1) PNC Bank, N.A. and 2) SunTrust Bankv.Parus Holdings, Inc.

Patent Trial and Appeal Board

Nov 9, 2015

13350712 (P.T.A.B. Nov. 9, 2015)

Trials@uspto.gov Paper No. 10
571.272.7822 Entered: November 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
PNC BANK, NA and SUNTRUST BANK,
Petitioner,
v.
PARUS HOLDINGS, INC.,
Patent Owner.
_______________

Case CBM2015-00110
Case CBM2015-00150
Patent 8,843,120 B2
1

_______________

Before BART A. GERSTENBLITH, DAVID C. McKONE, and
PATRICK M. BOUCHER, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

1
This Decision addresses issues in the above-captioned cases. The parties
are not authorized to use this style heading for any subsequent papers.
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I. INTRODUCTION
A. Background
In Case CBM2015-00110 (“CBM-110”), PNC Bank, National
Association and SunTrust Bank (collectively, “Petitioner”) filed a Petition
(CBM-110, Paper 3, “Pet. 110”) to institute a covered business method
patent review of claims 1–18 of U.S. Patent No. 8,853,120 B2 (“the
’120 patent,” CBM-110, Ex. 1001). In Case CBM2015-00150
(“CBM-150”), Petitioner filed a Petition (CBM-150, Paper 3, “Pet. 150”) to
institute a covered business method review of claims 1–18 of the ’120 patent
(CBM-150, Ex. 1001
2
). SunTrust Mortgage Inc. is identified as a subsidiary
of SunTrust Bank and listed as a real party-in-interest in each Petition. Pet.
110, 1; Pet. 150, 1. Parus Holdings, Inc. (“Patent Owner”) filed Preliminary
Responses to both Petitions (CBM-110, Paper 7, “Prelim. Resp. 110”; CBM-
150, Paper 7, “Prelim. Resp. 150”).
Upon consideration of the Petitions and Preliminary Responses, we
conclude that, under Section 18(a)(1)(E) of the Leahy-Smith America
Invents Act (“AIA”) and 37 C.F.R. § 42.304(a), Petitioner has not shown
that the ’120 patent is eligible for covered business method patent review.
Accordingly, we deny both Petitions and do not institute a covered business
method patent review.
B. Related Proceedings
The parties represent that the ’120 patent is asserted in the United
States District Court for the District of Delaware in Parus Holdings, Inc. v.
PNC Bank, N.A., No. 1:14-cv-01428-UNA (D. Del.), Parus Holdings, Inc. v.
Sun Trust Bank, No. 1:14-cv-01429-UNA (D. Del.), and Parus Holdings,

2
The ’120 patent is Exhibit 1001 in both cases.
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Inc. v. Sallie Mae Bank and Navient Solutions, Inc., No. 1:14-cv-01427-
UNA (D. Del.). Pet. 110, 1; CBM-110, Paper 6, 2; Pet. 150, 1–2; CBM-150,
Paper 6, 2.
Additionally, Petitioner filed six covered business method patent
review petitions challenging three patents related to the ’120 patent:
CBM2015-00109 and CBM2015-00149, challenging U.S. Patent
No. 8,838,074 B2 (“the ’074 patent”); CBM2015-00111 and CBM2015-
00151, challenging U.S. Patent No. 8,843,141 B2 (“the ’141 patent”); and
CBM2015-00112 and CBM2015-00152, challenging U.S. Patent
No. 8,098,600 B2 (“the ’600 patent”). CBM-150, Paper 6, 4. The ’074,
’120, ’141, and ’600 patents share a common specification, and the ’074,
’141, and ’120 patents are direct or indirect continuations of the application
that issued as the ’600 patent.
C. Request for Authorization to Terminate
Following the District Court’s grant of Petitioner’s motion to dismiss,
discussed above, a teleconference was held with the parties on November 5,
2015. Petitioner and Patent Owner jointly request authorization to file a
motion for termination under 35 U.S.C. § 327, the statute governing
termination of instituted post-grant reviews due to settlement, but confirmed
during the call that no written settlement agreement currently exists. The
parties request that the proceedings terminate without estoppel, such that
Petitioner can re-file the petitions upon completion of Federal Circuit review
of the District Court’s ineligibility determination, if necessary. Patent
Owner limits its agreement to Petitioner re-filing the same
petitions. Effectively, the parties request that we stay these proceedings
pending Federal Circuit review of the District Court’s decision.
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We deny the parties’ request. As explained below, the ’120 patent is
not eligible for covered business method patent review. Deferring entering
such a decision is inconsistent with our policy objective of “secur[ing] the
just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
§ 42.1. We do not reach, and, thus, express no opinion on, eligibility of the
claims of the ’120 patent under 35 U.S.C. § 101.
D. The References
1. CBM-110
Petitioner relies on the following references in CBM-110:
European Patent Application Publication No. EP 0794650 A2,
pub. Sept. 10, 1997 (“Bowater,” CBM-110, Ex. 1009); and
U.S. Patent No. 4,852,170, issued July 25, 1989 (“Bordeaux,”
CBM-110, Ex. 1010).
2. CBM-150
Petitioner relies on the following references in CBM-150
3
:
IBM, AIX DirectTalk/6000: General Information and Planning,
Release 6, GC33-1720-00 (Dec. 1995) (“DirectTalk,” CBM-150, Ex. 1010);
IBM, DirectTalkMail: Administration, Release 6, SC33-1733-00
(Feb. 1996) (“DirectTalkMail,” CBM-150, Ex. 1011);
IBM, AIX DirectTalk/6000: Speech Recognition with the BBN Hark
Recognizer, Release 6, SC33-1734-00 (Feb. 1996) (“Hark,” CBM-150,
Ex. 1012); and
IBM, DT/6 1.5 Option Features, Announcement Letter Number A95-
893 (July 10, 1995) (“IBM Announcement A95-893,” CBM-150, Ex. 1013).

