By Dennis Crouch
VirtualAgility Inc., v. Salesforce.com, Dell, Dr. Pepper, et al. (Fed. Cir. 2014)
The America-Invents-Act (AIA) created set of new and powerful administrative proceedings that allow third parties to challenge issued patents. These include post-grant review (PGR), covered business method review (CBM), and inter partes review (IPR). Congress maintained the less-powerful but still important third-party requested ex parte reexamination. In the coming months, the Federal Circuit will be challenged with reviewing various aspects of the new proceedings. Perhaps most importantly, the court will be challenged with determining how much deference and leeway to give the USPTO in developing its own procedures and interpretation of the law.
Apart from the agency deference issue, a second major issue whose steam continues to build involves the rising number of conflicts between federal courts and the patent office. Traditionally, post-issuance challenges have been handled by the courts, but the new procedures have shifted the balance of power. It turns out that most patents involved in post-issuance administrative challenges are also involved in parallel challenges in federal district court. These parallel proceedings will often have somewhat different results, and many remain confused over the potential result of such a conflict. In the extreme, the issue raises constitutional questions of separation of powers between the executive (the PTO) and the courts.
One solution to the conflict is to have the decision-makers take turns and apply principles of estoppel, preclusion, and comity to resolve the delayed process in a way that avoids conflict with the first-decided case. The PTO has generally refused to stay its proceedings and many district court judges have difficulty ordering stays – especially in cases such as this where the review request is filed several months after the infringement lawsuit. It is important to recognize that post-issuance review requests are limited by law to only challenge issues that can also be challenged in court. Thus, for a judge, the post-issuance review request serves as a transparent statement that the defendant does not trust the judge or jury to make the call.
The Timeline Here: In January 2013, VA sued the defendants in the Eastern District of Texas, alleging infringement of its U.S. Patent No. 8,095,413. Five months later (May 2013) one of the defendants (Salesforce.Com) filed a covered business method review (CBM) petition alleging that that the claim of the patent were all invalid under Sections 101, 102, and 103 of the Patent Act. In November 2013, the PTAB partially granted the CBM petition and ordered review of the claims under Sections 101 and 102 (but not 103) and setting a July 2014 PTAB trial date with a final decision expected by November 2014. At that point, the district court was made-aware of the PTAB’s late-start but rapid progress. However, the district court refused to stay the litigation pending outcome of the PTAB case and continued moving forward with claim construction hearing set for April 2014 and trial also set for November 2014.
One aspect of the new CBM process is that the statute allows for interlocutory appeal of a district court’s decision to grant or deny a stay of litigation pending CBM review. Thus, after the district court refused to grant the stay, Salesforce appealed. The Federal Circuit quickly granted a stay of the district court litigation pending appeal and has now ordered that the district court to stay its proceedings pending the CBM review. The majority decision here is written by Judge Moore and joined by Judge Chen. Judge Newman wrote in dissent arguing that the decision here removes the discretion given to district courts.
The statute provides four factors that a district court must consider when determining whether or not to grant a stay of a late-filed CBM review.
[T]he court shall decide whether to enter a stay based on—
(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
(B) whether discovery is complete and whether a trial date has been set;
(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
AIA §18(b)(1). Regarding appeals, the statute indicates that the Federal Circuit’s “shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo.” AIA §18(b)(2). Thus, Judge Newman’s call for deference is likely misplaced. For its part, the majority refused to determine whether any deference is required and instead held that reversal was warranted even under an abuse of discretion standard.
The result here provides a strong suggestion to district courts that they should stay litigation once the PTAB has indicated that it will review the identical claims being litigated in court.
… coming soon from a PTAB near you:
“Since your patent can be sold, that means your patent is a business method.”
“Accordingly, we now hold that ALL patents are now subject to CBM reexams.”
p.s. And please stop calling us patent death squads … even though we know we are.
What’s really obnoxious, Steve, is that the PTAB has been able to assert statutory jurisdiction over cases where they arguably do not have jurisdiction, and the courts have studiously refused to review those decisions, thereby forcing patent owners to defend their patents in the patent office, at great expense, with no guarantee that they will ever be able to have judicial review of the unwarranted power grab by the patent office.
