The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and billing advertisers as the only reasons for the retaining the records. See Google Inc. v. KlausTech, Inc., CBM2016-00096, Paper 12 at 5-9 (PTAB April 6, 2017) (Decision Denying Request for Rehearing). However, the Board disagreed, focusing on only the language of the claims themselves:
[E]ven if we are to assume that the record is used for compensation and billing as mentioned in the specification of the ‘651 patent, because this billing feature is unclaimed and is, therefore, only complementary or incidental to the use of the record that is actually recited in the challenged claims, it is insufficient to qualify the ‘651 patent as a CBM patent eligible for review. See Secure Access, 848 F.3d at 1381; Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016).
See Google, CBM2016-00096, Paper 12 at 7-8.
Google also argued that statements made by KlausTech and the inventors in the district court litigation characterizing the patent as being “financial in nature” is evidence that the patent should be eligible for CBM review. See Google, CBM2016-00096, Paper 12 at 9. However, the Board again looked to the language of the claims themselves and found that KlausTech’s statements did not alter the meaning of the claims in a way that would limit them to a financial purpose:
[T]he alleged admissions against interest that Google offers as evidenced do not concern any particular claim limitation, but instead of general characterizations of the 651 patent, its claims, and how they may be used…. Such general characterizations do not qualify a patent as eligible for CBM review when the construed claim language does not contain anything explicitly or inherently financial.”
See Google, CBM2016-00096, Paper 12 at 10.
This decision shows a dramatic shift in the standard that the Board uses for determining CBM review eligibility after the Federal Circuit reversed the Board in both Secure Access and Unwired Planet. Going forward, the Board is likely to continue to construe the claims, and then focus on the scope of the construed claims to determine whether a patent is eligible for CBM review. If the specification and evidence of record do not limit the claim’s scope to a financial product or service, then the Board will not institute CBM review.