Patent Filings Roundup: Fintiv Dooms CBMs; Canadian Process Ends IPR; New and Old NPE Campaigns Filed

Patent Trial and Appeal Board (PTAB) filings are way down for the third week in a row, with 15 inter partes reviews (IPRs) and two post grant reviews (PGRs) filed compared to 59 district court patent filings. A few big-ticket suits were renewed—the older capital-backed Fundamental Innovation Systems International [Centerbridge Partners] and Solas Oled [Magentar Capital] suits saw new defendants—and some well-known smaller ones soldiered on. The aggressive EcoFactor competitive suit rolls on in the ITC and now across Texas, with a number of new suits filed by the IoT company. There’s a new suit by a Quest Patent Research Corp subsidiary and a smattering of other campaign-adds listed below; and it’s worth noting that DynaIP subsidiaries have exploded with litigation these past few months, with the forecast promising more rain on the horizon.

Boom Goes the CBM: It’s perhaps a procedural nicety, but the pending instituted covered business method (CBM) proceedings against Boom! Payments, Inc. by Stripe and Shopify over three patents were all terminated (rather than rendered as “adverse judgment” subject to estoppel) after the Federal Circuit affirmed a 101 ruling against all the claims of the patents.  The Board reasoned that the Federal Circuit had done and said as much in the Apple v. VoIP-PAL appeal and found (effectively) that rendering a final written opinion on other types of patentability (or for that matter, 101) would be effectively moot at this point. The patents, 9,235,857, 8,429,084, and 10,346,840, are directed to computer-implemented tracking of local payments.

Section 101 District Court Decision Dooms CBM Petition Under Fintiv:  In one of the last CBMs to be filed before the sunset, Marketdial, Inc. v. Applied Predictive Technologies, Inc., CBM2020-00025, the Board has found that the Fintiv considerations under 314(a) apply to the PGR-specific statute (something they had found previously), and that here, where the District court recently ruled on an early Section 101 patent eligibility motion and found the claims challenged as lacking patentable subject matter, the Board need not proceed with a challenge.

Petition Doomed by Canadian Service-of-Process: The PTAB, relying on their precedential GoPro case, denied a petition as time-barred where there was (apparent) service through the Hague Convention in a foreign country. See Ecometal Inc. v. Terves, LLC, IPR2020-01621, Paper 9 (Mar. 1, 2021). Under the Board’s own precedent, “[s]erved with a complaint alleging infringement” means “presented with a complaint or delivered a complaint in a manner prescribed by law.” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 9 (Aug. 23, 2019) (precedential).  The Board parsed Federal Rule of Civil Procedure 4—in particular, 4(f)(1)—as indicating “an individual ‘may be served at a place not within any judicial district of the United States’ ‘by any internationally agreed means of service that is reasonably calculated to give notice, such as those authorized by the Hague Convention.’” Here, the Canadian petitioners, Ecometal and Mr. Yuan, were served with a copy of the complaint and a summons by the Canadian authorities “in conformity with the Hague Convention” in August 2019, prior to the year-later September 11, 2020 filing date. While the documents in question were lacking details (the name of the server of process, for instance), the Board reasoned that the Hague Convention required none of those details, and found such service sufficient. The Board found notable that the plaintiff never challenged the sufficiency of process for that action, though they did move to dismiss it on other grounds.

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