How Expansive Is the Definition of "Covered Business Method Patent?"

The USPTO's Patent Trials and Appeals Board (PTAB) has held that patent claims directed to "de-identifying health care data" are directed to a "covered business method" under Section 18 of the America Invents Act.  Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB Sept. 10, 2015).  The PTAB held that a CBM patent's claims need not "particularly target the financial industry."  It is enough that the "challenged claims recite a system and method used in the practice, administration, or management of financial services and products."

The PTAB found that U.S. Patent No. 8,473,452 "relates to a system and method for gathering and analysis of health-care related data as well as techniques for de-identifying [i.e., scrubbing] individuals from pharmaceutical data, in order to maintain privacy."  The claims included an electronic data store, and could be performed by a conventional computer.  One disclosed use for the system was "to make business decisions," including relating to sales and marketing.

The Patent Owner argued "that the ’452 patent has no particular relation to the financial services industry, and does not “particularly target” the financial sector."  Further, the Patent Owner expressly disclaimed claims that smacked of financial data; these claims recited "pharmaceutical claims data, medical claims data, or hospital claims data."

Nonetheless, the PTAB found that "the challenged claims recite a system and method used in the practice, administration, or management of financial services and products."  The PTAB explained its reasoning as follows (citations omitted):

each claim recites a “health care field” relating to “health care data,” which is described in the specification as including claims data, such as pharmaceutical, medical and hospital claims data, i.e., claims for receiving payment or reimbursement. The system and method are disclosed as being used to generate reports such as market shares, sources of business, and patient demographics. Further, the specification discusses the use of the claimed system “in a number of ways to help make business decisions,” including enhanced sales force targeting, early warning of market share shifts, and accurate intelligence on market size and demand.

The PTAB then went on, unsurprisingly, to institute a CBM proceeding, finding it more likely than not that the '452 patent was not patent-eligible under Section 101, and that the patent claims were likely obvious over prior art.

The message of this decision is clear: CBM review is available for a wide swath of patents.  According to at least some PTAB panels, claims need not be directed to Wall Street, or anywhere near a bank in order to qualify for CBM review.

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