1) PNC Bank, N.A. and 2) SunTrust Bankv.PARUS HOLDINGS, INC.Download PDFPatent Trial and Appeal BoardNov 9, 201513350712 (P.T.A.B. Nov. 9, 2015) Copy Citation Trials@uspto.gov Paper No. 10 571.272.7822 Entered: November 9, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ PNC BANK, NA and SUNTRUST BANK, Petitioner, v. PARUS HOLDINGS, INC., Patent Owner. _______________ Case CBM2015-00110 Case CBM2015-00150 Patent 8,843,120 B2 1 _______________ Before BART A. GERSTENBLITH, DAVID C. McKONE, and PATRICK M. BOUCHER, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION Denying Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208 1 This Decision addresses issues in the above-captioned cases. The parties are not authorized to use this style heading for any subsequent papers. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 2 I. INTRODUCTION A. Background In Case CBM2015-00110 (“CBM-110”), PNC Bank, National Association and SunTrust Bank (collectively, “Petitioner”) filed a Petition (CBM-110, Paper 3, “Pet. 110”) to institute a covered business method patent review of claims 1–18 of U.S. Patent No. 8,853,120 B2 (“the ’120 patent,” CBM-110, Ex. 1001). In Case CBM2015-00150 (“CBM-150”), Petitioner filed a Petition (CBM-150, Paper 3, “Pet. 150”) to institute a covered business method review of claims 1–18 of the ’120 patent (CBM-150, Ex. 1001 2 ). SunTrust Mortgage Inc. is identified as a subsidiary of SunTrust Bank and listed as a real party-in-interest in each Petition. Pet. 110, 1; Pet. 150, 1. Parus Holdings, Inc. (“Patent Owner”) filed Preliminary Responses to both Petitions (CBM-110, Paper 7, “Prelim. Resp. 110”; CBM- 150, Paper 7, “Prelim. Resp. 150”). Upon consideration of the Petitions and Preliminary Responses, we conclude that, under Section 18(a)(1)(E) of the Leahy-Smith America Invents Act (“AIA”) and 37 C.F.R. § 42.304(a), Petitioner has not shown that the ’120 patent is eligible for covered business method patent review. Accordingly, we deny both Petitions and do not institute a covered business method patent review. B. Related Proceedings The parties represent that the ’120 patent is asserted in the United States District Court for the District of Delaware in Parus Holdings, Inc. v. PNC Bank, N.A., No. 1:14-cv-01428-UNA (D. Del.), Parus Holdings, Inc. v. Sun Trust Bank, No. 1:14-cv-01429-UNA (D. Del.), and Parus Holdings, 2 The ’120 patent is Exhibit 1001 in both cases. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 3 Inc. v. Sallie Mae Bank and Navient Solutions, Inc., No. 1:14-cv-01427- UNA (D. Del.). Pet. 110, 1; CBM-110, Paper 6, 2; Pet. 150, 1–2; CBM-150, Paper 6, 2. Additionally, Petitioner filed six covered business method patent review petitions challenging three patents related to the ’120 patent: CBM2015-00109 and CBM2015-00149, challenging U.S. Patent No. 8,838,074 B2 (“the ’074 patent”); CBM2015-00111 and CBM2015- 00151, challenging U.S. Patent No. 8,843,141 B2 (“the ’141 patent”); and CBM2015-00112 and CBM2015-00152, challenging U.S. Patent No. 8,098,600 B2 (“the ’600 patent”). CBM-150, Paper 6, 4. The ’074, ’120, ’141, and ’600 patents share a common specification, and the ’074, ’141, and ’120 patents are direct or indirect continuations of the application that issued as the ’600 patent. C. Request for Authorization to Terminate Following the District Court’s grant of Petitioner’s motion to dismiss, discussed above, a teleconference was held with the parties on November 5, 2015. Petitioner and Patent Owner jointly request authorization to file a motion for termination under 35 U.S.C. § 327, the statute governing termination of instituted post-grant reviews due to settlement, but confirmed during the call that no written settlement agreement currently exists. The parties request that the proceedings terminate without estoppel, such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary. Patent Owner limits its agreement to Petitioner re-filing the same petitions. Effectively, the parties request that we stay these proceedings pending Federal Circuit review of the District Court’s decision. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 4 We deny the parties’ request. As explained below, the ’120 patent is not eligible for covered business method patent review. Deferring entering such a decision is inconsistent with our policy objective of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. We do not reach, and, thus, express no opinion on, eligibility of the claims of the ’120 patent under 35 U.S.C. § 101. D. The References 1. CBM-110 Petitioner relies on the following references in CBM-110: European Patent Application Publication No. EP 0794650 A2, pub. Sept. 10, 1997 (“Bowater,” CBM-110, Ex. 1009); and U.S. Patent No. 4,852,170, issued July 25, 1989 (“Bordeaux,” CBM-110, Ex. 1010). 2. CBM-150 Petitioner relies on the following references in CBM-150 3 : IBM, AIX DirectTalk/6000: General Information and Planning, Release 6, GC33-1720-00 (Dec. 1995) (“DirectTalk,” CBM-150, Ex. 1010); IBM, DirectTalkMail: Administration, Release 6, SC33-1733-00 (Feb. 1996) (“DirectTalkMail,” CBM-150, Ex. 1011); IBM, AIX DirectTalk/6000: Speech Recognition with the BBN Hark Recognizer, Release 6, SC33-1734-00 (Feb. 1996) (“Hark,” CBM-150, Ex. 1012); and IBM, DT/6 1.5 Option Features, Announcement Letter Number A95- 893 (July 10, 1995) (“IBM Announcement A95-893,” CBM-150, Ex. 1013). 