3
Petitioner refers to CBM-150 Exhibits 1010–12 collectively as “the Direct
Talk/6000 manuals.” CBM-150, Pet. 42.
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E. The Asserted Grounds of Unpatentability
1. CBM-110
Petitioner raises the following grounds of unpatentability in
CBM-110:
Reference(s) Basis Claims challenged
§ 101 1–18
Bowater § 102(a) 1–18
Bowater and Bordeaux § 103(a) 1–18

Petitioner supports its challenge with a Declaration by Paul C. Clark,
dated April 30, 2015. CBM-110, Ex. 1003.
2. CBM-150
Petitioner raises the following grounds of unpatentability in
CBM-150:
Reference(s) Basis Claims challenged
§ 101 1–18
DirectTalk, DirectTalkMail,
Hark, and IBM
Announcement A95-893
§ 103(a) 1–18

§ 112, ¶ 1
(written
description)
4 and 8

Petitioner supports its challenge with a Declaration by Paul C. Clark,
dated June 21, 2015. CBM-150, Ex. 1003.
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F. The ’120 Patent
The ’120 patent describes a “unified messaging service” that allows a
user to access communications such as e-mail and voice mail using “a single
point of access to all communications, integrated with personal information
management tools and customized public content delivery.” Ex. 1001, 2:35–
46. For example, the user can connect to the Internet with a computer to
retrieve e-mail, voice mail, and faxes from a common website. Id. at 3:41–
46; see also id. at 5:10–14 (“As for Web connections, you can boot up your
computer, sign onto the internet, go through the system’s secure web site
and play your voice mails, read your e-mail and faxes, manage your contacts
and schedule conferences. The website thus becomes a unified-messaging
system.”).
In another example, a user can retrieve messages and perform other
tasks by navigating a system menu with a telephone. Id. at 4:7–57.
Example tasks include opening a mailbox (Fig. 4B), listening to messages in
the mailbox (Fig. 4C), forwarding and returning messages (Fig. 4D),
returning a call (Fig. 4F), and leaving a voice message for another user
(Fig. 4G). Id. at 4:14–31; see also id. at 6:58–65 (“Subscribers can access
and play back their voice mail from any telephone or from their personal
Web page. Voice mail messages can be saved, retrieved, deleted or rerouted
to other individuals, groups or broadcast and voice responses can be returned
immediately to the caller. Also, e-mail messages can be viewed on the
subscriber’s personal home page or the system will read the e-mail to the
subscriber from any telephone using text-to-speech technology.”).
The user can listen to e-mails over the Internet or the telephone with
text-to-speech software:
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The system also utilizes text-to-speech so you can listen to your
e-mail over the phone, or the subscriber can display his e-mail
on his computer where he can reply to it and send e-mail to his
contacts with audio (using audio attachments). Further, using
Vosaic’s internet audio program, the system can deliver voice
mail via streaming audio over the internet using Java without a
plug-in.
Id. at 5:28–34.
When navigating the system menu with a telephone, users
can use voice commands to (1) build, edit and manage their
contact lists, (ii) review, play back, read, reply to and/or reroute
voice mail and e-mail, (iii) schedule conference calls with 800
number access, and (iv) maintain an itemized calling log listing
all calls with a running total of all charges.
Id. at 6:18–23. Specifically, the system can process a user’s voice using
“Dialogic’s [Signal Computing System Architecture] extended bus and
board-level resources [and] Purespeech speech recognition running on
Dialogic Antares boards.” Id. at 5:58–61.
According to the ’120 patent, “[b]asically, the system provides a
unified solution to the many varied communications and messaging devices
used daily by mobile professionals and active consumers. With simple voice
commands, subscribers can easily access and respond to all of their
communications and messaging media in the same session.” Id. at 6:38–43.
G. Illustrative Claim
Claims 1 and 5 are the independent claims challenged in this
proceeding. Independent claim 1 is illustrative of the claimed subject matter
and is reproduced below:
1. A voice-enabled and user-configured computer system
accessible to a user using an electronic communication device,
via at least one telecommunications network, the voice-enabled
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computer system for unifying communications transmitted
through the at least one telecommunications network, the voice-
enabled computer system comprising:
at least one cluster of servers with at least one voice
server, the voice server including speaker-independent speech
recognition and execution functionality, the at least one cluster
of servers accessible by the electronic communication device,
via at least one of a telephone connection and an internet
connection;
at least one database server, the database server
connected to the cluster of servers and including stored data of
interest to the user, the speaker-independent speech recognition
and execution functionality configured to receive one or more
natural voice spoken commands from the user via the electronic
communication device via a first communication connection
type of the telephone connection or the internet connection and
to interpret the one or more natural voice spoken commands by
comparing each of the one or more natural voice spoken
commands with a set of stored commands, each of the set of
stored commands corresponding to a single voice-enabled
operation and each command in said set of stored commands
being an alternative intuitive description of the single voice-
enabled operation, and the one or more natural voice spoken
commands configured to execute one or more voice-enabled
operations on at least a portion of the stored data based at least
