Takeaway: A request for rehearing of institution of covered business method review will be granted only where the Board misapprehended or overlooked a certain argument.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Decision to Institute CBM review of claims 1-18 of the ’587 Patent. In its denial, the Board determined that it did not misapprehend or overlook any of the following matters: whether the claims related to a financial activity; or whether the Board overlooked three arguments related to 35 U.S.C. § 101.

Patent Owner argued that the improperly determined that claim 6 was related to a financial activity, when the Petition never cited claim 6 as a basis for making that determination. Patent Owner contended that the Petition merely relied on the ’587 Patent being asserted against a financial institution as its basis for the ’587 Patent being a covered business method patent. The Board disagreed saying that the Petition described portions of the specification that supported and described subject matter of claim 6. Thus, the citation to the specification and challenging claim 1-18, put claim 6 and others within the review of the Board, and thus their decision did not exceed statutory authority by basing the Decision on grounds not presented in the Petition.

Patent Owner also argued that the Board overlooked three arguments related to 35 U.S.C. § 101, which included: that the Board ignored limitations in the claims to reduce the claims to a general abstract idea; that the Board improperly placed the burden of showing patentability on Patent Owner; and that the Petition should have been denied for omitting claim language in the Petition’s analysis of the independent claims. Regarding abstract idea, the Board alleged that it did not overlook the argument, just merely agreed with Petitioner. Specifically, the Board did not find any additional limitations that may “transform the abstract idea into a patent eligible invention.” Also, the Board contended that Patent Owner failed to identify any specific limitation that the Board allegedly ignored. Regarding shifting the burden to Patent Owner, the Board stated that it merely disagreed with Patent Owner’s position and arguments, not that the burden was on Patent Owner. Regarding overlooking claim language, again the Board contended that it did not ignore any claim limitations. Instead, the Board had considered all of the claim limitations and merely disagreed with Patent Owner’s position and arguments for the claims being patent eligible.

Bank of America, N.A. v. Intellectual Ventures II LLC, CBM2014-00033
Paper 17: Decision on Request for Rehearing
Dated: July 2, 2014
Patent 7,260,587 B2
Before: Thomas L. Giannetti, Hyun J. Jung, and Gregg I. Anderson
Written by: Anderson