Addressing the “inventive concept” prong of a covered business method (CBM) patent review, the Patent Trial and Appeal Board (PTAB) instituted the CBM, finding that the challenged claims failed to recite an inventive concept where the claimed computer components performed anything more than their conventional generic functions. Plaid Technologies, Inc. v. Yodlee, Inc., Case No. CBM2016-00088 (PTAB, Dec. 7, 2016) (Kim, APJ).
Yodlee sued Plaid Technologies alleging infringement of a patent directed to a system that collects transactional information for a particular person or enterprise and categorizes the collected information based on the corresponding transactional description. Plaid Technologies filed a petition requesting a CBM review of the patent, challenging the patent eligibility of the claims under § 101.
In its CBM jurisdictional analysis, the PTAB found that the claims were directed to a financial product or service and proceeded to consider whether the claims qualified for the “technological invention” exception. Presaging its § 101 analysis, the PTAB concluded that the recited computer hardware components were “well known.”
In terms of § 101 analysis, the PTAB applied the two-step Alice inquiry. After finding that the claims were directed to an abstract idea, the PTAB addressed whether the claims recited an innovative concept that encompasses “significantly more” so as to transform the abstract idea into patent-eligible subject matter. The PTAB concluded that the challenged claims added nothing but the instruction to automate the claimed process using conventional, generic computer hardware, finding that the patent lacked any indication in the claims or specification that any of the recited computer hardware was used in a manner apart from its conventional generic use. The PTAB explained that the challenged claims failed to specify how the claimed probability algorithm and computer components were used in a non-conventional manner, further noting that the specification described the computer components as conventional and “typical in the art.”
The PTAB concluded that the challenged claims focused on generic conceptual categorization methodology, not improvements to the operation of computer components, dismissing the patent owner’s argument that the claimed “collection function” and “processing function” amounted to an inventive concept. The PTAB found the challenged claims distinguishable from those at issue in BASCOM (IP Update, Vol. 19, No. 8), noting that the patent owner’s reliance on BASCOM was misguided. In BASCOM, the requisite inventive concept was found in the non-conventional and non-generic arrangement of known, conventional pieces. By contrast, in this case, the claims were recited at a high level and did not include sufficient details as to how the computer components execute the recited functions so as to carve out a specific mechanism for using computer components.