Patent claims reciting subject matter that, among other applications, could be used in the financial industry, do not qualify for Covered Business Method (CBM) review, said the USPTO’s Patent Trial and Appeal Board in Qualtrics, LLC v. OpinionLab, Inc., Case CBM2016-00003 (PTAB April 13, 2016). Claims of U.S. Patent No. 8,041,805 were directed to collecting user feedback on webpages. The PTAB denied a petition for CBM review of the ’805 patent, concluding that Qualtrics, the Petitioner, had failed “to demonstrate that the ’805 patent is a ‘covered business method patent’ as defined by § 18(d)(1) of the Leahy–Smith America Invents Act, Pub. L. No. 112–29, § 6, 125 Stat. 284, 299–305 (2011) (“AIA”).
The PTAB started by quoting from the AIA’s definition of “covered business method patent,” the emphasis being the PTAB’s, as one “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.” (The PTAB also quoted the last part of the statutory definition, “except that the term [CBM] does not include patents for technological inventions,” although it did not need to reach that prong in this decision.)
Consonant with its focus on the patent claims, the PTAB summarized the claims of the ’805 patent (which you can find here) by explaining that:
[c]ommon to each of the independent claims is an “element viewable on each of a plurality of particular webpages” for soliciting “page-specific user feedback” from a website user “while the user remain[s] at the particular webpage” and “regardless of user scrolling.”
The Petitioner argued that the “claimed invention is directed to a financial product or service because the specification states that the claimed invention may be used in connection with websites that conduct ‘commercial transactions.’” The PTAB was not persuaded, because “the relevant inquiry is on the claims and whether they are directed to a financial product or service.” (Emphases in PTAB Opinion.)
Here, the claims were about “nothing more than a website tool for gathering information—a quick and easy way to solicit contemporaneous reactions from website users.” Nothing in the claims was “exclusive” to the financial industry. The specification discussed a “general utility” across a range of industries and applications, commercial and non-commercial.
The Petitioner also argued that, because the specification discussed using the claimed invention to “measure the website’s value,” the ’805 patent was “financial in nature.” The PTAB dismissed this argument, noting that in addition to measuring website value based on “clicks,” the specification discussed many other applications for the ’805 patent’s collection of information, including “polling, surveying, product development research, market research, [and] usability testing.”
Likewise, the fact that collected user data could be provided “for a fee” was speculation, and did not make the ’805 patent “financial in nature.” The PTAB did “not discern any claim language that gives rise to a fee or other movement of money.”
In sum, the PTAB explained that simply because the “specification may describe the website tool as capable of being used for commercial purposes does not mean that the claims are limited to such applications.” The PTAB rejected the Petitioner’s position, which “would mean that any patent claiming something that might have potential application to a financial product or service would be eligible for CBM patent review, regardless of its general utility and application outside of finance.”
And that last sentence is the appropriate takeaway from this case. This panel, at least, was clear that claimed subject matter must be more than capable of use in the financial industry to be eligible for CBM review; it must be directed to that use. Many patent claims could have application in the financial industry and, at the same time, in many other industries. Read literally, the definition of “covered business method” in the AIA could be read to encompass any claim to subject matter that could be used in the financial industry. That reading would encompass a lot of claims conceived with many other applications in mind. But not only is such a reading more expansive than Congressional intent, it would greatly expand the PTAB’s CBM docket.