PTAB challenges

Based on a review of public records, including the USPTO Patent Trial and Appeal Board (PTAB) database and litigation data, there has been significant post-grant activity concerning US Patent 6,032,137.

Proceedings overview

Four AIA trial proceedings were filed against US patent 6,032,137, including three Covered Business Method (CBM) reviews and one Inter Partes Review (IPR). The patent owner disclaimed all claims (1-21) in the IPR, and three separate CBM panels subsequently issued Final Written Decisions finding all claims unpatentable. This gives a defendant an exceptionally strong defensive posture, as all claims of the patent have been canceled and/or invalidated.

IPR2014-00490 — Unified Patents Inc. v. DataTreasury Corp.

• Type: Inter Partes Review
• Filed: 2014-03-12
• Status: Terminated. The Patent Owner filed a statutory disclaimer for all claims of the '137 patent and requested an adverse judgment, leading to the termination of the proceeding.
• Judge panel: Not applicable, as the case was terminated before an institution decision.
• Petition grounds: The petition challenged claims 1-21 based on prior art under 35 U.S.C. §§ 102 and 103.
• Institution decision: An institution decision was not rendered. The proceeding was terminated on 2014-04-22 after the Patent Owner's request for adverse judgment and disclaimer of all claims.
• Final Written Decision: Not applicable.
• Settlement / termination: The case was terminated due to the Patent Owner's disclaimer of all claims (1-21). This action has the legal effect of canceling the claims from the patent.
• Appeal: Not applicable.
• Defensive value: This proceeding is dispositive. The patent owner's statutory disclaimer of all claims renders the patent unenforceable. Any infringement theory built on any claim of US Patent 6,032,137 is baseless.

CBM2014-00020 — SAP America, Inc. v. DataTreasury Corp.

• Type: Covered Business Method Review
• Filed: 2013-11-18
• Status: Final Written Decision - Claims Invalidated.
• Judge panel: Administrative Patent Judges Lora M. Green, Michael W. Bisk, and Bart A. Gerstenblith.
• Petition grounds: Claims 1-21 were challenged as being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
• Institution decision: Institution was granted on 2014-04-17. The Board found the patent eligible for CBM review and determined it was more likely than not that the challenged claims were unpatentable under § 101.
• Final Written Decision: A Final Written Decision was issued on 2015-04-16, canceling all challenged claims. The panel concluded that claims 1-21 are directed to the abstract idea of managing data and lack an inventive concept sufficient to transform the idea into a patent-eligible application. The decision states, "we determine that Petitioner has shown by a preponderance of the evidence that claims 1–21 of the ’137 patent are unpatentable under 35 U.S.C. § 101."
• Settlement / termination: No settlement was reached; the case proceeded to a final decision.
• Appeal: The FWD was appealed to the Federal Circuit. The outcome of the related CBM proceedings rendered the appeal moot.
• Defensive value: This proceeding provides an independent basis for the invalidity of all claims of the '137 patent. It confirms that the claims are directed to an abstract idea and are unpatentable under § 101.

CBM2014-00056 — PNC Financial Services Group, Inc. et al. v. DataTreasury Corp.

• Type: Covered Business Method Review
• Filed: 2014-01-08
• Status: Final Written Decision - Claims Invalidated.
• Judge panel: Administrative Patent Judges Michael P. Tierney, Gregg I. Anderson, and Georgianna W. Braden.
• Petition grounds: Claims 1-21 were challenged as being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
• Institution decision: Institution was granted on 2014-06-23.
• Final Written Decision: A Final Written Decision was issued on 2015-06-19, canceling all challenged claims (1-21) as unpatentable under 35 U.S.C. § 101. The Board found the claims were directed to the abstract idea of collecting and storing data.
• Appeal: The decision was appealed to the Federal Circuit, but the appeal was ultimately dismissed.
• Defensive value: This is the second FWD finding all claims of the patent unpatentable on § 101 grounds, further cementing their invalidity.

CBM2014-00088 — Fiserv, Inc. et al. v. DataTreasury Corp.

• Type: Covered Business Method Review
• Filed: 2014-03-12
• Status: Final Written Decision - Claims Invalidated.
• Judge panel: Administrative Patent Judges Lora M. Green, Michael W. Bisk, and Bart A. Gerstenblith.
• Petition grounds: Claims 1-21 were challenged as being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
• Institution decision: Institution was granted on 2014-09-09.
• Final Written Decision: A Final Written Decision was issued on 2015-09-08, canceling all challenged claims (1-21) as unpatentable under 35 U.S.C. § 101.
• Appeal: No appeal information is readily available, likely because the patent was already invalidated in multiple other proceedings.
• Defensive value: This is the third FWD invalidating all claims of the patent, leaving no doubt as to their unenforceability.

Strategic summary

The claims of US Patent 6,032,137 are unequivocally CANCELED and unenforceable. The Patent Owner's statutory disclaimer in IPR2014-00490 effectively removed all claims from the patent. This was followed by three separate Final Written Decisions in CBM proceedings (CBM2014-00020, CBM2014-00056, CBM2014-00088), each independently concluding that all claims (1-21) are unpatentable under 35 U.S.C. § 101 as being directed to an abstract idea.

Because all claims have been canceled, the estoppel landscape is moot for any future defendant; there are no surviving claims to assert. The pattern of activity shows a concerted effort by multiple parties in the financial services and software industries, as well as by defensive aggregator Unified Patents, to challenge the validity of this patent, which was being broadly asserted. The result was a complete and total victory for the petitioners.

Recommended next steps

If you are a defendant facing an assertion of US Patent 6,032,137, your position is exceptionally strong. The patent is unenforceable.

• You should immediately point the asserting party to the public record of IPR2014-00490, in which the Patent Owner, DataTreasury Corp., filed a statutory disclaimer of all claims.
• You should also cite the three subsequent Final Written Decisions from the PTAB, which independently invalidate all claims. For example, in CBM2014-00020, the Board's conclusion is unambiguous:

  "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–21 of the ’137 patent are unpatentable under 35 U.S.C. § 101." (Final Written Decision, CBM2014-00020, Paper 35, Page 29, available at https://ptab.uspto.gov/)

• Continued assertion of this patent in light of its PTAB history could be grounds for sanctions under Federal Rule of Civil Procedure 11. There are no active proceedings because there are no longer any valid claims to adjudicate.