Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 9
`Entered: May 24, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORELOGIC, INC.
`Petitioner,
`
`v.
`
`BOUNDARY SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00017
`Patent 7,499,946 B2
`____________
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

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`Case CBM2016-00017
`Patent 7,499,946 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner CoreLogic, Inc. (“CoreLogic”) filed a Petition (Paper 2,
`
`“Pet.”) to institute a covered business method (“CBM”) patent review of
`
`claims 1–21 of U.S. Patent No. 7,499,946 B2 (Ex. 1001, “the ’946 patent”),
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`owned by Boundary Solutions, Inc. (“BSI”). On February 26, 2016, BSI
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`filed a disclaimer of claims 13 and 16–18 and a Preliminary Response
`
`(“Prelim. Resp.”). Ex. 2003 (disclaimer); Paper 7 (Prelim. Resp.).
`
`We have jurisdiction under 35 U.S.C. § 324. For the reasons that
`
`follow, the information presented in the Petition does not establish that the
`
`ʼ946 patent qualifies as a covered business method patent for purposes of
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`§ 18(d)(1) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
`
`112–29, 125 Stat. 284, 331 (2011). Accordingly, we decline to institute a
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`covered business method patent review of the remaining claims in the ’946
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`patent after the disclaimer, claims 1–12, 14, 15, and 19–21. See 35 U.S.C.
`
`§ 324(a).
`
`
`
`II.
`
`BACKGROUND
`
`A. Related Proceedings
`
`The parties state that BSI has asserted the ’946 patent against
`
`CoreLogic in Boundary Solutions, Inc. v. CoreLogic, Inc., No. 5:14-cv-
`
`00761 (N.D. Cal.) (filed Feb. 19, 2014). Pet. 61–62; Paper 5 (Patent
`
`Owner’s Mandatory Notices). BSI also has asserted related U.S. Patent No.
`
`8,065,352 (“the ’352 patent”) and U.S. Patent No. 7,092,957 (“the
`
`’957 patent”) in that proceeding. Pet. 62; Paper 5.
`
`CoreLogic filed four petitions seeking inter partes review of the ’352
`
`and ’957 patents. The ’352 patent was the subject of inter partes review in
`
`
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`2
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`Case CBM2016-00017
`Patent 7,499,946 B2
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`Cases IPR2015-00219 and IPR2015-00222. CoreLogic also sought inter
`
`partes review of the ’352 patent in Case IPR2015-00225. We did not
`
`institute an inter partes review in Case IPR2015-00225. The ’957 patent
`
`was the subject of inter partes review in Case IPR2015-00228. We recently
`
`issued final decisions in Cases IPR2015-00219, IPR2015-00222, and
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`IPR2015-00228. CoreLogic’s petitions for covered business method patent
`
`review of the ’957 patent (CBM2016-00016) and ’352 patent (CBM2016-
`
`00018) remain pending.
`
`CoreLogic filed a petition seeking inter partes review of claims 1–21
`
`of the ’946 patent in Case IPR2015-00226. We recently issued a final
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`decision in Case IPR2015-00226, where we determined that CoreLogic had
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`shown by a preponderance of the evidence that claims 1–12, 14, 15, and 19–
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`21 of the ’946 patent are unpatentable. CoreLogic, Inc. v. Boundary
`
`Solutions, Inc., Case IPR2015-00226 (PTAB May 19, 2016) (Paper 50).
`
`B. The ’946 Patent
`
`The ’946 patent relates generally to Geographic Information Systems
`
`(“GIS”) and, in particular, to a National Online Parcel-Level Map Data
`
`Portal (“NPDP”) that provides online delivery of parcel-level map data.