What the courts seem to have overlooked is the abuse that these proceedings actually are. They increase costs to the patent owner who must now defend both in court and in the patent office. If the court cases are stayed pending, justice this denied the patent owner who effectively loses patent term. Moreover, if the patent is protecting a small company’s business in products and services it provides, it needs patent protection to stay in business. Stripping patent owners of the ability to proceed in court, as in this case, effectively undermines the value of a patent to a startup. This ultimately damages not only that business, but all startups. Venture capitalists will note that patents have become all but unenforceable until they had been independently reviewed by the patent office one more time, a process that can and will take years.
Quality Aspect #3 of the AIA: far greater uncertainty.
Wow, Ned, you are starting to sound like someone who actually cares about the law. If we could only straighten you out regarding Benson, you would be one of the good guys.
I’ve led Ned down a path of discussion many times – he quite refuses to take those last few steps towards a reasonable and logical conclusion.
Just don’t see that changing any time soon.
“What the courts seem to have overlooked is the abuse that these proceedings actually are. ”
You know Ned, I tend to agree with you. But on the other hand we cannot forget the abuse that led to the implementation of these proceedings in the first place.
6, the abuse of which you speak are due mainly to examinations that allowed obvious patents, or with broad functional claims (which can be the same thing), that arguably read on whole industries who “independently” invented (yeah sure). The big boys wanted a cheap way to challenge these patents without going to court.
But now, they are used by the big boys as litigation tactics to increase burdens on small fry patent owners by adding another hostile forum designed to kill patents with their lower burden and BRI.
I don’t think it has really been absorbed yet just how much the post grant reviews have weakened a patent. Write that letter and your client may need another $500K to defend the patent in patent office.
You have to tell the client that too. Are you sure you want to write a letter? Plus for small companies it can mean waiting a 1 1/2, which is a long, long time in Internet time.
I will again emphasize that the anti-patent t3a baggers refuse to admit any weakening. Shows how mad the lot is.
Well I for one will be happy to. I’m surprise if the rest wouldn’t. Although you may be right that the full impact has not been absorbed yet they’ll be coming around shortly.
Night, I have been known to caution small business clients who finally get their patent not to go after any infringers whatsoever until the 9-month window for PGR elapses. I wouldn’t be surprised if that is not the general advice of any firm to their clients today.
What PGRs have done is effectively remove 9 months of enforceability from a patent. That is all that was accomplished with that legislation.
What in the world were they thinking? Be just like Europe? For what reason? What problem were they trying to solve?
Ger many has a peculiar patent systems where patent validity cannot be challenged in court. This forces companies to file oppositions.
We don’t have such a system, and there really is no need for oppositions unless one really is trying to become like Ger many and remove the whole issue of patent validity from the courts.
But patent office litigation is a sport of kings. There is a real problem of disparity of resources. Forcing the small inventor or small business back into the patent office for years of litigation before his patent can be enforced has the effect of immunizing the big company from small-fry patents. It forces the small company to think once, twice or three times before they send a notice letter. What this does is give the big companies a license to every small company’s R&D, a license to steal with impunity.
Think i4i v. Microsoft.
It won’t be long before the lack of enforceability of patents by the small business will become well known. At that point, people will stop founding new businesses based on new ideas because they cannot protect them.
Repeal of all these PGRs is not going to happen. That is why the constitutional challenge is so very, very important to the patent system.
Night, I have been known to caution small business clients who finally get their patent not to go after any infringers whatsoever until the 9-month window for PGR elapses. I wouldn’t be surprised if that is not the gen eral advice of any firm to their clients today.
What PGRs have done is effectively remove 9 months of enforceability from a patent. That is all that was accomplished with that legislation.
What in the world were they thinking? Be just like Europe? For what reason? What problem were they trying to solve?
Germany has a peculiar patent systems where patent validity cannot be challenged in court. This forces companies to file oppositions.
We don’t have such a system, and there really is no need for oppositions unless one really is trying to become like Germany and remove the whole issue of patent validity from the courts.
But patent office litigation is a sport of kings. There is a real problem of disparity of resources. Forcing the small inventor or small business back into the patent office for years of litigation before his patent can be enforced has the effect of immunizing the big company from small-fry patents. It forces the small company to think once, twice or three times before they send a notice letter. What this does is give the big companies a license to every small company’s R&D, a license to steal with impunity.
Think i4i v. Microsoft.
It won’t be long before the lack of enforceability of patents by the small business will become well known. At that point, people will stop founding new businesses based on new ideas because they cannot protect them.
