Secure Axcess v. PNC (Fed. Cir. 2017) (en banc petition)
In an important February 2017 decision, the Federal Circuit limited the scope of Covered Business Method Review (CBM) — requiring that the claimed invention be focused on financial transactions. In my original review, I wrote:
This case represents an important decision limiting the scope of Covered Business Method reviews. However, its short consideration of agency-deference leaves it open to further challenge.
Crouch, For CBM Review: _Claims_ Must be Directed to Financial Service, Patently-O (Feb. 2017). The case focuses on U.S. Patent No. 7,631,191.
U.S. Bank has now challenged the decision with an en banc request – raising the following question:
Whether a method patent whose claims are worded to avoid reference to financial activity, but whose specification makes plain that it is a patent “used in the practice, administration, or management of a financial product or service,” qualifies for post-grant review as a covered business method (CBM) patent under Section 18 of the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 18, 125 Stat. 284, 329-31 (2011).
The petition directly challenges the Federal Circuit’s anti-CBM Jurisprudence, writing:
This is not the first questionable decision by a panel of this Court concerning to scope of the CBM program. In Versata Dev. Grp. v. SAP Amer., Inc., 793 F.3d 1306 (Fed. Cir. 2015), another divided panel disagreed over whether this Court even has jurisdiction to review the Board’s CBM determinations. And a petition for rehearing en banc, with robust amici support, is currently pending in Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), which asks this Court to address the level of deference owed to Board determinations that a patent qualifies for CBM status and to reconsider the holding in Versata.
Two additional amicus briefs have also been filed supporting the petition. EFF argues (1) that the panel decision contorts the statutory text; and (2) ignored the consideration of deference to an agency’s interpretation of its governing statute. Clearing House Payments Company and Financial Services Roundtable joined together and argue (1) CBM institution rates are alredy down; and (2) the case allows artful claim drafting to effectively avoid CBM. (The artful drafting issue is largely moot since CBM will sunset in September 2020).
The key here is interpretation of Section 18(d)(1) of the America Invents Act that limits the scope of Covered Business Method Reviews to patents “that claim 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.” Does the statute require that the claim include the financial product or service use? Note here that the argument is not based upon a statute codified in the United States Code since it is only a temporary provision that will sunset after three more years.