`
`Ex. 1001, Abstract, 1:12–28. The ’946 patent describes the NPDP as an
`
`electronic repository for parcel-level maps and linked attribute data acquired
`
`from public and private entities. Id. at 2:33–45. Databases from different
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`jurisdictions are assembled and stored in a standard format, with each
`
`jurisdictional database placed in an individual directory. Id. at 3:66–4:1,
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`7:10–18. The system normalizes information to a single universal spatial
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`protocol. Id. at 3:8–11, 7:21–42. Parcel-level information includes parcel
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`Case CBM2016-00017
`Patent 7,499,946 B2
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`boundaries and geocodes linked using a parcel identifier to a non-graphic
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`database containing property tax records. Id. at 1:52–56, 4:1–7, 8:1–12.
`
`The ’946 patent describes retrieving a parcel-level map based on the
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`address of a parcel requested by an end user. Id. at 1:57–60, 4:42–46. The
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`system searches a jurisdictional lookup table to identify the jurisdiction in
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`which the requested parcel is located. Id. at 8:13–17. The system searches
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`the non-graphic database for that jurisdiction for a record matching the
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`address, and uses the parcel identifier for that record to access a graphic
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`database containing the selected parcel. Id. at 3:47–55. The system can
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`display the selected parcel and surrounding parcels, with the selected parcel
`
`shown as a highlighted polygon. Id. at 4:51–53. The system can also
`
`display the parcel’s linked data (e.g., tax record). Id. at 4:53–54.
`
`The ’946 patent also describes a business revenue model that “begins
`
`with the establishment by the NPDP service provider of a publicized parcel-
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`level map data web site with links to a tax record database.” Id. at 12:63–67.
`
`For example, the model contemplates generating revenue through various
`
`subscription agreements. Id. at 14:1–15:38. The ’946 patent also describes
`
`providing access to the database for free. See id. at 2:59, 13:54–56, 14:20–
`
`21, 15:51–55.
`
`C. Illustrative Claim
`
`Independent claim 1 is illustrative of the subject matter of the ’946
`
`patent. Claim 1 reads:
`
`1. An interactive computer implemented method for
`retrieving geographic parcel boundary polygon maps and
`associated parcel attribute data linked to a non-graphic
`database, wherein the data is acquired electronically,
`comprising:
`
`
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`4
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`Case CBM2016-00017
`Patent 7,499,946 B2
`
`
`a. activating a computer terminal;
`
`b. accessing an applications program for access to the
`data;
`
`c. accessing a data entry screen and entering a parcel
`attribute to call up the parcel selected;
`
`d. subsequently accessing a multi-state parcel map data-
`base comprising multiple jurisdictional databases which
`have been normalized to a common data protocol;
`
`e. searching a jurisdiction look up table associated with
`the multi-state parcel map database, said look up table
`indexed for identification of the pertinent jurisdictional
`database, whereby a jurisdictional identifier for the
`selected jurisdiction is located, and the identified
`jurisdictional database thereafter accessed; and,
`
`f. thereafter displaying on screen a parcel boundary
`polygon map, along with surrounding parcel boundary
`polygons, the default scale of the displayed map selected
`to fill the computer display screen with parcel boundaries
`within a selected distance around the subject parcel, the
`selected parcel boundary polygon highlighted, defining
`both the location and boundary of the parcel, and
`associated attribute data for the highlighted parcel
`displayed.
`
`
`Ex. 1001, 15:57–16:14.
`
`D. Asserted Grounds of Unpatentability
`
`CoreLogic asserts that claims 1–21 of the ’946 patent are unpatentable
`
`under 35 U.S.C. § 101. Pet. 29.
`
`III. DISCUSSION
`
`A threshold question is whether the ’946 patent is a “covered business
`
`method patent,” as defined by the AIA. CoreLogic bears the burden of
`
`persuasion that the ’946 patent is a covered business method patent. See 37
`
`C.F.R. § 42.304(a). For the reasons discussed below, we determine
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`Case CBM2016-00017
`Patent 7,499,946 B2
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`CoreLogic has made an insufficient showing that the ’946 patent is a
`
`“covered business method patent.”
`
`The AIA defines “covered business method patent” as “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) (emphasis added); see also 37
`
`C.F.R. § 42.301(a). The legislative history of the AIA “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.’” Transitional
`
`Program for Covered Business Method Patents—Definitions of Covered
`
`Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`
`Reg. 48,374, 48,735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157
`
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011)); see also Blue Calypso, LLC v.
