PTAB challenges

Based on the public record, US patent 5,910,988 has been the subject of multiple Patent Trial and Appeal Board (PTAB) proceedings, primarily under the transitional Covered Business Method (CBM) review program. These proceedings have significantly impacted the patent's enforceability.

Proceedings overview

There have been at least five PTAB proceedings filed against US patent 5,910,988, including three CBMs that resulted in Final Written Decisions invalidating claims and two IPRs where institution was denied. For a defendant, the bottom line is that all claims of this patent (1-8) have been found unpatentable and canceled in multiple CBM proceedings, a decision affirmed by the Federal Circuit. Any infringement demand citing this patent is based on claims that are no longer valid.

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CBM2014-00021 — SAP America, Inc. v. DataTreasury Corp.

• Type: Covered Business Method (CBM) Review
• Filed: 2013-11-20
• Status: Final Written Decision - Claims Canceled. This decision found all challenged claims unpatentable.
• Judge panel: APJs Michael R. Zecher, Brian J. McNamara, and Gregg I. Anderson.
• Petition grounds: Petitioner challenged claims 1–8 as being directed to patent-ineligible subject matter under 35 U.S.C. § 101, arguing they claimed the abstract idea of collecting, processing, and storing data.
• Institution decision: The trial was instituted on 2014-05-19. The Board determined the patent was a CBM patent and that it was more likely than not that at least one claim was unpatentable under § 101.
• Final Written Decision: A Final Written Decision (FWD) was issued on 2015-05-19. The Board determined that all claims, 1-8, were unpatentable under 35 U.S.C. § 101. The panel reasoned that the claims were directed to the abstract idea of collecting and storing data and that the claimed elements, viewed individually and as a whole, did not add an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The FWD states, "we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’988 patent are unpatentable under 35 U.S.C. § 101." Source: CBM2014-00021, Final Written Decision, Paper 40
• Settlement / termination: Not applicable; proceeded to final decision.
• Appeal: The decision was appealed to the Federal Circuit. In DataTreasury Corp. v. SAP America, Inc., 649 F. App'x 1007 (Fed. Cir. 2016), the Federal Circuit summarily affirmed the PTAB's decision without a written opinion.
• Defensive value: Extremely high. This proceeding, affirmed by the Federal Circuit, resulted in the cancellation of all claims of the patent. Any infringement theory built on claims 1-8 is baseless, as these claims are legally invalid.

CBM2014-00057 — Comerica, Inc. et al. v. DataTreasury Corp.

• Type: Covered Business Method (CBM) Review
• Filed: 2013-12-23
• Status: Final Written Decision - Claims Canceled.
• Judge panel: APJs Michael R. Zecher, Brian J. McNamara, and Gregg I. Anderson.
• Petition grounds: Petitioners challenged claims 1–8 as unpatentable under 35 U.S.C. § 101.
• Institution decision: The trial was instituted on 2014-06-25.
• Final Written Decision: A Final Written Decision was issued on 2015-06-25, finding claims 1-8 unpatentable under § 101 for the same reasons as in CBM2014-00021.
• Settlement / termination: Not applicable; proceeded to final decision.
• Appeal: This case was part of the consolidated appeal with CBM2014-00021 that was affirmed by the Federal Circuit.
• Defensive value: Extremely high. This proceeding provides another independent basis for the invalidity of all claims of the '988 patent.

CBM2014-00087 — U.S. Bank National Association v. DataTreasury Corp.

• Type: Covered Business Method (CBM) Review
• Filed: 2014-02-28
• Status: Final Written Decision - Claims Canceled.
• Judge panel: APJs Michael R. Zecher, Brian J. McNamara, and Gregg I. Anderson.
• Petition grounds: Petitioner challenged claims 1–8 as unpatentable under 35 U.S.C. § 101.
• Institution decision: The trial was instituted on 2014-09-04.
• Final Written Decision: A Final Written Decision was issued on 2015-08-13, finding claims 1-8 unpatentable under § 101.
• Settlement / termination: Not applicable; proceeded to final decision.
• Appeal: This case was also part of the consolidated appeal affirmed by the Federal Circuit.
• Defensive value: Extremely high. This third CBM proceeding further solidifies the conclusion that all claims of the patent are invalid.

