Takeaway: Although not determinative, the fact that a patent owner brings many suits alleging infringement by financial institutions is a factor weighing in favor of a finding that a patent is a covered business method patent.
In its Decision, the Board found that the ‘191 patent qualifies for review as a covered business method patent and that the “Petition demonstrates that it is more likely than not that at least one claim of the ‘191 patent is unpatentable.” Therefore, the Board instituted a covered business method patent review as to claims 1-32 of the ‘191 patent.
The ‘191 patent “relates to authenticating a web page” and “explains that customers can be deceived by web pages that appear to be authentic, but are not.” Pages that are authenticated according to the ‘191 patent include an “authenticity stamp.” The Petition challenged claims 1-32 as obvious over the combination of the SHTTP reference and the Arent patent.
Turning to claim construction, the Board stated that claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification, and terms have their ordinary and customary meaning as understood by a person of ordinary skill in the art. For purposes of the Decision, the Board only construed “insert [or inserting] an authenticity key” and “received data.”
Patent Owner argued that “the recited ‘inserting’ does not encompass ‘attaching’ an authentication key to a document.” In contrast, Petitioner asserted that the term “encompasses attaching a digital signature.” Looking to the ordinary meaning in light of the specification, the Board disagreed with Patent Owner, finding its construction as failing “to account sufficiently for [the term’s] ordinary meaning, which is not limited ‘to put into’ but encompasses ‘to put between or among.’” Thus, the Board construed “insert [or inserting] an authenticity key” to encompass “attaching an authenticity key to the received data to create formatted data.”
Patent Owner contended that “received data” “is limited to data received by the authentication host computer ‘from outside itself’ – presumably, from a device other than the authentication host computer.” The Board was not persuaded, noting that Patent Owner’s proposed construction relied on a particular embodiment. Thus, the Board construed “received data” as encompassing “received data sent from a component in or associated with the authentication host computer.”
With regard to standing, Patent Owner disputed whether the ‘191 patent is a covered business method patent under 37 C.F.R. § 42.301, which states that such a patent is one 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.” A covered business method patent encompasses “patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” The Board found the ‘191 patent as being incidental to a financial activity noting the disclosure in the specification of needs in the financial industry and embodiments being used by financial institutions. In addition, “[a]lthough not determinative, Patent Owner’s many suits alleging infringement of claims of the ‘191 patent by financial institutions is a factor.”
The Board then considered whether the ‘191 patent recites a technological invention, considering “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” The Board found that “the technological features of the claimed steps are directed to using known technologies” and that Patent Owner had not shown that the claimed subject matter would require “any specific, unconventional software, computer equipment, cryptography algorithms, processing capabilities, or other technological features.” Thus, the Board found the ‘191 patent eligible for covered business method patent review.
Turning to the asserted ground of obviousness, the Board found that Petitioner had established that the challenged claims are more likely than not unpatentable. The Board disagreed with Patent Owner’s arguments, finding them to depend upon the claim construction positions that the Board rejected. Therefore, the Board instituted covered business method patent review of claims 1-32 of the ‘191 patent.
Bank of the West et al. v. Secure Axcess, LLC, CBM2015-00009
Paper 21: Decision on Institution of Covered Business Method Patent Review
Dated: April 13, 2015
Patent: 7,631,191 B2
Before: Barbara A. Benoit, Trenton A. Ward, and Georgianna W. Braden
Written by: Benoit
Related Proceedings: Secure Axcess, LLC v. Bank of the West, Case No. 6:13-cv-00779 (E.D. Tex); Secure Axcess, LLC v. Santander Bank, N.A., Case No. 6:13-cv-00723 (E.D. Tex); Secure Axcess, LLC v. Ally Bank, Case No. 6:13-cv-00718 (E.D. Tex); Secure Axcess, LLC v. GE Capital Retail Bank, Case No. 6:13-cv-00720 (E.D. Tex); Secure Axcess, LLC v. Nationwide Bank, Case No. 6:13-cv-00721 (E.D. Tex); Secure Axcess, LLC v. Commerce Bank, Case No. 6:13-cv-00782 (E.D. Tex); Secure Axcess, LLC v. Raymond James & Associates, Inc., Case No. 6:13-cv-00785 (E.D. Tex); Secure Axcess, LLC v. Trustmark National Bank, Case No. 6:13-cv-00788 (E.D. Tex); and Secure Axcess, LLC v. Cadence Bank, N.A., Case No. 6:13-cv-00780 (E.D. Tex); CBM2014-00100; IPR2014-00475; CBM2015-00029; CBM2015-00039