`
`Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016). To determine whether
`
`a patent is eligible for a covered business method patent review, the focus is
`
`on the claims. AIA § 18(d)(1) (“a patent that claims . . .” (emphasis added));
`
`37 C.F.R. § 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736
`
`(comment 4) (“[T]he definition set forth in § 42.301(a) . . . is based on what
`
`the patent claims.”). A patent need have only one claim directed to a
`
`covered business method to be eligible for review. CBM Final Rules, 77
`
`Fed. Reg. at 48,736 (comment 8) (“A patent having one or more claims
`
`
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`Case CBM2016-00017
`Patent 7,499,946 B2
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`directed to a covered business method is a covered business method patent
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`for purposes of the review, even if the patent includes additional claims.”).
`
`CoreLogic contends that the ’946 patent is a covered business method
`
`patent because “[a]t least claim 1 of the ’946 patent claims data processing
`
`or other operations that are financial in nature or, at a minimum, incidental
`
`or complementary to a financial activity.” Pet. 8. CoreLogic also relies on
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`dependent claims 13 and 16–18, and argues that those claims “explicitly
`
`limit the claims to financial applications.” Id. at 10; see also id. at 11
`
`(alleging that claims 16–18 cover “subject matter incidental or
`
`complementary to a financial activity”). As noted above, however, BSI
`
`disclaimed claims 13 and 16–18 at the same time it filed its Preliminary
`
`Response. See Ex. 2003. “A statutory disclaimer under 35 U.S.C. § 253 has
`
`the effect of canceling the claims from the patent and the patent is viewed as
`
`though the disclaimed claims had never existed in the patent.” Guinn v.
`
`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). We agree with other panels that
`
`have considered this issue under similar facts and concluded that the
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`disclaimed claims should not be consulted when determining whether the
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`patent is a covered business method patent under AIA §18(d)(1).1
`
`We are mindful that other Board decisions have evaluated compliance
`
`with CBM standing requirements at the time of filing, but those cases are
`
`
`1 See, e.g., AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015-
`00185, slip op. at 9–10 (PTAB May 4, 2016) (Paper 10); Great West
`Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at
`7–9 (PTAB Feb. 9, 2016) (Paper 10); Google Inc. v. SimpleAir, Inc.,
`CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11).
`
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`distinguishable2 and not binding here. Any suggestion in those cases that a
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`decision on institution should address the disclaimed claims because they
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`existed at the time the petition was filed is inconsistent with Federal Circuit
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`precedent instructing us to treat the claims as if they never existed, and our
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`Rules forbidding institution “based on disclaimed claims.” Guinn, 96 F.3d
`
`at 1422; 37 CFR § 42.207(e) (“No post-grant review will be instituted based
`
`on disclaimed claims.”); see also Google Inc. v. SimpleAir, Inc., CBM2015-
`
`00019, slip op. at 5–6 (PTAB Aug. 19, 2015) (Paper 15) (Order Denying
`
`Request for Rehearing) (rejecting petitioner’s argument that disclaimed
`
`claim should be considered because it existed at the time the petition was
`
`filed). We therefore do not consider disclaimed claims 13 and 16–18 in our
`
`analysis.
`
`CoreLogic advances two arguments in support of its contention that
`
`the ’946 patent is a covered business method patent. First, CoreLogic argues
`
`that the specification “confirms that this claim is directed to processing data
`
`as part of a financial process” because the specification describes a
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`“financial process in which subscribers pay to gain access to parcel
`
`boundary data using the claimed method.” Id. at 9. According to
`
`CoreLogic, the ’946 patent “is explicit that the purpose of the claimed
`
`method is to provide data in exchange for money.” Id. at 10. CoreLogic
`
`
`2 In Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC,
`CBM2014-00187, slip op. at 7, 8 n.1 (PTAB Mar. 30, 2016) (Paper 31), the
`Patent Owner attempted to cancel a claim after institution, not disclaim a
`claim prior to institution. In J.P. Morgan Chase & Co. v. Intellectual
`Ventures II LLC, CBM2014-00157, slip op. at 9 (PTAB Jan. 12, 2016)
`(Paper 40), the Patent Owner’s disclaimer occurred after institution, not
`prior to institution.
