A covered business method patent is a “patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” 37 C.F.R. § 42.301(a). This definition requires a two-part analysis: (1) whether at least one claim of the patent involves “the practice, administration, or management of a financial product or service,” and (2) whether the patent is directed to a technological invention.” Id; see also AIA § 18(d)(1).
MotionPoint v. Transperfect Global, Inc., CBM2014-00067, Paper 7 (PTAB June 23, 2014). A covered business method review will not be instituted for claims which recite a technological invention. AIA § 18(d)(1). In determining whether a patent is for a technological invention, the Board must consider whether the claimed subject matter as a whole recites a technological feature that is novel or unobvious over the prior art, and solves a technological problem using a technical solution. 37 C.F.R. § 42.301(b). The Board was not persuaded by the determination in the related district court proceeding that the claims are novel and nonobvious. The Board determined that the claims are not directed to a technological invention because the claims, even if they are novel and nonobvious, involve only known prior art technology to accomplish the features of the claimed method.
Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00035, Paper 45 (PTAB Dec. 17, 2014). To determine whether a patent is for a technological invention, the Board considers “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b). The following claim drafting techniques typically do not render a patent a technological innovation: (a) mere recitation of known techniques, such as computer hardware, communication or computer networks, software, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device; (b) reciting the use of known prior art technology to accomplish a process or method, even if that process is novel and non-obvious; and (c) combining prior art structures to achieve the normal, expected, or predictable result of that combination.
Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 14 (PTAB June 1, 2015). The Board determined that a patent directed to database security system for protecting data against unauthorized access is eligible for CBM review. Although the claims did not recite any financial component, the Board determined that the claims are directed to “data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service.” The Board referred to an example in the specification, which describes “that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired.” Based on this example, the Board determined the patent is CBM-eligible, because banking is a financial activity.
Chicago Mercantile Exchange, Inc. v. 5th Market Inc., CBM2015-00061, Paper 9 (PTAB July 16, 2015). The Board determined that a claim reciting a computer-implemented means-plus-function limitation was directed to a special purpose computer adapted to cover a computer programmed to implement an algorithm that performs the recited function of the challenged claim. Based on this determination, the Board indicated that the challenged claim is not capable of being performed by just any generic computer that performs generic computer functions. The means-plus-function limitation encompasses the processing steps illustrated in the patent that amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function. When a special purpose computer constitutes the structure that performs the recited function, it imparts a meaningful limitation or adds significantly more to the abstract idea itself.
Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015). The Board indicated that the focus is on the claims for purposes of determining whether a patent is eligible for CBM review. A patent needs only one claim directed to a covered business method in order for the entire patent to be eligible for CBM review.
Qualtrics, LLC v. OpinionLab, CBM2015-00164, Paper 8 (PTAB Feb. 3, 2016). The Board denied institution of CBM review because petitioner did not establish that the patent was a “covered business method patent” as defined by AIA §18(d)(1). Petitioner bears the burden to demonstrate that the patent qualifies as a CBM-eligible patent. The fact that the specification may describe the claimed survey tool as being used for marketing or valuation purposes does not mean that the challenged claims are limited to such uses. The determination of whether a patent is eligible for CBM patent review focuses on the claims, not the specification.
Motorola Mobility LLC v. Intellectual Ventures I LLC, CBM2015-00174, Paper 8 (PTAB Feb. 9, 2016). The Board denied institution of CBM review for a patent directed to the electronic transfer of computer files directly between two or more computers, because the claims do not recite features directed to a financial product or service. Petitioner argued that the specification discloses an example where the computers transfer files based on purchased credits. However, the Board held that the claims are not limited to this example. The claims do not recite anything that could be considered “financial in nature.” The claims as a whole are directed to an area of general utility.
Motorola Mobility LLC v. Intellectual Ventures I LLC, CBM2015-00004, Paper 33 (PTAB Mar. 21, 2016). The Board determined that claims of an electronic content distribution patent are unpatentable under 35 U.S.C. § 101. Rebutting patent owner’s argument that a prior Board decision in Par Pharmaceutical v. Jazz Pharmaceuticals, Case CBM2014-00153, Paper 11 (PTAB Jan. 13, 2015) set forth a new standard for determining whether claims are CBM-eligible, the Board concluded that the petitioner in Par Pharmaceutical had not met its burden of demonstrating that the challenged patent claims a method “used in the practice, administration, or management of a financial product or service.” Thus, the Board’s determination in Par Pharmaceutical was based on a failure of proof by the petitioner. By contrast, petitioner in this proceeding has persuasively explained why the claimed software product for distributing content to a user station was used in the practice, administration or management of a financial product or service, and is therefore directed to a covered business method product. The claimed method steps are not tied to any particular novel machine or apparatus, and petitioner has shown that the claimed steps individually are conventional. When considered as an ordered combination, the components add nothing that is not already present when considered separately.
Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC, CBM2014-00186, Paper 31 (PTAB Mar. 30, 2016). The Board denied patent owner’s motion to dismiss the proceeding if patent owner’s motion to cancel claims 11 and 30 was granted. The Board instituted CBM review because, at the time of institution, the patent contained claims 11 and 30 which make the patent eligible for CBM review. Patent owner filed with its response a motion to amend to cancel claims 11 and 30. Patent owner argued that once claims 11 and 30 are cancelled, the Board lacks statutory authority to review the remaining claims because the remaining claims do not qualify for CBM review. The Board disagreed, indicating that standing is determined at the time of institution. Patent owner did not disclaim claims 11 and 30 prior to institution. Therefore, at the time of institution, the patent was eligible for CBM review.
Qualtrics, LLC v. OpinionLab, Inc., CBM2016-00003, Paper 9 (PTAB Apr. 13, 2016). The Board denied institution of CBM review of a patent directed to soliciting feedback from website users, because petitioner did not establish that the patent qualified as a “covered business method patent” under § 18(d)(1) of the AIA. Petitioner alleges that the claimed invention is directed to a financial product or service because the specification states that the claimed invention may be used in connection with websites that conduct commercial transactions. However, the relevant inquiry is on the claims and whether they are directed to a financial product or service. The claims of the challenged patent are devoid of any terms that could be reasonably argued as rooted in the financial sector or limited to a monetary transaction. Instead, the claims recite a software capability of general utility that crosses many sectors, commercial and non-commercial alike.
Old Republic Gen. Ins. Grp., Inc. Intellectual Ventures II LLC, CBM2015-00184, Paper 7 (PTAB Apr. 15, 2016). The Board denied institution, in part, because petitioner did not demonstrate that the claims do not recite a technological invention. Petitioner focused on the individual components of the patent, without analyzing how each claim of the patent combines these individual components into an ordered whole. Petitioner did not analyze any claim of the patent to assess whether its individual components are arranged or utilized in a unique manner. Such a cursory analysis is insufficient to demonstrate that the claims, as a whole, do not recite a technological feature that is novel and nonobvious.
Epicor Software Corp. v. Protegrity Corp., CBM2015-00006, Paper 54 (PTAB April 18, 2016). The Board determined that a patent directed to database security was eligible for CBM review as being directed to a financial product or service. The Board does not interpret AIA § 18(d)(1) as requiring the literal recitation of terms of data processing of financial products or services. The challenged patent discloses that protection attributes (i.e., the claimed data processing rules) are used to protect against unauthorized access of a data portion in a database and that banking is a field where it would be desirable to protect against unauthorized access to databases that are used for administering and storing sensitive information. Banking is a financial activity. Although not sufficient on its own, the Board noted that the patent’s classification in the Office’s classification system includes apparatus or methods which are designed for or utilized in the processing of financial data.
Square, Inc. v. Protegrity Corp., CBM2015-00014, Paper 40 (PTAB Apr. 19, 2016). In denying patent owner’s request to rehear the decision instituting CBM review for a patent directed to database security system for protecting data against unauthorized access, the Board indicated that the AIA does not require “the literal recitation of the terms data processing of financial products or services.” The Board indicated that the claims are directed to “data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service.” The Board referred to an example in the specification which describes “that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired.” The Board also noted that the specification mentions a “Housing allowance” and a “Social allowance,” which are not “divorced from a financial product or service.”
Google Inc. v. Patrick Zuili, CBM2016-00008, Paper 18 (PTAB Apr. 25, 2016). The Board granted institution of CBM review of a patent directed to a method for identifying invalid clicks under 35 U.S.C. § 101, determining that the patent was directed to a financial product or service. The Board indicated that the claims are directed to the concept of detecting invalid clicks based on the time between two requests by the same device. In assessing whether the claims are directed to an abstract idea, the Board indicated that it must “ascertain whether the claims implicate a business practice known from the pre-Internet world along with the requirement to perform it on the Internet, or if the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The Board determined that while the steps recited in the claims are performed in the Internet environment, they are steps performed by businesses in other environments to ensure that a customer request at hand is a valid request. Therefore, the Board determined that the claims are directed to an abstract idea.
