Takeaway: To qualify as a CBM patent, the claims must be directed to a method of performing data processing or other operations used in the practice, administration, or management of a financial product or service, not merely whether the claims are capable of being used for marketing or valuation purposes.
In its Decision, the Board denied institution of any covered business method patent review of challenged claims 1-9 of the ’724 patent, because it concluded that Petitioner failed to demonstrate that the ’724 patent is a “covered business method patent” as defined by AIA § 18(d)(1). The ’724 patent is “directed to a ‘web site response measurement tool’ for collecting feedback and measuring opinion of users of the website.”
The Board previously denied institution of Petitioner’s IPR petition in IPR2014-00314 challenging the same patent over prior art, because it determined that Petitioner had not established a reasonable likelihood of prevailing in proving the challenged claims unpatentable over the asserted prior art. In this petition, Petitioner included only a single challenge, namely that “claims 1-9 are unpatentable under 35 U.S.C. § 101 as directed to a patent-ineligible abstract idea.”
Because a CBM challenge may only be instituted for a patent that qualifies as a covered business method, the Board began its analysis with whether this patent qualifies. The AIA defines a CBM 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.” AIA § 18(d)(1); 37 C.F.R. § 42.301(a).
Petitioner argued that the “user response tool (i.e., survey)” recited in claim 1 is “broad enough to cover a financial product or service because ‘collecting user feedback is primarily used to improve the effectiveness of websites, including their marketing, interface usability, and customer communications functions.’” The Board noted that such a collection of feedback does not make that use financial in nature. The Board noted that the “statute authorizing review of CBM patents was not meant to be applied ‘to technologies common in business environments across sectors that have no particular relation to the financial services section, such as computers, communications networks, and business software.’” The Board determined that the claims of the ’724 were merely directed to an information-gathering tool, regarding the user’s opinion about webpages that span across many sections, many of which have no financial bent. Accordingly, the Board was not persuaded that the claims, on their face, recite any particular term that ties them to a financial product or service.
The Board also noted that Petitioner did not “point to any language in the specification of the ’724 patent that limits the scope of the challenged claims to a financial product or service.” Petitioner argued that the survey use for marketing and valuation of a website suggests the claimed invention is of a financial nature. However, the Board noted “that those potential users are purely exemplary, and that the specification actually speaks in broader terms of “business partners, prospects and many others,’ including ‘[e]mployees . . . looking for guidance and support information.’”
The Board was also not persuaded by Petitioner’s argument that “the specification’s disclosure of charging a fee for reporting survey results to the website owner moves the claimed invention into the realm of a financial product or service,” because the claims do not recite charging a fee and the specification makes clear that in a preferred embodiment, the software is configured to provide the report for free.
In conclusion, the Board stated that the “fact that the specification may describe the survey tool as capable of being used for marketing and valuation purposes does not mean that the challenged claims are limited to such uses.” Accordingly, the Board determined that because the claims do not “describe a method of performing data processing or other operations used in the practice, administration, or management of a financial product or service,” the ’724 patent is not a CBM patent, and thus denied institution of CBM review.
Qualtrics, LLC v. OpinionLab, Inc., CBM2015-00164
Paper 8: Decision Denying Institution of Covered Business Method Review
Dated: February 3, 2016
Patent: 6,421,724 B1
Before: Rama G. Elluru, Jeremy M. Plenzler, and Carl M. DeFranco
Written by: DeFranco
Related Proceedings: IPR2014-00314; OpinionLab, Inc. v. Qualtrics Labs, Inc., 1:13-cv-01574 (N.D. Ill.); OpinionLab, Inc. v. iPerceptions Inc., 1:12-cv-05662 (N.D. Ill.)