Takeaway: When considering whether a claim directed to an abstract idea is “meaningfully limited,” the Board looks to whether the claim contains more than mere field-of-use limitations, tangential references to technology, insignificant pre- or post-solution activity, ancillary data-gathering steps, or the like.
In its Decision, the Board instituted a covered business method patent review of claims 1, 5, 19, 20, and 27-31 (the “challenged claims”) of U.S. Patent No. 6,321,201 B1. The ’201 patent relates to protecting data against unauthorized access. The petition asserted eight separate grounds for invalidity for each of the challenged claims.
The Board began by considering Patent Owner’s request that it exercise its discretion to deny the Petition on the grounds that “it relies upon prior art and arguments that are the same or substantially the same as considered during the prosecution of the ’201 Patent, during the reexamination of the ’201 patent, during the prosecution of the ’281 Patent and in CBM2014-00024.” After reviewing the cited references and the files of the earlier proceedings, the Board decline to exercise its discretion to deny the Petition.
The Board then analyzed whether Petitioner had standing to seek a covered business method patent review. Specifically, it considered whether the patent “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” that is not a technological invention. Petitioner argued that the ’201 Patent claims “a method for performing data processing, including protecting against unauthorized access of data, such as in banking, that is at least incidental to the practice, administration, or management of a financial product or service.” In response, Patent Owner asserted that “[t]he claims of the [’]201 Patent do not encompass activities that are ‘financial in nature, incidental to a financial activity or complementary to a financial activity.’” The Board was persuaded that:
at least one claim claims a method for performing data processing or other operations that are at least incidental or complementary to the practice, administration, or management of a financial product or service. Claim 1 recites “controlling the user’s processing of the given data element value in conformity with the collected protection attribute/attributes.” The Specification discloses that protection attributes are used to protect against unauthorized access of a data portion in a database (see Ex. 1001, col. 4, ll. 26–32) and that banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired.
Because “[b]anking is a financial activity,” the Board determined that Petitioner had satisfied the first element of the test.
The Board then considered whether the ’201 patent is directed to a technological invention and concluded that it is not, in part because claim 1 “does not recite a technological feature that is novel or unobvious over the prior art.” Instead, it “recites a method that is ‘storing’ data in multiple ‘databases,’ and controlling a user’s processing ‘in conformity with the collected protection attribute/attributes.’” The Board noted that “[d]ata processing computers having databases, which store the data, and controlling access thereto, were known at the time of filing the ’201 Patent.
Turning to the substantive issues of the proceeding, the Board began with claim construction. The Board adopted Petitioner’s proposed construction of “data processing rules” as “rules for processing data” and rejected Patent Owner’s proposed construction as “overly narrow” and attempting “to import the limitations…from the Specification…into the claim.”
The Board then considered and rejected Patent Owner’s argument that “§ 101 is not available to challenge patentability in a covered business method patent review, because it is not included in 35 U.S.C. §§ 282(b)(2) or (3).” The Board explained:
Under the AIA, any ground that could be raised under §§ 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions not relevant here) in a covered business method patent review. The final rules implementing post-grant review and covered business method patent review in the Federal Register state that the “grounds available for post-grant review include 35 U.S.C. [§§] 101 and 112, with the exception of compliance with the best mode requirement.” 77 Fed. Reg. 48,680, 48,682 (Aug. 14, 2012).
Next, the Board analyzed whether the challenged claims directed to patent eligible subject matter under § 101. Applying the framework of Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Board determined that the challenged claims are “directed to the abstract idea of determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied,” do not include “meaningful limitations that can salvage [them] and make them patent eligible,” and “require nothing more than the routine and conventional use of a computer, having a database containing objects, and a database containing attributes associated with those objects, and a processor.” The Board explained that “[t]o be limited meaningfully, the claim must contain more than mere field-of-use limitations, tangential references to technology, insignificant pre- or post-solution activity, ancillary data-gathering steps, or the like.”
The Board then considered Petitioner’s arguments regarding alleged anticipation of the challenged claims, determining that each of the cited references did not disclose at least one of the claim limitations. Then, with respect to Petitioner’s proposed obviousness grounds, the Board noted that it had determined that each of the references does not describe certain limitations of the claims and concluded that Petitioner had not provided “any other evidence or rationale, specifically, as to why [these] certain limitations would have been obvious.” The Board explained that
Petitioner must identify and articulate clearly each prior art combination relied on to support an assertion of unpatentability based on obviousness. Neither Patent Owner nor the Board should have to speculate in any respect. There can be no avoidance of articulating the precise combination relied on to render a claim obvious. Petitioner’s approach of offering a plurality of prior art references for consideration, with the particular and necessary combination to be selected or chosen by the Board is improper.
Accordingly, the Board instituted a CBM patent review proceeding of the challenged claims only under § 101.
Epicor Software Corp. v. Protegrity Corp., CBM2015-00002
Paper 17: Decision on Institution of Covered Business Method Patent Review
Dated: April 22, 2015
Patent: 6,321,201 B1
Before: Kevin F. Turner, Meredith C. Petravick, and Gregg I. Anderson
Written by: Turner
Related Proceedings: Protegrity Corp. v. Epicor Software Corp., No. 3:13-cv-01781-JBA (D. Conn. Dec. 2, 2013); CBM2015-00014, CBM2015-00021, and CBM2015-00030; Reexamination No. 90/011,364