Repeal of all these PGRs is not going to happen. That is why the constitutional challenge is so very, very important to the patent system.
“What in the world were they thinking? Be just like Europe? For what reason? ”
LOL
getting warmer (hint big corp is usually synonymous with international corp)
“ That is why the constitutional challenge is so very, very important to the patent system.”
Watch for the Chaebol effect with that torpedo below the waterline of the good ship AIA.
Wow, Ned, you are sounding more and more like me every day. I agree that 9 months is another huge weakening effect.
I also agree that we are going to reach a tipping point where a company like Google is just going to say no more patents and if you mess with us we are going to take your whole patent portfolio to the death squads. They will probably say something like we just put $10 billion into a fund for taking out anyone that tries to mess with us.
(They will probably keep some patents themselves to sue other people that copy their information processing methods.)
The tipping point is closer. Not quite there yet. Another round of patent destroying legislation and 6 might find himself out on the pavement.
“Night, I have been known to caution small business clients who finally get their patent not to go after any infringers whatsoever until the 9-month window for PGR elapses. I wouldn’t be surprised if that is not the gen eral advice of any firm to their clients today.
What PGRs have done is effectively remove 9 months of enforceability from a patent. That is all that was accomplished with that legislation.”
A yummy yummy yummy target for laches. I hope you did this in an easily discovered email!
“Not quite there yet. Another round of patent destroying legislation and 6 might find himself out on the pavement.”
You might have a hard time beliebing this but people who actually work in the useful arts will carry on carrying on even without the info processing folks.
6, you mean like actual work of replacing 10’s of millions of people with information processing machines?
“replacing 10′s of millions of people with information processing machines?”
Nah. That doesn’t sound statutory off the cuff.
“6, the abuse of which you speak are due mainly to examinations that allowed obvious patents, ”
Frankly I disagree about the obviousness thing. It’s an overblown concern imo. Sure they happen, but to lay a big ol share of the blame there is a mistake imo.
“or with broad functional claims (which can be the same thing), that arguably read on whole industries who “independently” invented (yeah sure). ”
In part, no doubt. That’s yet another of the abuses to stack on top of the pile. Regardless, patent attorneys don’t want to give up that little tool in their toolkit.
They want to have their cake and eat it too. Thus the whole system must suffer collateral damage. Who’d a thunk? O wait, people like myself predicted exactly that not 5 years back. And the longer it goes on, the more and more collateral damage will be done.
“But now, they are used by the big boys as litigation tactics to increase burdens on small fry patent owners by adding another hostile forum designed to kill patents with their lower burden and BRI.”
What’s that you say? Political collateral damage happened? Hmmmm?
6, you might want to observe that some big companies bring IPRs against multiple patents of a patent owner. Now I have heard of negotiating tactics where the big company will say something like this to the small fry,
“Grant us a license on X terms or else we will file IPRs against every patent in your portfolio.”
Since there is no standing requirement, they can say this with impunity because they can bring IRPs against every patent.
Also imagine a patent war conducted by two big companies. This is going to happen, trust me. Each company will PGR or IPR every or a large number of patents of the other.
Such is not about good patents, but about abuse of process.
You know why England adopted the English rule? The Barons of England used to engage in warfare between each other in court. Spurious disputes over land or anything were brought simply to harass and force settlements by the impecunious Baron to the deeper-pocketed Baron.
In the United States, one cannot simply go to court. One has to have standing. But with PGRs and IPRs, standing is not required, and abuse can and will happen. I believe it is already happened because some big companies have already brought multiple IPRs against small companies. There is only one good reason for that.
Scire farcies. [sp?]
History repeats.
Scire facias.
Abused by the wealthy in England – so much so that it was eventually repealed even there.
We had the “writ” in effect with the first patent statutes that allowed anyone to bring suit to revoke a patent. (The concepts of standing had not yet developed in the early 1800’s.) ex parte Wood and Brudage held this action was in the nature of a writ scire facias at common law, and therefor had a 7th Amendment right to a jury trial on disputed facts as that right was accorded the patent owner in scire facias actions.
“6, you might want to observe that some big companies bring IPRs against multiple patents of a patent owner. ”
That’s exactly what I would do.
“Grant us a license on X terms or else we will file IPRs against every patent in your portfolio.”