3 Petitioner refers to CBM-150 Exhibits 1010–12 collectively as “the Direct Talk/6000 manuals.” CBM-150, Pet. 42. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 5 E. The Asserted Grounds of Unpatentability 1. CBM-110 Petitioner raises the following grounds of unpatentability in CBM-110: Reference(s) Basis Claims challenged § 101 1–18 Bowater § 102(a) 1–18 Bowater and Bordeaux § 103(a) 1–18 Petitioner supports its challenge with a Declaration by Paul C. Clark, dated April 30, 2015. CBM-110, Ex. 1003. 2. CBM-150 Petitioner raises the following grounds of unpatentability in CBM-150: Reference(s) Basis Claims challenged § 101 1–18 DirectTalk, DirectTalkMail, Hark, and IBM Announcement A95-893 § 103(a) 1–18 § 112, ¶ 1 (written description) 4 and 8 Petitioner supports its challenge with a Declaration by Paul C. Clark, dated June 21, 2015. CBM-150, Ex. 1003. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 6 F. The ’120 Patent The ’120 patent describes a “unified messaging service” that allows a user to access communications such as e-mail and voice mail using “a single point of access to all communications, integrated with personal information management tools and customized public content delivery.” Ex. 1001, 2:35– 46. For example, the user can connect to the Internet with a computer to retrieve e-mail, voice mail, and faxes from a common website. Id. at 3:41– 46; see also id. at 5:10–14 (“As for Web connections, you can boot up your computer, sign onto the internet, go through the system’s secure web site and play your voice mails, read your e-mail and faxes, manage your contacts and schedule conferences. The website thus becomes a unified-messaging system.”). In another example, a user can retrieve messages and perform other tasks by navigating a system menu with a telephone. Id. at 4:7–57. Example tasks include opening a mailbox (Fig. 4B), listening to messages in the mailbox (Fig. 4C), forwarding and returning messages (Fig. 4D), returning a call (Fig. 4F), and leaving a voice message for another user (Fig. 4G). Id. at 4:14–31; see also id. at 6:58–65 (“Subscribers can access and play back their voice mail from any telephone or from their personal Web page. Voice mail messages can be saved, retrieved, deleted or rerouted to other individuals, groups or broadcast and voice responses can be returned immediately to the caller. Also, e-mail messages can be viewed on the subscriber’s personal home page or the system will read the e-mail to the subscriber from any telephone using text-to-speech technology.”). The user can listen to e-mails over the Internet or the telephone with text-to-speech software: Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 7 The system also utilizes text-to-speech so you can listen to your e-mail over the phone, or the subscriber can display his e-mail on his computer where he can reply to it and send e-mail to his contacts with audio (using audio attachments). Further, using Vosaic’s internet audio program, the system can deliver voice mail via streaming audio over the internet using Java without a plug-in. Id. at 5:28–34. When navigating the system menu with a telephone, users can use voice commands to (1) build, edit and manage their contact lists, (ii) review, play back, read, reply to and/or reroute voice mail and e-mail, (iii) schedule conference calls with 800 number access, and (iv) maintain an itemized calling log listing all calls with a running total of all charges. Id. at 6:18–23. Specifically, the system can process a user’s voice using “Dialogic’s [Signal Computing System Architecture] extended bus and board-level resources [and] Purespeech speech recognition running on Dialogic Antares boards.” Id. at 5:58–61. According to the ’120 patent, “[b]asically, the system provides a unified solution to the many varied communications and messaging devices used daily by mobile professionals and active consumers. With simple voice commands, subscribers can easily access and respond to all of their communications and messaging media in the same session.” Id. at 6:38–43. G. Illustrative Claim Claims 1 and 5 are the independent claims challenged in this proceeding. Independent claim 1 is illustrative of the claimed subject matter and is reproduced below: 1. A voice-enabled and user-configured computer system accessible to a user using an electronic communication device, via at least one telecommunications network, the voice-enabled Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 8 computer system for unifying communications transmitted through the at least one telecommunications network, the voice- enabled computer system comprising: at least one cluster of servers with at least one voice server, the voice server including speaker-independent speech recognition and execution functionality, the at least one cluster of servers accessible by the electronic communication device, via at least one of a telephone connection and an internet connection; at least one database server, the database server connected to the cluster of servers and including stored data of interest to the user, the speaker-independent speech recognition