`
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`Patent 7,499,946 B2
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`points out that claim 1 requires display of the highlighted “selected parcel
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`boundary polygon” that defines “both the location and boundary of the
`
`parcel, and the associated attribute data.” Id. CoreLogic notes that the
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`specification provides examples where the map data can be used in “state,
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`federal and local environmental assessments and compliance.” Id. at 11
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`(quoting Ex. 1001, 6:18–20). CoreLogic further relies on the specification’s
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`discussion of different ways to use the map data to generate revenue, and
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`argues that these revenue models underscore the financial activities covered
`
`by the claimed methods. Id. at 11–13.
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`Second, CoreLogic contends that the specification describes using the
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`maps retrieved in the claimed method “for business purposes and financial
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`activities.” Pet. 13. According to CoreLogic, “[d]etermining real estate
`
`parcel boundaries is a fundamental business practice used by various
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`companies,” including “title companies, insurance providers, and land
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`developers.” Id. CoreLogic contends that selling subscriptions to these
`
`businesses in exchange for access to parcel data “is akin to allowing
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`customers to order products,” activities that the Board has described as
`
`financial activity. Id. at 15–16.
`
`BSI contends that the ’946 patent is not a CBM patent because it does
`
`not claim a financial product or service. Prelim. Resp. 8. BSI argues that
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`the CBM analysis must remain focused on the claims, and that without any
`
`financial term in the claims, the specification can demonstrate that the claim
`
`is financial in nature only in limited circumstances not at issue here. Id. at
`
`10–11. According to BSI, the fact that the specification discloses that the
`
`claimed “invention can be used in connection with a financial product does
`
`not mean that it is a CBM Patent.” Id. at 13. BSI distinguishes cases relied
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`on by CoreLogic, pointing out that unlike those cases, “no claim of the ’946
`
`patent that relates to ‘ordering,’ ‘purchasing,’ ‘selling,’ ‘marketing,’ or
`
`paying for (by electronic transfer or otherwise) any product.” Id. at 18. BSI
`
`relies on several cases concluding that the “financial prong” was not met in
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`allegedly similar circumstances, including Qualtrics, LLC v. OpinionLab,
`
`Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8). Prelim. Resp. at 20–23.
`
`According to BSI, Qualtrics properly focused on the claim language rather
`
`than “exemplary” embodiments in the specification, and rejected arguments
`
`similar to CoreLogic’s arguments here. Id. at 21. BSI portrays CoreLogic’s
`
`repeated references to the specification as insufficient because of the
`
`“missing nexus” to language in the claims. Id. at 25. BSI also counters
`
`CoreLogic’s assertion that the “purpose of the claimed method is to provide
`
`data in exchange for money” by pointing out that the specification discusses
`
`using the claimed process in transactions “for free.” Id. at 28.
`
`We agree with BSI. CoreLogic does not explain adequately how any
`
`of the claims of the ’946 patent recite a method or apparatus “for performing
`
`data processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” AIA § 18(d)(1).
`
`CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1
`
`or any other claim that relates to a financial activity in any way. Claim 1
`
`claims a “method for retrieving and displaying geographic parcel boundary
`
`polygon maps,” which has applicability to retrieving and displaying map
`
`data, not financial products and services. CoreLogic suggests that the
`
`method of claim 1 “can be used” by various entities in a business context, but
`
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`does not argue, let alone establish, that the claim terms on their face are
`
`financial in nature. See Pet. 11.
`
`CoreLogic asserts that the specification of the ’946 patent describes
`
`several methods of generating revenue using the claimed methods, and that
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`numerous businesses may pay for access to map data generated using the
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`claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the
`
`specification is unavailing. First, CoreLogic fails to address how these
`
`disclosures relate directly to, or meaningfully informs our analysis of, the
`
`language of the claims. For example, CoreLogic does not direct us to any
`
`claims or claim limitations that require users to pay for access to the map
`
`database or use of the claimed methods. Second, CoreLogic fails to address
`
`portions of the specification that indicate the claimed invention can be used
`
`“for free,” i.e., without any generation of revenue or financial aspect at all.
