Takeaway: When showing that a patent does not recite a technological feature that is novel or unobvious over the prior art, the petitioner must analyze the question by looking at how each claim of the patent combines the individual components into an ordered whole.
In its Decision, the Board found that it was not more likely than not that at least one of the challenged claims (1-49) of the ’002 Patent is unpatentable, and denied institution of covered business method patent review. The ’002 Patent describes a system and method for using a mobile interface agent (“MIA”) to access information of a user.
The Board began by discussing whether the ’002 Patent is a “covered business method patent” under AIA § 18(d)(1). To be a “covered business method patent,” the patent must claim “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 addressed whether the ’002 Patent recites a technological feature that is novel and unobvious over the prior art. Petitioner argued that the claims recite only generic structures. Patent Owner argued that petitioner did not consider the claims as a whole, which integrate known elements into a novel mobile interface. The Board agreed with Patent Owner that Petitioner focused on the individual components of the ’002 Patent, without analyzing how each claim of the ’002 Patent combines these individual components into an ordered whole. Therefore, the Board found that Petitioner did not sufficiently demonstrate that the claims of the ’002 Patent do not recite a technological feature that is novel and unobvious.
The Board also discussed whether the ’002 Patent solves a technical problem using a technical solution. Petitioner contended, in one paragraph, that the ’002 Patent neither solves a technological problem nor provides a technological solution to this problem. Patent Owner asserted that Petitioner’s argument is nonsensical as the “alleged logistical issue of accessing data via a mobile interface from multiple devices or locations” is a technical problem requiring a technical solution. The Board found that Petitioner had not provided any reasoned explanation for its assertion.
Old Republic General Insurance Group, Inc., et al. v. Intellectual Ventures II LLC, CBM2015-00184
Paper 7: Decision Denying institution of Covered Business Method Patent Review
Dated: April 15, 2016
Patent 6,546,002 B1
Before: Gregg I. Anderson, Jon B. Tornquist, and Robert J. Weinschenk W
ritten by: Tornquist
Related Proceedings: Intellectual Ventures I LLC v. Old Republic General Insurance Group, Inc., No. 2-14-cv-01130 (W.D. Pa.); Intellectual Ventures I LLC v. Highmark, Inc., No. 2-14-cv-01131 (W.D. Pa.); Intellectual Ventures I LLC v. Erie Indemnity Company, No. 1-14-cv-00220 (W.D. Pa.); Intellectual Ventures I LLC v. Citigroup, Inc., No. 1-14-cv-04638 (S.D.N.Y.); Intellectual Ventures I LLC v. PNC Financial Services Group, Inc., No. 2-14-cv-00832 (W.D. Pa.); Intellectual Ventures I LLC v. Capital One Financial Corporation, No. 8-14-cv-00111 (D. Md.); IPR2015-00089; IPR2015-00092; IPR2015-01992