In its Decision, the Board denied institution of a covered business method patent review of claims 1-16 of the ’298 Patent because Petitioners failed to meet the jurisdictional requirements of Section 18 of the American Invents Act. The ’298 Patent relates to methods and apparatus for identifying and characterizing errant electronic files stored on computer storage devices.
The Board began by analyzing whether the ’298 Patent is a “covered business method patent” as defined by the America Invents Act. Petitioners argued that the ’298 Patent is directed to a “financial product or service” because Patent Owner has asserted it against financial services allegedly offered by Petitioners. Patent Owner stated that Petitioners failed to show that the claims of the ’298 Patent fit the definition of a “covered business method patent,” and that Petitioners did not cite a single claim limitation in the Petition to explain how the operation set forth in the claims of the ’298 Patent have any particular relation to the financial services sector as opposed to being directed more generally to technologies common in business environments. Patent Owner argued that the ’298 Patent claims recite computer administration operations that are common in business environments. Patent Owner supported its argument by citing to Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024 (Paper 16) and the history of the America Invents Act to show that the ’298 Patent does not qualify as a “computer business method patent.”
The Board began by defining “covered business method patent” as a patent that “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” The Board then stated that the focus is on the claims and that only one claim needs to be directed to a covered business method to be eligible for review. The Board also noted the legislative history and intent to only encompass activities that are financial in nature. The Board then reviewed the claims of the ’298 Patent and found that they have a general utility not specific to any application. Therefore, the Board agreed with Patent Owner that the claims do not expressly fall under the “covered business method patent” definition. The Board specifically noted that Petitioners failed to cite to any portion of the specification or description showing that the ’298 Patent is a “computer business method patent” and that Petitioners’ expert declaration also failed to indicate the same. The Board then stated that the mere assertion of a patent against a bank or other financial institution is not sufficient by itself to transform a patent into a “covered business method patent.”
PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Intellectual Ventures I LLC, CBM2014-00032
Paper 13: Decision Denying Institution of Covered Business Method Patent Review
Dated: May 22, 2014
Patent 7,757,298 B2
Before: Thomas L. Giannetti, Hyun J. Jung, and Gregg I. Anderson
Written by: Jung
Related Proceeding: Intellectual Ventures I LLC v. PNC Financial Services, Inc., 2:13-cv-00740 (W.D. Pa.)