Patent claims directed to “administration of financial accounts” are not patent-eligible under 35 U.S.C. § 101, held the Patent Trial and Appeal Board (“PTAB”) during a Covered Business Method (“CBM”) post-grant review. The final written decision from the PTAB found all claims of U.S. Patent No. 8,083,137 unpatentable under 35 U.S.C. § 101. Intellectual Ventures I LLC v. PNC Financial Services, Case CBM2014-00028 (PTAB May 18, 2015).
The ’137 patent claims systems and methods for administration of financial accounts for users of credit cards, debit cards or other facilities. A profile stored in a database is keyed to a user’s identity where the user can establish pre-set spending limits on various user-selected categories and be notified of the spending.
The patent owner was not able to establish that the claims relate to a “technological invention.” The PTAB credited the testimony of the petitioner’s expert witness as evidence that the '137 patent claims are directed to an abstract idea. Specifically, the claims on their face are “drawn to creating a budget, which is an abstract idea relating to a fundamental economic practice.” Additionally, the PTAB stated that the claims are “directed to mental steps that can be performed by a human.” Further, as the patent owner acknowledged, the key elements of the claims, such as automated financial notification systems, existed before the effective date of the '137 patent.
In evaluating whether the claim limitations contain an “inventive concept” to “transform” the abstract idea into patentable subject matter, the PTAB once again relied on the petitioner’s arguments and expert witness, and concluded that the claims encompassed merely “electronic record keeping and not an inventive concept.” Thus, the claim elements were determined to be conventional and well-known computer related technologies, or mental steps performed by a human which do not invoke an “inventive concept.”
The patent owner also advanced the unsurprisingly futile argument that subject matter eligibility challenges under 35 U.S.C § 101 should not be considered by PTAB because § 101 is not a “condition for patentability.” The PTAB rejected this argument and pointed out that the America Invents Act (“AIA”) makes it clear that “Congress intended the Office to consider challenges brought under § 101 for post grant review,” and that the “covered business method review program employs the same standards and procedures as the post grant review program.” AIA § 18(a)(1).