That’s exactly what I would do. And it is what I have told others they can do vs a person patent threatening their business. And it’ll bring that license right on down right quick I imagine. Especially when those other patents are already licensed and making $$$.
“Since there is no standing requirement, they can say this with impunity because they can bring IRPs against every patent.”
Mhmmm.
“Such is not about good patents, but about abuse of process.”
I agree and it is delicious. All that just because you guys couldn’t be bothered to reign in 101 etc.
Too flipping bad.
“There is only one good reason for that.”
Mhmmm.
Oh and I should add Ned, a slightly more advanced version of that tactic that I thunk up. If I’ve already bothered to dredge up a few 102’s on some of their issued patents that are licensed I’ll also make the amount that I’m demanding to pay to license their patent negative (so that they’re paying me hush money) and I’ll demand that license forthwith.
/face palm
Fix abuse with counter-abuse. The monotonous government solution to all of life’s problems, eh, “brosefus”?
Gee, that won’t lead to any false flag operations, will it…?
“If the court cases are stayed pending, justice this denied the patent owner who effectively loses patent term. Moreover, if the patent is protecting a small company’s business in products and services it provides, it needs patent protection to stay in business. Stripping patent owners of the ability to proceed in court, as in this case, effectively undermines the value of a patent to a startup. This ultimately damages not only that business, but all startups. Venture capitalists will note that patents have become all but unenforceable until they had been independently reviewed by the patent office one more time, a process that can and will take years.”
And all that happened simply because you guys couldn’t be bothered to reign in blatant skirting of 101 and patent trolling.
I mean, I would be sad, but meh. You guys don’t want to address the actual problem. You want your cake and to eat it too.
You are doing that “blame the wrong person” thing again 6.
It’s like sitting down at a restaurant, looking over the menu and mentioning that you would like the steak if you can only pay for the salad – and the restaurant owner agrees, brings you the steak bu then gets upset when you only pay for the salad.
6 – do your Fn job, stop whining about it and for the love of all that is holy, stop trying to blame others when you aren’t doing your job.
“It’s like sitting down at a restaurant, looking over the menu and mentioning that you would like the steak if you can only pay for the salad – and the restaurant owner agrees, brings you the steak bu then gets upset when you only pay for the salad.”
What is “like” that?
“6 – do your Fn job, stop whining about it and for the love of all that is holy, stop trying to blame others when you aren’t doing your job.”
Why you worried about me? In this thread we’re talking about congressional programs bro. Stay on target.
The target was introduced by you at post 8.1.3, with your (wrong) accusation of “abuse.”
I am very much on target, thank you.
So then the abuse is what is like sitting down at a restaurant and doing all that stuff? And you’re worried about me because of the abuse even though I’m allegedly “wrong” about the abuse?
You are just wrong about so many things 6.
Here, you are wrong in QQing about others “abuse,” when the crux of the matter is that you just aren’t doing the Fn job. You’ve gone retrograde about 6 years and are trying the old ploy of blame the applicants.
“Here, you are wrong in QQing about others “abuse,” when the crux of the matter is that you just aren’t doing the Fn job. ”
Oh I see. The “crux” of some specific “matter” (as yet unspecified) is that I’m not doing my job. I take it then that all PGR’s IPRs etc are my fault. None of them have anything to do with congress’s subjective perceptions of trolls etc.
Too funny anon. Too funny. Always good for a laugh.
I still don’t see what “it” was that is supposedly like being at a restaurant though. I hope you’ll explain what “it” was so I can lol some more. You’re a regular comedian tonight.
“You are just wrong about so many things 6.”
Of course I am Mr. OCPD. Of course I am.
I’ve misplaced my glossary for “technological.”
Does anyone have a non-circular definition to post so that we can all get on the same page here?
Technological: “Of, relating to, or using technology.”
Taking us to (from Wikipedia):
“Technology (from Greek τέχνη, techne, “art, skill, cunning of hand”; and -λογία, -logia[1]) is the making, modification, usage, and knowledge of tools, machines, techniques, crafts, systems, and methods of organization, in order to solve a problem, improve a pre-existing solution to a problem, achieve a goal, handle an applied input/output relation or perform a specific function.
It can also refer to the collection of such tools, including machinery, modifications, arrangements and procedures.
The term can either be applied generally or to specific areas: examples include construction technology, medical technology, and information technology.
” methods of organization”
uhoh…
cunning of hand sounds like those d@mm scriviners too….
