Financial Hook for CBM Review Can Be Shallow but Must Be Rooted in Claims
Addressing the eligibility standard for covered business method (CBM) patent reviews, the Patent Trial and Appeal Board (PTAB or Board) recently issued two decisions in cases involving very similar technology that may signal the Board’s increased focus on the claims of the challenged patent as the basis for eligibility. Qualtrics, LLC, v. OpinionLab, Inc., Case No. CBM2016-00003 (PTAB, Apr. 13, 2016) (DeFranco, APJ); Google Inc. v. Zuili, Case No. CBM2016-00008 (PTAB, Apr. 25, 2016) (White, APJ).
In Qualtrics, the challenged patent was directed to a system and method for soliciting “page-specific” feedback from website users. Viewable icons on web pages allow parties to obtain feedback from website users through a rating scale or question box that appears in the browser’s window. The underlying software collects and stores users’ reactions for subsequent reporting to interested parties.
After reviewing the challenged claims, the Board found that the patent was not eligible for CBM review. Petitioners argued that the invention related to a financial product because the specification stated that the “claimed invention may be used in connection with websites that conduct ‘commercial transactions.’” The Board rejected that argument, explaining that nothing in the claims themselves was “rooted in the financial sector,” and that the claims were not “limited to a monetary transaction.” Even though the specification mentioned the invention’s possible applicability to the financial sector, no claim language necessarily tied the claims to the commercial transaction described in the specification. And even though the specification indicated that the invention might be available “for a fee” and may provide a “value” for the website, that language was merely incidental to the broader applicability of the claimed invention. Accordingly, the Board found that none of the claims were eligible for CBM review.
At the other end of the spectrum, the panel in the Google case found that at least one challenged claim was eligible for CBM review. As in Qualtrics, the patent at issue was directed to providing website content. The claims described various ways of identifying clicks on a website and distinguishing between valid and invalid clicks. The patent owner argued that because the specification indicated that the invention could be used broadly for almost any type of web search provider, and because there was no requirement that fees be paid to use the claimed invention, the claims were not directed to a financial product or service.
The Board disagreed, focusing on the language of claim 1 that limited the web pages to those “associated with a plurality of merchants.” Using the word “merchants” as a hook, the Board tied this language to examples in the specification showing that the invention uses “advertising and that an objective of the invention is to ‘fairly invoice merchants’ by identifying fraudulent click activity.” After determining that the claims were not directed to a technological invention, the Board determined that the challenged claims were eligible for CBM review.
Practice Note: In light of these recent decisions, petitioners seeking CBM review are advised to tie specific claim language to a financial product or service. A mere reference in the specification to a potential relationship to financial products or services, without some way to link that reference to the claim, may not be sufficient to qualify the patent for CBM review. Similarly, patent owners hoping to avoid CBM review would be wise to disassociate the claim language from any financial applicability that may be discussed in the specification.