Web Page Authentication Patent is Outside the Scope of CBM Review
SECURE AXCESS v. PNC BANK: Feb. 21, 2017. Before Lourie (dissenting), Plager, and Taranto.
To qualify for CBM review, a patent must claim “the practice, administration, or management of a financial product or service.” Claims that are only “incidental to a financial activity” do not qualify.
Secure Axcess appealed from a final written decision of the PTAB holding that Secure Axcess’s patent was eligible for CBM review and that all claims of the patent were invalid under 35 U.S.C. § 103. The CAFC reversed the CBM determination and vacated the PTAB’s decision on obviousness.
CBM procedures – CBM review eligibility: The CAFC held the patent at issue, directed to systems and methods for authenticating web pages, was not eligible for CBM review. AIA § 18(d)(1) defines a CBM patent as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions,” and the CAFC ruled this required the claimed method to be more than “incidental to a financial activity.” In so holding, the CAFC discounted the probative value of the specification’s description of alternative embodiments being used by financial institutions, certain comments in the statute’s legislative history, and the patent owner’s history of enforcing the patent at issue against financial institutions, finding that none of this evidence overcame the failure of the claims to recite a finance-related activity as required by the plain language of the statute.
Other Opinions: Judge Lourie dissented, arguing that the patent was a CBM patent because the patent’s specification and the identities of the defendants sued for infringement of the patent make “clear that the invention is to be used in the management of a financial service.” The PTAB’s determination did not depend on the overly broad “incidental to a financial activity” interpretation of the statute, and prior precedent, including Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015) and Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016), confirms that CBM review is not limited to patents with claims expressly tied to the financial sector.