Disclaimed Financial-Related Claims Disregarded in Determining Whether Non-Overlapping Claims Qualify for CBM Review

Following the patent owner's disclaimer of certain challenged claims, the Board denied institution of covered business method review of a patent directed to electronic commerce because the petitioner did not show that the patent was a covered business method patent under § 18(d)(1) of the AIA. "Petitioner challenges claims 1–20 of the ’177 patent, of which claims 1–10 have been disclaimed. . . . [F]or the purposes of whether or not to institute a covered business method patent review, we treat claims 1–10 as never having existed. . . . We acknowledge that other panels of the Board have taken the caveat that an otherwise statutorily disclaimed dependent claim, which includes finance-related subject matter, may still be considered, to the extent that the still pending independent claim from which it depends may include claim limitations that encompass the finance-related subject matter of that dependent claim. . . . Petitioner has identified little relevant overlap between claims 1–10 and claims 11–20, in that the more overt finance-related subject matter of claims 1–10 identified by Petitioner – 'selection client' of claims 2 and 6, and 'retrieval client' of claim 7 – are not recited in claims 11–20. Accordingly, we determine that in this proceeding, a proper analysis as to whether the ’177 patent is a covered business method patent should focus exclusively on claims 11–20."

Petition for Covered Business Method Patent Review by Bitco Corp., CBM2015-00171 (PTAB February 9, 2016, Order) (Kim, APJ)