Takeaway: Where the claims and specification are not tied to a financial product or service, and the specification does not indicate any particular usefulness in financial products, services, or activities, the Board may determine that the patent is not a covered business method patent under § 18(d)(1) of the AIA.
In its Decision, the Board denied institution of covered business method patent review of claims 1-3, 12, 14, 21, 22, 24-26, 35, 37, 44, 45, 56-58, 67, 69, 76, 77, 79, 80, 83, 85, and 88-90 of the ’683 patent. Claim 79 was selected as an exemplary claim for Petitioner’s challenge and the Board’s analysis.
The ’683 patent teaches a method of using fault models to analyze error conditions in an enterprise computing system. Fig. 1 of the ’683 patent is a flow chart showing the model based reasoning approach. The Board discussed in detail the upstream and downstream analysis steps represented by features 110 and 115 of Fig. 1. Fig. 7 of the ’683 patent depicts an impact graph for an enterprise consisting of automatic teller machines (ATMs) connected to a central bank through a satellite communications system.
Petitioner argued that the ’683 patent is a covered business method patent because “the claimed invention is directed at a technique for managing a financial product or service—in particular, diagnosing and identifying error conditions associated with a bank’s automatic teller machines (ATMs).” Patent Owner argued that the ’683 patent is not financial in nature as demonstrated by its classification in Class 714 covering processes for “detecting and recovering from faults in electrical computers…”
The Board agreed with Patent Owner that Petitioner had not shown the ’683 patent claims a method/apparatus for performing processing operations used for the practice, administration, or management of a financial product or service. The Board noted that the statutory test for whether a patent is a covered business method patent focusses on the claims. The claims in the ’683 patent relate to methods or devices for fault analysis. Further, the Board stated that no claim limitation is tied to a financial product or service. The ’683 patent is concerned with the diagnosis of error conditions in computing systems. Thus, the specification emphasizes ATM enterprise as an illustration of how the method of Fig. 1 is applied. The disclosed technique has no particular applicability to financial products or services. Thus, the Board determined that the Petition does not establish that the ’683 patent qualifies as a covered business method patent under § 18(d)(1) of the AIA
SERVICENOW, INC. v. BMC SOFTWARE, INC., IPR2015-00613
Paper 12: Decision Denying Institution of Covered Business Method Patent Review
Dated: September 11, 2015
Patents: 7,062,683 B2
Before: Justin T. Arbes, Jennifer Meyer Chagnon, and Timothy J. Goodson
Written by: Goodson
Related Proceedings: BMC Software, Inc. v. ServiceNow, Inc., Case No. 2:14-cv-903 (E.D. Tex.)