Takeaway: The date of later-filed claim amendments is not relevant to the determination of an effective filing date for purposes of establishing eligibility for post-grant review.

In its Decision, the Board, denying institution, found that Petitioner “[had failed] to demonstrate that that the ’638 patent is eligible for post-grant review.” The ’638 patent “relates to an automated system for real-time classification of pitches thrown by a pitcher in the course of a baseball game.”

Post-grant review is only available to “patents subject to the first-inventor-to-file provisions of the AIA,” which include only patents issuing from “applications that have an effective filing date on or after March 16, 2013.” Effective filing date is defined as either:

(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or

(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).

35 U.S.C. § 100(i)(1) (emphasis added). Because the ’638 patent does not cross-reference any application, subparagraph (B) is not applicable. Thus, subparagraph (A) applied, “meaning that the effective filing date of the application for the ’638 patent is its actual filing date of January 29, 2010, well before the March 13, 2013 starting point for eligibility of post-grant review.”

Petitioner argued, nevertheless, that the effective filing date is actually September 23, 2013 based on claim amendments that were submitted on that date. The Board disagreed. “Nowhere does the statute contemplate that the effective filing date might depend on the date of a later-filed amendment to a claim.” Thus, the Board found that as a matter of law, if a claim is not entitled to an earlier filing date, “then the effective filing date is the actual filing date of the application (per subparagraph (A)), regardless of whether a later-filed amendment to a claim finds sufficient support in the application.”

Because the effective filing date of the ’638 patent was before March 16, 2013, the ’638 patent was not eligible for post-grant review. Thus, the Board denied the Petition.

Front Row Tech., LLC v. MLB Advanced Media, L.P., PGR2015-00023

Paper 8: Decision Denying Institution of Post-Grant Review

Dated: February 22, 2016

Patent: 8,876,638 B2

Before: Richard E. Rice, Scott A. Daniels, and Carl M. DeFranco

Written by: DeFranco