Trials@uspto.gov Paper 11
`Tel: 571-272-7822 Entered: January 13, 2015 
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PAR PHARMACEUTICAL, INC., ROXANE LABORATORIES, INC. and
`AMNEAL PHARMACEUTICALS, LLC,
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`_____________
`
`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
` Case CBM2014-00153 (Patent 8,589,182 B1)1
`
`______________
`Before LORA M. GREEN, BRIAN P. MURPHY, and JON B.
`TORNQUIST, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`1 This Decision addresses the same jurisdictional issue raised in all four
`cases. The patents at issue in CBM2014-00149, CBM2014-00150,
`CBM2014-00151, and CBM2014-00153 are all related, and the
`jurisdictional arguments by Petitioners and Patent Owner are largely the
`same in each case. Therefore, we issue one Decision to be entered in each
`case.
`
`

`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`
`
`I.
`INTRODUCTION
`Par Pharmaceutical, Inc. (“Par”), Roxane Laboratories, Inc.
`(“Roxane”), and Amneal Pharmaceuticals, LLC (“Amneal”)(together,
`“Petitioner”) filed several Petitions, including a Petition requesting covered
`business method patent review of claims 1–11 (all claims) of U.S. Patent No.
`7,668,730 B2 (Ex. 1001, “the ’730 patent”),2 pursuant to 35 U.S.C. § 321
`and § 18 of the Leahy-Smith America Invents Act (Pub. L. No. 112-29, 125
`Stat. 284 (2011)) (“AIA”). Paper 1 (“Pet.”). Jazz Pharmaceuticals, Inc.
`(“Patent Owner”) filed a Preliminary Response to the Petition. Paper 10
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324, which
`provides that a covered business method (“CBM”) patent review may not be
`instituted unless information presented in the Petition “would demonstrate
`that it is more likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.”
`Petitioner challenges claims 1–11 of the ’730 patent as unpatentable
`under 35 U.S.C. §§ 101, 102(b), and 103(a). Pet. 29–30. Based on the
`information presented in the Petition and Preliminary Response, we
`determine Petitioner has not demonstrated that the ’730 patent is a “covered
`business method patent” pursuant to the statutory definition in § 18(d)(1) of
`the AIA. Therefore, for the reasons given below, we deny the Petition.
`
`
`
`2 For clarity and expediency, we treat CBM2014-00151 as representative of
`all four cases and note that Par and Roxane filed the Petition in CBM2014-
`00151. All citations are to CBM2014-00151 unless otherwise noted.
`2
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`

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`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`A. Related Proceedings
`The parties identify the following as related district court proceedings
`regarding the ’730 patent: Jazz Pharmaceuticals, Inc. v. Roxane
`Laboratories, Inc., 2:10-cv-6108 (D.N.J.); Jazz Pharmaceuticals, Inc. v.
`Amneal Pharmaceuticals, LLC and Par Pharmaceutical, Inc., 2:13-cv-391
`(consolidated with 2:13-cv-7884) (D.N.J.); and Jazz Pharmaceuticals, Inc. v.
`Ranbaxy Laboratories Ltd., et al., 2:14-cv-4467 (D.N.J.). Pet. 78–79; Paper
`8, 2–3.
`The parties identify the following as petitions for covered business
`method review of patents related to the ’730 patent: Amneal
`Pharmaceuticals, LLC et al. v. Jazz Pharmaceuticals, Inc., CBM2014-00149
`(filed June 24, 2014) (US 7,895,059 B2); Amneal Pharmaceuticals, LLC et
`al. v. Jazz Pharmaceuticals, Inc., CBM2014-00150 (filed July 7, 2014) (US
`8,457,988 B1); and Amneal Pharmaceuticals, LLC et al. v. Jazz
`Pharmaceuticals, Inc., CBM2014-00153 (filed July 9, 2014) (US 8,589,182
`B1). Pet. 78–79; Paper 8, 3.
`Patent Owner identifies the following pending U.S. patent
`applications claiming priority benefit from US Patent Application No.
`10/322,348—the application from which the ’730 patent issued: US Patent
`Application No. 14/196,603, filed March 4, 2014; US Patent Application
`No. 14/219,904, filed March 19, 2014; and US Patent Application No.