in part on the one or more natural voice spoken commands, the
single voice-enabled operation configured to create computer-
generated communications for selective transmission over the
telephone connection and the internet connection for respective
users; and
at least one file server and a web server, the file server
and the web server connected to the at least one cluster of
servers and configured to facilitate transmission of a computer-
generated communication-relating to the user via the internet
connection, wherein at least a message and a notification
relating to the one or more voice-enabled operations executed
for the user via the one or more natural voice spoken commands
received from the user are sent to the user over one or more
communication connections, at least one of the message and the
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notification sent to the user via at least a second communication
connection type from the one or more communication
connections that is of different type from the first
communication connection type, and wherein each of the
message and the notification is at least from a group consisting
of a 1) telephone call, 2) a conference call, 3) a facsimile
message, 4) a voicemail message 5) an email message, and 6) a
message containing data.
Ex. 1001, 7:52–8:37.
II. CLAIM CONSTRUCTION
Although Petitioner presents constructions for several claim terms, no
terms require express construction for purposes of this Decision.
III. ANALYSIS
A. Whether the ’120 Patent is a Covered Business Method Patent
Section 18 of the Leahy-Smith America Invents Act (“AIA”) provides
for the creation of a transitional program for reviewing covered business
method patents. “The Director may institute a transitional proceeding only
for a patent that is a covered business method patent.” Pub. L. No. 112-29,
§ 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). 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.” Id.
§ 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the
same definition of “covered business method patent”). “The petitioner must
demonstrate that the patent for which review is sought is a covered business
method patent.” 37 C.F.R. § 42.304(a).
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The Patent Office has noted, “the legislative history reveals that ‘[t]he
plain meaning of “financial product or service” demonstrates that section 18
is not limited to the financial services industry.’” Transitional Program for
Covered Business Method Patents—Definitions of Covered Business
Method Patent and Technological Invention, 77 Fed. Reg. 48,734, 48,736
(Aug. 14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
(statement of Sen. Schumer)). According to Senator Schumer, “[t]he plain
meaning of ‘financial product or service’ demonstrates that section 18 is not
limited to the financial services industry. At its most basic, a financial
product is an agreement between two parties stipulating movements of
money or other consideration now or in the future.” 157 Cong. Rec. S5432.
A patent need have only one claim directed to a covered business
method to be eligible for review. See 77 Fed. Reg. at 48,736. Nevertheless,
“the definition set forth in § 42.301(a) . . . is based on what the patent
claims.” Id.
In arguing that the ’120 patent is eligible for covered business method
patent review, Petitioner does not focus on the language of a particular
claim. Rather, Petitioner makes two arguments in support of its contention
that all of the claims are directed to financial products or services. First,
Petitioner argues that Patent Owner has asserted the ’120 patent only against
financial institutions, and, accordingly, that “each of claims 1–18 is directed
to a method or corresponding apparatus for sending and managing
information from a subscriber to a network used in the practice,
administration, or management of a financial product or service.”
Pet. 110, 7–8; Pet. 150, 7–8. Petitioner (Pet. 110, 8 n.2; Pet. 150, 7 n.2)
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quotes
4
an additional statement from Senator Schumer during the debate of
Section 18:
The amendment also requires a patent to relate to a “financial
product or service.” To meet this requirement, the patent need
not recite a specific financial product or service. Rather the
patent claims must only be broad enough to cover a financial
product or service. For example, if a patent claims a general
online marketing method but does not specifically mention the
marketing of a financial product, such as a savings account, if
that marketing method could be applied to marketing a financial
product or service, the patent would be deemed to cover a
“financial product or service.” Likewise, if a patent holder
alleges that a financial product or service infringes its patent,
that patent shall be deemed to cover a “financial product or
service” for purposes of this amendment regardless of whether
the asserted claims specifically reference the type of product of
service accused of infringing.
157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer)
(emphasis added). According to Petitioner, Patent Owner has asserted the
’120 patent in district court against the “online and mobile banking
products” of financial institutions. Pet. 110, 7; Pet. 150, 7. In light of
Senator Schumer’s statement, Petitioner argues that Patent Owner’s district
court assertions are sufficient to show that the claims of the ’120 patent are
directed to financial products and services. Pet. 110, 7–8; Pet. 150, 7–8.
Second, Petitioner argues that the ’120 patent specification “discloses
that the claimed components are used for financial purposes” and, thus,
the patent describes using the claimed systems and methods in
the practice, administration, or management of a financial
product or service, as it was designed to be able to provide
access to financial content, and custom content that may include

