Takeaway: When determining whether a patent is eligible for covered business method patent review, the focus is on what the patent claims.

In its Decision, the Board denied institution of the Petition as to all challenged claims of the ’279 patent. Consequently, a Covered Business Method patent trial was not instituted. The Petition had sought covered business method patent review of claims 1–4, 6–11, 13–21, 24, 27–35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63 of the ’279 patent. After Patent Owner had shown that it had filed a statutory disclaimer of claims 19, 24, 27, 33, 34, 53, 58, 61, 67, and 68 in the USPTO, the Board indicated that no covered business method patent review would be instituted for these disclaimed claims. Thus, the focus of the Board’s Decision was on whether to instituted covered business method patent review of remaining claims 1–4, 6–11, 13–18, 20, 21, 28–32, 35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63.

The ’279 patent relates to a data communication system/method that “[connects] on-line networks with on-line and off-line computers.” In accordance with this technology, “a remote computer . . . can receive information even while it is off-line (i.e., not connected to the Internet or on-line service.)” The Petition challenged claims 1–4, 6–11, 13–21, 24, 27–35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63 of the ’279 patent on various grounds, including obviousness under 35 U.S.C. § 103(a).

The Board noted that Petitioner bears the burden of demonstrating that the ’279 patent is a covered business method patent. More particularly, Petitioner must demonstrate that the ’279 patent includes at least one claim directed to “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.” Thus, “when determining whether a patent is eligible for covered business method patent review, the focus is on ‘what the patent claims.’” Petitioner had referenced claims 1 and 24 in support of its assertion that the ’279 patent is a covered business method patent.

The basic position asserted by Petitioner was that at least claim 1 overlapped significantly with claims of the parent of the ’279 patent that were found to be directed to a covered business method in related CBM2014-00054. Because Petitioner had not provided any analysis or explanation as to why the particular claim language required “an apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, as required by § 18(d)(1) of the AIA[,]” the Board found that Petitioner had not sufficiently demonstrated that the ’279 patent is a covered business method patent.

According to the Board, merely stating that the claims overlap with claims of the parent patent, “particularly without explaining how the claims overlap or even specifying what claims of the [parent] patent overlap, is insufficient for Petitioner to meet its burden.” Moreover, the Board pointed out that “to the extent Petitioner is attempting to rely on arguments it made for eligibility of the [parent] patent in the prior proceeding, such arguments cannot be incorporated by reference in its Petition in this proceeding.” Further, because Patent Owner had statutorily disclaimed claim 24 and other dependent claims reciting the same limitation(s), the Board “[treated] the ’279 patent as though claim 24 never existed.”

Google Inc. v. SimpleAir, Inc., CBM2015-00019
Paper 11: Decision Denying Institution of Covered Business Method Patent Review
Dated: May 19, 2015
Patent 8,572,279 B2
Before: James P. Calve, Justin T. Arbes, and Tina E. Hulse
Written by: Arbes
Related Proceeding: CBM2014-00054