`14/219,941, filed March 19, 2014. Paper 8, 3.
`B. The ’730 Patent
`The ’730 patent, titled “Sensitive Drug Distribution System and
`Method,” issued February 23, 2010 from an application filed December 17,
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`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`2002. Ex. 1001.3 The ’730 patent is directed to a method for controlling
`access to a sensitive prescription drug prone to potential abuse or diversion,
`by utilizing a central pharmacy and database to track all prescriptions for the
`sensitive drug. Id. at Abstract, 1:38–42. Information regarding all
`physicians authorized to prescribe the drug and all patients receiving the
`drug is maintained in the database. Id. Abuses are identified by monitoring
`the database for prescription patterns by physicians and prescriptions
`obtained by patients. Id. at Abstract, 1:42–44.
`Figures 2A, 2B, and 2C comprise flow charts representing “an initial
`prescription order entry process for a sensitive drug.” Id. at 4:7–8. In
`overview, a physician submits prescriber, patient, and prescription
`information for the sensitive drug to a pharmacy team, which enters the
`information into a computer database. Id. at 4:7–25, Fig. 2A (steps 202–
`210). The pharmacy team then engages in “intake reimbursement” (Fig.
`2A), which includes verification of insurance coverage or the patient’s
`willingness and ability to pay for the prescription drug. Id. at 4:26–28.
`Steps 226–230, 234–238 of Figure 2A are reproduced below:
`
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`3 US 7,895,059 B2 (“the ’059 patent”) issued from a continuation
`application of US 10/322,348 (“the ’348 application”), which issued as the
`’730 patent. CBM2014-00149 Ex. 1001, 1:6–8. US 8,457,988 B1 (“the
`’988 patent”) and US 8,589,182 B1 (“the ’182 patent”) issued from a series
`of divisional and/or continuation applications of the ’348 application.
`CBM2014-00150 Ex. 1001, 1:6–13; CBM2014-00153 Ex. 1001, 1:6–13.
`4
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`Casee CBM2014-00149 (PPatent 7,8995,059 B2))
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`Casee CBM2014-00150 (PPatent 8,4557,988 B1))
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`Casee CBM2014-00151 (PPatent 7,6668,730 B2))
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`Casee CBM2014-00153 (PPatent 8,5889,182 B1))
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`Figgure 2A deepicts stepss for verifyying insuraance coveraage or abiliity to pay.
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`Id. aat 2:22–24, 4:45–61. The “pharrmacy” woorkflow inccludes veriification off
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`the pprescribingg physiciann’s credentiials. Id. att 5:9–26, FFig. 2B (steeps 274–
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`read
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`280)). Filling thhe prescripption includes confirmming the ppatient has
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`educcational maaterials reggarding thee sensitive
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`drug, conffirming thee patient’s
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`receiipt of the ssensitive drrug, and daaily cycle ccounting annd inventoory
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`reconnciliation. Id. at 5:277–67. Stepps 240, 2422, 246, andd 258–266
`of Figure
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`2C, aare reproduuced beloww.
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`Casee CBM2014-00149 (PPatent 7,8995,059 B2))
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`Casee CBM2014-00150 (PPatent 8,4557,988 B1))
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`Casee CBM2014-00151 (PPatent 7,6668,730 B2))
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`Casee CBM2014-00153 (PPatent 8,5889,182 B1))
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`. . .
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`FFigure 2C ddepicts a p
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`ortion of aa prescriptiion fulfillmment flow ddiagram.
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`Id. aat Fig. 2C. The “CHiiPS” systemm, referencced in step
`266, is an
`s 260 and
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`application dattabase “useed to mainttain a reco
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`rd of a clieent home innfusion
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`6
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`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`program (CHIP) for Xyrem®.”4 Id. at 4:28–33. If a patient requests an
`early prescription refill, for example, the pharmacist generates a report
`evaluating “the patient’s compliance with therapy or possible product
`diversion, misuse or over-use.” Id. at 6:33–38, Fig. 4B (step 436).
