www.aiablog.com/post-grant-proceedings/can-a-declaratory-judgment-plaintiff-file-a-cbm-petition/[12/23/2013 3:40:42 PM]
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