Published 18/11/2015 by Marin
By Marin Cionca and Iris Kim
To be eligible for Covered Business Method (CBM) review, a patent must first claim a method or corresponding apparatus used in the practice, administration, or management of a “financial product or service” (37 C.F.R. 42.301 (a)). Second, it must not qualify for the “technological invention” exception, which refers to patents that claim a novel, unobvious technological feature solving a technological problem. A patent only needs one claim that meets these requirements to qualify for CBM review.
In a recent decision, however, the Patent Trial and Appeal Board (PTAB or Board) decided that a claim may qualify for CBM review under Section 18 of the America Invents Act (AIA) and meet the “financial product or service” criteria even if it does not “particularly target the financial industry,” Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB, Sept. 10, 2015).
In Symphony, the Petitioner had filed to institute a CBM review of claims in the ‘452 patent. This patent relates to a “system and method for gathering and analysis of health-care related data as well as techniques for de-identifying individuals from pharmaceutical data, in order to maintain privacy” (Symphony, PTAB). The patent teaches that laws were passed to prevent personal information from being transmitted with health care data, but that it is still important to be able to associate records. Therefore, the ‘452 patent is related to a system in which identifying information is removed, and the non-identifying information is then used for marketing researching and other purposes.
What is of note is that the ‘452 patent owner argued that this patent does not “particularly target the financial sector.” However, according to the Board, the ‘452 patent qualified for CBM review because the “challenged claims recite a system and method used in the practice, administration, or management of financial services and products.” Additionally, because the system helps to aggregate and organize data for marketing research, it was disclosed that the system could “help make business decisions,” (Symphony, PTAB) such as in sales.
An implication of this decision is that a larger group of patents may be eligible for CBM review than it was previously thought, and the definition of a CBM review-eligible patent is broader than it may seem at a first reading. Even patents that do not “particularly” target financial institutions or sectors may be eligible for CBM review.
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