`C. Illustrative Claim
`The ’730 patent contains multiple independent claims (1, 2, and 7–11)
`and several dependent claims (3–6), of which claim 1 is illustrative and
`reproduced below:
`The invention claimed is:
`1. A computerized method of distributing a prescription
`drug under exclusive control of an exclusive central pharmacy,
`the method comprising:
`
`receiving in a computer processor all prescription requests,
`for any and all patients being prescribed the prescription drug,
`only at the exclusive central pharmacy from any and all medical
`doctors allowed to prescribe the prescription drug, the prescription
`requests containing information identifying patients, the prescription
`drug, and various credentials of the any and all medical doctors;
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`requiring entering of the information into an exclusive
`computer database associated with the exclusive central
`pharmacy for analysis of potential abuse situations, such
`that all prescriptions for the prescription drug are processed
`only by the exclusive central pharmacy using
`only the exclusive computer database;
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`checking with the computer processor the credentials of
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`4 Xyrem is the brand name for gamma hydroxy butyrate, indicated for the
`treatment of cataplexy (excessive daytime sleepiness) in narcoleptic patients.
`Ex. 1001, 3:14–19. Xyrem is a sensitive prescription drug prone to potential
`abuse or diversion. Id.
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` 
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`7
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`

`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`the any and all doctors to determine the eligibility of the
`doctors to prescribe the prescription drug;
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`confirming with a patient that educational material has
`been read prior to shipping the prescription drug;
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`checking the exclusive computer database for potential
`abuse of the prescription drug;
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`mailing the prescription drug to the patient only if no
`potential abuse is found by the patient to whom the
`prescription drug is prescribed and the doctor prescribing
`the prescription drug;
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`confirming receipt by the patient of the prescription drug;
`and
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`generating with the computer processor periodic reports
`via the exclusive computer database to evaluate potential
`diversion patterns.
`
`
`II. ANALYSIS
`
`A. AIA § 18
` Section 18 of the AIA governs the transitional program for “covered
`business method patent” reviews. AIA § 18(a)(1)(B) limits such reviews to
`a person, or the person’s real party in interest or privy, who has been sued
`for infringement or charged with infringement of the patent at issue. As
`indicated above, the parties both represent that Petitioner has been sued for
`infringement of the ’730 patent. Pet. 78; Paper 8, 2–3.
`Section 18(a)(1)(E) states that a transitional proceeding may be
`instituted only for a “covered business method patent,” which is “a patent
`that claims a method or corresponding apparatus for performing data
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` 
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`8
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`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`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) (emphasis
`added). The Office considered the legislative intent and history behind the
`AIA's definition of “covered business method patent” when it promulgated
`rules for CBM patent review. See 37 C.F.R. § 42.301(a) (definition of CBM
`patent); see also 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012 Final
`Rule)(Response to Comment 1: “[T]he legislative history explains that the
`definition of covered business method patent was drafted to encompass
`patents ‘claiming activities that are financial in nature, incidental to a
`financial activity or complementary to a financial activity.’ 157 Cong. Rec.
`S5432 (daily ed. Sept. 8, 2011) (statement of Senator Schumer).” (emphasis
`added)).
`Petitioner bears the burden of demonstrating that the ’730 patent
`claims a method “used in the practice, administration, or management of a
`financial product or service.” AIA § 18(d)(1); 37 C.F.R. § 42.304(a). In
`making this determination, our focus is firmly on the claims. See 77 Fed.
`Reg. at 48,736 (Aug. 14, 2012 Final Rule)(Response to Comment 4: “[T]he
`definition . . . is based on what the patent claims.”); see also Int’l Sec. Exch.,
`LLC v. Chicago Bd. Options Exch., Case CBM2013-00050, slip op. 9
`(PTAB Mar. 4, 2014 (Paper 16)) (“For purposes of determining whether a
`patent is eligible for a covered business method patent review, the focus is
`on the claims.”). A patent needs only one claim directed to a covered
`business method to be eligible for review. Id. For the reasons explained
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` 
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`9
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`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`below, we conclude Petitioner has not demonstrated that the ’730 patent is a
`“covered business method patent” under AIA § 18(d)(1).
