The AIA provides for the post-grant review of “covered business method patents,” which are defined 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.
AIA §18(d)(1). The PTAB was left to its own devices in the absence of meaningful legislative history to address how broadly this language should be read. The PTAB opted to put the boundary wide, and that standard is now set:
Claims, even if not directed to financial services or the financial services industry, which cover patent inventions that, as discerned by the specification, have possible application(s) financial in nature can qualify for CBM review.
At first, the PTAB focused the inquiry on the claim language. See Int’l Sec. Exch. v. Chicago Bd. Options Exch., CBM2013-00050 (PTAB Mar. 4, 2014) (“For purposes of determining whether a patent is eligible for a covered business method patent review, the focus is on the claims.”). In a later decision, the Board explained that its statement that the focus is on the claims does not mean that the specification is ignored, or that the financial product or service must be explicit in a claim. That decision was appealed and, indeed, the Federal Circuit held that a financial product or service need not be explicitly recited in the claims. Versata Dev. Grp., Inc., v. SAP Am., Inc., 793 F.3d 1306, 1324–25 (Fed. Cir. 2015). Still further, following the Board’s lead, the Federal Circuit declined to interpret the statute as requiring that the patent invention literally comprehend a financial product or service or limit itself to financial institutions. Id.
The Versata decision became the subject of a cert petition to the Supreme Court, with the patent owner taking the position that the plain meaning of the text of the statute limits the PTAB’s jurisdiction to products or services from the financial sector—i.e., banks, brokerages, holding companies, insurance, and similar institutions with a finance focus. The point being that if Congress had intended the scope of the definition to capture other things incidental to commerce, it would have used different words.
Meanwhile, the PTAB recently reiterated its expansive viewpoint in Motorola Mobility, LLC v. Intellectual Ventures I, LLC, CBM2015-0004 (PTAB March 21, 2016). There, the alleged CBM claims recited a method and corresponding software for automatically pre-fetching additional data objects from a variety of independently operated data sources referenced by a first data object, such as cited publications that may have been published or replicated electronically. Once again the Patent Owner argued that the phrase “financial product or service” should be limited to services or products covering finance and investments — such as insurance, credit or banking, whereas the subject claims recite electronic content distribution operations and have no direct or indirect relationship to financial products or services. The Patent Owner further argued that the proper inquiry should be whether the claims have “particular application” to financial activities, and contended that the patent discussion was too general to satisfy such criterion.
The PTAB rejected the “particular application” test and instead focused on the patent specification for how the patent invention could be used. The patent specification did mention an application the Board considered related to financial activities. Specifically, Example 5 stated that the inventive method could be used for: “Tax or other governmental filings and exchanges: An example of the generality of the inventive information transport system for sending and fetching well-defined information objects of many kinds is in the filing of tax returns. A send information object can be created and manifested to submit electronic tax filings to the IRS, as described above, for electronic product order forms. A fetch object can be created to obtain updated tax forms and the program logic relating to them, and to get information on new regulations. Analogous uses will be apparent to those skilled in the relevant arts of, for example, financial planning and portfolio management systems, to obtain current statistics, place orders, and the like.” Thus, although the claims nowhere refer to financial activity, on the basis that the specification demonstrated possible application relating to financial activities (e.g., tax filing and financial planning), the Board concluded that the claims do cover data processing used in the practice, administration, or management of a financial service.
Most recently, the Supreme Court has denied the Versata cert petition. Versata Cert Petition, No. 2015-1145 (S.Ct. June 27, 2016). The PTAB’s expansive view for qualifying CBM patents for review is the standard that will be applied.