4
Petitioner quotes the portion of Senator Schumer’s statement shown in
italics.
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personal financial information (such as personal banking as is
accused in the various litigations filed by the Patent Owner).
Pet. 110, 9–10; Pet. 150, 8–10. Petitioner (Pet. 110, 8; Pet. 150, 8) cites the
’120 patent’s Background of the Invention section, which states that
“[i]ndividuals and business people seek to communicate with each other,
obtain useful information, interact commercially and entertain themselves in
an increasingly mobile society.” Ex. 1001, 1:37–39 (emphasis added).
According to Petitioner, the ’120 patent’s description of using the system to
“provide[] direct access to news, weather, sports, financial, travel, and other
custom content” is an example of interacting commercially. Pet. 110, 9
(quoting Ex. 1001, 7:33–35); Pet. 150, 8 (same). Petitioner also points to a
depiction of “billing info” stored in the database shown in Figure 6 and
speculates that it “is presumably related to the ‘itemized calling log with a
running total of all charges’ and most likely, for billing the particular user
for the listed charges.” Pet. 110, 9 (citing Ex. 1001, 6:10–14); Pet. 150, 9
(same).
In response, Patent Owner argues that the ’120 patent does not claim
financial products or services because its claims are directed to technology
applicable across a variety of industries and business sectors and do not
relate particularly to the financial services sector. Prelim. Resp. 110, 13;
Prelim. Resp. 150, 18. Patent Owner (Prelim. Resp. 110, 16; Prelim.
Resp. 150, 22) quotes
5
a portion of a statement of Senator Leahy:
There has been some question about the scope of patents that
may be subject to the transitional program for covered business
method patents, which is section 18 of the Leahy-Smith

