USPTO Asked to Consider Not Just Covered Business Methods, But the Covered Business Methods

Fidelity National Information Services, Inc. (“FNIS”) filed two Covered Business Method Review (CBM) Petitions in late October (CBM2014-00020/21), asking the USPTO to review the two patents that Congress specifically discussed during floor debates prior to enacting Section 18 of the AIA. Congress identified the two subject patents (U.S. Patent No. 5,910,988 and U.S. Patent No. 6,032,137), known as “the Ballard patents”, during their discussion of the need for post-grant review.

In particular, Senator Kyl criticized the Ballard patents as “consist[ing] of long recitations of technology created by others to implement the supposed ‘invention’ of transmitting and processing checks and other business records electronically.” (S1379) Senator Schumer remarked that the Ballard patents are “exactly the type of patents that section 18 is designed to address, and the fact that [lawsuits asserting them] continue to be filed highlights the urgency of signing this bill into law and setting up an administrative review program at the PTO.” (S5432)

According to FNIS’s Petitions, DataTreasury “has elicited licenses totaling more than $350 million from a vast majority of the top twenty-five banking institutions in America” for the Ballard patents, which “DataTreasury contends. . . are foundational to modern day, image-based check processing.” FNIS contends that the Ballard patents are invalid under 35 U.S.C. §§ 101 and 112, and noted that it plans to later file additional petitions based on 35 U.S.C. §§ 102 and 103.