and execution functionality configured to receive one or more natural voice spoken commands from the user via the electronic communication device via a first communication connection type of the telephone connection or the internet connection and to interpret the one or more natural voice spoken commands by comparing each of the one or more natural voice spoken commands with a set of stored commands, each of the set of stored commands corresponding to a single voice-enabled operation and each command in said set of stored commands being an alternative intuitive description of the single voice- enabled operation, and the one or more natural voice spoken commands configured to execute one or more voice-enabled operations on at least a portion of the stored data based at least in part on the one or more natural voice spoken commands, the single voice-enabled operation configured to create computer- generated communications for selective transmission over the telephone connection and the internet connection for respective users; and at least one file server and a web server, the file server and the web server connected to the at least one cluster of servers and configured to facilitate transmission of a computer- generated communication-relating to the user via the internet connection, wherein at least a message and a notification relating to the one or more voice-enabled operations executed for the user via the one or more natural voice spoken commands received from the user are sent to the user over one or more communication connections, at least one of the message and the Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 9 notification sent to the user via at least a second communication connection type from the one or more communication connections that is of different type from the first communication connection type, and wherein each of the message and the notification is at least from a group consisting of a 1) telephone call, 2) a conference call, 3) a facsimile message, 4) a voicemail message 5) an email message, and 6) a message containing data. Ex. 1001, 7:52–8:37. II. CLAIM CONSTRUCTION Although Petitioner presents constructions for several claim terms, no terms require express construction for purposes of this Decision. III. ANALYSIS A. Whether the ’120 Patent is a Covered Business Method Patent Section 18 of the Leahy-Smith America Invents Act (“AIA”) provides for the creation of a transitional program for reviewing covered business method patents. “The Director may institute a transitional proceeding only for a patent that is a covered business method patent.” Pub. L. No. 112-29, § 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). A “covered business method patent” is 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.” Id. § 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the same definition of “covered business method patent”). “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent.” 37 C.F.R. § 42.304(a). Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 10 The Patent Office has noted, “the legislative history reveals that ‘[t]he plain meaning of “financial product or service” demonstrates that section 18 is not limited to the financial services industry.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). According to Senator Schumer, “[t]he plain meaning of ‘financial product or service’ demonstrates that section 18 is not limited to the financial services industry. At its most basic, a financial product is an agreement between two parties stipulating movements of money or other consideration now or in the future.” 157 Cong. Rec. S5432. A patent need have only one claim directed to a covered business method to be eligible for review. See 77 Fed. Reg. at 48,736. Nevertheless, “the definition set forth in § 42.301(a) . . . is based on what the patent claims.” Id. In arguing that the ’120 patent is eligible for covered business method patent review, Petitioner does not focus on the language of a particular claim. Rather, Petitioner makes two arguments in support of its contention that all of the claims are directed to financial products or services. First, Petitioner argues that Patent Owner has asserted the ’120 patent only against financial institutions, and, accordingly, that “each of claims 1–18 is directed to a method or corresponding apparatus for sending and managing information from a subscriber to a network used in the practice, administration, or management of a financial product or service.” Pet. 110, 7–8; Pet. 150, 7–8. Petitioner (Pet. 110, 8 n.2; Pet. 150, 7 n.2) Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 11 quotes 4 an additional statement from Senator Schumer during the debate of Section 18: The amendment also requires a patent to relate to a “financial product or service.” To meet this requirement, the patent need not recite a specific financial product or service. Rather the patent claims must only be broad enough to cover a financial product or service. For example, if a patent claims a general online marketing method but does not specifically mention the marketing of a financial product, such as a savings account, if that marketing method could be applied to marketing a financial product or service, the patent would be deemed to cover a “financial product or service.” Likewise, if a patent holder alleges that a financial product or service infringes its patent, that patent shall be deemed to cover a “financial product or service” for purposes of this amendment regardless of whether the asserted claims specifically reference the type of product of service accused of infringing. 