Covered Business Method Patent Review

Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.

Claims of two patents directed to “data management and on-demand rental and purchase of digital data products,” e.g., selling advertising to be displayed via a set-top box, recites patent-ineligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, held the Federal Circuit in Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239 (March 6, 2020) (precedential). The Federal Circuit, in an opinion by Judge Moore, joined by Chief Judge Prost and Judge Dyk, affirmed the PTAB’s final written decisions, in Covered Business Method Review proceedings, of ineligibility of U.S. Patent Nos. 8,719,090 and 9,053,494. Claim 1 of the ’090 patent recites: 1.  A data delivery system for providing automatic delivery of multimedia data products from one or more multimedia data product providers, the system comprising: a remote account transaction server for providing multimedia data products to an end user, at least one of the multimedia data products being specifically identified advertising data; and a programmable local receiver unit for interfacing with the remote account transaction server to receive one or more of the multimedia data products and for processing and automatically recording the multimedia data products, said programmable local receiver unit including at least one individually controlled and reserved advertising… Read More »Federal Circuit Affirms § 101 Ineligibility of Set-Top Box Advertising Claims: Customedia Techs., LLC v. Dish Network Corp.

No CBM: Check Deposit Patent Claims Technological Invention

Patent claims reciting a “medium comprising computer-readable instructions for depositing a check” included a “technological invention,” and thus were not eligible for Covered Business Method (CBM) review, held the Patent Trial and Appeal Board (PTAB) in Wells Fargo Bank, NA et al v. United Services Automobile Ass’n., Case CBM2019-00004, Patent 8,977,571 B1 (May 15, 2019). Even though U.S. Patent No. 8,977,571B1 may otherwise have been directed to a “financial product or service,” it qualified for the statute’s provision “that the term does not include patents for technological inventions.” America Invents Action § 18(d). Representative claim 1 of the ’571 patent recites: A non-transitory computer-readable medium comprising computer-readable instructions for depositing a check that, when executed by a processor, cause the processor to: monitor an image of the check in a field of view of a camera of a mobile device with respect to a monitoring criterion using an image monitoring and capture module of the mobile device; capture the image of the check with the camera when the image of the check passes the monitoring criterion; and provide the image of the check from the camera to a depository via a communication pathway between the mobile device and the depository.… Read More »No CBM: Check Deposit Patent Claims Technological Invention

Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

Finding that claims of patents directed “to a graphical user interface (‘GUI’) for electronic trading” lacked a technical solution to a technical problem, the Federal Circuit affirmed a Patent Trial and Appeal Board decision holding the claims ineligible under 35 U.S.C. § 101 and the Mayo/Alice test. Trading Technologies International, Inc. v. IBG, LLC, No. 2018-1063 (Fed. Cir. April 18, 2018) (opinion by Judge Moore, joined by Judges Mayer and Linn) (precedential). Interestingly, the court found that the patents’ lack of a technical solution supported both the institution of Covered Business Method (CBM) review, as well as the conclusion that the patent claims were ineligible. The CBM had addressed U.S. Patent Nos. 7,533,056, 7,212,999, and 7,904,374. The patent owner argued that the patents were directed to “technological inventions” within the meaning of America Invents Act § 18(d)(1), and that therefore the CBM had been improperly instituted. Addressing first the ’056 and ’999 patents, their invention was an “intuitive graphical user interface” that “makes the trader faster and more efficient, not the computer,” which was “not a technical solution to a technical problem.” (Emphasis in original.) And the court agreed with the PTAB that the ’374 patent did not solve the… Read More »Lack of Technical Solution in Patent Claims Justifies CBM Review and Alice Ineligibility

