United States: No Exception For Energy Management Patent—CBM Review Instituted

Opower Inc. v. Cleantech Business Solutions

In its decision to institute a covered business method (CBM) patent review of an energy management patent, the U.S. Patent and Trademark Office's (PTO) Patent Trial and Appeal Board (PTAB or Board) agreed with the petitioner that the patent's claims are broad enough to meet the financial prong of the eligibility test for CBM review. Opower Inc. v. Cleantech Business Solutions, Case No. CBM2014-00155 (PTAB, Jan. 12, 2015) (Easthom, APJ).

Petitioner Opower filed for CBM review of a patent owned by Cleantech Business Solutions pursuant to Section 18(d)(1) of the AIA (America Invents Act).  The patent related to a method of energy management, specifically a method for generating an energy resource by monitoring the energy consumption of an individual, providing feedback to that individual about their energy consumption and reducing energy consumption based on that feedback.  This reduction in energy consumption is disclosed to be a form of generating an energy resource.

Section 18(d)(1) of the AIA provides a program for persons sued or charged with infringement of a "covered business method patent," which means "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."  Thus, to be eligible for CBM review a three-prong test must be satisfied.  First, there must be a suit or charge of infringement.  Second, at least one claim must be tied to a financial product or service.  Finally, the patent cannot cover technological inventions.

The Board found that the petitioner satisfied the "charged with infringement" prong in view of infringement claim charts and other correspondence provided by the patent owner.  For the financial prong, the Board considered the legislative history of the AIA, which explained that the definition of a CBM patent encompassed patents "claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity."  Concluding that the claims of the Cleantech patent are directed to an "energy resource" that may be exchanged by energy consumers for items of value, including currency, credit, or other goods and services, the Board agreed with the petitioner that this was broad enough to tie the claims to a financial product or service.

As for the third and final prong (which is more of an exception to CBM review) the Board considered the requirements of 37 C.F.R. § 42.301(b) and the guidance provided in the PTO's Patent Trial Practice Guide to determine whether a patent claims a technological invention.  The Board considered "whether [1] the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and [2] solves a technical problem using a technical solution."  The petitioner submitted that the core of the claimed invention is a communications tool as opposed to hardware and that any hardware employed was currently existing and consisted of known technologies.  The Board agreed and determined that the claims do not satisfy the first requirement of 37 C.F.R. § 42.301(b).  "The patent specification describes known . . . techniques mixed with functional descriptions that involve known behavioral science applications."  The Board also agreed with the petitioner that the second requirement of the technical invention exception is not met because the claims involve a non-technical solution (information transfer) to a non-technical problem (energy management).

Thus, the Board instituted a CBM review of the patent.

No Exception For Energy Management Patent—CBM Review Instituted

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