157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (emphasis added). According to Petitioner, Patent Owner has asserted the ’120 patent in district court against the “online and mobile banking products” of financial institutions. Pet. 110, 7; Pet. 150, 7. In light of Senator Schumer’s statement, Petitioner argues that Patent Owner’s district court assertions are sufficient to show that the claims of the ’120 patent are directed to financial products and services. Pet. 110, 7–8; Pet. 150, 7–8. Second, Petitioner argues that the ’120 patent specification “discloses that the claimed components are used for financial purposes” and, thus, the patent describes using the claimed systems and methods in the practice, administration, or management of a financial product or service, as it was designed to be able to provide access to financial content, and custom content that may include 4 Petitioner quotes the portion of Senator Schumer’s statement shown in italics. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 12 personal financial information (such as personal banking as is accused in the various litigations filed by the Patent Owner). Pet. 110, 9–10; Pet. 150, 8–10. Petitioner (Pet. 110, 8; Pet. 150, 8) cites the ’120 patent’s Background of the Invention section, which states that “[i]ndividuals and business people seek to communicate with each other, obtain useful information, interact commercially and entertain themselves in an increasingly mobile society.” Ex. 1001, 1:37–39 (emphasis added). According to Petitioner, the ’120 patent’s description of using the system to “provide[] direct access to news, weather, sports, financial, travel, and other custom content” is an example of interacting commercially. Pet. 110, 9 (quoting Ex. 1001, 7:33–35); Pet. 150, 8 (same). Petitioner also points to a depiction of “billing info” stored in the database shown in Figure 6 and speculates that it “is presumably related to the ‘itemized calling log with a running total of all charges’ and most likely, for billing the particular user for the listed charges.” Pet. 110, 9 (citing Ex. 1001, 6:10–14); Pet. 150, 9 (same). In response, Patent Owner argues that the ’120 patent does not claim financial products or services because its claims are directed to technology applicable across a variety of industries and business sectors and do not relate particularly to the financial services sector. Prelim. Resp. 110, 13; Prelim. Resp. 150, 18. Patent Owner (Prelim. Resp. 110, 16; Prelim. Resp. 150, 22) quotes 5 a portion of a statement of Senator Leahy: There has been some question about the scope of patents that may be subject to the transitional program for covered business method patents, which is section 18 of the Leahy-Smith 5 Patent Owner quotes the portion of Senator Leahy’s statement shown in italics. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 13 America Invents Act. This provision is intended to cover only those business method patents intended to be used in the practice, administration, or management of financial services or products, and not to technologies common in business environments across sectors and that have no particular relation to the financial services sector, such as computers, communications networks, and business software. 157 Cong. Rec. S5441 (daily ed. Sept. 8, 2011) (statement of Sen. Leahy) (emphasis added). Patent Owner argues that several panels of the Board have relied on Senator Leahy’s statement in declining to institute covered business method patent reviews on patents claiming technologies generally applicable to business environments. Prelim. Resp. 110, 17–18; Prelim. Resp. 150, 22–23. Patent Owner further argues that Petitioner has failed to identify in the claims any recitation of the movement of money or other financial transactions. Prelim. Resp. 110, 20–23; Prelim. Resp. 150, 26–29. For example, Patent Owner argues that Petitioner points to nothing in the claims directed to accomplishing the commercial interaction and access to financial content Petitioner references in the specification. Prelim. Resp. 110, 20–21; Prelim. Resp. 150, 26–27. As to the products it has accused, Patent Owner argues that it has asserted infringement allegations against systems of general applicability, rather than financial products or services. Prelim. Resp. 110, 17 n.4; Prelim. Resp. 150, 22 n.6. The general allegations in the district court pleadings (Exs. 1005–07 in both proceedings) do not articulate the precise nature of the products accused of infringement. We acknowledge that both parties have marshalled statements from the legislative history favorable to their positions regarding the reach of Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 14 Section 18. Nevertheless, a previous panel of this Board has observed that “members of Congress expressed varying views concerning the scope of a ‘covered business