Global Tel*Link Corp. v. Securus Technologies, Inc.
Addressing the issue of standing, the Patent Trial and Appeal Board (PTAB or Board) denied institution of a covered business method (CBM) patent review, finding that the petitioner failed to show sufficient proof demonstrating that the standing requirement at the time it filed its petition for CBM patent review. Global Tel*Link Corp. v. Securus Technologies, Inc., Case No. CBM2014-00166 (PTAB, Feb. 6, 2015) (Arpin, APJ).
Global Tel*Link filed a petition for CBM patent review, challenging all claims of Securus Technologies’ patent relating to acquisition, access and analysis of investigative information. The Board noted a disagreement between the parties relating to the status of a related litigation in district court and instructed the petitioner to submit an updated mandatory notice. The petitioner filed the updated mandatory notice stating that the related litigation was dismissed with prejudice and that the patent owner requested reconsideration of the judgment. The petitioner noted that the district court vacated the judgment and denied the patent owner’s request for reconsideration but that the patent owner subsequently filed a second lawsuit (after the filing of the CBM petition) for infringement of the same patent.
Analyzing § 42.302, the Board found that the petitioner failed to show that it was either sued for infringement or charged with infringement at the time of filing the petition. The Board noted that the petitioner incorrectly cited the standing requirements for CBM patent review in the petition, stating that the standing requirements for inter partes review (IPR) and CBM patent review differ significantly. In the petition, the petitioner made only limited statements in support of its assertion of standing, such as descriptions relating to the status of the related litigation and a complaint filed in the related litigation. The Board concluded that the petition did not present sufficient proof that the petitioner was sued for infringement, finding that the dismissal of the related litigation was a decision on the merits made prior to the filing of the petition. The Board also concluded that the petition did not show sufficient proof that the petitioner was charged with infringement, since the dismissal of the related litigation with prejudice rendered any charge of infringement moot. The Board dismissed the petitioner’s argument that the request for reconsideration evidenced the patent owner’s continuing intent to charge the petitioner with infringement, concluding that the requested reconsideration of the dismissal only sought preservation of the patent owner’s ability to sue in the future.
The Board noted that the vacatur of the judgment dismissing the related litigation with prejudice did not alter the Board’s evaluation regarding that the patent owner’s second lawsuit was not sufficient support for standing at the time of filing the petition.