If this post is going to sound personal, that’s because it is. Here is some background. The Congress enacted American Invents Act (AIA) in 2011, during my last year of law school. The AIA was the biggest overhaul of the United States patent system since the Patent Act of 1952. The most significant impact of the AIA was the emergence of three new ways to challenge the validity of a patent: Inter Partes Review (IPR), Covered Business Method (CBM) Review, and Post Grant Review (PGR). These three new proceedings went live on September 16, 2012. During the first year, CBM proceedings quickly became the most lethal of the three–every filed petition resulted in invalidated patent claims. This was about to change.
Ready for Battle
In August 2013, I remember finishing my morning workout when I received an email from the managing partner Anton Hopen. Our client’s patent was under attack. An adversary filed a CBM petition challenging validity of a key patent in our client’s portfolio. Anton told me to prepare for battle. I was ready. I hit one last set, showered, and sped to the office.
The next three months were brutal. CBMs were still largely an uncharted territory. I spent countless late nights at the University of South Florida library researching case law, leaving no stone unturned. Sleep was optional, winning was not.
Making History
While writing the Preliminary Response to the CBM Petition, I felt the weight of the world on my shoulders. The managing partner of the law firm I just joined put his trust in me–a young associate–to win a case of monumental importance. The client whose patent we were defending depended on me. Losing was not an option, regardless of the CBM ominous history and unfavorable odds.
It took three months to write the response to the petition. Our approach had surgical precision. Unlike almost every CBM defendant before us, we did not argue that the patent did not pertain to a financial method. Instead, we took the road less traveled, focusing on the actual legal merits of the case. Our strategy paid off.
After filing our response, we waited three long months for the PTAB’s decision. Finally, the judgment day arrived. I still remember the adrenaline rush of receiving the institution decision. My heart was beating so fast, I couldn’t read the analysis. I skipped the entire opinion and went directly to the last page. Through the tunnel vision and over the deafening heartbeat I read the two most coveted words: “INSTITUTION DENIED.” WE WON!!!
I remember Anton walking into my office with a bottle of French wine and a celebratory handshake. We made history. Our client’s patent–which, by the way, Anton himself drafted and prosecuted–was one of the first to survive a CBM review with every claim affirmed as valid. Later, that patent became a basis for a multi-million dollar lawsuit, and we successfully defended its validity through two more IPRs.
Smith & Hopen’s Covered Business Method Legacy
Although we enjoyed many victories, that CBM victory is still the sweetest. Our CBM strategy received accolades from numerous prestigious legal publications, including Law 360, and paved the road for other patent holders to protect their patents. When the Congress implemented the CBM review, this proceeding was intended to be transitional. This week, on September 15, 2020, CBM proceedings will sunset for good. I am very proud of the legacy that Smith & Hopen cemented in the CBM history.