5
Patent Owner quotes the portion of Senator Leahy’s statement shown in
italics.
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America Invents Act. This provision is 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, such as computers,
communications networks, and business software.
157 Cong. Rec. S5441 (daily ed. Sept. 8, 2011) (statement of Sen. Leahy)
(emphasis added). Patent Owner argues that several panels of the Board
have relied on Senator Leahy’s statement in declining to institute covered
business method patent reviews on patents claiming technologies generally
applicable to business environments. Prelim. Resp. 110, 17–18; Prelim.
Resp. 150, 22–23.
Patent Owner further argues that Petitioner has failed to identify in the
claims any recitation of the movement of money or other financial
transactions. Prelim. Resp. 110, 20–23; Prelim. Resp. 150, 26–29. For
example, Patent Owner argues that Petitioner points to nothing in the claims
directed to accomplishing the commercial interaction and access to financial
content Petitioner references in the specification. Prelim. Resp. 110, 20–21;
Prelim. Resp. 150, 26–27.
As to the products it has accused, Patent Owner argues that it has
asserted infringement allegations against systems of general applicability,
rather than financial products or services. Prelim. Resp. 110, 17 n.4; Prelim.
Resp. 150, 22 n.6. The general allegations in the district court pleadings
(Exs. 1005–07 in both proceedings) do not articulate the precise nature of
the products accused of infringement.
We acknowledge that both parties have marshalled statements from
the legislative history favorable to their positions regarding the reach of
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Section 18. Nevertheless, a previous panel of this Board has observed 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” and reasoned that “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.’” Par Pharm., Inc. v. Jazz Pharms., Inc., Case CBM2014-
00149, slip op. at 17–18 (PTAB Jan. 13, 2015) (Paper 12) (quoting New
England Power Co. v. New Hampshire, 455 U.S. 331, 342 (1982)). Indeed,
in evaluating whether decisions of the Board regarding Section 18 are
reviewable, the Federal Circuit stated:
The parties, digging through the legislative record, come up
with competing statements from various legislators with regard
to the possible scope of the issues to be heard on appeal. Even
assuming such statements are thought to be relevant, the variety
of conflicting views illustrates why we must focus on the
structure and language of the act, not on what its advocates and
detractors may say about it.
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1321 (Fed. Cir.
2015).
Panels of this Board, focusing on the language of Section 18, have
declined to institute covered business method patent review of patents with
claims that, although usable in commerce, nevertheless are applicable
generally to a variety of industries. For example, in Par Pharmaceutical, we
declined to institute a review of a patent directed to a computerized method
of distributing a prescription drug. Case CBM2014-00149 (Paper 12).
Looking to the language of the statute, the Par Pharmaceutical panel
reasoned that
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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. 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.”
Id., slip op. at 17 (citing AIA § 18(d)(1)).
More recently, in ServiceNow, Inc. v. Hewlett-Packard, Co., the
Board declined to institute a review of a patent with claims “directed to
systems or computer program products for managing a conversation in a
Web service, and contain[ing] no finance-related terminology or
limitations.” Case CBM2015-00108, slip op. at 15 (PTAB Oct. 8, 2015)
(Paper 10). The ServiceNow panel reasoned 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.” Id. at 16.
According to ServiceNow,
[f]inancially-related, illustrative embodiments in the
specification of the patent at issue may be sufficient in cases
where the specification indicates particular advantages or
applicability to financial embodiments, where the specification
makes clear that claim limitations are interpreted expressly to
cover financial embodiments, or where there is an absence of
evidence that the claimed invention has general utility.
Id. at 17. On the other hand, reading Section 18 to apply to any patent that
could be used in conjunction with financial products and services could lead
to an unreasonable result. Id. at 13 (“[F]inding that anything with a possible
use with respect to activities involving financial products and services would
capture claimed inventions only tangentially related to activities involving
financial products and services.”).
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In this proceeding, Petitioner points to no recitations in the claims
addressing financing, commerce, or the movement of money. We find no
such recitation. Rather, the claims, in general, are directed to methods,
systems, and devices for managing user communications, including using
speech recognition to interpret input from users. As explained above,
whether the ’120 patent is directed to a covered business method is based on
what the patent claims. See 77 Fed. Reg. at 48,736; see also ServiceNow,
Case CBM2015-00108, slip op. at 8 (Paper 10) (“In making this
determination, our focus is firmly on the claims.” (quoting Par Pharm.,
Case CBM2014-00149, slip op. at 9 (Paper 12))). The express language of
the claims is not limited to any particular context; rather, the claims are
directed to commercial and non-commercial applications alike. This
supports Patent Owner’s argument that the claims are directed to an
invention that is applicable to a variety of industries, with no particular focus
on financial services or products.