`B. Financial Product or Service
`1. The ’730 Patent Claims
`Claim 1 of the ’730 patent claims a method of “distributing a
`prescription drug” under “exclusive control” of an “exclusive central
`pharmacy.” Ex. 1001, 8:38–40, 10:17–19. The claimed method requires
`entering the physician, patient, and prescription information into an
`“exclusive computer database,” then tracks all prescriptions and utilizes a
`series of checks and controls to prevent “potential abuse” and “evaluate
`potential diversion patterns.” Id. at 8:41–9:3. The series of checks and
`controls are claimed as follows: “entering . . . information . . . for analysis
`of potential abuse situations,” “checking . . . credentials . . . to determine the
`eligibility of the doctors to prescribe the prescription drug,” “checking . . .
`for potential abuse of the prescription drug,” “mailing the prescription drug
`to the patient only if no potential abuse is found by the patient . . . and the
`doctor,” and “generating . . . periodic reports . . . to evaluate potential
`diversion patterns.” Id. The claimed method steps correspond to portions of
`the intake, pharmacy, and prescription fulfillment workflows described in
`the patent. The claim as a whole recites a method for controlling access to a
`prescription drug to guard against potential abuse and unauthorized
`diversion.
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`10
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`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`2. Analysis of whether a patent claim satisfies the statutory
`“financial product or service” requirement
`a. Petitioner’s arguments
`Petitioner argues that at least claim 1 of the ’730 patent is CBM-
`eligible because the claimed method “would be used in commerce,” i.e., the
`claimed method of distributing a prescription drug “is financial in nature;
`and it is also incidental and complementary to financial activities.” Pet. 12.
`Petitioner emphasizes the ’730 patent’s description of the steps for verifying
`insurance coverage or a patient’s ability to pay for the prescription (“In one
`embodiment, cash payers are also identified” (Ex. 1001, 6:39–40)), pursuant
`to the intake reimbursement workflow process described above. Pet. 13–14
`(citing Ex. 1001, 6:33–7:65). Petitioner further argues that, because the
`claims recite “receiving all prescription requests,” “checking the credentials
`of any and all doctors,” and “mailing” or “providing” 6 the prescription drug
`to the patient, the claimed method comprises “running the very business of a
`mail order pharmacy that direct ships to consumers.” Pet. 14. Petitioner
`relies on the Declaration testimony of Dr. Robert J. Valuck as evidence that
`filling a prescription necessarily involves checking a patient’s insurance
`coverage or ability to pay, which “ultimately relate[s] to the financial
`transaction of providing a prescription drug.” Ex. 1007 ¶¶ 47–48.
`b. The language of the patent claims
` The patent claims recite a method for controlling access to a
`prescription drug to guard against “potential abuse” or “diversion;” they do
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`5 The intake reimbursement steps of Figure 4B, described in the cited
`passage, are functionally the same as in Figure 2A reproduced above.
`6 Claims 7, 8, and 11 recite “providing” the prescription drug to the patient.
`Ex. 1001, 10:7, 10:42, 12:39.
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`11
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`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`not recite a financial product or service. The issue in dispute is whether the
`claim language recites method steps used in the practice, administration, or
`management of a “financial” 7 product or service. Petitioner does not
`analyze the claim language, in detail and in context, to explain how the
`claim language recites method steps involving the movement of money or
`extension of credit in exchange for a product or service, e.g., the sale of a
`prescription drug. Pet. 12–15. Petitioner’s argument that the ’730 patent
`claims a “financial product or service” is conclusory and not supported by
`persuasive evidence or analysis.
`The claim limitations quoted by Petitioner, “distributing a prescription
`drug,” 8 “receiving all prescription requests,” “checking the credentials of
`any and all doctors,” “mailing” or “providing” the prescription drug to a
`“patient” (Pet. 12, 14), when considered in the context of the claim as a
`whole, do not recite or require an activity involving the movement of money
`or extension of credit in connection with the sale of a prescription drug.