method patent’ during the debate leading up to passage of the AIA” and reasoned that “when an adjudicator considers legislative intent ‘the Supreme Court has cautioned that the adjudicator must consider the legislative intent as a whole––not just “isolated fragments” of congressional comments.’” Par Pharm., Inc. v. Jazz Pharms., Inc., Case CBM2014- 00149, slip op. at 17–18 (PTAB Jan. 13, 2015) (Paper 12) (quoting New England Power Co. v. New Hampshire, 455 U.S. 331, 342 (1982)). Indeed, in evaluating whether decisions of the Board regarding Section 18 are reviewable, the Federal Circuit stated: The parties, digging through the legislative record, come up with competing statements from various legislators with regard to the possible scope of the issues to be heard on appeal. Even assuming such statements are thought to be relevant, the variety of conflicting views illustrates why we must focus on the structure and language of the act, not on what its advocates and detractors may say about it. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1321 (Fed. Cir. 2015). Panels of this Board, focusing on the language of Section 18, have declined to institute covered business method patent review of patents with claims that, although usable in commerce, nevertheless are applicable generally to a variety of industries. For example, in Par Pharmaceutical, we declined to institute a review of a patent directed to a computerized method of distributing a prescription drug. Case CBM2014-00149 (Paper 12). Looking to the language of the statute, the Par Pharmaceutical panel reasoned that Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 15 Congress did not say in the statute that a business method patent “used in commerce” or covering “core activities” of running a business is eligible for CBM review. To the contrary, the language of the statute excludes such a business method from CBM review unless a petitioner demonstrates that the method is “used in the practice, administration, or management of a financial product or service.” Id., slip op. at 17 (citing AIA § 18(d)(1)). More recently, in ServiceNow, Inc. v. Hewlett-Packard, Co., the Board declined to institute a review of a patent with claims “directed to systems or computer program products for managing a conversation in a Web service, and contain[ing] no finance-related terminology or limitations.” Case CBM2015-00108, slip op. at 15 (PTAB Oct. 8, 2015) (Paper 10). The ServiceNow panel reasoned that, although “at least one illustrative embodiment [was] directed to applications of the claimed system in financial systems,” the patent’s claims “are of general utility.” Id. at 16. According to ServiceNow, [f]inancially-related, illustrative embodiments in the specification of the patent at issue may be sufficient in cases where the specification indicates particular advantages or applicability to financial embodiments, where the specification makes clear that claim limitations are interpreted expressly to cover financial embodiments, or where there is an absence of evidence that the claimed invention has general utility. Id. at 17. On the other hand, reading Section 18 to apply to any patent that could be used in conjunction with financial products and services could lead to an unreasonable result. Id. at 13 (“[F]inding that anything with a possible use with respect to activities involving financial products and services would capture claimed inventions only tangentially related to activities involving financial products and services.”). Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 16 In this proceeding, Petitioner points to no recitations in the claims addressing financing, commerce, or the movement of money. We find no such recitation. Rather, the claims, in general, are directed to methods, systems, and devices for managing user communications, including using speech recognition to interpret input from users. As explained above, whether the ’120 patent is directed to a covered business method is based on what the patent claims. See 77 Fed. Reg. at 48,736; see also ServiceNow, Case CBM2015-00108, slip op. at 8 (Paper 10) (“In making this determination, our focus is firmly on the claims.” (quoting Par Pharm., Case CBM2014-00149, slip op. at 9 (Paper 12))). The express language of the claims is not limited to any particular context; rather, the claims are directed to commercial and non-commercial applications alike. This supports Patent Owner’s argument that the claims are directed to an invention that is applicable to a variety of industries, with no particular focus on financial services or products. Petitioner’s citations to the specification also do not provide a persuasive basis to conclude that the claims deal with the movement of money in anything other than a tangential way. Rather, the specification confirms that the invention of the ’120 patent is one of general applicability. For example, the Background of the Invention expresses a desire of both individuals and businesspeople to communicate for a variety of reasons, such as obtaining information, interacting commercially, and for entertainment. Ex. 1001, 1:37–44. Likewise, the specification contemplates using the inventive system to retrieve various types of information, such