Takeaway: Arguments related to either patentability or whether claims qualify for covered business method patent review are likely not persuasive if they are not commensurate in scope with the claims of the challenged patent.

In its Decision, the Board denied both parties’ requests for rehearing of the Board’s Decision to institute trial with respect to some of the asserted grounds in the Petition. The Board reviews decisions for an abuse of discretion, which “may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” The party requesting rehearing has the burden to show the decision should be modified and “must identify specifically all matters the party believes the Board misapprehended or overlooked.”

Patent Owner requested that the panel be expanded because the Board’s Decision allegedly “conflicts with other non-precedential decisions regarding the issue of standing to institute covered business method patent review and conflicts with the precedential decision SecureBuy, LLC v. Cardinal Commerce Corp., CBM2014-00035, Paper 12.” The Board first noted that parties are not permitted to request an expanded panel and that the decision is in the discretion of the Chief Judge. The Board had informed the Chief Judge of the request, and the request was declined.

Patent Owner contended that Petitioner does not have standing under 35 U.S.C. § 325(a)(1) in light of SecureBuy because “Petitioner filed a civil action challenging the validity of a claim of the ’281 patent prior to filing the Petition.” The Board first noted that it did not ignore the statute or the SecureBuy decision. Instead, the Board found that in this case, Petitioner’s civil action “did not trigger the statutory bar because the civil action was dismissed without prejudice.” While SecureBuy held that 35 U.S.C. § 325(a)(1) applies to covered business method review, the decision did not address whether a civil action that is dismissed without prejudice would trigger the bar.

Patent Owner argued that the Board overlooked its arguments regarding whether the patent claims covered a financial product or service. The Board disagreed, pointing to its analysis in the Decision on Institution in which it found the claims to be “broad enough to cover a financial product or service.” Patent Owner cited allegedly “conflicting non-precedential Board decisions” in support of its argument that “a method, which could be used in the financial service industry, is not necessarily eligible for covered business method review.” The Board, however, noted that the decisions were not binding and further distinguished each of the decisions from the present proceeding. Thus, the Board was not persuaded that it abused its discretion in finding at least claim 1 encompassed a financial product or service.

Patent Owner further argued that the Board overlooked arguments that the claims of the ’281 patent recite technological features such that the patent would not qualify for review. However, the Board disagreed. In particular, the Board noted that in its Decision, claim 1 was found not to recite a “technological feature that is novel or unobvious over the prior art” and that Patent Owner’s arguments were “not commensurate with the scope of claim 1.” Therefore, the Board was not persuaded that it abused its discretion in finding claim 1 does not recite a technological invention.

Patent Owner then challenged the Board’s finding with respect to whether the ’281 patent is directed to an abstract idea under 35 U.S.C. § 101. The Board found that it did not overlook Patent Owner’s argument that the claims “work on the cell or data element level,” and instead found it unpersuasive because “it was not commensurate with the scope of the claims.” The Board also found that Patent Owner’s reliance upon the Denning reference as evidence of patent eligibility was not presented in its Preliminary Response and was therefore not overlooked, but was nevertheless unpersuasive.

The Board also disagreed with Patent Owner’s contention that the Board misapprehended the Denning reference. Again, the Board noted that Patent Owner’s arguments concerning Denning are not commensurate in scope with the claims. Therefore, Patent Owner’s Request for Rehearing was denied.

Turning to Petitioner’s request to rehear the denial of institution as to alleged anticipation of certain claims by Denning, the Board remained unpersuaded that the claims are anticipated. Therefore, Petitioner’s Request for Rehearing was also denied.

Informatica Corp. v. Protegrity Corp., CBM2015-00010

Paper 26: Decision on Request for Rehearing

Dated: August 6, 2015

Patent: 8,402,281 B2

Before: Kevin F. Turner, Meredith C. Petravick, and Gregg I. Anderson

Written by: Petravick