`Prelim. Resp. 20–21. The claims also do not recite a product or service
`particular to or characteristic of financial institutions such as banks,
`insurance companies, and investment houses. For example, the claim
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`7 “Finance” is “the way in which money is used and handled; . . . 2: the
`system that includes the circulation of money, the granting of credit, the
`making of investments, and the provision of banking facilities.” Finance
`Definition, MERRIAM-WEBSTER, , available at http://www.merriam-
`webster.com/dictionary/finance (last visited December 16, 2014). Ex. 3001.
`8 The preamble phrase “distributing a prescription drug” is not a substantive
`claim limitation because it is not “necessary to give life, meaning, and
`vitality” to the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`1298, 1305 (Fed. Cir. 1999)(citations omitted). All steps necessary to
`execute the method are recited in the body of the claim.
`12
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`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`language does not recite or require (i) the sale of a prescription drug, (ii)
`processing of payments, benefits, or insurance claims related to the sale of a
`prescription drug, (iii) a method of insuring a patient or determining the cost
`of insurance, (iv) a method of determining the cost of prescription benefits,
`(v) a method of facilitating payment of health care benefits, or (vi) the
`extension of credit for the purchase of a prescription drug. Id. at 21. We
`agree with Patent Owner that the activities recited in the claim language, in
`the context of the claim as a whole, constitute checks (“checking”) and
`controls (“confirming”) on “shipping,” “mailing,” or “providing” a
`prescription drug to an authorized “patient” to prevent “potential abuse” and
`“evaluate potential diversion patterns.” Id.
`Therefore, for the reasons given above, we are unpersuaded by
`Petitioner’s argument that the ’730 patent claims recite method steps “used
`in the practice, administration, or management of a financial product or
`service.”
`
`c. The written description of the ’730 patent
` The claim limitations of the ’730 patent cited by Petitioner also do
`not recite or require the act of verifying a patient’s insurance coverage or
`ability to pay for the prescription drug. Petitioner and Dr. Valuck do not
`explain, in detail with specific analysis of the claim language, why the
`claimed method steps recite or require verifying insurance coverage or a
`patient’s ability to pay as described in Figures 2A, 4B, or 5 of the patent.
`Pet. 13–14 (citing Ex. 1007 ¶¶ 47–48); Prelim. Resp. 25–27. Petitioner and
`Dr. Valuck also do not explain why any of the claimed method steps should
`be considered “financial” when considered in the context of the claim
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`languuage as a wwhole. Thheir reasoniing is circuular – “[t]hhese claimeed steps aree
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`Casee CBM2014-00149 (PPatent 7,8995,059 B2))
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`Casee CBM2014-00150 (PPatent 8,4557,988 B1))
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`Casee CBM2014-00151 (PPatent 7,6668,730 B2))
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`Casee CBM2014-00153 (PPatent 8,5889,182 B1))
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`all fiinancially rrelated activities thatt are perforrmed dailyy by pharmmacies
`¶ 47; Pet.
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`becaause they pprovide preescription ddrugs to coonsumers”
`(Ex. 1007
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`22–223) – and uunpersuasivve. We aggree with PPatent Ownner; the act
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`veriffying a patient’s insuurance coveerage or abbility to payy is not a cclaimed
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`methhod step inn the ’730 ppatent. Preelim. Resp
`. 26–27.
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`Petitioneer confirms our analyysis with itts own diaggram that ““maps eachh
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`limittation of cllaim 1 to a representaative flow
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`diagram sttep from thhe figures
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`of thhe ’730 pattent.” Pet. 50–51. Peetitioner iddentifies thhe method ssteps
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`recitted in claimm 1 as steps 1.1 to 1.88. Id. at 511. Petitionner’s diagraam, with
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`our nnotations oof correspoonding figuure and stepp numberss in the righht-hand
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`marggin, is reprroduced below:
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`Annnotated floww diagram
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`of claim 11.
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`14
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`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`Pet. 51. Petitioner’s diagram, above, omits all reference to method steps for
`verifying insurance coverage or a patient’s ability to pay in Figures 2A
`(steps 226–238), 4B (steps 448–452, 458–466), and 5, even though other
`flow diagram steps from Figures 2A and 4B are represented in Petitioner’s
`claim 1 diagram. The omission is telling. In short, the claimed method steps
`do not recite or require verifying insurance coverage or a patient’s ability to
`pay for a prescription drug product. Prelim. Resp. 26–27 (citing, e.g., TIP
`Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed.
