Through the PTAB Looking Glass: Post-Alice Supplemental Papers

The Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, __ U.S. __, 2014 WL 2765283 (U.S. June 19, 2014) has prompted requests for supplemental briefing in several Covered Business Method Review proceedings involving 35 U.S.C. § 101. As seen below, the PTAB has considered these requests on a case-by-case basis with a variety of outcomes depending on the stage of the proceeding.

For example, in CBM2013-00049, CBM2013-00050, and CBM2013-00051, the Board approved the parties’ modified schedule, allowing each party a five-page supplemental response to address Alice following Petitioner’s Reply. Paper 35 (June 24, 2014). Petitioner’s Reply was due three days after the telephone conference.

With different timing in CBM2013-00055, the parties had agreed that both sides submit a supplemental 5-page brief to address the Alice decision. The Board, however, allowed only the Patent Owner to do so (“solely directed to the impact of the Alice decision on the 35 U.S.C. § 101 ground of unpatentability”). As Patent Owner recently filed its Opposition, the Board felt additional briefing by Patent Owner was appropriate and “would not unduly delay the proceedings.” Paper 24 (July 3, 2014). Petitioner’s Reply was not due for several months.

In CBM2013-00042, Patent Owner sought additional briefing to address the Alice decision, which Petitioner opposed. As Petitioner’s Reply had been filed, the Board allowed Patent Owner to submit a 5-page sur-reply to discuss Alice’s impact on the proceeding, and Petitioner to submit a 2-page sur-sur-reply. Paper 33 (July 11, 2014).

In CBM2013-00024, Patent Owner requested that the parties file memoranda addressing Alice. Petitioner opposed, arguing that the law had not changed. With an oral hearing scheduled for mid-July, the Board authorized each party to simultaneously file a 5-page paper to discuss “how [Alice] changed, affected, or left alone, the pre-existing law” by July 7. Paper 37 (June 24, 2014).

In CBM2014-00008, Petitioner requested authorization to file a second request for rehearing of the Board’s Decision to Institute to address 35 U.S.C. § 101 grounds for certain claims in view of the Alice decision. The Board denied the request as late; found no showing of good cause for a second Request for Rehearing─insufficient explanation of how the Board “overlooked or misapprehended anything based on the Alice decision . . . . ;” and invited Petitioner to file a second CBM petition, if not statutorily barred. Paper 40 (July 1, 2014).