Takeaway: When Patent Owner has filed many lawsuits alleging financial institutions have infringed the challenged patent, the lawsuits are a factor that weigh in favor of finding that the challenged patent claims “a method or apparatus that at least is incidental to a financial activity.”
In its Decision, the Board instituted a covered business method patent review of all challenged claims (claims 1-5, 16, and 29-32) of U.S. Pat. No. 7,631,191. The ’191 patent relates to authenticating a web page and providing an “authenticity stamp” on the authenticated web page.
The Board first examined whether Petitioner has standing to seek a CBM patent review of the ’191 patent. The parties’ dispute concerning standing focused on whether the ’191 patent is a “covered business method patent.” The Board agreed with Petitioner that it is a CBM patent after finding that: (a) “the method and apparatus claimed by the ’191 patent perform operations used in the administration of a financial product or service and are incidental to a financial activity” because it is “directed to solving problems related to providing a web site to customers of financial institutions,” and (b) “the technological features of the claimed steps are directed to using known technologies.” In determining that the ’191 patent claims “a method or apparatus that at least is incidental to a financial activity,” the Board concluded that “Patent Owner’s many suits alleging infringement of claims of the ’191 patent by financial institutions is a factor weighing toward [this] conclusion.”
The Board then considered the proposed grounds of unpatentability. After rejecting Petitioner’s argument that the challenged claims are directed to the “computerized application of notarizing documents,” the Board concluded that Petitioner had not demonstrated that it was more likely than not that the challenged claims are unpatentable under § 101. The Board then decided not to institute trial on the proposed ground relating to § 112 because Petitioner only argued that the specification lacked written support for “transforming” and “transforms” if they were construed to mean anything other than “formatting” and “formats,” which is the construction adopted by the Board. Turning to the proposed grounds under §§ 102 and 103, the Board concluded that Petitioner had demonstrated that it is more likely than not that claims 1, 3, 5, 16, and 29-32 are anticipated by Houser and claims 2 and 4 are obvious over Houser and Yoshiura. Accordingly, the Board ordered institution of a CBM patent review as to all challenged claims on these grounds.
T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLC, CBM2015-00027 Paper 9: Decision on Institution of Covered Business Method Patent
Dated: June 22, 2015
Patent: 7,631,191 B2
Before: Barbara A. Benoit, Trenton A. Ward, and Georgianna W. Braden
Written by: Benoit
Related Proceedings: Secure Axcess, LLC v. T. Rowe Price Investment Services, Inc., Case No. 6:13-cv-00787 (E.D. Tex); CBM2014-00100; IPR2014–00475; CBM2015-00009; CBM2015–00039