`
`See Ex. 1001, 2:59 (“These end users may access for free . . . .”), 13:54–56
`
`(“Another public-private alliance option is to offer the free use of the NPDP
`
`server to such data sponsors in addition to or in lieu of their revenue
`
`share.”), 14:20–21 (“[C]ommodity service subscriber end users (customers)
`
`can have access to the NPDP at no charge.”), 15:51–55 (“It is also
`
`contemplated that other independent public and private data sponsors could
`
`be provided with links as part of the NPDP display which end users could
`
`access on a free or fee basis.”). Given that the specification contemplates
`
`use of the claimed inventions for free, it is not apparent that the “purpose of
`
`the claimed method is to provide data in exchange for money,” as CoreLogic
`
`suggests. Pet. 11.
`
`At most, CoreLogic has established that the claimed methods could be
`
`used to generate revenue in a number of ways, even though the language of
`
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`the claims does not require any exchange of money or other financially
`
`related step. Under these circumstances, we conclude that the “financial
`
`prong” has not been met. Numerous Board decisions have taken a similar
`
`approach in situations where the specification refers to potential financial
`
`applications for the claimed inventions but the claim language does not
`
`expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab,
`
`Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8), for example, the claims
`
`were “devoid of any terms that reasonably could be argued as having any
`
`particular relation to a financial product or service,” but the specification
`
`
`3 See, e.g., ServiceNow, Inc. v. Hewlett–Packard, Co., Case CBM2015–
`00108, slip op. at 15–16 (PTAB Oct. 8, 2015) (Paper 10) (reasoning that,
`although “at least one illustrative embodiment [was] directed to applications
`of the claimed system in financial systems,” the patent’s claims “are of
`general utility”); Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at
`11–12 (PTAB May 19, 2015) (Paper 11) (finding petitioner’s citation to
`allegedly financial aspects of the invention in the specification insufficient
`because petitioner failed to explain any relationship between cited portions
`of specification and claim language); Salesforce.com, Inc. v. Applications in
`Internet Time LLC, CBM2014-00162, slip op. at 9–10 (PTAB Feb. 2, 2015)
`(Paper 11) (“Petitioner’s contentions based on the written description alone
`do not show that the ’111 patent claims a method or apparatus ‘for
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service’ or claims
`an activity that is ‘financial in nature, incidental to a financial activity or
`complementary to a financial activity.’”); Par Pharm. Inc. et al. v. Jazz
`Pharm., Inc., CBM2014-00149, slip op. at 10–13 (PTAB Jan. 13, 2015)
`(Paper 12) (finding that references in specification to insurance coverage and
`a patient’s ability to pay for a prescription did not render claim relating to a
`method for controlling access to a prescription drug a financial product or
`service); PNC Fin. Servs. Group, Inc. v. Intellectual Ventures I LLC,
`CBM2014-00032, slip op. at 11–16 (PTAB May 22, 2014) (Paper 13)
`(concluding that any financial aspect described in the specification amounts
`to a non-limiting example).
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`discussed using a claimed survey “for marketing and valuation of a
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`website.” Id. at 5–6. The Board found that the examples in the specification
`
`were merely exemplary, and that the specification also spoke in broader
`
`terms. Id. at 6–7. The Board also rejected the Petitioner’s argument that the
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`“specification’s disclosure of charging a fee . . . moves the claimed invention
`
`into the realm of a financial product or service”:
`
`First and foremost, the claims say nothing about charging a fee
`for the survey report—they merely require “software . . . for
`reporting to the website owner.” There is no mention of a fee.
`Moreover, the specification makes clear that “[i]n a preferred
`embodiment,” the software is configured to provide the report
`“for free.”
