In a recent CBM institution decision, the PTAB held at least one claim in the challenged patent was directed to a financial product or service because the claimed invention has application in the banking industry. Informatica Corp. v. Protegrity Corp., CBM2015-00010, Paper 13 (May 11, 2015). This decision appears to conflict with prior Board decisions, in that it looks beyond the express claim language in assessing CBM-eligibility.
A threshold inquiry for instituting a CBM review is whether the challenged patent “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 . . . .” AIA § 18(d)(1) (emphasis added). That definition encompasses patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.” See, e.g., SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36, at 21 (Jan. 9, 2013). The Board has held that the focus of the inquiry is the language of the claims. See, e.g., Salesforce.com, Inc. v. Applications in Internet Time LLC, CBM2014-00168, Paper 10, at 8 (Feb. 2, 2015).
In Informatica, the Patent Owner argued that its patent was not CBM-eligible because not a “single word in any single claim” was directed to a financial product or service. In holding the patent CBM-eligible, the Board noted that claim 1 recites “determining whether each of the one or more data processing rules associated with [a] requested data portion are satisfied.” The Board further noted that the specification describes that the claimed “data processing rules” are used to protect against unauthorized access of data and that “banking is a field where protection against unauthorized access to databases that are used for administering and storing sensitive information is desired.” Reasoning that “[b]anking is a financial activity,” the Board concluded that the patent claims activities that are at least incidental or complementary to the practice, administration, or management of a financial product or service.
The Board’s reasoning appears to be in tension with Salesforce.com and similar decisions. Specifically, in Salesforce.com, the claims, “on their face,” were not expressly directed to a financial product or service, but the specification described “banking, financial and securities activities” as part of a long list of industries that use business software and could benefit from the patented invention. CBM2014-00168, Paper 10, at 7. The Salesforce.com panel reached a conclusion opposite to that in Informatica, holding that the patent was not a CBM-eligible patent.
