Takeaway: In order to show that a patent claims a method used in a financial product or service, one must analyze the claim language, not just a potential use of the invention.

In its Decision, the Board denied institution of covered business method patent review of claims 1-8 of the ’106 Patent. The ’106 Patent is directed to a method for treating a patient with a sensitive prescription drug and controlling access to the sensitive prescription drug, which is prone to potential abuse, misuse, or diversion, by utilizing a central pharmacy and database to track all prescriptions for the sensitive drug.
The Board began by discussing whether the ’106 Patent is eligible for covered business method patent review. The Board stated that a “covered business method patent” is one that “claims a method or corresponding apparatus for performing data processing or other operations used in 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 bears the burden of demonstrating that the ’106 Patent claims a method used for a financial product or service, and the Board looks to the claims to make this determination.

Petitioner argued that at least claim 1 of the ’106 Patent is computer business method review eligible because the claimed method is “used in commerce,” and Petitioner relied upon a declaration for evidence that filling a prescription necessarily involves checking a patient’s insurance coverage or ability to pay, which leads to the financial transaction of providing the drug. The Board found that Petitioner did not analyze the claim language to explain how it recites method steps involving the movement of money or extension of credit in exchange for a product or service, and that Petitioner’s argument was conclusory and not supported by persuasive evidence or analysis. The Board reviewed the claim language and found that it goes to the prevention of abuse, misuse, or diversion of the prescription drug, not verifying payment by the patient. The Board also looked to the written description to confirm that the claimed process is a control for checking the patient’s information and identity. Finally, the Board found that Petitioner’s argument that CBM review should include anything “used in commerce” is legally false and not supported by the legislative history. Therefore, the Board found that Petitioner had not shown that the ’106 Patent is eligible for covered business method patent review.

Roxane Laboratories, Inc. and Par Pharmaceutical, Inc. v. Jazz Pharmaceuticals, Inc., CBM2014-00161; CBM2014-00175
Paper 16: Decision Denying Institution of Covered Business Method Patent Review
Dated: February 9, 2015
Patents 7,765,106 B2; 7,765,107 B2
Before: Lora M. Green, Brian P. Murphy, and Jon B. Tornquist
Written by: Murphy
Related Proceedings: Jazz Pharms., Inc. v. Roxane Labs., Inc., 2:10-cv-6108 (D.N.J.); Jazz Pharms., Inc. v. Amneal Pharms., LLC, 2:13-cv-391 (D.N.J.); Jazz Pharms., Inc. v. Ranbaxy Labs. Ltd., 2:14-cv-4467 (D.N.J.); CBM2014-00149; CBM2014-00150; CBM2014-00151; CBM2014-00153