`
`Id. at 7. Similarly here, the ’946 patent specification mentions charging fees
`
`and generating revenue, but the claims never mention, much less require,
`
`any of these steps, and the specification repeatedly states that the claimed
`
`method could be used without charging any fee. See Ex. 1001, 2:67, 13:63–
`
`65, 14:28–29, 15:59–63.
`
`
`
`We are mindful of the instruction that “‘financial product or service’
`
`should be interpreted broadly.” 77 Fed. Reg. 48,374, 48,735 (Aug. 14,
`
`2012). “Broadly,” however, does not mean we must interpret “financial
`
`product or service” to encompass any claimed invention that might be used
`
`to generate revenue when the specification describes the methods of
`
`generating revenue. If the mere ability to make money selling a claimed
`
`invention, or providing access to a claimed method, were sufficient, the
`
`“financial product or service” requirement would be rendered nugatory. We
`
`decline to read the statute so broadly. Moreover, in cases finding the
`
`“financial product or service” requirement met, the language of the claims at
`
`issue typically refers to the financial aspect of the invention. See Versata
`
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`Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1312 (Fed. Cir. 2015)
`
`(claiming “method for determining a price”); SightSound Techs., LLC v.
`
`Apple Inc., 809 F.3d 1307, 1315–16 (Fed. Cir. 2015) (claiming, in part,
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`“providing a credit card number of the second party . . . so the second party
`
`is charged money”); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d at 1340
`
`(finding that the claims “have an express financial component in the form of
`
`a subsidy, or financial inducement”).
`
`We are aware of prior Board decisions finding the “financial products
`
`or services” requirement met even in the face of claim language that does
`
`not expressly mention financial activity, based on analysis of the
`
`specification.4 These cases turn on their particular facts as well as the claim
`
`language and specifications at issue, and are not binding on us here. See
`
`Blue Calypso, 815 F.3d at 1340 (rejecting argument that “the Board has
`
`acted in an arbitrary and capricious manner through an ‘unpredictable
`
`application’ of the CBM definition” and noting that each case focuses on the
`
`claim language at issue). We do not interpret these cases as requiring a
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`finding that the “financial product or service” requirement is met whenever a
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`specification refers to a financial use for a claimed invention.
`
`We conclude that neither the claim language nor the specification
`
`supports CoreLogic’s contention that the ’946 patent “claims a method or
`
`
`4 See, e.g., Motorola Mobility LLC v. Intellectual Ventures I LLC,
`CBM2015-00004, slip op. at 20–25 (PTAB March 21, 2016) (Paper 33)
`(noting that the specification expressly refers to “financial planning and
`portfolio management” and filing tax returns); Epicor Software Corp. v.
`Protegrity Corp., CBM2015-0006, slip op. at 19–21 (PTAB April 18, 2016)
`(Paper 54) (noting that the specification expressly refers to the field of
`banking, which is a financial activity).
`
`
`
`14
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`
`Case CBM2016-00017
`Patent 7,499,946 B2
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service” or claims “activities that are financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.” AIA § 18(d)(1);
`
`CBM Final Rules 77 Fed. Reg. 48,374, 48,735.
`
`IV. CONCLUSION
`
`For the foregoing reasons, based on the present record and particular
`
`facts of this case, we determine that the information presented in the Petition
`
`does not establish that the ’946 patent qualifies as a covered business
`
`method patent under § 18 of the AIA.
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that a covered business patent method review is not
`
`instituted for claims 1–21 of the ’946 patent.
`
`
`
`15
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`Case CBM2016-00017
`Patent 7,499,946 B2
`
`
`
`
`FOR PETITIONER:
`
`Erika H. Arner
`Justin E. Loffredo
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`erika.arner@finnegan.com
`justin.loffredo@finnegan.com
`
`
`
`FOR PATENT OWNER:
`
`Lawrence Edelman
`The Law Office of Lawrence Edelman
`lawrence.edelman@comcast.net
`
`
`
`Bruce J. Wecker
`Hausfeld LLP
`bwecker@hausfeld.com
`
`
`
`
`16