Takeaway: A petition for covered business method review may be based on assertions that the patent is anticipated by or obvious under the admitted prior art.

In its Final Written Decision, the Board found that the challenged claims (1, 2, 4-6, 8, 10, and 11) of the ’011 Patent are unpatentable. The ’011 Patent describes a method and system for electronic currency transactions and relates to an approach to electronic currency transaction that utilizes a server in the middle, connected to the parties to the transaction over a network.

The Board began with claim construction, stating that claims are given their broadest reasonable interpretation in light of the specification. The Board adopted its construction of “Currency Issuing Authority trusted server” from its Decision on Institution and did not see the need to construe any other terms.

The Board then turned to whether the ’011 Patent is a covered business method patent. The Board noted that it had already determined that the ’011 Patent is a covered business method patent in the Decision to Institute. However, in its response, Patent Owner argued that the ’011 Patent is a patent for a “technological invention” and, therefore, it is not a covered business method patent. The Board stated that, in determining whether a patent is to a technological invention, the Board considers “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.” Petitioner asserted that because abstract business concepts are not “technological inventions,” even though the brokering system was novel, it is not a “technological” feature. Patent Owner argued that the novel and unobvious technical feature of the ’011 Patent is that upon receiving payment instructions from a first user, a CIAS issues new data packets to a second user and deletes the data packets associated with a first user, which solves security problems.   The Board was persuaded by Petitioner’s argument that the subject matter does not recite a technological feature that is unobvious over the prior art, pointing to its discussion in the Decision to Institute.

Next, the Board reviewed whether a covered business method patent review can be based on “admitted prior art.” Patent Owner asserted that, because “admitted prior art” is not a category from AIA § 18(a)(1)(C), it cannot be the basis for unpatentability. The Board determined that CBM review could be based on admitted prior art pursuant to AIA § 18(a)(1)(C)(i). The Board noted that the admitted prior art in this case – APA NetCash System – is disclosed in two articles; therefore, it is a printed publication. Patent Owner argued that the Petition is not based on the publications, but rather the description in the ’011 Patent, which is non-102 prior art. The Board found that this was a misrepresentation of the admissions made in the ’011 Patent. The Board also was not persuaded by Patent Owner’s argument that the Federal Circuit has held that admitted prior art is not prior art under § 102, finding the cases relied upon by Patent Owner inapplicable.

The Board then reviewed whether Teramura is prior art. Teramura has an “open to public insp.” date of May 21, 1998. However, Patent Owner objected, stating that the exhibit is not a copy of the application “laid open” in the Canadian Patent Office on that date. Petitioner filed a certified copy of the application file history, including the Teramura laid-open application. The Board found that the issue is not whether the exhibit itself qualifies as prior art, but whether the invention claimed by the ’011 Patent was described in a printed publication before the relevant date (August 26, 1999). Therefore, the issue is whether the disclosure of the exhibit relied upon by Petitioner is any different from the disclosure that was laid open on May 21, 1998. Patent Owner has not contended as such, and the Board found that Petitioner provided evidence that it was more likely than not that Teramura was laid open to the public on May 21, 1998. Patent Owner also argued that there is no evidence that Teramura was “publicly accessible,” but the Board found that Petitioner had shown by a preponderance of the evidence that Teramura was publicly accessible based on the fact that it was laid open to the public. Patent Owner further argued that the exhibit is inadmissible because it does not satisfy the Best Evidence Rule, however, the Board was not persuaded by this argument either.

The Board next reviewed obviousness of the challenged claims over Teramura and the APA NetCash System. First, the Board determined whether claim 1 is obvious, discussing whether each and every limitation is taught by Teramura and the APA. The Board found that Patent Owner’s initial arguments failed because they attacked the APA individually, instead of in combination with Teramura. The Board was also not persuaded by Patent Owner’s arguments that Teramura and the APA in combination do not disclose certain limitations.

The Board then reviewed whether a person of ordinary skill in the art would be motivated to combine Teramura and the APA and whether there would be a reasonable expectation of success. Patent Owner asserted that Petitioner only offered generic motivations to combine, which are legally insufficient. The Board reviewed Petitioner’s evidence and found that Petitioner had provided sufficient motivation to combine. The Board also found that Petitioner could rely on non-instituted prior art to provide the motivation to combine.

The Board then reviewed the remaining claims, finding that Patent Owner made similar arguments regarding unpatentability. Therefore, the Board found that all challenged claims are unpatentable as obvious over Teramura and the APA.

Next, the Board reviewed the second ground of unpatentability – obviousness of the challenged claims over Bernstein and the APA. The Board first found that Petitioner had shown that a combination of Bernstein and the APA teaches every limitation of claim 1. The Board then addressed the reasons to combine Bernstein and the APA. Patent Owner argued that Bernstein teaches away from the proposed combination. However, the Board credited the testimony of Petitioner’s expert stating that Bernstein does not teach away.

Once again, the Board found that Patent Owner’s arguments as to the remaining claims were similar to claim 1, and that all of the claims are unpatentable as obvious over Bernstein and the APA.

The Board then reviewed Patent Owner’s Motion to Exclude various exhibits. For many of the same reasons discussed above, Patent Owner’s Motion was denied.

eBay Inc. v. MoneyCat Ltd., CBM2014-00091
Paper 50: Final Written Decision
Dated: September 23, 2015
Patent 8,051,011 B2
Before: Bryan F. Moore, Miriam L. Quinn, and Minn Chung
Written by: Chung
Related Proceedings: MoneyCat, Ltd. v. PayPal, Inc., No. 1:13-cv-01358 (D. Del.); CBM2014-00092; CBM2014-00093