CAFC tackles "covered business method" patents in SecureAxcess

In SecureAxcess v. PNC, Judge Plager begins the majority decision:



This is a patent case—the issue turns on what is a
covered business method patent. Appellant Secure Axcess,
LLC (“Secure Axcess”) challenges a Final Written
Decision of the Patent Trial and Appeal Board (“Board” or
“PTAB”). As part of that decision, the Board reaffirmed
its determination that the patent at issue, U.S. Patent
No. 7,631,191 (“’191 patent”), owned by Secure Axcess,
was a covered business method (“CBM”) patent under
§ 18 of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, 125 Stat. 284 (2011). The Board
further held that claims 1–32, all the claims in the patent,
were unpatentable under that statute on the grounds that
they would have been obvious under the cited prior art.



Of note as to covered business patents and PTAB, the CAFC noted:


On appeal, Secure Axcess challenges the Board’s determination
to decide the case as a covered business
method patent, as well as the Board’s obviousness determination.
We agree with Secure Axcess on the first point
and therefore do not reach the second. Recently, in Unwired
Planet, LLC v. Google Inc., 841 F.3d 1376, 1379–82
(Fed. Cir. 2016), we concluded that the Board-adopted
characterization of CBM scope in that case was contrary
to the statute. We draw the same conclusion here, and
further conclude that the patent at issue is outside the
definition of a CBM patent that Congress provided by
statute.



In dissent, Judge Lourie stated:


I respectfully dissent from the majority’s conclusion
that the claims of the ’191 patent are not directed to a
covered business method (“CBM”) and hence are not
subject to review under AIA § 18. See Leahy-Smith
America Invents Act (“AIA”), Pub. L. No. 112–29, § 18,
125 Stat. 284, 329–31 (2011).1

The statute defines a CBM patent 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.” Id. at § 18(d)(1).
The claims of the ’191 patent are surely claims to “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.”
Id.
(...)
I do recognize that the Board’s overly broad language,
i.e., “incidental to a financial activity,” has now been
cabined by our recently issued decision in Unwired Planet,
LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016).
That curtailment should not cause this panel to topple
over an otherwise sound decision by the Board in this case
that the ’191 patent is directed to financial management.



The invention of the [Edison] lightbulb is mentioned:


Suffice it to say that the
relation of this invention to the financial world is one of
substantial identity compared with an incidentally-used
invention like a lightbulb or ditch-digging. Cf. Unwired
Planet, 841 F.3d at 1382.




[ Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100 ]