iTakeaway: Recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.
In its Final Written Decision, the Board ordered that each of challenged claims 1-21 of the ’524 patent was unpatentable as not being directed to patent-eligible subject matter. Also, the Board dismissed Patent Owner’s Motion to Exclude.
The ’524 patent relates to “a computerized system for paying bills in which a consumer, using a telephone, computer, or other electronic means from a remote location, may direct a single source to pay the consumer’s bills, instead of the consumer writing a check for each bill.” Although Patent Owner had argued that each of independent claims 1, 11, and 21 required operations of (1) data capture, (2) payment form determination, and (3) initiation of payment to be performed by “the claimed electronic bill payment (EBP) process and system,” the Board disagreed. Instead, the Board found that because “the ’524 Patent claims do not recite bill payment or an EBP process or system and . . . the terms ‘electronic bill’ and ‘EBP’ do not even appear in the specification,” Patent Owner was improperly “attempting to recast abstract ideas recited in the ’524 Patent claims in a manner that requires machines or transformations.” The Board also disagreed with Patent Owner on other substantive claim construction issues.
The Board addressed Patent Owner’s argument that the claims of the ’524 patent were directed to a technological invention, thus making the ’524 patent unavailable for covered business method review. The Board disagreed with Patent Owner, finding that the ’524 patent was a covered business method patent.
The Board analyzed the challenged claims for patent eligibility under the two-part test followed by the U.S. Supreme Court in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). Under that test, the Board first determines “whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon, and abstract ideas.” Second, if so, the Board considers “whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”
Applying the first step from the Alice case, the Board concluded that the challenged claims of the ’524 Patent were drawn to an abstract concept. Applying the second step of theAlice test, the Board determined that the challenged claims did not do significantly more than simply describe that abstract method. In particular, the Board found: that the recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible; that Patent Owner had improperly read limitations such as electronic bill system, or EBS, into the claims from the specification and extrinsic sources; that “the payment service provider computer recited in claims 1 and 11 and the means for selecting in claim 21, . . . are recitations of a general purpose computer that carries out the necessary calculations to perform the recited comparisons”; and that one of Patent Owner’s own experts had “conceded that selecting an electronic form of payment, rather than printing a check does not constitute a physical transformation.” For these and other reasons, the Board found each of claims 1-21 of the ’524 patent to be patent-ineligible.
As for Patent Owner’s Motion to Exclude certain parts of the rebuttal testimony of Mr. Michael Shamos (Petitioner’s expert), the Board indicated that it had not cited or relied upon the rebuttal testimony of Mr. Shamos reaching its conclusions. This led the Board to dismiss Patent Owner’s Motion to Exclude as moot.
Fidelity National Information Services, Inc. v. Checkfree Corporation, CBM2013-00030
Paper 51: Final Written Decision
Dated: December 22, 2014
Patent: 7,853,524 B2
Before: Brian J. McNamara, Barry L. Grossman, and Lynne E. Pettigrew
Written by: McNamara
