“Technical Invention” Exclusion Tempers Broad “Financial Service” Interpretation in CBM Institution Decision

When is a patent directed at financial services not a “covered business method” under Section 18(d) of the AIA? When it claims a “technological invention.” Experian Mktg. Solutions, Inc. v. RPost Commc’ns Ltd., CBM 2014-0010 (Paper No. 20) (Apr. 22, 2014), the first PTAB decision denying institution of Covered Business Method (CBM) Patent Review, illustrates how the “technological invention” exception limits the scope of CBM review.

Experian involved U.S. Patent Number 8,224,913 (the ‘913 patent), directed to “a method of transmitting a message from a sender to a recipient through a server.” The exemplary claim involves method of authenticating e-mail messages using digital signatures.

In deciding whether to institute CBM review, the Board first considered whether the claims were related to a “financial product or service.” Consistent with earlier institution decisions, the Board construed “financial product or service” broadly, concluding that the claimed messaging system was financially related because it could facilitate “orders” and “offers to purchase.”

Next, the Board considered whether the patent was exempt from CBM review as a “technological invention.” Citing its trial practice guide, the Board first set forth examples of what does not constitute a “technological invention”— “mere recitation of known technologies,” “use of known prior art to accomplish a process,” and “combining prior art structures to achieve the normal, expected or predictable result.”

Turning to the claim at issue, the Board criticized the Petitioner for “analyzing the method steps separately, instead of examining each claim as a whole ...” The fact that aspects of the claim, such as e-mail systems, were well-known before filing of the challenged patent did not lessen the Petitioner’s burden to show the entire claimed method was not a technological invention. According to the Board, the Petitioner failed to demonstrate that the claimed method—including an intermediary recording step that eliminated the need for specialized e-mail systems—was not a technological invention.

As this first denial of a CBM petition illustrates, the “technological invention” exemption tempers the broad definition of “financial product or service” in determining whether to institute CBM review. Petitioners should fully explain why no technical problem is being addressed by the claims, including evidence that the technical features were known at the time of invention.  Further, in addressing this issue, piecemeal analysis will not do; the claims should be analyzed as a whole.