Takeaway: The Board refused to allow the parties to file a motion to terminate the proceeding without a written settlement of the dispute.

In its Decision, the Board declined institution of covered business method patent review in either CBM2015-00109 or CBM2015-00149 as to any of the challenged claims (1-26) of the ’074 Patent. The ’074 Patent relates to “a ‘unified messaging service’ that allows a user to access communications such as e-mail and voice mail using ‘a single point of access to all communications, integrated with personal information management tools and customized public content delivery.’”

In a related actions, the District Court of Delaware granted Petitioner’s motion to dismiss on the ground that the ’074 patent is ineligible under 35 U.S.C. § 101. Petitioner and Patent Owner jointly requested authorization to file a motion for termination under 35 U.S.C. § 327, but confirmed to the Board that no written settlement currently exists. “The parties requested that the proceedings terminate without estoppel such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary.” The Board determined that the parties were requesting that it stay the proceedings pending Federal Circuit review of the District Court’s decision. The Board denied the request, stating that deferring entering a decision on institution is inconsistent with its policy of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.”

The Board began by reviewing whether any of the challenged claims are eligible for covered business method patent review. The Board noted that Petitioner did not focus on the language of a particular claim in arguing that the ’074 patent is eligible for covered business method patent review. First, “Petitioner argues that Patent Owner has asserted the ’074 patent only against financial institutions, and, accordingly, that ‘[e]ach of claims 1-26 are directed to a method or corresponding apparatus for sending and managing information form a subscriber to a network used in the practice, administration, or management of a financial product or service.” Second, “Petitioner argues that the ’074 patent specification ‘discloses that the claimed components are used for financial purposes.’” The Board noted that the examples of using for financial purposes provided by Petitioner were merely that business people seek to “interact commercially” in an increasingly mobile society; that the system provides “direct access to news, weather, sports, financial, travel, and other custom content;” and a depiction of “billing info” stored in the database.

Patent Owner argued that “the ’074 patent does not claim financial products or services because its claims are directed to technology applicable across a variety of industries and business sectors and do not relate particularly to the financial services sector,” and that “Petitioner has failed to identify in the claims any recitation of the movement of money or other financial transactions.” Further, Patent Owner argued that its asserted infringement allegations are against systems of general applicability, and that the district court pleadings do not articulate the precise nature of the products accused of infringement.

The Board noted that the legislative history includes portions that support both positions, but previous panels of the Board, focusing on the statutory language, have declined to institute covered business method patent review of patents with claims that, although usable in commerce, nevertheless are applicable generally to a variety of industries. Therefore, because Petitioner “points to no recitations in the claims addressing financing, commerce, or the movement of money,” and the Specification discloses an invention of general applicability, the Board did not find that the claims were directed to a financial product or service. Also, the Board did not consider whether Patent Owner has asserted the ’074 patent only against financial products of financial service firms dispositive on the issue. Because the Board did not find that the claims were directed to a financial product or service, the Board was not persuaded that the ’074 patent is eligible for covered business method patent review.

PNC Bank NA and SunTrust Bank v. Parus Holdings, Inc., CBM2015-00109, CBM2015-00149

Paper 10: Decision Denying Institution of Covered Business Method Patent Review

Dated: November 9, 2015

Patent 8,838,074 B2

Before: Bart A. Gerstenblith, David C. McKone, and Patrick M. Boucher

Written by: McKone

Related Proceedings: Parus Holdings, Inc. v. PNC Bank, N.A., No. 1:14-cv-01428-UNA (D. Del.); Parus Holdings, Inc. v. SunTrust Bank, No. 1:14-cv-01429-UNA (D. Del.); Parus Holdings, Inc. v. Sallie Mae Bank, No. 1:14-cv-01427-UNA (D. Del.); CBM2015-00110 (8,343,120); CBM2015-00150 (8,343,120); CBM2015-00111 (8,843,141); CBM2015-00151 (8,843,141); CBM2015-00112 (8,098,600); CBM2015-00152 (8,098,600)