Takeaway: Although the financial product or service portion of the covered business method test is ordinarily addressed before the technological invention exclusion, because the technological invention exclusion is dispositive, that sequence is not required.
In its Decision, the Board did not institute covered business method patent review of any challenged claim of the ‘246 patent. The Board reached this conclusion because it was not persuaded that ‘246 patent qualifies as a “covered business method patent” under § 18(d)(1) of the AIA.
Petitioner had challenged claims 1-9, 11-14, 16-19, 21, 23-32, 34, 35, 37-45, 51-56, 58, 60, 62-67, and 69-73 of the ‘246 patent, as being directed to subject matter that is not patent-eligible under 35 U.S.C. § 101. The claims of the ‘246 patent relate to “a method for performing a transaction-related analysis,” with the disclosure of the ‘246 patent describing “a method for retailers to perform analysis on transaction data, such as retail sales and consumer data, from a remote location using an internet connected computer.”
37 C.F.R. § 42.304(a) requires that the Petition must “demonstrate that the patent for which review is sought is a covered business method patent.” In turn, a “covered business method” is defined under AIA § 18(d)(1) as “a patent that 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, except that the term does not include patents for technological inventions.” The Board focused on the technological invention exclusion part of the test before the financial service portion of the test.
In the instant proceeding, the Board did not institute covered business method review of any of the challenged claims of the ‘246 patent because, according to the Board, “Petitioner’s showing on the technological invention portion of that test is insufficient.” As noted by the Board, the test for determining whether a patent is directed to a technological invention comprises two prongs: “ whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and  solves a technological problem using a technical solution.”
The Board concluded that Petitioner had not met its burden with respect to the first prong of the test, finding that Petitioner had addressed only certain elements of the claims, such as the portions reciting computers, databases, and database analysis scripts, and thus had failed to assess any of the claims as a whole. As characterized by the Board, [p]articularly lacking in Petitioner’s analysis is any discussion of the novelty or nonobviousness of the script template limitations, a focal point throughout the prosecution of the ’246 patent.”
The Board found Petitioner’s arguments with respect to the second prong of the test to be unpersuasive as well. According to the Board, “Petitioner’s arguments under the second prong do not address the technical aspects of the problem being solved, and fail to explain why the solution is not technical.”
ENMOS USA Corp. v. DUNNHUMBY LIMITED, CBM2015-00116
Paper 8: Decision Denying Institution of Covered Business Method Patent Review
Dated: November 10, 2015
Patent: 8,214,246 B2
Before: Patrick R. Scanlon, Jennifer Meyer Chagnon, and Timothy J. Goodson
Written by: Goodson
Related Proceedings: Dunnhumby USA, LLC v. Emnos USA Corp., Case No. 1:13-cv-00399 (N.D. Ill.); CBM2015-00162