AT&T Mobility LLC v. Intellectual Ventures II LLC (PTAB 2016)

The USPTO Patent Trial and Appeal Board (PTAB) issued a decision denying institution of Covered Business Method (CBM) patent review in a proceeding between AT&T Mobility and Intellectual Ventures, based on U.S. Patent No. 5,339,352. This is another useful decision by the PTAB, placing boundaries on patents that are eligible for CBM review requiring more than a mere example in the specification mentioning a financial activity.

AT&T filed a petition to institute a CBM patent review of claims 1, 2, 5, and 9 of the '352 patent. AT&T contended that the '352 patent was a CBM patent because the '352 patent specification and claims "are directed to collecting and recording data (e.g., the identity of a wireless caller) for billing for call completion services from an OSS".

The PTAB however stated that the claims were devoid of any terms that reasonably could be argued as rooted in the financial sector or directed to a financial transaction. Additionally, although statements in the specification that a claimed invention has particular utility in financial applications may weigh in favor of determining that a patent is eligible for CBM patent review, here, the PTAB did not find CBM review available for claims directed to generally useful technologies that also happen to be useful to financial applications.

Ultimately, the PTAB found that the information presented in the petition did not establish that the '352 patent (which discloses systems and methods for providing directory assistance call completion or DACC services to cellular telephone users) qualifies as a CBM patent for purposes of section 18(d)(1) of the Leahy-Smith America Invents Act ("AIA").

 

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