Disclaimed Claims Will Not Be Considered In Eligibility of Business Method Review CBM2016-00016


Takeaway: If a patent owner disclaims claims when filing a preliminary patent owner response, those claims cannot be considered in the analysis of whether the patent is eligible for covered business method patent review.

In its Decision, the Board denied covered business method patent review of the challenged claims (1-19) of the ’957 Patent. The ’957 Patent relates to Geographic Information Systems (“GIS”), and, in particular, to a National Online Parcel-Level Map Data Porta (“NPDP”) that provides online delivery of parcel-level map data.

The Board began with the threshold question of whether the ’957 Patent is a “covered business method patent” as defined by the AIA, which 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 contends that the ’957 Patent is a covered business method patent because “[a]t least claim 1 of the ’957 Patent claims data processing or other operations that are financial in nature or, at a minimum, incidental or complementary to a financial activity.”  Petitioner also relied on claims 13 and 16-18, however, Patent Owner disclaimed those claims when it filed its Preliminary response.  Therefore, the Board determined that those claims could not be consulted when determining whether the patent is a covered business method patent.

Regarding the argument that at least claim 1 practices a financial product or service, Petitioner states that the specification confirms that this claim is directed to processing data as part of the financial process, and describes using the claimed method for business and financial services. Patent Owner argued that the focus should be on the claims and there is no financial term in the claims.  The Board agreed with Patent Owner that Petitioner did not explain adequately how any of the claims of the ’957 Patent recites a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”  The Board noted that Petitioner’s reliance on the specification was unavailing because it failed to address how the disclosures relate to the claim language.

CoreLogic, Inc. v. Boundary Solutions, Inc., CBM2016-00016
Paper 9: Decision Denying Institution of Covered Business Method Review
Dated: May 24, 2016
Patent 7,092,957 B2
Before: Lynne E. Pettigrew, Peter P. Chen, and Richard H. Marschall
Written by: Chen
Related Proceedings: Boundary Solutions, Inc. v. CoreLogic, Inc., No. 5:14-cv-0761 (N.D. Cal.); IPR2015-00226; IPR2015-00219; IPR2015-00228; IPR2015-00225; IPR2015-00222