Takeaway: The Board may determine that a claim is patent-eligible under 35 U.S.C. § 101 where additional recited elements “transform the nature of the claim into a patent-eligible application,” but only if those additional elements constitute more than “well-understood, routine, conventional activity.”

In its Decision, the Board instituted covered business method patent review of claims 52, 62, 67, 70-76, 81, 83-85, and 96 of the ‘538 patent. The sole asserted ground of unpatentability for each of these claims was that, according to Petitioner, each of these claims is directed to subject matter that is not eligible for patentability under 35 U.S.C. § 101.

The ‘538 patent is directed to “methods and systems of electronic inventory tracking by a third party, for example via the Internet.” Such methods and systems are used for “inventory management by tracking inventory and automatically contacting suppliers, manufacturers, or distributors when additional supplies are needed.”

The Board agreed with Petitioner that the challenged claims were “directed to activities that are financial in nature.” As found by the Board, “because claim 67 recites, inter alia, ordering products based on collected ‘inventory restocking parameters,’ which necessarily relates in nature to the financial sale of products, it claims ‘activities that are financial in nature,’ and the first part of the definition of § 18(d)(1) is satisfied.”

The Board then went on to indicate that in order “[t]o be eligible for review, a patent need only have one claim directed to a covered business method, and not a technological invention[,]” and in doing so, directed its focus in this context on claim 67. The Board next concluded that it was “persuaded that claim 67 as a whole does not recite a technological feature that is novel and unobvious over the prior art, and does not recite a technical solution that solves a technical problem.”

The Board concluded by finding that “Petitioner has established that it is more likely than not that claims 52, 62, 67, 70-76, 81, 83-85, and 96 of the ‘538 patent are unpatentable under 35 U.S.C. § 101.” Although Patent Owner had cited to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (2014)), in support of its arguments otherwise, the Board found that the claims in that case were of a different type than were at issue in the instant proceeding.

Life Technologies Corporation v. Unisone Strategic IP, Inc., CBM2015-00037
Paper 8: Decision Granting Institution of Covered Business Method Patent Review
Dated: June 29, 2015
Patent: 6,996,538 B2
Before: Jacqueline Wright Bonilla, Hyun J. Jung, and Neil T. Powell
Written by: Bonilla
Related Proceedings: Unisone Strategic IP, Inc., v. TraceLink, Inc., 3-13-cv-01743 (S.D. Ca.) (2013); Unisone Strategic IP, Inc. v. Life Technologies Corp., 3-13-cv-01278 (S.D. Ca.) (2013)