{"id":1441,"date":"2017-02-21T18:38:53","date_gmt":"2017-02-21T23:38:53","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1441"},"modified":"2017-02-21T18:38:53","modified_gmt":"2017-02-21T23:38:53","slug":"covered-business-method-patent-you-keep-using-those-words-we-do-not-think-they-mean-what-you-think-they-means","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1441","title":{"rendered":"Covered Business Method Patent: You Keep Using Those Words . . . We do not Think They Mean What You Think They Means"},"content":{"rendered":"

In Secure Access, LLC v. PNC BANK NATIONAL ASSOCIATION<\/em>, [2016-1353] (February 21, 2017), the Federal Circuit vacated the Board’s decision in\u00a0CBM2014-
\n00100 on the ground that U.S. Patent\u00a0No. 7,631,191 on a system and method for
\nauthenticating a web page\u201d was not a business method patent. \u00a0Claim 1 of the patent recites:<\/p>\n

1. A method comprising:
\ntransforming, at an authentication host computer,\u00a0received data by inserting an authenticity key to\u00a0create formatted data; and
\nreturning, from the authentication host computer,\u00a0the formatted data to enable the authenticity key\u00a0to be retrieved from the formatted data and to locate\u00a0a preferences file,\u00a0wherein an authenticity stamp is retrieved from\u00a0the preferences file.<\/p><\/blockquote>\n

The Board started out in the right direction,\u00a0quoting the statute,\u00a0which is found in AIA \u00a7 18(d)(1) and which is\u00a0repeated verbatim at 37 C.F.R. \u00a7 42.301(a),<\/p>\n

a patent that claims a method or corresponding
\napparatus for performing data processing or other
\noperations used in the practice, administration, or
\nmanagement of a financial product or service . . .<\/p><\/blockquote>\n

and rejected the patent owner’s argument that it the patent was not a covered business method patent. \u00a0First, the Board rejected the argument that\u00a0\u201cfinancial product or service\u201d as used in the definition\u00a0included \u201conly financial products such as credit, loans,\u00a0real estate transactions, check cashing and processing,\u00a0financial services and instruments, and securities and\u00a0investment products.\u201d \u00a0The Board reasoned that because the patent was directed\u00a0to solving problems related to providing a web site to\u00a0customers of financial institutions, it therefore\u00a0covers the ancillary activity related to a financial product\u00a0or service of Web site management and functionality and\u00a0according to the legislative history of the AIA, perform operations\u00a0used in the administration of a financial product or\u00a0service.<\/p>\n

Despite acknowledging the Federal Circuit’s guidance in\u00a0Versata Development<\/em>
\nGroup, Inc. v. SAP America, Inc.<\/em>, 793 F.3d 1306\u00a0(Fed. Cir. 2015)\u00a0questioning the use of various legislators\u2019\u00a0competing statements in the legislative history of the\u00a0AIA, the Board nonetheless found that\u00a0at least one\u00a0legislator appeared to view “customer interfaces” and “web site\u00a0management and functionality,” as activity encompassed by the statutory language. \u00a0The Board buttressed its conclusion with the fact that the patent owner was in fact enforcing the patent against financial institutions.<\/p>\n

The Federal Circuit looked at the question as whether\u00a0eligibility for CBM review should be determined on its claim\u00a0language in light of the specification as understood at the earliest effective filing date, or should the PTAB also\u00a0consider post-grant evidence such as a patent owner\u2019s\u00a0litigation history? \u00a0The Federal Circuit Circuit viewed the case not as a question of whether the patent was in the statutory definition of covered business method patent, but as a legal question of whether the Board\u00a0properly understood the scope of the statutory definition. \u00a0The Federal Circuit found that it did not.<\/p>\n

The Federal Circuit examined the question “What does the statute mean when it says that a patent claims something?” \u00a0The Fedeal Circuit held that the meaning cannot be determined from an isolated reading of the claim itself:<\/p>\n

A claim in a\u00a0patent does not live in isolation from the rest of the patent,\u00a0as if it can be cut out of the document and read with\u00a0Webster\u2019s Dictionary at hand. Established patent doctrine\u00a0requires that claims must be properly construed\u2014
\nthat is, understood in light of the patent\u2019s written description;\u00a0that is a fundamental thesis in claim construction.<\/p><\/blockquote>\n

The Federal Circuit reasoned that if the use in the practice, administration, or
\nmanagement of a financial product or service does not have to be part of the
\nclaim as properly construed, essentially every patent\u00a0could be the subject of a CBM petition. \u00a0The Federal Circuit found that Congress intended to give the CBM program a much more limited scope. \u00a0The Federal Circuit\u00a0concluded that\u00a0the statutory definition of a CBM patent\u00a0requires that the patent have a claim that contains,\u00a0however phrased, a financial activity element<\/em>. \u00a0The Court said:\u00a0just\u00a0because an invention could be used by various institutions\u00a0that include a financial institution, among others, does\u00a0not mean a patent on the invention qualifies under the\u00a0proper definition of a CBM patent.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Secure Access, LLC v. PNC BANK NATIONAL ASSOCIATION, [2016-1353] (February 21, 2017), the Federal Circuit vacated the Board’s decision in\u00a0CBM2014- 00100 on the ground that U.S. Patent\u00a0No. 7,631,191 on a system and method for authenticating a web page\u201d was … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[39],"tags":[],"class_list":["post-1441","post","type-post","status-publish","format-standard","hentry","category-cbmr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1441","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1441"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1441\/revisions"}],"predecessor-version":[{"id":1442,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1441\/revisions\/1442"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1441"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1441"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1441"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}