`Cir. 2008)(“Our precedent is replete with examples of subject matter that is
`included in the specification, but is not claimed.”)(citations omitted)).
`We also agree with Patent Owner that in the three CBM decisions
`cited by Petitioner (Pet. 13, n.3, 4), the Board relied on the written
`description of the respective patents to support the “financial product or
`service” requirement because the claim limitations recited method steps used
`in the embodiments described in the relied-upon portions of the
`specifications. Prelim. Resp. 24–25 (citing CRS Advanced Tech., Inc. v.
`Frontline Tech., Inc., Case CBM2012-00005, slip. op. 8 (PTAB January 23,
`2013(Paper 17))(claimed method for substitute teller fulfillment system used
`in embodiment for retail banking system); Google Inc. v. Inventor Holdings,
`Case CBM2014-00002, slip op. 8–9 (PTAB April 1, 2014 (Paper
`16))(claimed method of facilitating exchange of identities between two
`anonymous parties used in embodiment for matching employment
`candidates with employer); Google Inc. v. Inventor Holdings, CBM2014-
`
` 
`
`15
`
`

`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`00003, slip op. 8–9 (PTAB April 1, 2014(Paper 12))(same, id.)).9 Petitioner
`has not made a comparable or persuasive argument based on a close analysis
`of the claim language, considered in context as a whole, in view of the
`embodiments described in the ’730 patent. Therefore, we find the cited
`authority inapposite to the facts of the present case.
`For the reasons given above, we are unpersuaded by Petitioner’s
`argument that the written description of method steps for verifying insurance
`coverage or a patient’s ability to pay are recited or required by the ’730
`patent claims.
`
`d. Petitioner’s “used in commerce” argument
`We agree with Patent Owner that Petitioner improperly attempts to
`expand CBM review to cover a claimed business method because it is “used
`in commerce.” Pet. 12–14; Prelim. Resp. 10–12. Petitioner’s argument is
`not supported by the plain language of the statute or the legislative history.
`Pet. 11–12; Prelim. Resp. 11 (citing Conn. Nat’l Bank v. Germain, 503 U.S.
`249, 253–54 (1992) (“[I]n interpreting a statute a court should always turn
`first to one, cardinal canon before all others . . . courts must presume that a
`
`9 In CBM2014-00149 (Pet. 12–13), CBM2014-00150 (Pet. 12) and
`CBM2014-00153 (Pet. 15–16), Petitioner also cites Liberty Mutual
`Insurance Co. v. Progressive Casualty Insurance Co., Case CBM2012-
`00002 (PTAB Jan. 23, 2014) and Gilllman v. Stoneeagle Servs., Inc., Case
`CBM2013-00047, slip op. at 8 (PTAB Feb. 18, 2014)(Paper 11) in further
`support of the argument that the written description of verifying insurance
`coverage or a patient’s ability to pay is claimed in the ’059, ’988, and ’182
`patents. Liberty Mutual involved a claimed method for determining the cost
`of automobile insurance, and Gillman involved a claimed method for
`adjudicating a health insurance claim and processing payment for that claim.
`Id. Both cases are factually distinguishable from the present cases for the
`reasons given in sections 2.b. and 2.c. of this Decision.
`16
`
` 
`
`

`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`legislature says in a statute what it means and means in a statute what it says
`there.”). Petitioner does not provide a cogent argument or rationale for why
`the statutory phrase “financial product or service” should be interpreted to
`include a method for controlling access to a prescription drug that may be
`used in commerce. Pet. 11–14. Contrary to Petitioner’s argument, Congress
`did not say in the statute that a business method patent “used in commerce”
`or covering “core activities” of running a business is eligible for CBM
`review. AIA § 18(d)(1); Prelim. Resp. 11–12, 17–18. To the contrary, the
`language of the statute excludes such a business method from CBM review
`unless a petitioner demonstrates that the method is “used in the practice,
`administration, or management of a financial product or service.” AIA §
`18(d)(1). Petitioner does not persuasively address the language of the statute
`or provide persuasive evidence or analysis from which we might conclude
`that the claimed method recites steps used in the practice, administration, or
`management of a financial product or service.
