One key difference between IPR and CBM review is the availability of prior art. Certain prior arg cannot be raised in a CBM review. In what has been described as an “ambiguous” provision which has wording that presents “a puzzle,” See Donald S. Chisum, America Invents Act of 2011: Analysis and Cross-References at 112 (Dec. 5, 2011) (available at http://www.chisum.com/wp-content/uploads/AIAOverview.pdf) (last visited Nov. 27, 2012), section 18(a)(1)(C) provides

  1. A petitioner in a transitional proceeding who challenges the validity of 1 or more claims in a covered business method patent on a ground raised under section 102 or 103 of title 35, United States Code, as in effect on the day before the effective date set forth in section 3(n)(1), may support such ground only on the basis of—
    1. prior art that is described by section 102(a) of such title of such title [sic] (as in effect on the day before such effective date); or<
    2. prior art that—
  • discloses the invention more than 1 year before the date of the application for patent in the United States; and
  • would be described by section 102(a) of such title (as in effect on the day before the effective date set forth in section 3(n)(1)) if the disclosure had been made by another before the invention thereof by the applicant for patent. 

    This provision appears to allow petitioners to rely on prior art under section 102(a) as it existed before the passage of the AIA, and then creates another category of prior art in place of sections (b) through (g).

This new category of prior art appears to operate, at least in part, as a substitute for pre-AIA § 102(b) because it refers to prior art that “discloses the invention more than 1 year before the date of the application for patent in the United States.” However, as one commentator has noted, subsection (ii)(I) refers to “the date of application for patent” instead of the “effective filing date” of a claimed invention, even though the AIA defines the latter term expressly. SeeManzo, et al., PATENT REFORM 2011 – THE LEAHY-SMITH AMERICA INVENTS ACT: COMMENTARY AND ANALYSIS 101 (2011). Applying the principle that different words in the same enactment typically carry different meanings, the phrase “before the date of application” may be interpreted to mean that the prior art only need to predate the filing date (rather than an earlier filing date) of the application for the pa-tent being challenged. However, this interpretation may be viewed as being inconsistent with 35 U.S.C. § 120, which, as a matter of law treats later-filed application as having “the same effect” as the earlier-filed application if the requirements of section 120 are complied with.

Subsection (ii) then adds an additional requirement when it refers back to section 102(a) and states that the prior art must also be covered by pre-AIA section 102(a) if the disclosure had been made by another before the invention thereof by the applicant for patent. This provision might be read to exclude prior art under § 102(e) from being used in a business method patent review. Such an interpretation, if intended by Congress, is not stated anywhere in the legislative history and does not appear to have a reasoned basis. While the PTO’s interpretation of this pro-vision in the rules is not particularly helpful in terms of bringing clarity to the meaning of § 18(a)(1)(C) because it mirrors the language of the statute, the PTAB has concluded that this limitation excludes references that are prior art under § 102(e).

Recently, the Board authorized trial in connection with a CBM review based on a reference that was prior art only under pre-AIA 35 U.S.C. 102(e). After trial was instituted, the Board realized that the rules and statute appear to preclude reliance on that particular reference in a CBM review. Neither the Petition nor the Patent Owner’s Preliminary Response recognized that Tengel does not support a ground to challenge patentability under AIA § 18(a)(1)(C), given its filing and issue dates relative to those of the [patent at issue]. AIA § 18(a)(1)(C) requires that a challenge to a claim in a covered business method patent be supported by prior art that is (i) described by pre-AIA 35 U.S.C. § 102(a) or (ii) (I) that discloses the invention more than 1 year before the date of application for patent in the United States and (II) would be described by pre-AIA 35 U.S.C. § 102(a) if the disclosure had been made by another before the invention thereof by the applicant for patent. Although Tengel is prior art under 35 U.S.C. § 102(e), it does not meet the criteria to support a challenge under AIA § 18(a)(1)(C).” The Board gave the parties the option to proceed under § 101 and § 103, but since the patent owner objected, the Board determined it would proceed only under § 101 and issued a shorter schedule given the narrowing of the issues. See Meridianlink, Inc. v. DH Holdings, LLC, CBM2013-00008, Paper 24 (Sept. 12, 2013).