Internet Advertising Patent Not Directed to Financial Product or Service​

The Board denied institution of covered business method review of a patent directed to a system for delivery of targeted advertisements, finding the patent was not directed to a financial product or service. "[Petitioner] contends the independent claims 20 and 25 each recite features relating to the presentation and monetization of advertisements. . . . We agree with [patent owner] that, based on the Federal Circuit’s new guidance in [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)] [petitioner] has not demonstrated that at least one challenged claim of the ’651 patent is directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . .We agree with [petitioner] that these claims generally apply to Internet advertising. The Federal Circuit, however, explained in Unwired Planet that claims broad enough in scope to cover the facilitation of advertisement, without more, are not enough to justify concluding that a patent is a covered business method patent eligible for review. . . . [A]lthough Internet advertising might lead to a sale of a good or service, mere probabilities or possibilities fall short of demonstrating operations necessarily used in the practice, administration, or management of a financial product or service."

Petition for Covered Business Method Patent Review by Google Inc., CBM2016-00096 (PTAB February 27, 2017, Order) (Zecher, APJ)

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.'"

Petition for Covered Business Method Patent Review by Twilio, Inc., CBM2016-00099 (PTAB February 27, 2017, Order) (Arbes, APJ)

Targeted Advertisement Patent Not Directed to Financial Product or Service​

The Board denied institution of covered business method review of a patent directed to a system for delivery of targeted advertisements, finding the patent was not directed to a financial product or service. "According to Petitioner, the systems and methods for delivering targeted advertisements are financial in nature because someone receives money to deliver advertisements about a product or service. . . .We agree with Patent Owner that, based on the Federal Circuit’s new guidance in [Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016)], Petitioner has not demonstrated that the challenged claims of the ’393 patent are directed to a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. . . . An advertisement is not considered an 'offer for sale' under traditional contract law and it does not require or guarantee a sale or any financial transaction will occur. . . . Although targeted advertising might lead to a sale of a good or service, mere probabilities or possibilities fall short of demonstrating operations necessarily used in the practice, administration, or management of a financial product or service."

Petition for Covered Business Method Patent Review by Google Inc., CBM2016-00097 (PTAB February 27, 2017, Order) (Braden, APJ)