Takeaway: A reference that is prior art under only § 102(e) may not be asserted in a CBM patent review.

In its Decision, the Board denied institution of covered business method patent review of claims 1-9 of the ‘792 patent. “The ’792 patent relates to a modified automated teller machine (‘ATM’) or terminal that allows a customer to obtain cash from an account via various processes such as an ATM process or a point-of-sale (‘POS’) process using both debit cards and credit cards.”

As an initial matter, the Board determined that “none of the phrases addressed by the parties requires an express interpretation to resolve the issues presented in the asserted patentability challenges.” The Board further found that the ‘792 patent is eligible for CBM patent review. To that end, the Board noted that “displaying declaratory and interrogatory data on a display and soliciting a response thereto is not a technological feature that is novel.” Further, the “problem in the prior art which the ‘792 patent sets out to solve—‘obtaining cash from one’s account when their daily ATM limit has been reached’ . . .—is not a technical problem,” but rather “it is the effect of withdrawal limits set by banks.”

The Board next addressed Petitioner’s challenges to the claims as patent-ineligible under 35 U.S.C. § 101 for being “directed to nothing more than abstract ideas.” The Board found that “Petitioner does not identify directly ‘the abstract ideas’ to which the claims are purportedly directed,” but “implicitly identifies them as: ‘providing money to an account holder’ and ‘trial-and-error.’” The Board agreed with Patent Owner that “Petitioner has oversimplified the challenged claims.” The Board instead found that “the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed.” The Board also faulted Petitioner’s analysis for omitting “any consideration of the elements of the claims as ordered combinations to determine whether the additional elements transform the nature of the claims into a patent-eligible application.” As such, the Board concluded that Petitioner had not shown that the claims are more likely than not patent-ineligible.

The Board next addressed Petitioner’s challenge that claims 1-9 are anticipated by Akel. “Akel relates to ‘credit card advance systems and more particularly to an improved and simplified client-operated system that interfaces with any existing bank card authorization system.” Independent claim 1 recites a step of “entering a personal identification number into the terminal,” and Petitioner quotes Akel as teaching that “[e]ach system operator requires a password to access the system.” However, “Petitioner does not propose an express construction for ‘personal identification number’ and does not show that its plain and ordinary meaning would include a password.” Moreover, Akel’s teaching “relates to a system operator’s back-end access of the Akel system” but “does not describe entering a password into a terminal, let alone a PIN, as part of that process.” As such, the Board concluded that Petitioner has not shown that claims 1-8 are more likely than not anticipated by Akel.

Regarding Petitioner’s challenge that Reeder anticipates the challenged claims, the Board found that Petitioner “inaccurately concludes that Reeder is prior art under 35 U.S.C. § 102(a).” However, only Reeder’s filing date pre-dates the priority date of the challenged claims, making Reeder prior art only under 35 U.S.C. § 102(e). “However, a reference that is prior art under only § 102(e) may not be asserted in a CBM patent review.” AIA § 18(a)(1)(C). As such, the Board denied all grounds that rely on Reeder.

NRT Tech. Corp. et al. v. Everi Payments, Inc., CBM2015-00167

Paper 14: Decision Denying Instituting of Covered Business Method Patent Review

Dated: January 22, 2016

Patent: 6,081,792

Before: Michael J. Fitzpatrick, Miriam L. Quinn, and Jeffrey W. Abraham

Written by: Fitzpatrick

Related proceedings: Global Cash Access, Inc. v. NRT Tech. Corp., 15-822 (D. Nev.) and In the Matter of Certain Automated Teller Machines and Point-of-Sale Devices and Associated Software Thereof, Investigation No. 337-TA-958 (ITC).