In its first precedential opinion, the Patent Trial and Appeal Board has denied  institution of a covered business method review based on a prior-filed civil suit. Except for provisions specifically excluded, the CMB statute incorporates all the statutory standards and procedures of a post-grant review.  These standards include the provision barring review if the petitioner has instituted a civil action before filing its petition for review.  35 USC § 325(a)(1).  In Securebuy, LLC v. Cardinal Commerce Corporation, No. CBM 2014-00035, petitioners filed a declaratory judgment action 2 weeks prior to filing for CBM review.  Relying on the above-cited provision of the AIA, the Board denied SecureBuy’s petition.   Despite the apparent clear language of the statute, several CBM petitions have been filed after institution of civil actions.  In each case, petitioners have argued that this section of the AIA does not apply to CBM petitions.

PTO copy of the order: http://www.uspto.gov/ip/boards/bpai/decisions/prec/cbm2014-00035_4-25-2014_325a.pdf