Trials@uspto.gov
`571-272-7822
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`Paper 14
`Date: May 22, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, N.A.,
`PNC FINANCIAL SERVICES GROUP, INC., and PNC BANK, N.A.,
`Petitioners,
`v.
`
` INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00031
`Patent 6,182,894 B1
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 14
`Date: May 22, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, N.A.,
`PNC FINANCIAL SERVICES GROUP, INC., and PNC BANK, N.A.,
`Petitioners,
`v.
`
` INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00031
`Patent 6,182,894 B1
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`Case CBM2014-00031
`Patent 6,182,894 B1
`
`
`Bank of America, N.A., PNC Financial Services Group, Inc., and
`PNC Bank, N.A. (collectively, “Petitioners”) filed a Petition (Paper 1,
`“Pet.”) on November 12, 2013, to institute a covered business method
`review of claims 1-18 of U.S. Patent No. 6,182,894 B1 (“the ’894 patent”)
`pursuant to 35 U.S.C. §§ 321-328. Patent Owner, Intellectual Ventures II
`LLC, filed a preliminary response (Paper 13, “Prelim. Resp.”) on February
`26, 2014. We have jurisdiction under 35 U.S.C. § 324. For the reasons that
`follow, we institute a covered business method review of claims 10-18 of the
`’894 patent.
`
`
`I. INTRODUCTION
`The standard for instituting a covered business method review is set
`forth in 35 U.S.C. § 324(a):
`THRESHOLD—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`Upon consideration of the Petition and Preliminary Response, we
`determine it is more likely than not that Petitioners would prevail with
`respect to claims 10-18 of the ’894 patent, but not with respect to claims 1-9
`of the ’894 patent. Accordingly, we grant the Petition as to claims 10-18 for
`the reasons discussed below.
`A. The ’894 Patent (Ex. 1001)
`The ’894 patent, titled “Systems and Methods for Authorizing a
`Transaction Card,” issued on February 6, 2001, based on Application
`09/181,734, filed October 28, 1998.
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`The ’894 patent relates to reducing fraud when conducting
`commercial transactions using transaction card 10. Ex. 1001, 3:52-54.
`Reproduced below are Figures 2A and 2B of the ’894 patent.
`
`
`
`
`Figures 2A and 2B are front and rear views respectively of an
`exemplary transaction card. Id. at 3:36-39. Card identification codes 14, 15,
`and 16 are preferably printed on or encoded in transaction card 10. Id. at
`3:59-61. In a preferred embodiment, card identification codes 14 or 15 are
`logically related to card identification code 16. Id. at 4:45-47. Identification
`code 16 is suitably calculated from account code 12, identification codes 14
`or 15, and an expiration date based upon a predetermined algorithm. Id. at
`4:59-62. The algorithm is optimally a robust and secure algorithm which
`conforms to a Data Encryption Standard. Id. at 6:64-66.
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`Reproduced below is Figure 3 of the ’894 patent.
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`Figure 3 is an exemplary schematic diagram of a simplified
`transaction card authorization system. Id. at 3:41-42. In a preferred
`embodiment, authorization system 20 includes input device 22, network 24,
`and authorization server 26. Id. at 5:46-48. Authorization system 20 is any
`authorization system suitably configured to authorize a transaction card and
`notify input device 22 of the authorization status. Id. at 5:38-40. Input
`device 22 is any device suitably configured to accept transaction information
`and transmit the information for approval. Id. at 5:48-50. Authorization
`server 26 is any device suitably configured to authorize a transaction card
`and notify input device 22 of the authorization status. Id. at 5:60-63.
`When a consumer uses transaction card 10, a person inputs account
`code 12 and card identification codes 14, 15, or 16, along with any other
`transaction information into input device 22. Id. at 6:16-21. In one
`embodiment, card identification code 14 or 15 is manually keyed into input
`device 22. Id. at 6:21-23. After authorization server 26 determines that the
`information was manually keyed, authorization server 26 interrogates
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`account database 30 to determine if the keyed identification code 14 or 15
`matches the respective identification number on file for that transaction card.
