Takeaway: The Board may exercise its discretion to deny institution of covered business method patent review where the petitioner cites different prior art references from another proceeding in which it is also a party, but the different prior art references relate to the same protocols that serve as the basis of its challenge in the other proceeding.
In its Decision, the Board denied institution of covered business method (CBM) patent review of claims 1-32 of the ’191 patent. The ’191 patent relates to authenticating a web page. Petitioner challenged the claims of the ’191 patent as follows: (1) patent ineligible subject matter under § 101 for claims 1-32; (2) lack of written description under § 112 for claims 1-16 and 29-32; (3) anticipation by Mosaic Manual of claims 1-9, 11, 12, 14-22, 24, 25, 27-29, 31, and 32; (4) anticipation by SecureWeb Guide of claims 1-9, 11, 12, 14-22, 24, 25, 27-29, 31, and 32; (5) anticipation by Mosaic Manual of claims 10, 13, 23, and 26; (6) anticipation by SecureWeb Guide of claims 10, 13, 23, and 26; (7) obviousness over Mosaic Manual and SHTTP Overview of claims 10, 13, 23, and 26; and (8) obviousness over SecureWeb Guide and SHTTP Overview of claims 10, 13, 23, 26.
The Board noted that a CBM patent is required to claim subject matter related to a financial product or service under AIA § 18(d)(1). Accordingly, Petitioner argued that the claims of the ’191 patent directed toward performing data processing used the administration of a financial product or service, relying on the Board’s determination as such for the ’191 patent in the related, CBM2014-00100 proceeding. Patent Owner argued that CBM patent review is only for a narrow range of patents and that the claimed method and apparatus are directed to techniques to distinguish authentication data. The Board disagreed, stating that the claimed subject matter is used in the administration of a financial product or service and are incidental to a financial activity. The ’191 patent discloses an embodiment of the invention as being used by financial institutions. The Board determined that the ’191 patent attempts to solve problems related to providing a web site to customers of financial institutions.
A CBM patent excludes technological inventions. Petitioner argued that the ’191 patent is not directed to a technological invention, relying upon the Board’s decision in CBM2014-00100. Petitioner asserted that the ’191 patent is directed to solving the non-technical problem of ensuring that customers are confident that web pages are authentic. Patent Owner argued that the ’191 patent solves the technical problem of distinguishing authentic data sent by a legitimate site from fraudulent data sent by a fraudulent site. The Board determined that the claimed steps involve known technologies, which cannot render a patent a technological invention. Thus, the Board concluded that the ’191 patent is not directed to a technological invention.
The Board noted that it has instituted four proceedings of the ’191 patent. The Petitioner is a party to the CBM2014-00100 proceeding. In CBM2014-00100, Petitioner argued, unsuccessfully, that the ’191 patent does not recite patent eligible subject matter under § 101. In the instant proceeding, Petitioner attempts to bolster its § 101 argument from the previous case. The Board stated that Petitioner’s attempt at a second bite of the apple weighs against institution. In addition, despite Petitioner utilizing different prior art references in the two proceedings, the references relate to the same protocol of SHTTP. Thus, the Board exercised its discretion to deny institution.
PNC Bank, N.A. v. SECURE AXCESS, LLC, CBM2015-00039
Paper 9: Decision Denying Institution of Covered Business Method Patent Review
Dated: July 10, 2015
Patents: 7,631,191 B2
Before: Barbara A. Benoit, Trenton A. Ward, Georgianna W. Braden
Written by: Benoit
Related Proceedings: Secure Axcess, LLC v. PNC Bank, N.A., Case No. 6:13-cv-00722 (E.D. Tex), IPR2014–00475; CBM2015-00009; CBM2014-00100; CBM2015-00027