Covered Business Method Patent Review

PTAB Declines to Institute CBM Review on Financial Industry Telecommunications Technology

The PTAB declines to institute CBM on US8189566 titled “Software based trading turret.” According to the patent specification, “[a] trading turret system is a specialized telephony switching system that allows a relatively small number of users to access a large number of external lines…” Components of the turret system can be implemented via hardware, software, or a combination of both. Treating claim 1 as illustrative, the PTAB found that the claim is not a covered business method patent. Claim 1 recites: 1. A communications 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 switching system over the second communications network. To be eligible for CBM review, the claims of the patent must recite “a method or corresponding apparatus for performing… Read More »PTAB Declines to Institute CBM Review on Financial Industry Telecommunications Technology

PTAB: No Technical Solution = Covered Business Method Patent

Patent claims directed to an electronic inventory patent recited a covered business method, and moreover are patent-ineligible, said the PTAB in a Final Written Decision in a Covered Business Method (CBM) proceeding.  Life Technologies Corporation v. Unisone Strategic IP, Inc., Case CBM2016-00025; Patent 6,996,538 B2/C1 (PTAB June 23, 2017).  This case will be interesting to many in part because of the Patent Owner’s unsuccessful attempt to contest the PTAB’s subject matter jurisdiction based on its failure to submit responses or participate in the proceedings as called for in the Scheduling Order.  But I write about it because the PTAB’s analysis of the validity question under 35 U.S.C. § 101 is an exemplar of how the problem-solution approach has taken over patent-eligibility analysis, albeit in this case in the context of determining whether claims qualify for Covered Business Method Review under § 18 of the Leahy-Smith America Invents Act (“AIA”). Representative Claim 19 of the ’538 patent recites: A method for inventory management, comprising the steps of: (a) collecting and storing, on one or more databases having client software, at least the following data: (1) customer inventory information (2) inventory and cost information for a plurality of manufacturers, suppliers, or distributors,… Read More »PTAB: No Technical Solution = Covered Business Method Patent

PTAB: Patent Claims Not Supported Under 35 U.S.C. § 112, ¶1

Providing an example of claimed subject matter lacking written description in a patent specification, the Patent Trial and Appeal Board (PTAB) found selected claims of two patents invalid under 35 U.S.C § 112, ¶1, in parallel Covered Business Method Review proceedings.  Walgreen Co. v. Advanced Marketing Systems, LLC, Case CBM2016-00013, Patent 8,538,805 B2 (PTAB May 24, 2017); Walgreen Co. v. Advanced Marketing Systems, LLC, Cases CBM2016-00014 and CBM2016-00015, Patent 8,370,199 B2. (PTAB May 24, 2017).  Claims in both patents were also found anticipated by prior art – after the requisite discussion showing that the patents qualified for CBM review; this post focuses on the Section 112 questions. The ’805 patent, entitled, “Promotion on Processor and Management System,” discloses “a specifically constructed multi-discount incentive production vehicle (MDV) distributed to select customers,” including “a specific multi-function code embedded in or associated with the vehicle, to identify the customer and permit tracking of the promotion through redemption.”  Claim 1 was the only challenged claim of the ’805 patent, and includes a recitation of a customer account associated with a customer identification code, the customer account comprising two or more of said discounts of the discount vehicle selected by a customer to be associated… Read More »PTAB: Patent Claims Not Supported Under 35 U.S.C. § 112, ¶1

Disclaimer Stops CBM Review for Electronic Billboard Patent

Here is another case showing how patent owners are effectively using statutory disclaimers to stop CBM review of patents at the PTAB – and showing that the USPTO’s Patent Trial and Appeal Board (PTAB) continues to decline to take an expansive view of what is a “covered business method patent.”  In Broadside International LLC v. T-Rex Property AB, Case CBM2017-00008, Patent 6,430,603 B2 (PTAB April 26, 2017), the Board declined to institute a Covered Business Method (CBM) Review of the ’603 patent, entitled (probably somewhat enticingly for the challenger “System for direct placement of commercial advertising, public service announcements and other content on electronic billboard displays.” To determine whether the ’603 patent was a “covered business method” patent under Section 18 of the America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 331 (2011), the PTAB considered representative claims directed to “presenting video or still-image content at selected times and locations on a networked connection of multiple electronic displays.”  There were no claim terms needing construction, so the PTAB got right down to the business of considering whether the claims fell within the statutory definition of covered business method claims. The Patent Owner had, wisely, it turns out, provided… Read More »Disclaimer Stops CBM Review for Electronic Billboard Patent

PTAB in CBM Kills Internet Advertising Click-Fraud Patent

Claims of a patent directed to detecting internet advertising click-fraud were eligible for Covered Business Method (CBM) Review, and moreover were patent-ineligible under the Mayo/Alice test and 35 U.S.C. § 101, said the Patent Trial and Appeal Board (PTAB) in a Final Written Decision in Google, Inc. v. Zuili, CBM2016-00008 (Patent 8,671,057 B1) (PTAB April 24, 2017.) The title of U.S. Patent No. 8,671,057 more or less tells the story: “Method and System to Detect Invalid and Fraudulent Impressions and Clicks in Web-Based Advertisement Schemes.” The PTAB concluded that the only independent claim of the ’057 patent “meets the financial requirement of CBM eligibility because it recites a financial transaction.” Left unaddressed was the “Petitioner’s argument that claim 1 is financial in nature because it recites advertising.” The Patent Owner argued that the ’057 patent did not meet the “financial product or service” requirement for covered business method patents. However, the PTAB accepted the Petitioner’s argument that a system directed to providing links to merchant webpages as part of an advertising scheme and pay-per-click system was a financial product or service. The Patent Owner’s argument that the claims were simply directed to determining invalid clicks, and could be used on… Read More »PTAB in CBM Kills Internet Advertising Click-Fraud Patent

