Addressing subject matter eligibility of four covered business method patents, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) found that four patents were invalid in light of Alice Corp., finding the claims failed to “do significantly more than simply describe the abstract method.” Fidelity National Information Services, Inc. v. CheckFree Corp., Case Nos. CBM2013-00030, -00031 (PTAB, Dec. 22, 2014) (McNamara, APJ); Metavante Corp. v. Checkfree Corp., Case No. CBM2013-00032 (PTAB, Dec. 22, 2014) (McNamara, APJ); and Fidelity National Information Services, Inc. v. CashEdge Inc., Case No. CBM2013-00028 (PTAB, Dec. 22, 2014) (McNamara, APJ).
Patent owner CashEdge and CheckFree, subsidiaries of Fiserv, brought suit against Fidelity for infringing its patents related to banking services. Fidelity, in response, filed petitions for covered business method (CBM) review.
In Case Number CBM2013-00030, the PTAB found that the challenged patent, which “describes a system and method in which a payment service provider uses a computer to select a form for crediting a payee,” was patent-ineligible. The patent owner argued the patent was patent eligible because the claims required operations to be performed by the “claimed electronic bill (EBP) process and system.” However, the PTAB found such argument unconvincing because the patent owner improperly read “into the claims limitations from specification and extrinsic sources.”
In Case Number CBM2013-0031, the PTAB also found that the challenged patent, which relates “to electronic commerce and an electronic bill payment system with merchant identification,” was patent-ineligible. The patent owner contended that the claims of the patent involved a specially programmed computer that was essential to the claimed process. The PTAB found that the claims are not directed to patent-eligible subject matter, because they are drawn to the abstract concept of “comparing a received account number to a payee’s format, applying a rule, and modifying the account number” and found that the proposed claim interpretation improperly included limitations from the specification.
In Case Number CBM2013-0032, the PTAB found that the challenged patent, which describes a “system and method of processing bill payment information,” was directed to ineligible subject matter. The patent owner argued that central clearinghouse station described in the claims “is a specially programmed computer system that enables electronic bill presentment and payment (EBPP) services.” The PTAB found that the claims of the patent are not directed to patent-eligible subject matter, because they are directed to a “clearinghouse that acts as an intermediary between a payer and the payee by notifying the payer about payee bill presentment information.” Furthermore, the PTAB found that the claims do not recite an EBPP and cite “only a general purpose computer executing instructions to carry out the concept of an intermediary retrieving requested information from a database.”
In Case No. CBM2013-00028, the PTAB found that the challenged patent, which describes a “transfer of funds between accounts at different financial institutions,” was directed to ineligible subject matter. The patent owner contended that “financial management system” in the claims is a “specially programmed computerized system that conducts financial transactions in response to directions from the user.” The patent owner further contended that electronic fund transfer transaction must conform to the specification for the particular payment network that was used. However, PTAB disagreed with the patent owner’s arguments, stating that none of the limitations in claim 1 requires any particular computer.