Of course, we can always attempt to throw in the scientific method to distinguish.
Oh wait, Malcolm attempted that and FAILED, when I showed him that since Deming, et al, innovation in business methods utilize the scientific method.
Drat.
What a trivially elementary question you pose anon.
“Technological”: not abstract.
lol
Touche’
I could not find any mention of the jurisdictional issue in the District Court’s opinion. However I found this which I think is highly pertinent:
“It is undisputed that VirtualAgility is and has been a small company with private investors and limited resources. Being left with no recourse against the infringing acts of much larger companies such as Defendants, even only for a year, may substantially injure VirtualAgility’s business such that it becomes “impossible to restore [its] exclusive position by an award of damages and a permanent injunction.”
Considering the likelihood of appeals by a losing petitioner, the case could take 3 more years to resolve.
When 1 year is enough to put a small company out of business, 3 is a death sentence.
Add to that that the PTO does not even have jurisdiction as a CBM is clearly not involved here, the whole digression into the PTO is intended to delay, drive up PO costs, inflict financial hardship, intended to bankrupt, and is an abuse of the highest order.
Can we utterly condemn the Federal Circuit here without seeming a tad bit harsh?
“Capable of being used in a financial application applies to every spreadsheet, word processor, database, org chart program, inventory management program, or computer system. ”
From down below.
Yes Ned, that’s the beauty of it 🙂
IMHO, IPRs and CBMs should not be available against any small company engaged in a business protected by the patent in suit.
In the 1940s, congress considered oppositions, but shelved the idea as small entities (universities) could not afford them. They still cannot.
Lawsuits are a difference animal altogether, as small companies can find law firms to take cases on contingency. But IPRs and CBMs probably have to be financed out of the patent owners pocket. Can they afford them?
Doubtful.
Engaged in a business protected by a patent? LOL.
Way to give away the game Ned.
This is just another poster child for hardcore patent reform. You know — the kind that “weakens patents ge nerally.”
Get the s k u m out of the system.
Because the RQ/HD will tell you what are “proper” patents…
/eye roll
Businesses aren’t eligible subject matter, Billy.
?
Who ever said that businesses are eligible subject matter?
Now, if you want to talk about business methods, well Congress and 6 of the 9 Supreme Court Justices would like a little chat with you.
“Who ever said that businesses are eligible subject matter?”
Ned said that the small business was engaged in a business that was protected by a patent in suit. That is to say, Ned gave away the game that the small entity had patented its business since the business was what was being protected.
Not the same at all 6. A business can very well be built around a patent. A patent can also very well cover a business method.
A patent on a business though, that’s something different.
Pay attention.
“A patent on a business though, that’s something different.”
We know. And that’s what MM called Ned out for referring to by “paying attention” re re.
6, good joke there. I see why you were on the floor laughing.
“6, good joke there. I see why you were on the floor laughing.”
Thanks but it was all MM. It was a good one. I’m surprised you’re just now getting it though.
And also Ned, beyond it being a joke, MM was also being for srs (in fact he might have been being solely srs though it read as a joke). If you’re effectively protecting the business (which we’ve all established is non-statutory subject matter) then a question arises whether or not the claim is valid under 101. You’re familiar with preemption by now. And if you’re preempting the whole business (which is ineligible) then that should prick an ear or two on a judicial panel.
/face palm
“Way to give away the game Ned.”
Lulz. Lulz. Lulz.
MM that was truly an excellent catch.
The claims are j u nk. Who cares about these “investors”. They are m0 r ons.
Reposted from another thread:
MM (or ned etc) if you happen to read this do be a bro and remind me not to JADE with anon.
Justifying, Arguing, Defending, and Explaining – you just can’t do that sht with an OCPDer, it just makes the whole situation worse.
___________
Also, you guys might want to start considering whether or not anon’s little generalized “diddy’s” like saying someone is a hypocrite, is accusing others of that which they do (or bizarrely telling someone like me that I’m accusing other of stuff that “malcolm does” MD) is simply nothing more than an “emotional argument”. And, in such a case, you cannot respond logically since such responses are invalid from the get go to an emotional argument (not to mention that if you do you might start JADEing). Not only that, you might want to consider that whatever activity he is saying you did with it be being a hypocrite etc. really did happen, as in, factually, to anon. Since this appears to be the case you might want to consider responding in a fashion that assuages his emotions, if you absolutely must respond. Frankly with the OCPDer it doesn’t matter though usually because you’ve fallen short of his standards and he’ll be indignant for quite some time regardless.
