Takeaway: Although the financial product or service portion of the covered business method test
is ordinarily addressed before the technological invention exclusion, because the technological
invention exclusion is dispositive, that sequence is not required.
In its Decision, the Board did not institute covered business method patent review of any
challenged claim of the ‘246 patent. The Board reached this conclusion because it was not
persuaded that ‘246 patent qualifies as a “covered business method patent” under § 18(d)(1) of
the AIA.
Petitioner had challenged claims 1-9, 11-14, 16-19, 21, 23-32, 34, 35, 37-45, 51-56, 58, 60, 6267, and 69-73 of the ‘246 patent, as being directed to subject matter that is not patent-eligible
under 35 U.S.C. § 101. The claims of the ‘246 patent relate to “a method for performing a
transaction-related analysis,” with the disclosure of the ‘246 patent describing “a method for
retailers to perform analysis on transaction data, such as retail sales and consumer data, from a
remote location using an internet connected computer.”
37 C.F.R. § 42.304(a) requires that the Petition must “demonstrate that the patent for which
review is sought is a covered business method patent.” In turn, a “covered business method” is
defined under AIA § 18(d)(1) 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.” The Board focused on the technological invention exclusion part of
the test before the financial service portion of the test.
In the instant proceeding, the Board did not institute covered business method review of any of
the challenged claims of the ‘246 patent because, according to the Board, “Petitioner’s showing
on the technological invention portion of that test is insufficient.” As noted by the Board, the
test for determining whether a patent is directed to a technological invention comprises two
prongs: “[1] whether the claimed subject matter as a whole recites a technological feature that is
novel and unobvious over the prior art; and [2] solves a technological problem using a technical
solution.”
The Board concluded that Petitioner had not met its burden with respect to the first prong of the
test, finding that Petitioner had addressed only certain elements of the claims, such as the
portions reciting computers, databases, and database analysis scripts, and thus had failed to
assess any of the claims as a whole. As characterized by the Board, [p]articularly lacking in
Petitioner’s analysis is any discussion of the novelty or nonobviousness of the script template
limitations, a focal point throughout the prosecution of the ’246 patent.”
The Board found Petitioner’s arguments with respect to the second prong of the test to be
unpersuasive as well. According to the Board, “Petitioner’s arguments under the second prong
do not address the technical aspects of the problem being solved, and fail to explain why the
solution is not technical.”
enmos USA Corp. v. dunnhumby Limited, CBM2015-00116
Paper 8: Decision Denying Institution of Covered Business Method Patent Review
Dated: November 10, 2015
Patent: 8,214,246 B2
Before: Patrick R. Scanlon, Jennifer Meyer Chagnon, and Timothy J. Goodson
Written by: Goodson
Related Proceedings: dunnhumby USA, LLC v. emnos USA Corp., Case No. 1:13-cv-00399
(N.D. Ill.); CBM2015-00162