In Allscripts Healthcare Solutions, Inc. v. MyMedicalRecords, Inc., a Patent Owner requested termination of an instituted CBM as moot based on a final judgment in an underlying District Court case. CBM2015-00022, Paper 20 (August 26, 2015). The PTAB, in refusing to terminate the CBM, discussed its rationale and provided guidance for future termination requests.
Prior to institution of the CBM, the Patent Owner advised the Board that a District Court had determined that each of the challenged claims is directed towards patent-ineligible subject matter under § 101, and that the District Court decision was on appeal to the Federal Circuit. After the Board instituted trial for all challenged claims on §§ 101, 102, and 103 grounds, the Patent Owner filed an Updated Mandatory Notice informing the Board that the Federal Circuit had issued a Mandate, based on a voluntary motion by the Patent Owner, dismissing the appeal.
The Patent Owner then argued that the Board should terminate the CBM as “moot” because “[t]here is nothing left for the Board to decide,” in view of the finality of the District Court decision. The Petitioner disagreed and argued that terminating the CBM without a final written decision would be inappropriate.
The Board refused to terminate the CBM as moot and issued a Final Written Decision finding all challenged claims unpatentable under § 101. Because the instituted CBM was past a “preliminary stage,” the Board ultimately decided that termination of the trial was “not appropriate.”
In discussing its rationale for declining to terminate the CBM, the Board stated that the instituted CBM was a “distinct and independent” matter from the appeal of the District Court’s patent-ineligibility determination. The Board noted that the relief sought by the Petitioner in the CBM was beyond that sought from the District Court, in that the CBM would result in the Director issuing and publishing “a certificate cancelling any claim of the patent finally determined to be unpatentable.”
The Board further noted that because the CBM was instituted prior to dismissal of the appeal, this case was distinguishable from those involving the reopening of a final judgment.
This decision illustrates that the PTAB considers an instituted trial as independent from an appealed District Court matter. More importantly, this decision shows that the Board will reach a judgment on the merits of an instituted trial even if a final District Court judgment is reached after institution of the trial.