Reposted from another thread:
MM (or ned etc) if you happen to read this do be a bro and remind me not to JADE with anon.
Justifying, Arguing, Defending, and Explaining – you just can’t do that sht with an OCPDer, it just makes the whole situation worse.
___________
Also, you guys might want to start considering whether or not anon’s little g e n eralized “diddy’s” like saying someone is a hypocrite, is accusing others of that which they do (or bizarrely telling someone like me that I’m accusing other of stuff that “malcolm does” MD) is simply nothing more than an “emotional argument”. And, in such a case, you cannot respond logically since such responses are invalid from the get go to an emotional argument (not to mention that if you do you might start JADEing). Not only that, you might want to consider that whatever activity he is saying you did with it be being a hypocrite etc. really did happen, as in, factually, to anon. Since this appears to be the case you might want to consider responding in a fashion that assuages his emotions, if you absolutely must respond. Frankly with the OCPDer it doesn’t matter though usually because you’ve fallen short of his standards and he’ll be indignant for quite some time regardless.
the irony of you trying to apply “logic” when you run away from it every chance you get if you were to actually engage me with law and facts is delicious.
yummy
“Justifying, Arguing, Defending, and Explaining – you just can’t do that sht”
You kind of assume that you have done any of that in the first place.
As is more often than not, well, that is not the case. Rather, it is that you fail to be able to engage in such manners that sets you abuzz in your pathet1c attempts to spin fantasies of grand illusions that you hide in.
“You kind of assume that you have done any of that in the first place.”
I didn’t assume anything re re. I simply observed what I had done in the past. And I will simply keep an eye out for it in the future.
^note no jadeing.
There you go again, confusing yourself and living in denial 6.
Wake up son.
Oh noes the OCPDer thinks I’m confusin myself and living in denial! O noes! He bids that I “wake up” lol!
It’s a bit off that you find such humor in your own buff00nery.
Wow, Ned, we agree on this one. The AIA has so weakened patents. And, the anti-patent movement even denies the weakening.
How can you dare say weakening, given President Obama’s ringing endorsement of “We should be making it easier to turn new ideas into new jobs and into new businesses” when he spoke so glowingly about the AIA.
Wait, if the AIA is all about turning all new ideas into new businesses, then all patents are related to new businesses and no patents should issue…
😉
As to the AIA itself, let’s look at same basic indices of quality:
cost: higher with AIA, check
timing: slower with AIA, check
certainty: much more uncertain with AIA, check
What’s not to love about the AIA?
Oh wait, you mean you wanted to actually make patents stronger and more important…?
Never mind (said in the best Emily Litella tones)
Whether the claims were a covered CBM was raised and decided. Here from the institution decision at 10-15. Salesforce.com v. Virtualagility, CBM2013-00024 Institution Decision, Paper 16, PTAB Nov. 19,2013.
link to ptabtrials.uspto.gov
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”
“Although claim 8 does not expressly refer to financial activity, such as those described in the Specification, the claimed method has particular application involving financial activities. The Specification discloses that the method can be used to evaluate: (i) budgeting issues, (ii) the cost of or investment in each particular goal or initiative, (iii) the economic return anticipated for achievement of the particular goal or initiative, (iv) the ratio of return on investment, or (v) the potential profit or loss of a scalable process. Ex. 1001, col. 5, ll. 5-8; col. 14, ll. 21-29. When applied to the activities listed above, and based on the legislative history that a covered business method patent is to cover activities that are financial in nature, the method of claim 8 represents a financial product or service used by an organization, which allegedly improves the financial health of the organization.”
According to Petitioner, the ’413 patent is a covered business method patent, because it claims methods and apparatus used in the practice, administration, or management of a financial product or service, including activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.
…
“Although the claims of the ’413 patent do not recite elements directly related only to a financial services business, the Specification describes application of the claimed method to activities that are financial in nature. … A specification that describes no financial product or service application is different from a specification that does describe such an application. Here, as discussed above, the Specification describes applying the invention as a financial product or service for use by an organization to improve the financial health of the organization.”
So I invent a computer tool, like a database, that “can” be used for financial planning. Such is now a CBM, which requires the tool to be “part of” a financial product or service?
A major league stretch.