Petition for Covered Business Method Patent Review by Twilio, Inc., CBM2016-00099 (PTAB February 27, 2017, Order) (Arbes, APJ)
Wednesday, March 1, 2017
On-Line Registration Patent Not Directed to Financial Product or Service
The Board denied institution of covered business method review of a patent directed to on-line or web-site registration, finding the patent was not directed to a financial product or service. "[O]ur focus is on what the ’792 patent claims, not solely the exemplary embodiments described in the Specification, some of which are related to finance and some of which are not. . . . Petitioner argues that [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016)] requires the Board to 'strike the proper balance between (1) an invention of general usage that could also be used in the administration of a financial service and (2) an invention that is used in administration of a financial service but that could also be used for non-financial purposes.' Petitioner, however, does not quote anything in Unwired Planet for this proposition, which appears to contradict the Federal Circuit’s direction that covered business method patents 'are limited to those with claims that are directed to methods and apparatuses of particular types and with particular uses ‘in the practice, administration, or management of a financial product or service,’' and '[i]t is not enough that a sale . . . may occur, or even that the specification speculates such a potential sale might occur.'"