Patent Claims Not Eligible for CBM Review CBM2015-00108


Takeaway: In order to show eligibility for covered business method patent review, the petitioner must show that the claimed language is financial in nature, not just that an embodiment is financial in nature.

In its Decision, the Board declined to institute covered business method patent review as to any of the challenged claims (1, 5, 7-10, 12, 15, and 24-26) of the ’860 Patent. The ’860 Patent relates to a web service management system for monitoring a “conversation,” or “a set of related messages sent and received by a particular conversation.”

The Board began by reviewing whether any of the challenged claims are eligible for covered business method patent review. Petitioner argued that claim 1 is eligible for review because it recites a system for monitoring conversations in a web service, and the specification states that a “web service” can include any type of business or financial transaction. Petitioner noted that the embodiment illustrated in Figure 2 relates to an online store, and shows that ‘information” related to financial products or services can be exchanged in the managed conversations.

Patent Owner disagreed, contending that covered business method review “is not available for patents that claim generally useful technologies that happen to also be useful to financial applications.” Patent Owner stated that none of the challenged claims contain any limitations that are financial in nature.

The Board agreed with Patent Owner. The Board stated that the proper focus for eligibility for covered business method review is on the claims, not the specification. The Board also agreed with Patent Owner that the specification states that the invention is directed to managing systems implemented using web services, as opposed to performing any particular financial transactions, and that the claims are of general utility. The Board also noted the similarity of this case to another filed by Petitioner – CBM2015-00107 – which was also denied review because Petitioner had not established that the claims were eligible for covered business method review. The Board agreed with that panel on many aspects, including that embodiments in the specifications that are directed to applications of the claimed system in financial systems are not enough to make the patent eligible for covered business method review. The Board stated that it is not enough that the invention may be used in a financial system, but that the specification has to note particular advantages or applicability to financial embodiments.

ServiceNow, Inc. v. Hewlett-Packard, Co., CBM2015-00108
Paper 10: Decision Denying Institution of Covered Business Method Patent Review
Dated: October 7, 2015 Patent 7,945,860 B2
Before: Rama G. Elluru, James B. Arpin, and Jo-Anne M. Kokoski
Written by: Arpin
Related Proceedings: Hewlett-Packard Co. v. ServiceNow, Inc., No. 14-cv-00570BLF (N.D. Cal.); IPR2015-00716; IPR2015-*00523; IPR2015-00631; IPR2015-00699; IPR2015-00702; IPR2015-00707; CBM2015-00077