NASDAQ Patent Doesn’t Claim Covered Business Method

The PTAB has declined to institute a Covered Business Method (CBM) review for a patent, owned by NASDAQ, claiming a computerized system for executing securities transactions. Investors Exchange LLC v. NASDAQ, Inc., Case CBM2018-00038 (Patent 7,895,112 B2). According to the PTAB, the Petitioner did not meet its burden of showing that the claims were not a technical solution to a technical problem, and therefore did not meet the requirements of Section 18(d) of the Leahy-Smith America Invents Act (“AIA”). Representative claim 1 recites: 1. A computer system for execution of transactions involving execution of orders for securities, the computer system comprises: a central processor device; a sequential access storage device that provides a persistent store of recorded information; a main memory coupled to the central processor and the main memory storing: an order book that includes orders and/or quotes for a particular security, the orders and/or quotes having various prices, sizes and time priorities; executable code that causes the processor device to match the orders and/or quotes in the order book for the security to a received order for the security, with the order book only accessible by the executable code that matches orders and/or quotes; and the executable code that… Read More »NASDAQ Patent Doesn’t Claim Covered Business Method

Covered Business Method Patent Survives Alice

Patent claims can survive a patent-eligibility challenge under Alice and 35 U.S.C. § 101 even without a showing of a technological improvement.  In Dailygobble, Inc. v. SCVNGR, Inc., Case No. CBM2018-00002 (May 8, 2018), the USPTO’s Patent Trial and Appeal Board declined to institute a Covered Business Method Review (CBM).  The PTAB found that claims of U.S. Patent No. 8,924,260B1 fell within the statutory definition of “covered business method patent,” i.e., were (1) directed to a financial product or service and (2) were not directed to a technological invention.  Nonetheless, the PTAB declined to institute a CBM proceeding because it agreed with a district court analysis that the ’260 patent claims were patent-eligible because, as in Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), the claims “as a whole” were not “directed to excluded subject matter.” Claim 1 of the ’260 patent recites: A method of processing a transaction at a point-of-sale (POS) terminal, the method comprising the steps of: receiving, by the POS terminal, a stream of data from a credential reader; recognizing, by the POS terminal, a first data sequence in the received data stream; in response to the recognized first data sequence, handling, by the POS terminal,… Read More »Covered Business Method Patent Survives Alice

CBM Estoppel Limited to Substantially Identical References

A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 2018).) This dispute started with Solutran suing U.S. Bank for infringement of U.S. Patent No. 8,311,945. The ’945 patent covers a method of processing checks. U.S. Bank retaliated by petitioning for CBM review, claiming that the ’945 patent was obvious over admitted prior art in the patent and U.S. Patent App. No. 2005/0071283 to Randle. The Patent Trial and Appeal Board instituted review but eventually sided with Solutran. Solutran now argues that at trial, U.S. Bank cannot argue obviousness and cannot rely on a reference related to the Randle ’283 application. The estoppel provision for CBM reviews states that the “[p]etitioner … may not assert … in a civil action … that the claim was invalid on any ground that the petitioner raised during” the CBM review. (Pub. L. 112-27, § 18(a)(1)(D), 125 Stat. 330 (2011).) The scope is ostensibly narrower than estoppel from inter partes review or post-grant review, which cover “any ground that the petitioner raised or reasonably could have raised during” the review.… Read More »CBM Estoppel Limited to Substantially Identical References

Patent Eligibility and Obviousness in a Covered Business Method Patent Review

The limits of patent eligibility continue to be a major hurtle for patent owners whose patents are subject to Covered Business Method Patent Review (CBM) at the USPTO’s Patent Trial and Appeal Board (PTAB). In IBG LLC v. Trading Tech. Int. Inc., Case CMB2016-00090 (PTAB December 7, 2017) the PTAB issued a Final Written Decision holding that US Patent 7,725,382 was not directed to patent eligible subject matter under 35 U.S.C. §101. In addition to the §101 holding, the PTAB held that the Petitioner failed to meet their burden to show that the ‘382 Patent was obvious over certain prior art under 35 U.S.C. §103. Representative claim 1 of the ‘382 Patent recites: 1. A method of canceling an order entered for a commodity at an electronic exchange, the method comprising: receiving data relating to the commodity from the electronic exchange, the data comprising an inside market with a current highest bid price and a current lowest ask price currently available for the commodity; setting a trade order parameter; dynamically displaying by a computing device a first indicator at a first area corresponding to a first price level along a static price axis, the first indicator being associated with the… Read More »Patent Eligibility and Obviousness in a Covered Business Method Patent Review