`The legislative history, taken in context as a whole, also does not
`support Petitioner’s argument. As Patent Owner emphasizes, when an
`adjudicator considers legislative intent “the Supreme Court has cautioned
`that the adjudicator must consider the legislative intent as a whole—not just
`‘isolated fragments’ of congressional comments.” Prelim. Resp. 13 (citing
`New England Power Co. v. New Hampshire, 455 U.S. 331, 342 (1982)
`(“Reliance on such isolated fragments of legislative history in divining the
`intent of Congress is an exercise fraught with hazards . . . .”); Offshore
`Logistics, Inc. v. Tallentire, 477 U.S. 207, 220–21 (1986) (statements in the
`legislative history must be read in light of the statutory language and
`
` 
`
`17
`
`

`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`legislative history as a whole)). With such caution in mind, we observe that
`members of Congress expressed varying views concerning the scope of a
`“covered business method patent” during the debate leading up to passage of
`the AIA on September 16, 2011. Prelim. Resp. 13–16.
`Those views are exemplified on the one hand by Senator Schumer, co-
`sponsor of the transitional program for CBM patent review, who stated that
`“Any business that sells or purchases goods or services ‘practices’ or
`‘administers’ a financial service by conducting such transactions . . . .” 157
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011). On the other hand, Senator
`Leahy, co-sponsor of the AIA, expressed a more limited view and stated that
`the program was intended to cover “only those business method patents
`intended to be used in the practice, administration, or management of
`financial services or products, and not to technologies common in business
`environments across sectors and that have no particular relation to the
`financial services sector.” Id. at S5441. Senator Kyl, co-sponsor with
`Senator Schumer of AIA Section 18, entered into the record the Senate
`Manager’s Amendment, which described a covered business method patent
`as “limited to data processing relating to just a financial product or service
`(rather than also to an enterprise10).” Id. at S1367 (daily ed. Mar. 8, 2011).
` The ’730 patent’s claimed method for controlling access to a
`prescription drug does not recite method steps involving the movement of
`
`
`10 An “enterprise” is distinguished from the more limited “financial product
`or service” in the USPTO’s Manual of Classification, Class 705, which
`defines an enterprise as, inter alia, a “conventional business organization.”
`Prelim. Resp. 15; see
`http://www.uspto.gov/web/offices/ac/ido/oeip/taf/def/705.htm.
`18
`
` 
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`

`

`Case CBM2014-00149 (Patent 7,895,059 B2)
`Case CBM2014-00150 (Patent 8,457,988 B1)
`Case CBM2014-00151 (Patent 7,668,730 B2)
`Case CBM2014-00153 (Patent 8,589,182 B1)
`money or extension of credit in connection with the sale of a prescription
`drug. The claims are more limited and define a decidedly different activity –
`controlling access to a prescription drug to guard against potential abuse or
`diversion. The claimed method, moreover, has no particular relation to the
`financial services industry and does not relate to just a financial product or
`service rather than to an enterprise, i.e., a conventional business
`organization. Therefore, in the absence of clear and compelling evidence of
`legislative intent to include any business method “used in commerce” within
`the definition of a “covered business method patent” pursuant to AIA §
`18(d)(1), we are unpersuaded by Petitioner’s argument.
`e. Petitioner’s Class 705 argument
`Petitioner relies on the classification of the ’730 patent in Class 705,
`subclass 2, which includes “billing systems based on entered medical codes,”
`in support of the argument that “[b]illing systems encompassed within the
`’730 patent are activities that are financial in nature, incidental . . . or
`complementary to a financial activity.” Pet. 14–15. Petitioner also relies on
`the citation of prior art billing systems by the Examiner during examination
`of the ’730 application as further support for this argument. Id. at 15.
`Petitioner argues that, although not dispositive, the classification of the ’730
`patent in Class 705 and citation of art regarding prescription drug payment
`arrangements is persuasive evidence that the ’730 method claims satisfy the
`s