Denying Institution of Covered Business Method Patent Review CBM2014-00064


Takeaway: In a petition for covered business method review, the petitioner must provide more than conclusory statements that the claims do not require any novel and unobvious technological implementation or solve a technical problem to demonstrate that the patent-at-issue is a covered business method patent.

In its Decision, the Board denied institution of a covered business method patent review of claims 1 and 27 of the ’104 Patent. The ’104 Patent relates to a system and method of later providing proof regarding the delivery and content of an e-mail message.

The Board began by analyzing whether the ’104 Patent is a covered business method patent. A “covered business method patent” is 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.”  Petitioner noted that the Specification of the ’104 Patent details that the claimed electronic messaging system and methods are complementary to the financial activity of selling products and services through the disclosure of e-commerce embodiments directed to the buying and selling of products or services over electronic systems such as the Internet.  Patent Owner argued that there are steps of the method claims that are unrelated to financial activities.  The Board agreed with Petitioner, stating that the presence of the e-commerce embodiment makes clear that the method claims are directed to financial purposes.

The Board then examined whether the ’104 Patent includes a “technological invention.” To make this determination, the Board considers “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.”  Petitioner argued that the problem solved by the ’104 Patent is not technical, but rather social or commercial – did the recipient read my letter, receive my purchase order, or open my advertisement?  Patent Owner argued that the ability to provide proof that an e-mail has been opened is required to be platform-independent and that existing technology did not provide such capabilities.  The Board agreed with Patent Owner, finding that Petitioner did not demonstrate that the claimed platform-independent processes and systems were generally known in the art.  The Board also noted that providing conclusory language in a petition to the effect that the claims do not require any novel and unobvious technological implementation or solve a technical problem, without more, is not sufficient to demonstrate that a patent is not a technological invention.  Therefore, the Board found that the claims of the ’104 Patent are not directed to a covered business method.

Experian Marketing Solutions, Inc., Epsilon Data Management, LLC, and Constant Contact, Inc. v. RPost Communications Limited, CBM2014-00064
Paper 13: Decision Denying Institution of Covered Business Method Patent Review
Dated: July 31, 2014
Patent 8,161,104 B2
Before: Kevin F. Turner, Trevor M. Jefferson, and James B. Arpin
Written by: Turner
Related Proceedings: RPost Holdings, Inc. v. Epsilon Data Management LLC, No. 2:12-cv-00511-JRG (E.D. Tex.); RPost Holdings, Inc. v. Experian Marketing Solutions, Inc., No. 2:12-cv-00513-JRG (E.D. Tex.); RPost Holdings, Inc. v. Constant Contact, Inc., No. 2:12-cv-00510-JRG (E.D. Tex.)