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 considerations, bolstered this interpretation.
The PTAB also rejected the Petitioner’s argument that “advertisement” should be interpreted as “paid announcement.” This interpretation was too narrow. Neither the claim language nor the plain and ordinary meaning so limited the term. And there was no “language in the specification indicating that the term is defined to require payment in all circumstances.”
Based on the foregoing claim interpretations, it was easy work for the PTAB to say that the ’146 patent claims were not directed to financial products or services as required to qualify for CBM Review. Citing cases including Unwired Planet, LLC v. Google, Inc., the PTAB explained that CBM review is limited. Here, “condition” and “advertisement” were both generic, rather than financial, terms. The fact that the specification included embodiments discussing what could be financial products or services did not impose these limitations on the claims.
The PTAB’s reasoning for the ’139 patent was for all practical purposes identical to that set forth in the opinion for the ’146 patent.
Lessons for Practice
First, one is reminded that reciting economic considerations, e.g., of price, cost, profit, etc., is a sure-fire road to patent-ineligibility. Second, surely the claims of these two patents will be susceptible to a patent-eligibility challenge, even if not in a CBM at the PTAB; one is reminded that CBM Review is somewhat arbitrarily limited. There are political reasons for this, of course. And the arbitrary boundary of CBM Review will have less impact as more patent become eligible for Post Grant Review (PGR). Nonetheless, PGR Review will have its limitations, and, politics aside, cases like this raise the question whether the most consistent course would be to relax CBM sunsetting, and expand the scope of CBM Review beyond financial services.