`Id. at 6:32-36. When the transaction card is swiped through input device 22,
`identification code 16 previously entered into the magnetic stripe of
`transaction card 10, along with other information, is transmitted to
`authorization server 26. Id. at 4:63-67 and 6:48-51. Authorization server 26
`determines that the data originated from a magnetic stripe and preferably
`decomposes identification code 16 into a four-digit number using a
`predetermined mathematical algorithm, which is the inverse of the algorithm
`used to create identification code 16. Id. at 6:51-59. The authorization
`server 26 then interrogates account database 30 to determine if the derived
`four-digit number matches the number on file for that transaction card. Id. at
`6:66-7:3.
`B. Related Matters
`Petitioners have been charged with infringement of the ’894 patent in
`the following cases: Intellectual Ventures I LLC and Intellectual Ventures II
`LLC v. PNC Financial Services, Inc. and PNC Bank NA, No. 2:13-cv-00740
`(W.D. Pa. filed May 29, 2013) and Intellectual Ventures I LLC and
`Intellectual Ventures II LLC v. Bank of America Corp. and Bank of America,
`National Association, No. 3:13-cv-00358 (W.D.N.C. filed June 12, 2013).
`Pet. 5 (citing Exs. 1006 and 1007).
`In addition, Petitioners advise us four additional lawsuits where Patent
`Owner alleges the ’894 patent is infringed. Id. at 51-52.
`C. Illustrative Claims
`Of the challenged claims, claims 1, 10, 15, and 18 are independent
`and are reproduced below:
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`1. A system for authorizing commercial transactions
`comprising:
`
`a transaction card having an n character account code and
`an n character identification code, wherein said identification
`code is not an expiration date and wherein said account code
`and said identification code have a predetermined logical
`relationship;
`
`an input device for receiving said account code and said
`identification code; and,
`
`an authorization computer in communication with said
`input device, said authorization computer configured to confirm
`said predetermined relationship between said account code and
`said identification code.
`
`10. A method for obtaining an authorization for a
`
`commercial transaction comprising:
`
`keying an n character account code and an n character
`identification code into an input device, wherein said
`identification code is not an expiration date and wherein said
`account code and said identification code have a predetermined
`logical relationship;
`
`communicating, from said input device to an
`authorization computer, said account code and said
`identification code; and,
`
`receiving a confirmation from said authorization
`computer of said predetermined relationship between said
`account code and said identification code.
`
`
`
`15. A transaction card for authorizing commercial
`transactions comprising:
`
`an n character account code in a first field;
`
`an n character identification code in a second field,
`wherein said identification code is not an expiration date;
`
`wherein said account code and said identification code
`have a predetermined logical relationship;
`
`said transaction card configured to provide, via an input
`device, said account code and said identification code to an
`authorization computer, wherein said authorization computer is
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`configured to confirm said predetermined relationship between
`said account code and said identification code.
`
`18. At an authority responsible for authorizing a
`
`transaction, a computer-implemented method for handling an
`authorization request, comprising the following steps:
`
`receiving an n character account code and an n character
`identification code from an input device, wherein said account
`code and said identification code have a predetermined logical
`relationship;
`
`confirming said predetermined relationship between said
`account code and said identification code; and,
`
`processing the authorization request.
`
`
`
`D. The Asserted Ground
`Petitioners request review of claims 1-18 of the ’894 patent on the
`ground that these claims are unpatentable under 35 U.S.C. § 101. Pet. 15.