No CBM Patent Review for Delivering Files to a Cell Phone

A patent directed to wirelessly “delivering an audio and/or visual media file” was not a covered business method patent, leading the USPTO’s Patent Trial and Appeal Board (PTAB) to deny a petition to institute a covered business method review.  FaceBook, Inc. v. Skky LLC, Case CBM2017-00006, US Patent No. 9,215,310 (PTAB April 11, 2017).  Interestingly, one tactic that allowed the patent owner to succeed in eluding the petition was its selective disclaimer of dependent claims that could have been construed as covered business method claims. The PTAB began by noting that the statutory definition of a covered business method as “operations used in the practice, administration, or management of a financial product or service” covered “a wide array of ‘monetary matters.’”  However, recently, the PTAB’s reviewing court clarified the scope of CBM review, and held that the Board’s reliance on phrases in the legislative history, i.e., whether the patent claims activities “incidental to” or “complementary to,” a financial activity as the legal standard to determine whether a patent is a CBM patent, was not in accordance with AIA § 18(d)(1). Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1379–82 (Fed. Cir. 2016); Secure Axcess, LLC v. PNC Bank Nat’l… Read More »No CBM Patent Review for Delivering Files to a Cell Phone

Statutory Disclaimer Moots Covered Business Method Review

When a patent owner disclaims patent claims for which another party petitions for Covered Business Method Review, the petition is moot.  The rule is pretty clear on this point: “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a),” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42-207(e).  So when the Patent Trial and Appeal Board (PTAB) received a disclaimer with the patent owner’s preliminary response in Facebook, Inc. v. Skky LLC, Case CBM2017-00007, Patent 9,203,956 (PTAB April 10, 2017), the PTAB declined to institute a Covered Business Method Review proceeding. This rule be so clear and be so well-understood as to seem not be worth writing about – but sometimes it’s nice to have reminder that the system includes mechanisms to permit acknowledgement of practical reality and the exercise of common sense.  The PTAB’s reasoning in full was as follows: A patentee may “make disclaimer of any complete claim . . . . Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent.”  35 U.S.C. § 253(a).  When a patent owner files a statutory disclaimer… Read More »Statutory Disclaimer Moots Covered Business Method Review

PTAB: Internet Advertising Patent Not Subject to CBM Review

The PTAB has denied Google’s petition for Covered Business Method (CBM) review of an Internet advertising patent, finding that Google failed to show that the patent is directed to “performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Google Inc. v. KlausTech, Inc., Case CBM2016-00096 (PTAB February 27, 2017).  Accordingly, the PTAB entered an order that no trial be instituted to review U.S. Patent No. 6,128,651 (as reexamined). The ’651 patent is directed “to a frame displayed on a website that includes ad content controlled and timed by a central controller.” The patent purports to solve the problem “that the advertiser who places and add has little control over how the ad is viewed at a user’s browser.”  Claim 20, added during an ex parte re-examination, was representative: A non-scrolling ad display from a website for causing a browser hitting the website to undertake centrally controlled and recorded ad display for guaranteed minimum timed intervals comprising the steps of: providing a website at a webserver for transmitting at least one page with a non-scrolling ad frame to a browser; providing ad content for the non-scrolling ad frame, each ad content… Read More »PTAB: Internet Advertising Patent Not Subject to CBM Review

Some Business Methods Are Routinely Found Patent-Ineligible

A Federal Circuit panel needed one line to agree that a claims in a business method patent were patent-ineligible under Alice Corp. v. CLS Bank Corp. and 35 U.S.C. § 101.  In America’s Collectible Network, Inc. v. The Jewelry Channel, Inc., No. 2016-1521 (Fed. Cir. Jan 11, 2017), a three judge panel (Dyk, Taranto, and Hughes) entered a per curiam order affirming the PTAB’s 2015 decision in Jewelry Channel, Inc. v. America’s Collectible Network, Inc. finding claims of U.S. Patent No. 8,370,211 invalid under 35 U.S.C. § 101. The ’211 patent is directed to a method for a reverse auction.  Claim 1 recites: A method of conducting a telephone based reverse auction for selling units where the reverse auction is transmitted to users on a medium by a system, the method comprising the steps of: providing a number of units for sale and storing a preliminary available quantity in an allocation database initially indicative of the number provided for sale; providing a telephone number to which calls from callers can be placed to enter the reverse auction; recording the time at which one or more calls were received on the telephone number in a call record in a call database;… Read More »Some Business Methods Are Routinely Found Patent-Ineligible

Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice

In holding all claims of patents directed to generating electronic menus patent-ineligible under 35 USC § 101, a Federal Circuit panel handed Covered Business Method Review petitioners an even bigger win than they had gotten from the Patent Trial and Appeal Board (PTAB).  Apple, Inc. v. Amaranth, Inc., Nos. 2015-1792, 2015-1793 (Fed. Cir. Nov. 29, 2016) (opinion by Judge Reyna, joined by Judges Chen and Stoll). The PTAB had held certain claims of US Patent Nos. 6,384,850, 6,871,325, and 6,982,733 to recite patent-ineligible subject matter, but had also held some claims of the ’733 patent to be patent-eligible. The Federal Circuit affirmed the findings of patent-ineligible subject matter, and then reversed the finding that certain dependent claims in the ’733 patent or patent-eligible. The independent claims of all three patents were similar, being directed to generating and transmitting restaurant menus. The court began by agreeing with the PTAB’s claim constructions, and its finding that the above patents were “covered business method patents” under the definition in the America Invents Act. In particular, the court did not accept the patent owner’s position that the claims recited a nonconventional software that distinguish over the prior art, and therefore were directed to a… Read More »Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice