The Patent Trial and Appeal Board (PTAB or Board) determined that a patent directed to a web services management was not eligible for covered business method (CBM) review under § 18 of the America Invents Act (AIA) and that “it is insufficient to simply show how the claims of the patent may be mapped to a financial embodiment in the specification.” ServiceNow, Inc. v. Hewlett-Packard Company, Case No. CBM2015-00077 (PTAB, Sept.17, 2015) (Crumbley, APJ).
To be eligible for CBM review under § 18(d)(1) a patent must claim “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.”
ServiceNow (the petitioner) contended that the challenged patent is eligible for CBM review, arguing that illustrative embodiment in the specification pertains to an online ordering system and that “each of the limitations from claim 1 is reflected in the online order system.” The petitioner further argued that the challenged patent expressly contemplates using the claimed method to manage “a financial product or service,” and therefore, that the challenged patent is eligible for CBM review.
The patent owner, Hewlett-Packard, disagreed that the challenged patent claims a CBM and argued that CBM review “is not available for patents that claim generally useful technologies that happen to be also useful to financial application.” The patent owner further argued that the claims of the challenged patent do not contain a “limitation that is financial in nature” and “are directed to generally useful technologies that may be applied to various industries and processes.”
The Board agreed with the patent owner, concluding that the claims of the challenged patent are of general utility. In particular, the Board noted that the challenged claims had no “finance-related terminology or limitation” and that the challenged claims are directed to an invention of general utility. The According to the Board, the specification of the challenged patent supports such a conclusion by providing examples of non-financial embodiments, such as Web services used for language translation or travel planning functions.
As the Board explained, in § 18(d)(1) Congress defined a CBM patent as one that claims “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of financial product or service,” not a method or apparatus that “can be used,” “may be used” or “is capable of being used” in such a manner. The Board acknowledged that “[f]inancially-related illustrative embodiments in the specification may be sufficient in cases where the specification indicates particular advantages or applicability to financial embodiments, where the specification makes clear that claim limitations are expressly interpreted to cover financial embodiments, or where there is not extensive evidence that the claimed invention has general utility.” However, in the present case, the Board found that the petitioner failed to establish that the challenged patent was directed to a CBM.