`E. Claim Interpretation
`As a step in our analysis for determining whether to institute a trial,
`we determine the meaning of the claims. Consistent with the statute and the
`legislative history of the America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”), the Board will interpret claims using the broadest
`reasonable construction. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 100(b). Under that
`standard, claim terms are given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`1. “identification code” (Claims 1, 3, 4, 6-15, 17, and 18)
`
`
`Petitioners contend that “identification code” should be interpreted as
`“a combination of characters that is located on a transaction card.” Pet. 41,
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`43 (citing Ex. 1001, Abstract, 5:17-20). Petitioners argue that the
`Specification of the ’894 patent “distinguishes PIN numbers . . . from the
`card identification codes” and that “the identification code can ‘include any
`number of characters (n characters) comprising any combination of
`numbers, symbols, letters.’” Id. at 43-44 (citing Ex. 1001, 3:58-61, 4:25-45,
`and 5:1-21; Ex. 1005 ¶ 53). Patent Owner has not disputed the Petitioners’
`proposed construction. Prelim. Resp. 7.
`Petitioners reasonably identify in the Specification of the ’894 patent
`support for their proposed construction, and Petitioners’ proposed
`construction corresponds with the broadest reasonable interpretation of
`“identification code” in view of the Specification of the ’894 patent.
`Thus, for purposes of this decision, we agree with and adopt
`Petitioners’ construction of “identification code” as “a combination of
`characters that is located on a transaction card.”
`2. “predetermined logical relationship” (Claims 1, 10, 15, and 18)
`
`Petitioners argue that “predetermined logical relationship” should be
`interpreted as an “algorithmic relationship that is determined prior to the
`creation of a card.” Pet. 41, 44. Petitioners contend that a predetermined
`algorithm calculates an identification code before creating a transaction card.
`Id. at 44-45 (citing Ex. 1001, 2:56-60, 4:52-63, 5:1-5, 6:64-66, fig. 1).
`Patent Owner has not disputed the Petitioners’ proposed construction.
`Prelim. Resp. 7.
`Petitioners reasonably identify in the Specification of the ’894 patent
`support for their proposed construction, and Petitioners’ proposed
`construction corresponds with the broadest reasonable interpretation of
`“predetermined logical relationship” in view of the Specification of the ’894
`
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`patent.
`Therefore, for purposes of this decision, we agree with and adopt
`Petitioners’ construction of “predetermined logical relationship” as an
`“algorithmic relationship that is determined prior to the creation of a card.”
`3. “transaction card” (Claims 1, 2, 4, 7, 12, and 15-17)
`
`
`Petitioners contend that “transaction card” should be construed as “a
`card for engaging in a commercial transaction.” Pet. 42, 46. Petitioners cite
`portions of the ’894 patent and dependent claim 2 that “limits the transaction
`card of independent claim 1 to one of ‘a credit card, debit card, bank card,
`charge card, and smart card.’” Id. at 46 (citing Ex. 1001, 1:13-16, 54-60,
`5:49-52). Petitioners thus argue that “‘transaction card’ must be broader
`than the specific list of cards enumerated in dependent claim 2.” Id. (citing
`Ex. 1005 ¶ 58). Patent Owner has not disputed the Petitioners’ proposed
`construction. Prelim. Resp. 7.
`Petitioners reasonably identify in the Specification of the ’894 patent
`support for their proposed construction, and Petitioners’ proposed
`construction corresponds with the broadest reasonable interpretation of
`“transaction card” in view of the Specification of the ’894 patent.
`Thus, for purposes of this decision, we agree with and adopt
`Petitioners’ construction of “transaction card” as a “card for engaging in a
`commercial transaction.”
`4. “account code” (Claims 1, 4, 7, 9-12, 14, 15, 17, and 18)
`
`
`Petitioners argue that “account code” should be interpreted as “a
`combination of characters configured to identify a transaction account”
`based on portions of the ’894 patent. Pet. 42, 46-47 (citing Ex. 1001, 4:13-
`17, 20-25). Petitioners also contend that the ’894 patent provides no
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`description of any other type of account code. Id. at 47 (citing Ex. 1005 ¶
`59). Patent Owner has not disputed the Petitioners’ proposed construction.
`Prelim. Resp. 7.
`Petitioners reasonably identify in the Specification of the ’894 patent
`support for their proposed construction, and Petitioners’ proposed
`construction corresponds with the broadest reasonable interpretation of
`“account code” in view of the Specification of the ’894 patent.
`Therefore, for purposes of this decision, we agree with and adopt
`Petitioners’ construction of “account code” as a “combination of characters
`configured to identify a transaction account.”
`5. “input device” (Claims 1, 5, 10, 11, 15, and 18)
`
`
`Petitioners contend that “input device” should be interpreted as “any
`device for entering transaction information such as a keypad, point-of-sale
`terminal, ATM terminal, computer or telephone.” Pet. 42, 47. Petitioners
`argue that in the preferred embodiment of the ’894 patent, the input device
`includes “any device suitably configured to accept transaction information
`and transmit the information for approval” that can be “a telephone,
`computer, point-of-sale terminal, ATM and/or the like.” Id. at 47 (citing Ex.
`1001, 5:46-52). Petitioners argue that the ’894 patent describes “a generic
`input device used to collect the account code and identification code” with
`citations to the ’894 patent and declaration by John Gregory Morrisett, Ph.D.
`(Ex. 1005). Id. at 47-48 (citing Ex. 1001, 2:66-3:2, 6:16-26; Ex. 1005 ¶ 60).
`Patent Owner responds that “Petitioners’ proposed construction reads
`the description of a preferred embodiment from the specification into the
`claim term.” Prelim. Resp. at 8. Patent Owner also argues that “Petitioners’
`proposed construction runs afoul of the doctrine of claim differentiation”
`
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`because dependent claims 5 and 11 each recite “wherein said input device is
`at least one of a keypad, POS terminal, ATM terminal, computer and
`telephone.” Id. Patent Owner asserts that “the broadest reasonable
`interpretation of the term ‘input device’ is ‘a device configured to accept
`transaction information and transmit the information for approval’” based on
`an asserted ordinary meaning of “input device,” ordinary meaning of
`“input,” the language of the independent claims, and the Specification. Id. at
`8-10 (citing Ex. 1001, 5:48-50).
`Petitioners’ asserted construction of “input device” relies on portions
`of the ’894 patent that describe a particular embodiment or a preferred
`embodiment. Pet. 47-48 (citing Ex. 1001, 2:66-3:2, 5:46-52, 6:16-26).
`Patent Owner also relies on a description of input device 22 in a preferred
`embodiment. Prelim. Resp. 8-9 (citing Ex. 1001, 5:48-50).
`Because both Petitioners and Patent Owner cite each cite a particular
`embodiment in support of their proposed constructions, we determine that
`“input device” is given its ordinary and customary meaning as would be
`understood by one with ordinary skill in the art and need not be construed
`explicitly at this time for the purposes of this decision.
`6. “authorization computer” (Claims 1, 8-10, and 13-15)
`
`
`Petitioners contend that “authorization computer” should be
`interpreted as “any computer that authorizes a transaction.” Pet. 42, 48.
`Petitioners argue the ’894 patent describes that “any authorization system
`suitably configured to authorize a transaction card and notify . . . input
`device 22 of the authorization status” performs the authorization function
`and “[a]uthorization server 26 is any device suitably configured to authorize
`a transaction and/or transaction card and notify input device 22 of the
`
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`authorization status.” Id. at 48 (citing Ex. 1001, 5:38-40, 60-63). Petitioners
`also cite Figure 3, which shows authorization server 26 and associated
`disclosure, that describes authorization server 26 as “any combination of
`components, software, servers and computers suitably configured to not only
`authorize transactions and/or transaction cards, but also to provide additional
`transaction support such as report generation and promotional programs.”
`Id. at 48-49 (citing Ex. 1001, 6:1-6; Ex. 1005 ¶ 61).