Petitioner’s citations to the specification also do not provide a
persuasive basis to conclude that the claims deal with the movement of
money in anything other than a tangential way. Rather, the specification
confirms that the invention of the ’120 patent is one of general applicability.
For example, the Background of the Invention expresses a desire of both
individuals and businesspeople to communicate for a variety of reasons,
such as obtaining information, interacting commercially, and for
entertainment. Ex. 1001, 1:37–44. Likewise, the specification contemplates
using the inventive system to retrieve various types of information, such as
“news, weather, sports, financial, travel and other custom content.” Id. at
7:33–36; see also id. at 6:38–40 (“Basically, the system provides a unified
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solution to the many varied communications and messaging devices used
daily by mobile professionals and active consumers.”). Rather than focusing
the claims on financial products and services, these examples make clear
that any financial aspect of the invention is, at most, a non-limiting example.
The specification, thus, supports Patent Owner’s argument as well.
Moreover, even assuming that Patent Owner asserted the ’120 patent
only against financial products of financial service firms, we do not consider
this dispositive, contrary to Petitioner’s contention (Pet. 110, 7–8 & n.2;
Pet. 150, 7–8 & n.2). In this regard, we consider persuasive the reasoning by
the panel in PNC Financial Services Group, Inc. v. Intellectual Ventures I
LLC, Case CBM2014-00032 (PTAB May 22, 2014) (Paper 13). In PNC
Financial Services, the Board considered Senator Schumer’s statement (at
157 Cong. Rec. S1365, quoted above) in determining whether to institute a
review of a patent directed to a computer-implemented method for
identifying and characterizing stored electronic files, which was asserted in
district court against a bank’s payment card industry data security standard.
PNC Fin. Servs. Grp., Case CBM2014-00032, slip op. at 6–7, 13–14
(Paper 13). According to the panel in that case,
when taken in context of the entire legislative history associated
with the AIA § 18(d)(1), we do not consider the statement by
Senator Schumer cited by Petitioners as opening CBM review
to all patents asserted against financial institutions. Instead, we
deem such activity as one factor to be considered in making that
determination.
Id. at 14. The PNC Financial Services panel reasoned that “the mere
assertion of a patent against a bank or other financial institution is not
sufficient by itself to transform a patent claiming a generally applicable data
processing technique to a covered business method patent.” Id.
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Like the patent in PNC Financial Services, the ’120 patent claims and
describes an invention that is related only tangentially to financial products
and services. This outweighs Petitioner’s evidence that the ’120 patent has
been asserted against financial service firms. See FedEx Corp. v. Ronald A.
Katz Tech. Licensing, L.P., Case CBM2015-00053, slip op. at 12 (PTAB
June 29, 2015) (Paper 9) (“We do not find the nature of Petitioner’s accused
product determinative of whether the [challenged] patent is a CBM patent.”).
B. Summary
We recognize that financial products and services are not limited to
the financial services industry, but are also cognizant that the claims must be
directed to something more than techniques applicable to a wide variety of
industries. We have considered Petitioner’s evidence that the claims have
been asserted against financial service firms in district court. We also have
considered Petitioner’s argument that the specification describes the
invention as applicable in a commercial context. Nevertheless, we do not
find that evidence persuasive in light of the lack of any recitation in the
claims of financing, commerce, or the movement of money, and the
specification’s clear expression that the invention is applicable in both
commercial and non-commercial contexts. Cf. ServiceNow, Case
CBM2015-00108, slip op. at 11 (Paper 10) (“We note that other panels also
have considered evidence of the problem addressed and the parties against
whom the patent is asserted. While each of these decisions identifies factors
that a panel may weigh in reaching its eligibility decision, we are not in any
way bound by the factors considered in these cited decisions, and we
determine eligibility based on the arguments and evidence regarding the
challenged claims of the patent before us.” (internal citations omitted)).
Case CBM2015-00110; Case CBM2015-00150
Patent 8,843,120 B2

19
On this record, Petitioner has not introduced persuasive evidence to
show that at least one claim of the ’120 patent 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. Accordingly, Petitioner has not met its burden of demonstrating that
the ’120 patent is eligible for covered business method patent review.
IV. CONCLUSION
For the foregoing reasons, we are not persuaded that the ’120 patent is
eligible for covered business method patent review.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 324(a), a covered business
method patent review is not instituted for claims 1–18 of U.S. Patent
No. 8,843,120 B2 in either CBM2015-00110 or CBM2015-00150; and
FURTHER ORDERED that the parties’ joint request for authorization
to file a motion to terminate the proceedings is denied.

Case CBM2015-00110; Case CBM2015-00150
Patent 8,843,120 B2

20
For PETITIONER:

Lionel M. Lavenue
Kara A. Specht
Guang-Yu Zhu
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
lionel.lavenue@finnegan.com
kara.specht@finnegan.com
guang-yu.zhu@finnegan.com

PATENT OWNER:
Frank Pietrantonio
Nathan Cummings
COOLEY LLP
fpietrantonio@cooley.com
ncummings@cooley.com