FIS successfully uses PTAB to invalidate quintessential “Business Method Patents”

Finnegan client Fidelity National Information Services Inc. (FIS) challenged two check-imaging patents owned by DataTreasury in covered business method (CBM) reviews at the Patent Trial and Appeal Board (PTAB), and successfully defended the PTAB’s decisions invalidating those patents on appeal to the Federal Circuit. DataTreasury’s infamous “Ballard” patents were called out by name as troublesome business method patents by Congress when it wrote the CBM statute. The PTAB, in its final written decision (FWD), said the two patents—directed to transferring information from one location to another where the transferred information is unreadable without a secret decoder key—cover abstract ideas that, in light of the Supreme Court’s decision on patentability in Alice Corp. v. CLS Bank Int’l, are too abstract to be patentable. The PTAB also held that many of the claims lacked sufficient written description for encrypting subsystem identification information and thus fail to meet the rigors of 35 U.S.C. § 112. The Federal Circuit affirmed the PTAB’s decision with a Rule 36 judgment, which the Supreme Court declined to review on certiorari. Finnegan represented FIS in the CBM challenges, in DataTreasury’s appeal of those CBM challenges, and also in mandamus petitions to the U.S. Court of Appeals for the Federal Circuit, resulting in a successful stay of the underlying litigation in the Eastern District of Texas.