In Twilio, Inc. v. Telesign Corp., CBM2016-00099, Paper 13 (Feb. 27, 2017), the Board refused to institute a covered business method (CBM) review because the Petitioner failed to show that the patent at issue qualified to be a covered business method patent.
In this case, the patent at issue claimed a process for validating a registrant on a website, giving the registrant access to a "service," and then sending the registration a notification upon the occurrence of a predetermined "notification event." The specification disclosed both financial (e.g., a notification for a bank account withdrawal) and nonfinancial (e.g., news alerts sent to a phone) embodiments.
The Board first focused on the language of AIA § 18(d)(1) and recent Federal Circuit cases. According to § 18(d)(1), 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." (Emphasis in the opinion). Citing recent cases, the Board stated that the claims of a patent must be more than incidental or complementary to the provision of these types of financial products and services for that patent to qualify as a covered business method patent.
Relying on this law and facts of this case, the Board declined to institute the CBM review. The Board found that the claims used generic, context-neutral terms, without any express or implicit connection to financial products or services. Moreover, the Board found that while the specification described various embodiments pertaining to finance-related services and events, it was not limited to these events as it also disclosed other embodiments outside the financial context. In considering the generic claim language and broad disclosure in the specification, the Board declined to adopt Petitioner's positions and determined that the patent at issue did not qualify as a covered business method patent.
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