`Patent Owner responds that the authorization computer is not any
`“computer that authorizes a transaction” but “a device that is ‘suitably
`configured to authorize’ a transaction and/or transaction card.” Prelim.
`Resp. 10. Patent Owner argues that the authorization computer “must be
`suitably configured via specific hardware or software or some combination
`of both to be able to actually perform the function of authorizing a
`transaction.” Id. at 10-11 (citing Ex. 1001, 5:40-46, 6:2-6). Patent Owner
`asserts that “authorization computer” should be construed as “a computer
`configured to authorize a transaction and notify the input device of the
`authorization status.” Id. at 11.
`The ’894 patent describes an “exemplary authorization system 20”
`that is “any authorization system suitably configured to authorize a
`transaction card and notify an input device 22 of the authorization status”
`and states that “[o]ne skilled in the art will appreciate that the authorization
`system 20 can be an existing authorization system . . . which is re-programed
`or re-configured to perform the functions of the present invention or is a
`system specially configured to perform the functions of the present
`invention.” Ex. 1001, 5:36-46. The ’894 patent further states that
`“[a]uthorization server 26 is any device suitably configured to authorize a
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`transaction and/or transaction card and notify input device 22 of the
`authorization status” and “may include any combination of components,
`software, servers and computers suitably configured to not only authorize
`transactions and/or transaction cards, but also to provide additional
`transaction support . . . .” Id. at 5:60-63, 6:2-6. These portions of the ’894
`patent cited by both Petitioners and Patent Owner describe Figure 3, which
`shows an exemplary authorization system 20 with authorization server 26
`that may include a computer, not an “authorization computer.”
`Because Petitioners’ and Patent Owner’s proposed constructions rely
`on exemplary embodiments of the ’894 patent, we determine that
`“authorization computer” is given its ordinary and customary meaning as
`would be understood by one with ordinary skill in the art and need not be
`construed explicitly at this stage of the proceeding.
`7. “account database” (Claims 9 and 14)
`
`
`Petitioners contend that “account database” should be interpreted as
`“any database that stores information related to an account.” Pet. 42, 49.
`Petitioners argue that the ’894 patent describes the account database as
`storing account information, such as the account code, identification code,
`and expiration date, after a transaction card is created. Id. at 49 (citing Ex.
`1001, 3:40-43, 4:48-51, 6:12-15, 32-37, figs. 3, 4; Ex. 1005 ¶ 62).
`Patent Owner responds that the ’894 patent does not describe the
`account database as any database. Prelim. Resp. 12. Patent Owner argues
`that the ’894 patent describes the account database as “performing specific
`functions relating to storing account information and communicating with
`the authorization computer about the account information.” Id. (citing Ex.
`1001, 4:48-57, 5:23-35, 6:6-15, 6:32-37, 8:33-37, 8:66-9:4). Patent Owner
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`thus argues that “account database” should be construed as “a database
`configured to store information related to an account.” Id.
`In the portions cited by both Petitioners and Patent Owner, the ’894
`patent describes that information from account database 30 is transmitted to
`card creation system 32 (Ex. 1001, 4:48-57), information is uploaded to or
`stored in account database 30 (id. at 5:23-35), authorization server 26
`communicates with or interrogates account database 30 (id. at 6:6-8, 32-37),
`account database 30 includes a look-up table (id. at 6:12-15), and account
`database 30 includes identification codes for each account code (id. at 6:61-
`64). The cited portions of the ’894 patent do not describe the account
`database as being configured.
`Based on the foregoing and for the purposes of this decision, we
`conclude that “account database” means “a database that stores information
`related to an account.”
`8. “processing the authorization” (Claim 18)
`
`
`Petitioners contend that “processing the authorization request” should
`be interpreted as “allowing or denying the authorization request” with
`citations to the Abstract, Specification, and claim 18 of the ’894 patent. Pet.
`42, 50 (citing Ex. 1001, Abstract, 3:3-5, 14-16, 6:32-47, 7:5-6, 10:15-17).