as “news, weather, sports, financial, travel and other custom content.” Id. at 7:33–36; see also id. at 6:38–40 (“Basically, the system provides a unified Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 17 solution to the many varied communications and messaging devices used daily by mobile professionals and active consumers.”). Rather than focusing the claims on financial products and services, these examples make clear that any financial aspect of the invention is, at most, a non-limiting example. The specification, thus, supports Patent Owner’s argument as well. Moreover, even assuming that Patent Owner asserted the ’120 patent only against financial products of financial service firms, we do not consider this dispositive, contrary to Petitioner’s contention (Pet. 110, 7–8 & n.2; Pet. 150, 7–8 & n.2). In this regard, we consider persuasive the reasoning by the panel in PNC Financial Services Group, Inc. v. Intellectual Ventures I LLC, Case CBM2014-00032 (PTAB May 22, 2014) (Paper 13). In PNC Financial Services, the Board considered Senator Schumer’s statement (at 157 Cong. Rec. S1365, quoted above) in determining whether to institute a review of a patent directed to a computer-implemented method for identifying and characterizing stored electronic files, which was asserted in district court against a bank’s payment card industry data security standard. PNC Fin. Servs. Grp., Case CBM2014-00032, slip op. at 6–7, 13–14 (Paper 13). According to the panel in that case, when taken in context of the entire legislative history associated with the AIA § 18(d)(1), we do not consider the statement by Senator Schumer cited by Petitioners as opening CBM review to all patents asserted against financial institutions. Instead, we deem such activity as one factor to be considered in making that determination. Id. at 14. The PNC Financial Services panel reasoned that “the mere assertion of a patent against a bank or other financial institution is not sufficient by itself to transform a patent claiming a generally applicable data processing technique to a covered business method patent.” Id. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 18 Like the patent in PNC Financial Services, the ’120 patent claims and describes an invention that is related only tangentially to financial products and services. This outweighs Petitioner’s evidence that the ’120 patent has been asserted against financial service firms. See FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P., Case CBM2015-00053, slip op. at 12 (PTAB June 29, 2015) (Paper 9) (“We do not find the nature of Petitioner’s accused product determinative of whether the [challenged] patent is a CBM patent.”). B. Summary We recognize that financial products and services are not limited to the financial services industry, but are also cognizant that the claims must be directed to something more than techniques applicable to a wide variety of industries. We have considered Petitioner’s evidence that the claims have been asserted against financial service firms in district court. We also have considered Petitioner’s argument that the specification describes the invention as applicable in a commercial context. Nevertheless, we do not find that evidence persuasive in light of the lack of any recitation in the claims of financing, commerce, or the movement of money, and the specification’s clear expression that the invention is applicable in both commercial and non-commercial contexts. Cf. ServiceNow, Case CBM2015-00108, slip op. at 11 (Paper 10) (“We note that other panels also have considered evidence of the problem addressed and the parties against whom the patent is asserted. While each of these decisions identifies factors that a panel may weigh in reaching its eligibility decision, we are not in any way bound by the factors considered in these cited decisions, and we determine eligibility based on the arguments and evidence regarding the challenged claims of the patent before us.” (internal citations omitted)). Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 19 On this record, Petitioner has not introduced persuasive evidence to show that at least one claim of the ’120 patent 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. Accordingly, Petitioner has not met its burden of demonstrating that the ’120 patent is eligible for covered business method patent review. IV. CONCLUSION For the foregoing reasons, we are not persuaded that the ’120 patent is eligible for covered business method patent review. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(a), a covered business method patent review is not instituted for claims 1–18 of U.S. Patent No. 8,843,120 B2 in either CBM2015-00110 or CBM2015-00150; and FURTHER ORDERED that the parties’ joint request for authorization to file a motion to terminate the proceedings is denied. Case CBM2015-00110; Case CBM2015-00150 Patent 8,843,120 B2 20 For PETITIONER: Lionel M. Lavenue Kara A. Specht Guang-Yu Zhu FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP lionel.lavenue@finnegan.com kara.specht@finnegan.com guang-yu.zhu@finnegan.com PATENT OWNER: Frank Pietrantonio Nathan Cummings COOLEY LLP fpietrantonio@cooley.com ncummings@cooley.com Copy with citationCopy as parenthetical citation