Cases & Deals

SAS and IBM challenge patentability of third party patent claims in USPTO reexamination proceedings

Clients International Business Machines Corporation and SAS Institute Inc.

Jones Day represented SAS Institute, Inc. and International Business Machines Corporation ("IBM") in two patent reexamination proceedings before the USPTO Patent Trial & Appeal Board challenging a software-related patent that had been asserted in a lawsuit filed by InvestPic, LLC. Upon filing of the inter partes and ex parte reexaminations in the USPTO, the parallel district court litigation was stayed. The InvestPic patent is generally directed to a system for analysis, display, and dissemination of financial information using resampled statistical methods. During the two reexaminations, SAS and IBM provided the USPTO with prior art patents and publications that had not been considered during the initial examination of the InvestPic patent.

InvestPic appealed adverse reexamination decisions from the Patent Trial & Appeal Board to the U.S. Court of Appeals for the Federal Circuit. On March 10, 2016, the Federal Circuit reversed in part, vacated in part, and remanded the two reexaminations to the Patent Office for further proceedings. In July 2016, InvestPic asked the Delaware district court to lift the stay and resume the litigation. In an order dated December 29, 2016, the Delaware court declined to lift the stay of litigation against IBM and SAS. The remanded patent reexaminations were completed at the Patent Office in late 2017, with the Patent Office issuing two reexamination certificates.

Meanwhile, in a separate litigation matter initiated in September 2016 by SAP against the patent owner InvestPic, the U.S. District Court for the Northern District of Texas ruled in May 2017 that the original claims of the InvestPic patent are not valid under 35 U.S.C. 101. InvestPic appealed that adverse judgment to the Federal Circuit. On August 2, 2018, the Federal Circuit issued an opinion confirming that all original claims of the InvestPic patent are invalid under 35 U.S.C. 101, and additionally finding that all amended claims in the two InvestPic reexamination certificates are similarly invalid under 35 U.S.C. 101. InvestPic filed a petition for U.S. Supreme Court review of the Federal Circuit's invalidity decision, which the Supreme Court denied.

On August 30, 2019, the District of Delaware entered a stipulated dismissal with prejudice of all claims asserted by InvestPic against IBM and SAS, thereby ending the litigation.

InvestPic LLC v. Algorithmics (US) Inc., et al. and InvestPic LLC v. SAS Institute Inc., Nos. 1-10-cv-01028, 1-12-cv-00603 (D. Del.) (Judge Andrews); Inter Partes Reexamination No. 95/001,939 (PTAB); Ex Parte Reexamination No. 90/012,366 (PTAB)

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