Takeaway: A patent may be eligible for computer business method review as long as at least one claim claims a method for performing data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service.
In its Decision, the Board determined that it is more likely than not that at least one of the challenged claims (1-8 and 18-53) of the ’201 Patent is unpatentable, and instituted covered business method patent review of all of the challenged claims. The ’201 Patent is concerned with protecting data against unauthorized access.
The Board first addressed Patent Owner’s argument that the Board should exercise its discretion under 35 U.S.C. § 325(d) to deny the Petition because it relies upon prior art and arguments that are the same or substantially the same as were considered during the prosecution and reexamination of the ’201 Patent, as well as during the prosecution and covered business method review of a similar patent. The Board determined that the issues raised in the instant proceeding are not the same or substantially the same as those raised during the prosecution and reexamination of the ’201 Patent and the prosecution of a similar patent. Regarding the covered business method review of the similar patent, the Board noted that it was not filed by the Petitioner and was terminated early based upon a settlement between the parties. Therefore, the Board declined to exercise its discretion to deny the Petition under § 325(d).
The Board then examined the standing to seek covered business method patent review. Section 18 of the AIA limits covered business method review to persons or their privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” Further, 37 C.F.R. § 42.302 states “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment in Federal court.” Petitioner sates that it was sued for infringement of the ’201 Patent. Patent Owner does not dispute that it filed suit, but alleges that Petitioner filed an action for declaratory judgment of non-infringement and invalidity of the ’201 Patent, and should be estopped from filing the instant Petition. Patent Owner acknowledged that the declaratory judgment action was dismissed without prejudice, and the Board found that actions dismissed without prejudice are a nullity and do not estop Petitioner.
Next, the Board reviewed whether the ’201 Patent claims a financial product or service. Petitioner argued that the ’201 Patent claims methods “for performing data processing or other operations that are at least incidental to the practice, administration, or management of its financial product or service.” The Petitioner noted that the method of claim 1 is described in the specification as protecting information on individuals that would be found in business of a financial nature, including banking. Patent Owner stated that Petitioner bases its entire argument on the word “banking” in the specification, but that the discussion of banking was general and illustrates that the claims have a general applicability to many industries and are not specific to one application. Patent Owner further states that the Petition does not cite to any words in any claim that are directed to a financial product or service. The Board was persuaded by Petitioner that at least one claim claims a method for performing data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service.
The Board then addressed whether the ’201 Patent claims a technological invention such that 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. Patent Owner argued that the ’201 Patent is for a technological invention because it solves the technical problem of incomplete data protection in a database with the technical solution of (i) associating each data element type with one or more protection attributes and (ii) making compelling calls to the data element protection catalogue when data is requested. Patent Owner also argued that the ’201 Patent is for a novel and unobvious technological invention. The Board was persuaded by the Petitioner that at least claim 1 does not recite a technological feature that is novel or unobvious over the prior art and that it does not solve a technical problem using a technical solution.
The Board then reviewed claim construction, stating that the claims are construed under the broadest reasonable construction standard. The Board agreed with Petitioner’s construction of “processing rules,” “data element type,” and “database,” and that no explicit construction of any other claim terms is necessary.
The Board then discussed the first grounds of unpatentability, whether the challenged claims are invalid under 35 U.S.C. § 101. Patent Owner first argued that § 101 is not available to challenge patentability in a covered business method review. The Board disagreed, stating that the final rules regarding covered business method patent review stated that § 101 was a ground for review. The Board then discussed the substance of the § 101 challenge, stating that to be patent eligible, the claimed subject matter must be a process, a machine, a manufacture, or a composition of matter. The Board cited to Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), which set forth a two-step analysis for determining if claims are directed to patent-ineligible subject matter: (1) determine whether the claims at issue are directed to one of the patent-ineligible concepts; (2) if so, consider whether the additional elements of the claim transform the nature of the claim into a patent-eligible application. Petitioner argued that the claims of the ’201 Patent are directed merely to the abstract idea of “rule based data access.” The Board was persuaded that the subject claims are directed to the abstract idea of determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied. Patent Owner then argued that the claims are limited meaningfully to a particular practical application, but that board found that the computer-related limitations are not meaningful, and cannot salvage the claims and make them patent eligible.
The Board then reviewed whether claims 1, 5, 8, 18-20, 27, 28, 30, 36-38, 45, 46, and 48 are anticipated by Hoffman. Patent Owner argued that that Hoffman does not disclose a “database” with a table of rows and columns. The Board agreed with Patent Owner that Hoffman does not explicitly disclose a “database,” and found that the Petitioner did not provide enough evidence to find an implicit disclosure. Therefore, the Board denied review on this ground.
The Board then examined whether claims 1, 2, 8, 19-26, 29, 31-34, 37-44, 47, and 49-52 are obvious over Hoffman and IBM D2. Patent Owner first argued that Hoffman is not prior art to the instant claims because Petitioner’s expert merely stated that it was published in 1971 without any evidence. The Board determined that Petitioner made the threshold showing that Hoffman is a “printed publication” because the document stated “Fall Joint Computer Conference, 1971.” Further, Patent Owner will have the opportunity to object to the evidence as inadmissible within ten days of institution of trial. Patent Owner also argued that Hoffman and/or the IBM D2 do not disclose certain limitations, but the Board found otherwise. Next, the Board reviewed the ground of obviousness of claims 3, 4, 7, 32, and 50 over Hoffman, Admitted Prior Art, Shear, and Du. The Board found that because these combination relied on anticipation of claims 1 and 8 by Hoffman alone, it could not institute trial on this ground.
Finally, the Board discussed whether claims 35 and 53 would have been obvious over Hoffman, IBM D2, and Du. The Board was not persuaded by Patent Owner’s arguments, and found that it is more likely than not that claims 35 and 53 are unpatentable as obvious over Hoffman, IBM D2, and Du.
Informatica Corporation v. Protegrity Corporation, CBM2015-00021
Paper 14: Decision on Institution of Covered Business Method Patent Review
Dated: June 1, 2015
Patent 6,321,201 B1
Before: Kevin F. Turner, Meredith C. Petravick, and Gregg I. Anderson
Written by: Turner
Related Proceedings: Protegrity Corp. v. Informatica Corp., No. 3:14-cv-02588 (N.D. Cal.); CBM2015-00002; CBM2015-00014; CBM2015-00030; Reexmaination No.. 90/011,364; CBM2014-00182; CBM2015-00006; CBM2015-00010; CBM2014-00024; CBM2014-00121