`Patent Owner has not disputed the Petitioners’ proposed construction.
`Prelim. Resp. 13.
`Petitioners reasonably identify in the Specification of the ’894 patent
`support for their proposed construction, and Petitioners’ proposed
`construction corresponds with the broadest reasonable interpretation of
`“processing the authorization request” in view of the Specification of the
`’894 patent.
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`Thus, for purposes of this decision, we agree with and adopt
`Petitioners’ construction of “processing the authorization request” as
`“allowing or denying the authorization request.”
`9. “an authorization computer in communication with said input device”
`(Claim 1)
`
`
`Patent Owner contends that “an authorization computer in
`communication with said input device” should be construed to mean “an
`authorization computer in communication with said input device via a
`communication link.” Prelim. Resp. 14. For the reasons below, we
`determine that the phrase does not need to be expressly construed for
`purposes of this decision.
`10. “communicating, from said input device to an authorization computer”
`(Claim 10)
`
`
`Patent Owner contends that “communicating, from said input device
`to an authorization computer” should be construed to mean “communicating,
`from said input device to an authorization computer via a communication
`link.” Prelim. Resp. 15. Patent Owner relies on the arguments presented
`with respect to “an authorization computer in communication with said input
`device.” Id. In those arguments, Patent Owner contends that “‘an
`authorization computer in communication with said input device’ implies
`that the authorization computer and input devices are separate components
`and that there must be some kind of link that facilitates communication
`between those components.” Id. at 15. Patent Owner also argues that its
`construction is consistent with the Specification “which explains that the
`input device ‘communicates with network 24, wherein network 24 is any
`device or software suitably configured to transmit information’ and that
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`‘network 24 provides communication link between input device 22 and
`authorization server 26.’” Id. (citing Ex. 1001, 5:52-60, fig. 3).
`The cited portion of the ’894 patent is within a description of “an
`exemplary authorization system 20” shown in Figure 3. Ex. 1001, 5:36-38.
`Also, the cited portion states that “[i]nput device 22 preferably
`communicates with network 24, wherein network 24 is any device or
`software suitably configured to transmit information.” Id. at 5:52-55.
`Therefore, the Specification of the ’894 patent does not limit the
`communication between input device 22 and network 24 to communications
`via a communication link. Thus, the Specification of the ’894 patent
`supports reasonably a broader interpretation than Patent Owner’s contended
`interpretation.
`Accordingly, applying the broadest reasonable interpretation in light
`of the Specification, we determine that “communicating, from said input
`device to an authorization computer” does not further require
`communicating via a communication link.
`11. “said transaction card configured to provide, via an input device, said
`account code and said identification code to an authorization computer”
`(Claim 15)
`
`Patent Owner contends that “said transaction card configured to
`provide, via an input device, said account code and said identification code
`to an authorization computer” should be construed to mean “said transaction
`card configured to provide, via an input device and a communication link,
`said account code and said identification code to an authorization computer.”
`Prelim. Resp. 15-16. Patent Owner relies on arguments offered for the
`construction of “an authorization computer in communication with said
`input device.” Id. at 16.
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`For the reasons above, Patent Owner’s arguments regarding a
`communication link between the input device and authorization server are
`not persuasive. Thus, applying the broadest reasonable interpretation in
`light of the Specification, we determine that “said transaction card
`configured to provide, via an input device, said account code and said
`identification code to an authorization computer” does not further require a
`communication link.
`12. “receiving an n character account code and an n character
`identification code from an input device” (Claim 18)
`
`Patent Owner contends that “receiving an n character account code
`and an n character identification code from an input device” should be
`construed to mean “receiving an n character account code and an n character
`identification code via a communication link from an input device.” Prelim.
`Resp. 16. Patent Owner relies on arguments offered for the construction of
`“an authorization computer in communication with said input device.” Id.
