Takeaway: The Board will not give any weight to declarations that are not sworn under penalty of perjury and do not indicate that the witness was warned that willful false statements are punishable by fine or imprisonment.

In its Decision, the Board determined that Petitioner did not demonstrate that U.S. Patent No. 6,292,547 is a covered business method patent and therefore denied a petition to institute a covered business method (CBM) review of claims 11 and 18 of the ’547 patent. The ’547 patent relates to a telephonic-interface statistical analysis system. Petitioner contended that the challenged claims are unpatentable under 35 U.S.C § 101 and under § 103 over Jordan and Michlin.

The Board began by considering Patent Owner’s contention that the Petition should be denied because Petitioner did not name four subsidiaries as real parties-in-interest. The Board concluded that Patent Owner’s Preliminary Response did not “provide persuasive evidence” that the subsidiaries are real parties-in-interest. In particular, it was not persuaded by contentions that two of the subsidiaries “share corporate leadership” with Petitioner and that “decisions made regarding this Petition on behalf of Petitioner are also decisions necessarily under the control of these subsidiaries” without evidence that the subsidiaries “exercised or could have exercised control over Petitioner’s filing of the Petition.” In addition, the fact that all four subsidiaries are co-defendants in pending litigation, without more, was not sufficient to demonstrate control of the CBM proceeding by the subsidiaries. Accordingly, the Board determined that the Petition should not be denied on this basis.

Next, the Board addressed Patent Owner’s argument that a declaration submitted by the Petitioner (the Emerson Declaration) “should be given no weight as evidence” because it “is non-compliant with the rules and statutes governing the submission of direct testimony in this proceeding” because the Declaration “is not sworn under penalty of perjury and does not include any statements or warnings whatsoever as to the truth of the statements made therein or the ramifications of making any false statements.” The Board was persuaded by Patent Owner’s arguments. The Board first reiterated that, under 37 C.F.R. § 42.63, in a CBM proceeding, “[e]vidence consists of affidavits, transcripts of depositions, documents, and things.” It then found that the Emerson Declaration did not “meet the required form of evidence in this proceeding because, as indicated in the Declaration, the Declarant was not warned that willful false statements are punishable by fine or imprisonment, or sworn under penalty of perjury.” Accordingly, the Board gave no weight to the Emerson Declaration.

The Board then considered whether the ’547 Patent is a CBM patent. “Claim 11 of the ’547 patent recites an analysis control system comprising interface structure, record testing structure, storage structure, and analysis structure.” After reviewing the claim, the Board concluded that “[n]one of the claims expressly recites a method or apparatus ‘for performing data processing or other operations used in the practice, administration, or management of a financial product or service’” and that “the claims on their face are directed to technology ‘common in business environments across sectors’ with ‘no particular relation to the financial services sector,’ which the legislative history indicates is outside the scope of covered business method patent review.” The Board was not persuaded by Petitioner’s argument that “storing data for ordering particular items relates to the practice, administration, or management of a financial product or service.” The Board similarly was not persuaded by Petitioner’s argument that a claim limitation reciting “the use of a credit card number in connection with the ordering process” results in the claim reciting “an activity that is necessarily financial in nature or incidental or complementary to a financial activity” because, for example, the credit card information “may be used solely for identification purposes.” The Board also did not find the nature of Petitioner’s accused product (“customer service and revenue service systems’”) determinative of whether the ’547 patent is a CBM patent. Finally, the Board also was not persuaded that the ’547 patent is a CBM patent based on “the classification of the ’547 patent in Class 379/93.12, which Petitioner states is drawn to ‘[s]ubject matter wherein the transmitted digital message signal is used for financial transactions,’” or “in Class 379/91.02, which Petitioner states is drawn to ‘[s]ubject matter including a switching facility having structure or circuitry for credit transaction processing.’” The Board concluded that, “[e]ven if the subclass definitions relate to a financial product or service, Petitioner fails to explain persuasively how the systems recited in the claims use a transmitted digital message signal for financial transactions or have structure or circuitry for credit transaction processing.”

Accordingly, the Board determined that “the information presented in the Petition does not establish that the ’547 patent qualifies as a covered business method patent under section 18 of the AIA” and that Petitioner did not “satisfy the jurisdictional requirements” for a CBM review.

FedEx Corp. v. Ronald A. Katz Technology Licensing, L.P., CBM2015-00053

Paper 9: Decision Denying Institution of Covered Business Method Patent Review

Dated: June 29, 2015

Patent: 6,292,547 B1

Before: Josiah C. Cocks, Justin Busch, and Michelle N. Wormmeester

Written by: Wormmeester Related Proceedings: Ronald A. Katz Technology Licensing, L.P. v. American Airlines, No. 2:06-cv-00334 (E.D. Tex.) and 35 other federal court and USPTO proceedings identified in the Petition