Takeaway: A petitioner’s arguments that a patent does not claim a technological invention to qualify as a covered business method patent must take into account the claimed subject matter as a whole and be supported with sufficient evidence.
In its Decision, the Board denied institution of a covered business method patent review, finding that Petitioner had not demonstrated that the ’464 patent qualified as a covered business method patent. The ’464 patent describes a method and corresponding software for operating a user station for communications with a multiplicity of independently-operated data sources via a non-proprietary network.”
In making the determination whether a patent is a covered business method patent, the Board focuses on the claims and needs to only find one qualifying claim to make the patent eligible for review. An eligible 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.” AIA § 18(d)(1); 37 C.F.R. § 42.301(a). The Board began with the technological invention inquiry.
The technological invention analysis includes two prongs: whether the claimed subject matter, as a whole, (1) “recites a technological feature that is novel and unobvious over the prior art,” and (2) “solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b).
Petitioner argued that the technology recited in the patent claims was a computer and a network, which are well-known in the prior art. Thus, Petitioner argued that even if the apparatus was presumed novel and non-obvious, the claims did not recite a technological invention.
Regarding the first prong, the Board was not persuaded and held that Petitioner had “not shown the claimed subject matter, as a whole, does not recite a technological feature that is novel and unobvious over the prior art.” The Board found the claims to be directed to a software product to be used at a user station, and not merely a combination of a computer and network. The Board disagreed with the contention that the claims only called for transmitting and viewing content, finding that the claims also require, for example, a selecting step and a storage step that were not addressed. The Board also disagreed with the contention that the claimed combination would achieve the expected result of combining a computer and network. Instead, the Board noted that Petitioner had not accounted for the software product for use on a user station but had only focused on the hardware elements.
With respect to the second prong, the Board found that Petitioner had not provided sufficient support for the contention that the patent “does not solve a technical problem using a technical solution.”
Finding that Petitioner had not demonstrated the claimed invention was not a technological invention, the Board did not reach the “financial product or service” question and denied institution.
Motorola Mobility, LLC v. Intellectual Venture I, LLC, CBM2014-00084
Paper 18: Decision Denying Institution of Covered Business Method Patent Review
Dated: August 6, 2014
Patent: 6,658,464 B2
Before: Jameson Lee, Phillip J. Kauffman, and Jo-Anne M. Kokoski
Written by: Kauffman
Related Proceeding: Intellectual Ventures I. v. Motorola Mobility, Inc., Civil Action No. 11-908 (SLR) (D. Del)