United States: Just What Is "Covered" Under A Covered Business Method Post-Grant Review?

The Transitional Program for Post-Grant Review of Covered Business Methods (CBM) has been underway since September 16, 2012, yet the number of CBMs filed to date has been underwhelming. So far, parties have filed only 25 petitions, of which 10 were filed by Liberty Mutual.

Why the reticence to utilize CBMs? Perhaps the name alone suggests limited scope, and potential petitioners believe that the program is limited only to patents examined in Class 705, the USPTO classification most commonly associated with business methods. The legislative history, the PTO regulations, and the filings to date, however, indicate that CBM jurisdiction may be broader than practitioners realize.

First, the AIA legislation itself does not limit CBM jurisdiction by class. Instead, an eligible CBM patent is defined in section 18 of the AIA (now implemented at 37 C.F.R. § 42.301(a)) as:

. . . 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.

Legislative history suggests that, while Class 705 may have served as the template for defining CBMs, the Senate recognized that some business method patents had been examined in other classes. During the legislative debate, Senator Charles Schumer, one of the principal authors of section 18, urged the USPTO to take an expansive view of a CBM, stating that the "practice, administration and management" of a financial product or service was added "to cover any ancillary activities related to a financial product or service, including . . . marketing, customer interfaces, Web site management and functionality, transmission or management of data, servicing, underwriting, customer communications, and back office operation–e.g., payment processing, stock clearing." 157 Cong. Rec. S1363–65 (daily ed. March 8, 2011).

The USPTO has acknowledged that some patents outside class 705 are also eligible, stating, "It is anticipated that the number of patents in Class 705 that do not qualify as covered business method patents would approximate the number of patents classified in other classes that do qualify. 77 Fed. Reg. 48,733, 48736, 48738-9. Early petitions, however, have all been based on patents examined in class 705. U.S. Patent No. 5,361,201, the subject of the instituted Interthinx CBM (CBM2012-00007), was examined in former classes 364 and 395, now part of class 705. Several other challenged patents are cross-listed as examined in both class 705 and other related subclasses—701, 702, 707, 715, as well as 253, 235, 348, 360, 369.  Farthest afield from class 705, and perhaps one to watch, is the CBM petition CBM2013-00019 filed May 6, 2013, by Apple on U.S. Patent No. 5,191,573. The '573 patent was examined in class 369 (dynamic information storage and retrieval). Apple's petition argues that the '573 patent is directed to financial activities, namely, the electronic sale of digital music or video. It will likely be several months before we learn if this CBM is instituted.

*Jonathan R.K. Stroud is a Law Clerk at Finnegan.

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