`For the reasons above, Patent Owner’s arguments regarding a
`communication link between the input device and authorization server are
`not persuasive. Thus, applying the broadest reasonable interpretation in
`light of the Specification, we determine that “receiving an n character
`account code and an n character identification code from an input device”
`does not further require receiving via a communication link.
`13. Other Terms
`
`
`At this stage, we do not construe any additional terms as they are not
`relevant to our decision.
`
`
`II. ANALYSIS
`
`17
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`Case CBM2014-00031
`Patent 6,182,894 B1
`
`
`A. Whether the ’894 Patent is a Covered Business Method Patent
`A threshold question is whether the ’894 patent is a “covered business
`method patent,” as defined by the AIA. For the reasons explained below, we
`conclude that the ’894 patent is a “covered business method patent.”
`1. Financial Product or Service
`A “covered business method patent” is a patent that “claims 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, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A
`patent need have only one claim directed to a covered business method to be
`eligible for review. See Transitional Program for Covered Business Method
`Patents—Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012).
`Petitioners argue that the methods claimed in the ’894 patent are
`directed to a “financial product or service” because the ’894 patent involves
`“conducting commercial transactions.” Pet. 6-7 (citing Ex. 1001, 3:52-54).
`Petitioners also argue that the claims of the ’894 patent have been asserted
`against Petitioners’ Visa Check Card system/service and BankAmericard
`Cash Rewards Credit Card system/service. Id. at 7 (citing Ex. 1003, 635-
`636).
`Patent Owner does not dispute that the methods claimed in the ’894
`patent are directed to a “financial product or service.” Instead, Patent Owner
`argues that the claims of the ’894 patent recite a “technological invention,”
`and thus, the ’894 patent does not qualify as a covered business method.
`Prelim. Resp. 50-58. Independent claim 10 recites “[a] method for obtaining
`
`
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`18
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`Case CBM2014-00031
`Patent 6,182,894 B1
`
`authorization for a commercial transaction.”
`Thus, we conclude that at least claim 10 covers a method for
`performing operations used in the practice, administration, or management
`of a “financial product or service” within the meaning of the AIA § 18(d)(1)
`and the legislative history associated with the statute.
`2. Technological Invention
`The definition of “covered business method patent” in Section
`18(d)(1) of the AIA excludes patents for “technological inventions.” To
`determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art; and solves a technical
`problem using a technical solution.” 37 C.F.R. § 42.301(b). If the claims of
`the patent do not meet the two pronged test for “technological invention,”
`then the patent is not directed to a technological invention.
`
`Petitioners argue that the only claimed technological features of the
`’894 patent were well-known at the time of filing the application for the ’894
`patent, that the recited computer and input device are employed for their
`most basic functions, and that the ’894 patent does not address a
`technological problem nor provide a technical solution. Pet. 7-14 (citing Ex.
`1005 ¶¶ 21, 42, 48-50).
`
`Patent Owner responds that the claims of the ’894 patent are directed
`to technological inventions because the combination of a transaction card,
`input device, and authorization computer provides a novel and non-obvious
`technology. Prelim. Resp. 51-52. Patent Owner also argues that Petitioners
`do not address the claims as a whole, and that the ’894 patent does not
`merely recite a computer or input device, as argued by Petitioners. Id. at 52-
`
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`19
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`Case CBM2014-00031
`Patent 6,182,894 B1
`
`53. Patent Owner further argues that the ’894 patent addresses the technical
`problem of cyber fraud or “fraudulent use of credit card information for
`transactions over the Internet or telephone,” and provides the technical
`solution of communicating an account code and identification code of a
`transaction card from an input device to an authorization computer. Id. at
`54-56. Patent Owner cites the Office Patent Trial Practice Guide and asserts
`that claims 1-9 and 15-17 fall within a definition of a technological
`invention not subject to covered business method patent review. Id. at 57-
`58.
`For the reasons stated below, we need not address claims 1-9. Claims
`
`10-14 recite a method comprising keying codes into an input device,
`communicating
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