Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 28
`Entered: March 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-000641
`Patent 8,266,432 B2
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`On March 22, 2017, a conference call was held between counsel for
`both parties, and Judges Chang, Arbes, and Ippolito. Patent Owner initiated
`the conference call to request authorization to file additional briefing.
`
`1 We exercise our discretion to issue one Order to be entered in both cases.
`
`
`571-272-7822
`
`
`
`Paper No. 28
`Entered: March 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-000641
`Patent 8,266,432 B2
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`On March 22, 2017, a conference call was held between counsel for
`both parties, and Judges Chang, Arbes, and Ippolito. Patent Owner initiated
`the conference call to request authorization to file additional briefing.
`
`1 We exercise our discretion to issue one Order to be entered in both cases.
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`Petitioner opposed, arguing that Patent Owner had sufficient opportunities to
`submit arguments. Upon consideration of the parties’ contentions presented
`during the conference call and the totality of the facts before us, we grant
`Patent Owner’s request. Specifically, pursuant to 37 C.F.R. § 42.20(d), we
`authorize both parties to file additional briefing to address the issue of
`whether U.S. Patent No. 8,266,432 B2 (“the ’432 patent”) is eligible for
`covered business method patent (CBM) review, in light of the decision
`issued by the U.S. Court of Appeals for the Federal Circuit in Secure Axcess,
`LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370 (Fed. Cir. 2017).
`On September 21, 2016, we instituted a trial in each of the instant
`proceedings. Subsequent to institution, the Federal Circuit issued a decision
`in Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), and
`a decision in Secure Axcess. In Unwired Planet, the Court held that the
`Board’s reliance on whether the patent claims activities “incidental” to” or
`“complementary to” a financial activity as the legal standard to determine
`whether a patent is a CBM patent was not in accordance with law. Id. at
`1382. In Secure Axcess, the Court held that “the statutory definition of a
`CBM patent requires that the patent have a claim that contains, however
`phrased, a financial activity element.” 848 F.3d at 1381.
`At this late juncture, Patent Owner already filed a Response
`(Paper 222), and Petitioner filed a Reply (Paper 26), in both instant
`proceedings. Both parties submitted, in their briefs, arguments concerning
`
`
`2 All citations are to CBM2016-00063, unless otherwise noted.
`2
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`the issue of CBM eligibility in view of Unwired Planet, but not Secure
`Axcess, as their briefs were filed prior to the issuance of the Federal Circuit
`decision in Secure Axcess. Paper 22, 28–29; Paper 26, 35.
`We also noted that the parties’ arguments in their briefs are directed
`solely to the “financial product or service” prong of the CBM eligibility
`inquiry—namely, whether the ’432 patent is a patent that “claims a method
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service”—not the “technological invention” exception under
`§ 18(d) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”). Paper 22, 28–29; Paper 26, 35.
`Upon inquiry, Patent Owner indicated that its request for additional
`briefing is limited to the “financial product or service” prong of the CBM
`eligibility inquiry in light of Secure Axcess, and that it was not seeking
`authorization to submit expert testimonial evidence or other evidence.
`Although Petitioner opposed Patent Owner’s request, Petitioner also
`requested additional briefing in the event that Patent Owner’s request is
`granted. Patent Owner does not oppose Petitioner’s request.
`In view of the particular facts presented in the instant proceedings, we
`determine additional briefing from both parties is warranted.
`It is hereby:
`ORDERED that, within five business days from the entry of this
`Order, Patent Owner is authorized to file a paper in each above-identified
`CBM proceeding, no more than 5 pages in length; the paper is limited to
`
`3
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`arguments concerning the “financial product or service” prong of the CBM
`eligibility inquiry in light of Secure Axcess; no other new argument and no
`expert testimonial evidence or other evidence are permitted;
`FURTHER ORDERED that, within five business days from the filing
`of Patent Owner’s submission; Petitioner is authorized to file a paper in each
`above-identified CBM proceeding, no more than 5 pages in length, to
`respond to Patent Owner’s submission; no other new argument and no expert
`testimonial evidence or other evidence are permitted; and
`FURTHER ORDERED that no reply is authorized at this time.
`
`
`
`4
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`Timothy Riffe
`FISH & RICHARDSON P.C.
`CBM36137-0007CP2@fr.com
`PTABInbound@fr.com
`
`For PATENT OWNER:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`NOVICK, KIM & LEE, PLLC
`skim@nkllaw.com
`hnovick@nkllaw.com
`slee@nkllaw.com
`
`Steven L. Ashburn
`Timothy M. Hsieh
`MH2 TECHNOLOGY LAW GROUP, LLP
`sashburn@mh2law.com
`tim@mh2law.com
`
`
`
`5
`
`
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