Great West Casualty Co. v. Intellectual Ventures II LLC

Addressing whether disclaimed claims should be considered when determining whether to institute a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) denied institution, finding that such claims should be disregarded and that the remaining claims were not demonstrably finance related. Great West Casualty Co. v. Intellectual Ventures II LLC, Case No. CBM2015-00171 (PTAB, Feb. 9, 2016) (Kim, APJ). 

The petitioner requested CBM review of a patent directed to distributing content through one or more distributed information access points to a centralized access point, which purportedly helps users identify and access desired information. In its preliminary response, the patent owner indicated that it had disclaimed certain claims of the patent. The petitioner argued that the disclaimed claims should be considered in deciding whether to institute the CBM review, and that even if the disclaimed claims were not considered, the remaining claims were sufficiently financial in nature. The petitioner further argued that several portions of the specification illustrated the financial nature of the claimed invention.   

With respect to the disclaimed claims, the Board cited US Court of Appeals for the Federal Circuit precedent for the proposition that disclaimed claims are to be treated as though they never existed. The Board acknowledged that other panels have taken disclaimed dependent claims into consideration, but explained that this was limited to instances where the independent claims (on which the disclaimed claims depend) include limitations that encompass finance-related subject matter. In this case, the Board found little overlap between the disclaimed and remaining claims.

The Board also found that the petitioner failed to show that the remaining claims were finance related. The petitioner argued that claim elements such as “server” and “content objects” were finance related. The Board disagreed, finding that, on their face, these claim terms were not related to finance. Turning to the specification, the Board found that the specification as a whole was directed to technology of general applicability, and although portions of the specification pertained to finance, those portions “were insufficient to convert the otherwise general terminology of [the remaining claims] into finance-related subject matter.”