In a recent decision, the Patent Trial and Appeal Board (PTAB) denied the institution of a covered business method (CBM) patent review on an Internet Portal System patent because the claims lacked any recitation of a financial product or financial activity. The decision serves well to inform petitioners that the focus for CBM decisions is becoming more on the claim language itself, in contrast to some earlier decisions by the Board where a liberal reading and interpretation of the patent in general was allowed to institute a CBM trial.
Plaid Technologies Inc. filed a Petition requesting a review under the transitional program for CBM patents of claims 1–12 of U.S. Patent No. 6,199,077 owned by Yodlee, Inc. Ultimately, the PTAB determined that the information presented in the Petition did not establish that the '077 patent qualifies as a "covered business method patent" that is eligible for review.
The '077 patent
The '077 patent generally relates to the field of Internet navigation and, in particular, to a method and apparatus for gathering summary information from users or websites and presenting that information as HyperText Markup Language to the users or websites via either push or pull technology. According to the '077 patent, one problem encountered by an individual who has several subscriptions to Internet-brokered services is that there are numerous passwords and usernames to remember. Another problem encountered by an individual with numerous subscriptions services is that he/she must bookmark all the corresponding web pages in a computer cache so he/she can find and access these services quickly. The '077 patent purportedly addresses these problems by providing an Internet portal that includes a server connected to the Internet, along with portal software executing on the server that includes a summary software agent. The Internet Portal maintains a list of Internet websites specific to a particular user, and the summary software agent accesses these websites, retrieves information according to pre-programmed criteria, and then summarizes the retrieved information for delivery to the user.
Of the challenged claims, claims 1 and 7 are independent. Claim 1 is directed to an Internet portal, whereas claim 7 is directed to a method executed in an Internet portal system for gathering data specific to a person from a plurality of Internet sites storing data specific to that person. Claims 1 and 7 are reproduced below:
1. An Internet Portal, comprising:
an Internet-connected server;
a list of addresses of Internet sites associated with a specific person, which sites store information specific to the person; and
a software suite executing on the server, the software suite including a set of gathering spitware agents, with at least one gatherer agent dedicated to each of the Internet sites;
wherein the Portal accomplishes a gathering cycle by accessing individual ones of the Internet sites, authenticating too each site accessed as the person, and the gathering agent dedicated to each site accessed extracts data from that site.
7. In an Internet Portal system, a method for gathering data specific to a person from a plurality of Internet sites storing data specific to that person, the method comprising the steps of:
(a) initiating a gathering cycle accessing individual ones of the plurality of sites;
(b) authenticating to the sites as the person; and
(c) executing a software gathering agent at each site accessed to gather data from the site, the gathering agent dedicated to each site accessed.
Does the '077 patent qualify for CBM review?
A "covered business method patent" is 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." AIA § 18(d)(1). For purposes of determining whether a patent is eligible for a covered business method patent review, the focus is on the claims.
Although not binding authority, several Board decisions have determined that the following considerations weigh in favor of concluding that the patent at issue is not a CBM patent eligible for review: (1) claims of general utility with (2) no explicit or inherent finance-related terminology or limitations. (Qualtrics, LLC v. OpinionLab, Inc., Case CBM2015-00164 (PTAB Feb. 3, 2016)).
Plaid contended that the challenged claims of the '077 patent cover financial-related activities because these claims gather data for "subscription services," such as activities like "banking, stock trading, shopping, and so forth." For instance, Plaid argued that the claimed "Internet Portal system" is intended to be used to gather data, particularly financial data, because the corresponding "Internet sites" may include a number of financially-related websites, such as "My Bank.com," "My Stocks.com," "My shopping.com," "Mortgage.com," and "Airline.com."
Yodlee, however, argued that the arguments presented by Plaid narrowly focus on examples in the specification of the '077 patent, and that there is not a single claim term that is tied sufficiently to a financial-related activity that would justify concluding that the '077 patent is a CBM patent eligible for review.
The PTAB agreed with Yodlee and found that Plaid had not demonstrated that the challenged claims of the '077 patent are directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.
The language of the independent claims generally applies to executing a software program to gather or extract data from a plurality of websites on the Internet. Given this general utility, the PTAB agreed with Yodlee that the independent claims are devoid of any claim terms that reasonably could be argued as being tied sufficiently to a financial-related activity that would justify concluding that the '077 patent is a CBM patent eligible for review.
Although certain examples in the specification of the '077 patent cover financial embodiments, the PTAB found no language in the specification that somehow limits the scope of claims 1 and 7 in this way. Indeed, the specification discloses that the list of websites on a user's personalized web page, which may include "My Bank.com," "My Stocks.com," "My shopping.com," "Mortgage.com" and "Airline.com," are "but a few of many exemplary destinations that may be present and listed on [the user's personalized web page]."
Lastly, the PTAB noted the Board panel's reasoning in Qualtrics applies equally to the circumstances presented in this case. That is, if the PTAB were to adopt the position advocated by Plaid in its Petition, it would mean that any patent claiming something that might potentially apply to a financial product or service would be a CBM patent eligible for review, regardless of its general utility and application outside of finance.
Thus, the PTAB was clear that because the challenged claims of the '077 patent are of general utility with no explicit or inherent finance-related terminology or limitations, this patent was not considered a CBM patent eligible for review. The CBM review was thus not instituted.
Before Administrative Patent Judges Kevin F. Turner, Michael R. Zecher, and John A. Hudalla
Decision by Michael R. Zecher