IBG LLC v. Trading Techs. Int’l, Inc., CBM2016-00009, Paper 20 (PTAB Apr. 28, 2016). The Board granted institution of CBM review of a patent directed to a graphical user interface (GUI) displaying information related to a commodity and a method of automatically re-positioning the information. The GUI includes a plurality of columns, some of which include pricing information for commodities. The Board determined that “the claims encompass processing financial data, associated with a tradeable object, for display or for sending an order to an exchange. This processing of financial data is used in the practice, administration, or management of a tradeable object, which is a financial product. Displaying financial market information for a tradeable object is an activity that is financial in nature.” Further, the Board indicated that “[r]eceiving and displaying market information and sending trade orders to an electronic exchange are activities that are financial in nature.”
iHeartMedia, Inc. v. Impulse Radio, LLC, CBM2016-00010, Paper 10 (PTAB May 9, 2016). The Board granted institution of CBM review of a patent directed to “coordinating the transmission of supplemental digital data to accompany broadcast data” under 35 U.S.C. § 101. The Board determined that the subject matter of the challenged claims, when considered as a whole, is directed to an abstract idea; namely, collecting information, aggregating the information and distributing the information for redistribution. The Board indicated that the “the collection, aggregation, and distribution of information represents a ‘disembodied concept,’ a basic building block of human ingenuity. Thus, we analyze the claims to determine if they ‘incorporate enough meaningful limitations to ensure that the claims cover more than just an abstract idea.’” The Board determined that the claims add only conventional hardware, and do not recite a solution to a specific technical problem.
CoreLogic, Inc. v. Boundary Sols., Inc., CBM2016-00017, Paper 9 (PTAB May 24, 2016). The Board denied institution on the basis that the patent was not eligible for CBM review. The claims of the patent are directed to a portal that provides online delivery of parcel-level map data, where the portal is an electronic repository for parcel-level maps and linked attribute data acquired from public and private entities. Prior to institution, patent owner disclaimed the claims that petitioner identified as reciting financial subject matter. The Board also rejected petitioner’s argument that the patent’s purpose is to provide data in exchange for money. The Board determined that the challenged claims did not meet the definition of a CBM-eligible patent under AIA § 18(d)(1). The Board also determined that petitioner did not sufficiently show why examples of financial transactions in the specification should be linked to the claims.
Apple Inc. and Google Inc. v. Smartflash LLC, CBM2015-00029, Paper 43 (PTAB May 26, 2016). In a final written decision where the Board determined that the challenged claims are unpatentable under § 101, the Board rejected patent owner’s argument that it was estopped from addressing the patent-eligibility of the claims in view of a district court decision. In the related litigation, the district court did not determine that the claims are unpatentable under § 101. Patent owner argued that the Board was estopped from considering the § 101 challenge under the Supreme Court’s B&B Hardware decision. The Board disagreed, indicating that the B&B Hardware did not apply because the district court applied a different standard—clear and convincing evidence—than the standard that was applied by the Board, i.e., preponderance of the evidence.
Walgreen Co. v. Advanced Marketing Sys., LLC, CBM2016-00013, Paper 6 (PTAB May 26, 2016). The Board granted institution of a CBM review with respect to written description and prior art challenges, but denied institution of a challenge that the claims of the patent, which is directed to a data processing system, are directed to an abstract idea, in view of the Federal Circuit’s decision in Enfish. The Board was not persuaded that petitioner demonstrated that the challenged claims are directed to an abstract idea. “We are supported in this conclusion by the recent decision in [Enfish], where the Federal Circuit clarified the application of Alice to computers and software: ‘We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.’” The Board determined that, like the claims under consideration in Enfish, the challenged claims are directed to an “improvement to computer functionality,” and therefore petitioner has not demonstrated that it is more likely than not to succeed in challenging the patent eligibility of the claims.
Apple, Inc. v. Mirror World Techs., LLC, CBM2016-00019, Paper 12 (PTAB May 26, 2016). The Board denied institution of CBM review of a patent directed to managing personal electronic information under 35 U.S.C. §§101 and 112 ¶ 2, although it found the patent was directed to a financial product or service. The Board disagreed with patent owner’s argument that statements in the specification that are not reflected in claim limitations are not sufficient to establish CBM eligibility. Patent owner’s argument would require the Board to read into the statute the further requirement that the claims be limited by their express language only to financial products or services. That result would be inconsistent with the legislative history of the AIA, which indicates that Congress intended “financial product and service” to be interpreted broadly. The Board determined that petitioner had failed to demonstrate that the claims are not directed to patent-eligible subject matter, finding that the claims solved a number of problems that did not exist in the pre-computer world. Relying on Enfish, the Board determined that the claims did not recite an abstract idea. Under the second step of the Alice test, the Board determined that the claims are necessarily rooted in computer technology.
Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38 (PTAB May 31, 2016). In a final written decision, the Board confirmed that a patent directed to a data security system is directed to a financial service or product and therefore eligible for CBM review. Patent owner argued that none of the claims recite anything that is purportedly directed to a financial product or service. The Board indicated that it did not interpret AIA § 18(d)(1) “as requiring the literal recitation of terms of data processing of financial products or services.” The Board noted that claim 1 recites “controlling the user’s processing of the given data element value in conformity with the collected protection attribute/attributes,” that the specification discloses that protection attributes are used to protect against unauthorized access of a data portion in a database, and that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired. In addition, the Board noted that, although not sufficient on its own, the patent is classified in a class that has traditionally been associated with business method patents. The Board determined that the claims are unpatentable under § 101. “[T]he claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied…. Storing data and associated rules in separate databases is nothing more than routine data gathering and does not transform the abstract idea into a patent-eligible invention.”
Google Inc. v. Zuili, CBM2016-00021, Paper 11 (PTAB June 1, 2016). The Board granted institution of CBM review, determining that the claims of the patent are directed to a financial service or product. The Board indicated that “[a]lthough the recitation of a ‘pay-per-click system’ is in the claim’s preamble, it cannot be ignored because it is necessary to give life, meaning, and vitality to the claim.” The Board determined that even if the pay-per-click-system is not regarded as an element in the claim, that would not lead to a different result in determining whether the claims are directed to a financial service or process. Citing the Federal Circuit’s Versata decision, the Board indicated that “the financial product or service requirement of the [CBM] determination can be met by a wide range of ‘finance-related activities’ and does not require activity that is directly financial in itself.”
Epicor Software Corp. v. Protegrity Corp., CBM2015-00030, Paper 39 (PTAB June 2, 2016). The Board determined that the claims of a data security system patent were eligible for CBM review and directed to an abstract idea. Patent owner argued that claim 8 of the patent was not directed to a financial product. However, the Board cited its previous determination from another CBM review that the claims of the patent are CBM eligible, and noted that only one claim of a patent needs to be shown to be directed to a CBM patent for institution of a proceeding to commence. The Board determined that the challenged claim is directed to the abstract idea of control of user processing of database based on attributes in a catalogue. The challenged claim is not directed to a specific improvement to the way computers operate. Storing data and associated rules in separate databases is nothing more than routine data gathering and does not transform the abstract idea into a patent-eligible invention.
Nautilus Hyosung Inc. v. Diebold, Inc., CBM2016-00034, Paper 9 (PTAB Aug. 22, 2016). The Board granted institution of CBM review for a patent directed to an automated banking machine under 35 U.S.C. §§ 101, 102 and 103. The Board determined that the patent includes claims directed to a financial transaction or processing, and that the patent was not directed to a technological invention. The Board specified that “[a]lthough the claimed steps of the challenged patent may be an allegedly novel and nonobvious process,…the technological features of the claimed steps are directed to using known technologies.” The subject matter of a challenged claim, as a whole, does not require any specific, unconventional software, computer equipment, processing capabilities, or other technological features to produce the required functional result.
Google Inc. v. At Home Bondholders’ Liquidating Trust, CBM2016-00036, Paper 12 (PTAB Aug. 22, 2016). The Board denied institution of CBM review because the challenged patent, which is directed to a system for storing information on a computer network, provides a technological innovation. The claims of the patent address the technical problems that arise when requests for banners on a caching network are blocked by caches, while avoiding problems created by requiring the banner information to be retransmitted across the network each time the banner is requested by a user’s terminal. Merely pointing out that the claimed functions and recited technology were independently known in the art does not show that the solution of the patent addressing these problems was not novel or unobvious. Regardless of whether a generic computer terminal or other computer technology could perform the recited functions, it is the combination of the method steps in the patent that solves the identified problems and is novel and nonobvious. The claimed processes are technical solutions to technical problems because providing a system that achieves the advantages of caching while at the same time ensuring reliable receipt of signals over the Internet is a problem unique to the technology implemented in the Internet’s computing environment.
Interactive Brokers LLC v. Chart Trading Development, LLC, CBM2016-00038, Paper 14 (PTAB Aug. 23, 2016). The Board granted institution of CBM review for a patent directed to a method for providing an interactive graphical representation of a market under 35 U.S.C. §§ 101 and 103. The challenged claims are directed to displaying information in a format that is convenient for the user to provide an instruction. However, the claims do not identify or recite any technical problem, or claim any technical solution. The claims do not recite, nor does the specification describe, features concerning the basic computer functions associated with achieving the recited configuration. Thus, for purposes of the institution decision, the Board indicated that it was persuaded that the focus of the claims is not on an improvement to computer functionality, but on independently abstract ideas that use computers as tools.