USPTO Cancels All Claims for Finnegan Client CRS in the Second CBM Proceeding

January 28, 2014

USPTO Cancels All Claims for Finnegan Client CRS in the Second CBM Proceeding

WASHINGTON, DC — Finnegan client CRS Advanced Technologies achieved a complete win in the second decision related to covered business method (CBM) patents issued by the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). The Board cancelled every claim that had been pending in a related district court infringement litigation. In the CBM, Finnegan challenged the patent as not meeting the requirements of 35 U.S.C. § 101 and, in August 2013, presented arguments in favor of claim cancellation in what was the second such CBM hearing before the Board.

The decision capped a decade of litigation for CRS. In 2004, Frontline Technologies, Inc. sued CRS for patent infringement on one patent. Finnegan assisted with settling the case for business reasons with a favorable license. Frontline later terminated the license and sued CRS a second time in 2006. The district court subsequently stayed the case pending a reexamination proceeding instituted by the USPTO on a petition filed by Finnegan on CRS's behalf, from which the patent emerged, heavily amended, two years later. Meanwhile, another Frontline patent issued and was asserted against CRS but, after a third party requested reexamination of that patent, Frontline granted CRS a covenant not to sue and dropped that second patent from the litigation. The case continued for three more years on the reexamined patent, allowing Finnegan to file a CBM petition on the first day that procedure became available in September 2012. The PTAB granted the petition in January 2013. The district court again stayed the case, which was then in the final stages of pre-trial submissions. The Board agreed with CRS that the claims were unpatentable in a decision issued January 21, 2014.

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