In its Decision, the Board denied institution of covered business method review because Petitioner did not show that claims 1-19 of the ’894 Patent do not recite solving a technical problem using a technical solution. Because the covered business method patent review was denied based on a threshold question, the Board provided no position with regard to the merits of Petitioner’s challenges to the patentability of claims 1-19. The ’894 Patent relates to facilitating real-time two-way transactions, as opposed to deferred transactions, e.g., e-mail.
The Board began by discussing whether Petitioner had standing to file a petition under the Transitional Program for Covered Business Method Patents, which requires that a petitioner or a petitioner’s real party in interest or privy had been sued for infringement or charged with infringement under that patent. Petitioner argued that several of its customers had been sued for infringing the ’894 Patent based on their use of Petitioner’s systems and software, and that Petitioner is obligated to indemnify those customers. Petitioner did not specify whether its customers had sought such indemnification, but the Board assumed for purposes of this decision that Petitioner ultimately is required to indemnify its customers. The suits were filed against the customers by the previous owner of the ’894 Patent. Because the suits against the customers had not been dismissed and because the Board was assuming that Petitioner was required to indemnify those customers, the Board was persuaded that Petitioner had standing to petition for covered business method patent review.
The Board then turned to whether at least one claim of the ’894 Patent qualifies for covered business method patent review. The Board agreed with Petitioner that at least claim 17 recites a retail banking Web application, claim 18 recites a real-time Web transaction performed from a group selected from a number of financial services, and claim 19 recites a transaction performed from an asset and wealth management point-of-service Web application.
Next, the Board discussed whether the ’894 Patent falls within the exclusion for technological inventions. A technological invention is determined by considering “whether the claimed subject matter as a whole recites a technical feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution.” “A patent is not drawn to a technological invention merely by (a) employing claim drafting techniques reciting known technologies, such as computer hardware, software, networks, and devices; (b) reciting use of a prior art technology to accomplish a process or method, even if that process or method is novel and non-obvious; and (c) by combining prior art structures to achieve the normal, expected, or predictable result of that combination.
Petitioner argued that claim 2 recites only known technologies, such as a processor, a machine readable storage device, a signal, an application, a network, the Web, an object, and a data structure. Further, Petitioner argued that the ’894 Patent is directed to a financial or business problem of performing transactions over the Web that could already be performed in person. The Board determined that Petitioner only addressed part of the analysis, because Petitioner did not address whether the claims are drawn to solving a technical problem using a technical solution. The Board determined, for example, that the recitation in claim 2 of using an object and information entries and attributes to complete the connection at a specific layer of the OSI model appears to be a technical solution. Accordingly, the Board determined that Petitioner had not shown that claim 2 and claims depending therefrom, qualify for covered business method review. Further, the Board determined that claims 1 and 3, and claims dependent thereon, recite similar limitations to those discussed in claim 2, and thus also do not qualify for covered business method review for similar reasons as for claim 2.
The Board addressed the fact that it came to a different decision in CBM2013-00013 involving a different patent with the same specification, but different claimed subject matter. In that decision, the Board instituted a covered business patent review because claim 1 of that patent recites transferring funds from check to savings “utilizing a routed transactional data structure,” but does not recite a particular technical implementation. Whereas the independent claims in the ’894 Patent recite “using the object to make a specific connection to the Web merchant’s service (solving a technical problem) using a specific technique, i.e., by routing a data structure with the information entries and attributes at the application layer of the OSI model, as distinguished from routing the data structure at the transport or network layers of the OSI model.
GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, CBM2014-00101
Paper 10: Decision Denying Institution of Covered Business Method Patent Review
Dated: October 7, 2014
Patent: 8,346,894 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara
Related Proceedings: CBM2013-00013