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Experian Marketing Solutions, Inc. v. RPost Communications Ltd. - PTAB finds electronic messaging a "technological invention" outside ambit of Covered Business Method review

In Experian Marketing Solutions, Inc. v. RPost Communications Ltd., Case CBM2014-00010 (June 19, 2014), the Patent Trial and Appeal Board denied a request for covered business method patent review even though it found that the patent included claims for “performing data processing or other operations used in the practice, administration, or management of a financial product or service.”  Experian petition ExperianMktgSolutions_v_RPostCommLtd_CBM2014-0010

When determining whether to grant CBM review, the Board considers three elements.  First, if the patent includes the aforementioned financial claims.  Second, at least one of the financial claims must not be directed to a “technological invention.”  Third, the petitioner must provide information that demonstrates that it is more likely than not that at least 1 challenged claimed is unpatentable.

In Experian, the Board applied its broad interpretation “operations used in … a financial product or service” to encompass the challenged claims even though the language of the claims does not mention finance at all, as can be seen by example claim 1 below:

1. A method of transmitting a message from a sender to a recipient through a server acting as a Mail Transport Agent, including the steps at the server of:

transmitting the message to the recipient’s Mail Transport Agent in a protocol dialog selected from a group consisting of the selected one of the SMTP and ESMTP protocols; and

recording at the server some portion of the selected one of the SMTP and ESMTP protocol dialog between the server and the recipient through the server including those portions of the selected one of the SMTP and ESMTP protocol dialog between the server and the recipient in which the receiving Mail Transport Agent accepts or declines delivery of the transmitted message.

The Board justified this finding based on the disclosure in the specification of the patent of an “e-commerce embodiment.”  Since many data processing claims are applicable in a financial setting, this bar is quite low.

However, if the claims include a “novel and unobvious technological feature” or “solve a technical problem,” they are directed to a technological invention and not subject to CBM review.  Accordingly, the patentee identified the technical problem solved by the challenged claims as “providing reliable proof of content and delivery of electronic messages … without requiring use of special e-mail software by the sender or the recipient” by using “an intermediary server.”  Since the petitioner did not “provide persuasive evidence” that the technological feature was known in the art, and instead relied on “conclusory language … that none of the steps … requires any novel and unobvious technological implementation, or solves a technical problem,” the Board found that the petitioner’s burden was not met.  Accordingly, the Board found that the claims were not directed to covered business methods, and denied the petition.

In this case, the Board did not reach the third stage of determining whether the petitioner had a probability of success.  Accordingly, it appears that the Board did not consider the petitioner’s three separate §102 arguments that claim 1 was anticipated by the prior art.  In order to make the claim that the invention was not technological because it was well-known in the art, the petitioner might have been well-served to explicitly invoke the three references instead of relying on broad conclusory statements.

My thanks to Domenico Ippolito of Schwegman, Lundberg & Woessner, P.A., for this post.


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