IPR2014-00489 — The Clearing House Payments Co. L.L.C. v. DataTreasury Corp.

• Type: Inter Partes Review (IPR)
• Filed: 2014-02-27
• Status: Not Instituted - Merits.
• Judge panel: Not publicly available as trial was not instituted.
• Petition grounds: The petition challenged claims 1-8 based on prior art under 35 U.S.C. §§ 102 and 103.
• Institution decision: Institution was denied on 2014-09-04. The Board denied institution primarily because the parallel CBM proceedings (e.g., CBM2014-00021) had already been instituted on grounds that challenged all claims. The Board exercised its discretion to deny review as duplicative of the ongoing CBMs.
• Defensive value: Low. While the denial prevents this specific petitioner from re-litigating these grounds, the reason for denial was procedural and not a validation of the patent's claims. The subsequent CBM decisions rendered this proceeding moot.

IPR2014-00491 — The Clearing House Payments Co. L.L.C. v. DataTreasury Corp.

• Type: Inter Partes Review (IPR)
• Filed: 2014-02-27
• Status: Not Instituted - Procedural.
• Judge panel: Not publicly available as trial was not instituted.
• Petition grounds: The petition challenged claims 1-8 based on prior art under 35 U.S.C. §§ 102 and 103.
• Institution decision: Institution was denied on 2014-09-04 for the same procedural reasons as IPR2014-00489—the Board deemed it duplicative of the instituted CBM reviews.
• Defensive value: Low. The outcome has no bearing on the patent's validity, which was decided in the CBM cases.

Strategic summary

The PTAB history of US patent 5,910,988 is definitive. All claims of the patent have been canceled, and that cancellation has been affirmed on appeal.

CANCELED Claims: All claims, 1 through 8, are CANCELED. There are no sustained or untested claims. The patent is invalid in its entirety. The patent officially expired due to lifetime in 2017, but these invalidity decisions were rendered prior to its expiration, terminating its enforceability.

Estoppel Landscape: Estoppel is largely a moot point given that all claims have been canceled. No party can be sued for infringing this patent. For the petitioners in the denied IPRs (The Clearing House Payments Co. L.L.C. and its real parties-in-interest), IPR estoppel under § 315(e) would apply to the specific prior art grounds raised or that reasonably could have been raised. However, since the patent is invalid on other grounds (§ 101), this estoppel has no practical effect.

Pattern Signals: The flurry of CBM and IPR filings in late 2013 and early 2014 indicates that the patent owner, DataTreasury Corp., was actively asserting the patent against a wide range of financial institutions and technology companies. The petitioners in the CBMs were major players in the banking and software industries (SAP, Comerica, U.S. Bank). The filing of multiple, coordinated challenges is a common defensive strategy against broadly asserted patents. The patent owner's appeal to the Federal Circuit shows an attempt to preserve the patent, but the summary affirmance indicates the PTAB's reasoning was considered sound.

Recommended next steps

If you are a defendant facing an assertion of US patent 5,910,988, your response should be direct and firm. The patent is invalid.

• Cite the Final Written Decision in CBM2014-00021. The key language is:

  "For the reasons given, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’988 patent are unpatentable under 35 U.S.C. § 101." (CBM2014-00021, FWD, Paper 40, p. 30).

• Point out that this decision was summarily affirmed by the Court of Appeals for the Federal Circuit, making the cancellation of all claims final.
• Assert that continued pursuit of infringement claims based on this patent is frivolous and may warrant sanctions under Rule 11 of the Federal Rules of Civil Procedure.
• There are no active proceedings, as the patent has been invalidated and has since expired. All legal challenges regarding its validity have been concluded.