Takeaway: In order to make a sufficient showing of standing in a covered business method review, petitioner must address the claims as a whole rather than individual elements.

In its Decision, the Board denied institution of covered business method review of claims 1-32 of the ’468 Patent. The ’468 Patent relates to an apparatus and method for supplying to a subscriber, via a mobile telecommunications network, different types of information that are updated in real time, for example, information relating to financial markets.

The Board first addressed standing, stating that 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.” AIA § 18(d)(1). Petitioner has the burden of proving standing. Patent Owner does not dispute that the ’468 Patent meets the “financial product or service” requirement, but disputes that Petitioner has demonstrated that the ’468 Patent is not a patent for a technological invention.

The Board stated that to determine whether a patent is for a technological invention, it looks to “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b). Petitioner asserted that the patent “discloses then-conventional technology implementing an information-updating service.” Patent Owner stated that Petitioner did not meet its burden because it did not analyze any of the claim language of the ’468 Patent or perform any comparison between the prior art and the claims of the patent. Patent Owner also asserted that the ’468 Patent addresses a technical problem by providing a solution to existing problems of mobile connectivity.

The Board held that Petitioner had failed to address the claims as a whole and instead focused on certain individual elements. The Board also found convincing Patent Owner’s explanation of the technical problems addressed by the ’468 Patent and its solution. The Board noted that while a full showing of prior art invalidity is not necessary, more than a conclusory showing of standing that addresses the claimed subject matter as a whole is required.

Bloomberg L.P. and Charles Schwab & Co., Inc. v. Quest Licensing Corporation, CBM2014-00205
Paper 16: Decision Denying Institution of Covered Business Method Patent Review
Dated: April 7, 2015
Patent 7,194,468 B1
Before: James P. Calve, Thomas L. Giannetti, and Tina E. Hulse
Written by: Giannetti
Related Proceeding: Quest Licensing Corp. v. Bloomberg LP, 1:14-cv-00561-GMS (D. Del.)