In Salesforce.com, Inc. v. Applications in Internet Time LLC, the PTAB considered the effect of a statutory disclaimer, statements in the specification, and the patent’s assigned classification on whether the challenged patent was eligible for a Covered Business Method review. The Board ultimately declined to institute, finding that the patent was ineligible for CBM review because the patent failed to meet the statutory definition of a “covered business method patent.” CBM2014-00162, Paper 11 (Feb. 2, 2015).
Patent Owner argued that because claims 1-12 had been statutorily disclaimed, Petitioner had not shown the patent to be a covered business method patent. The Board disagreed, finding that Petitioner did not argue that “only” claim 1 was directed to a covered business method. Rather, the Board found Petitioner had used claim 1 as an “example” in asserting the patent to be a covered business method patent.
Thus, the Board understood Petitioner’s argument as applying “more broadly to the subject matter of all the claims.” As a result, while the Board relied on the statutory disclaimer of claims 1-12 in denying institution as to those claims, the Board examined the CBM-eligibility of claims 13-18 (which had not been disclaimed) on their own merits.
In assessing the CBM-eligibility of claims 13-18, the Board addressed whether those claims met the first requirement for a covered business method patent, i.e., whether those claims claimed “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.” Focusing on the language of the claims, the Board found that:
- Claims 13-18 “on their face” are directed to technology “common in business environments across sectors” with “no particular relation to the financial services sector”;
- Petitioner failed to show any relationship between the claims and the two references to “finance” in the specification, wherein “finance” is one among other examples of industries; and
- The USPTO’s assignment of the patent to Class 705 (Data Processing: Financial, Business Practice, Management or Cost/Price Determination) fails to support the conclusion that claims 13-18 claim a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”
This decision demonstrates that the Board’s determination of whether a patent qualifies as a covered business method patent is heavily focused on what the patent claims. Therefore, petitioners should focus on the claim language in arguing for CBM eligibility, rather than overly rely on language in the specification or the patent’s assigned classification. Similarly, Patent Owners should focus on the claim language in arguing against CBM eligibility, rather than overly rely on a statutory disclaimer of a subset of the patent’s claims.