Patent Claims to Selecting Ads for Display Denied Covered Business Method Review

The USPTO’s Patent and Trial Appeal Board has declined to institute a Covered Business Method review of two patents with claims to “directing electronic advertisements” based on user profile attributes with the goal of maximizing profits.  Yahoo! Inc. v. AlmondNet, Inc., CBM2017-00056 and CBM2017-00058 (Nov. 22, 2017). The PTAB’s decision turned on its interpretation that the term “condition” encompassed more than a consideration of expected profitability in claim recitations that correlated display of an advertisement to user profile attributes “subject to determining that the condition has been met.”  (See claim 1 of U.S. Patent No. 8,959,146, and claim 1 of 8,671,139.) Looking at the opinion relating to the ’146 patent, the Patent Owner had sagaciously filed a statutory disclaimer of claims that explicitly recited considering price information. For the other claims, the broadest reasonable interpretation of “condition” included, per the Patent Owner’s argument, not just “criteria based on profitability,” but also, “for example, a time-based condition.” The PTAB agreed. The specification had other examples of conditions, and “profitability . . . is not the only condition for displaying an advertisement that is disclosed.” The fact that a disclaimed dependent claim explicitly recited price considerations, and another dependent claim recited time… Read More »Patent Claims to Selecting Ads for Display Denied Covered Business Method Review

PTAB Invalidates Construction “Price Schedule” Patents

Autodesk, Inc. petitioned for covered business method review of two “Automated pricing system” patents of Uniloc USA, Inc. and Uniloc Luxembourg, S.A. CBM 2016-00042 re USPN 7783523; CBM 2016-00043 re USPN 8515820.  In parallel September 2017 decisions, the PTAB invalidated the patents for claiming patent-ineligible subject matter. The patents (the ‘820 Patent is a continuation of the ‘523 Patent) are directed to “add-on computer software code” for generating a price schedule from an electronic construction plan file.  Generally, the patents aim to provide increased efficiency and accuracy in the construction cost estimation process, towards avoiding cost overruns and issues with obtaining construction loans.  The PTAB ruled that the patents are ineligible for being directed to the abstract idea of generating prices for construction — a task that can be accomplished without automation.  The PTAB further found that no additional inventive concepts were covered in the claims to render them patent-eligible.  Specifically, the PTAB cited to evidence offered by the petitioner (Autodesk) showing that pricing software add-ons for electronic construction plan files were known prior to the effective dates of the patents.  The PTAB, citing the Supreme Court’s Alice decision, further found that the patents claimed merely “linkage of existing materials… Read More »PTAB Invalidates Construction “Price Schedule” Patents

No Covered Business Method Patent Review for Software Based Trading Turret

The Patent Trial and Appeal Board (PTAB) has denied institution of covered business method patent review, as a claimed trading turret system did not constitute a financial activity.  Cloud9 Tech. LLC v. IPC Systems, Inc., CBM2017-00037 (Pat. 8, 189,566 B2). Cloud9 sued IPC for patent infringement and in response, IPC petitioned for covered  business method patent review.  The test of whether a patent qualifies for covered  business method patent review includes two distinct aspects: (1) the “financial product or service” inquiry; and (2) the “technological invention” exception.  The PTAB focused its analysis on the first element, finding it dispositive here. The ‘566 patent, titled “Software based trading turret,” recites (emphasis added): A communication system, comprising: a turret switching system constructed to communicate to a Web server, a turret device, and to a remote communications device via a first communications network, the Web server being constructed to communicate to a client device via a second communications network, and the client device constructed to control switching across a plurality of lines; and an interface having a button sheet corresponding to a plurality of line selectors and constructed to seize a corresponding line by causing the client device to communicate a predetermined message to the turret… Read More »No Covered Business Method Patent Review for Software Based Trading Turret