Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for databases were directed at an abstract idea and recite ineligible subject matter. Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38, (“Dec”) (PTAB May 31, 2016); Enfish, LLC v. Microsoft Corp., No. 2015-1244, Slip Op. at 11 (Fed. Cir. May 12, 2016). The Board also determined that some of these claims were also unpatentable under Section 103. Focusing on the Board’s decision regarding Section 101, the Board held: (1) the ’201 patent was a covered business method patent, (2) Section 101 is a proper ground for review for covered business methods patents, and (3) the claims were directed at an abstract idea.
The ’201 patent generally relates to a data security system for databases. Independent claim 1 is directed to a method of processing data and independent claim 8 is directed to an apparatus for processing data that is to be protected. All other challenged claims depend from either claim 1 or 8.
The Board determined that the ’201 patent is a covered business method patent because it contains at least one claim encompassing activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity and that the patent satisfied the two prong test under 37 C.F.R. § 42.301(b). Dec. 19. First, the Board held that the claims of the ’201 patent do not recite a technological feature that is novel or unobvious over the prior art because “[d]ata processing computers having databases, which store the data, and controlling access thereto, were known at the time of filing the ’201 patent.” Dec. 23. Second, the Board held that the claims of the ’201 patent do not solve a technical problem using a technical solution, noting that none of the purported technical problems or solutions identified by the Patent Owner are described in the ’201 patent. Dec. 24-25.
Section 101 Availability in CBM Proceedings
The Patent Owner unsuccessfully argued that Section 101 is not available to challenge patentability in a CBM review, because it is not included in 35 U.S.C. § 282(b)(2) or (3). The Board was not persuaded, pointing to USPTO Rules published in the Federal Register and a recent Federal Circuit decision. Specifically, the Board noted that the Rules discuss that the grounds for seeking post-grant review include 35 U.S.C. § 282(b)(2) or (3), grounds that could be raised under sections 102 and 103, and grounds that could be raised under sections 101 and 112 (except for best mode). Dec. 27; 77 Fed. Reg. 48,680, 48,682 (Aug. 14, 2012).
The Board also cited Versata Dev. Grp. v. SAP America, Inc., 793 F.3d 1306, 1329-30 (Fed. Cir. 2015), a Federal Circuit decision that held that the PTAB had authority to decide Section 101 issues in a CBM review. We’ve previously discussed Versata, in detail, on this blog, see further discussion here.
Section 101 Applied
Acknowledging Enfish, the Board stated, “We are also mindful of recent admonishments by the Federal Circuit that the first step of our analysis should not be pro forma when the claims are directed to improvements in software.” See Enfish, Slip Op. at 11 (“We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs”). Dec. 30. Nonetheless, the Board determined that the claims of the ’201 patent are abstract because the claims are not directed to a specific improvement to the way computers operate and the databases and access rules recited in claims perform their normal functions and achieve expected results. Dec. 30.
Under the second Alice step, the Board was not persuaded that the claims of the ’201 patent contained an inventive concept that could transform the nature of the claim, because “[w]ell-understood, routine, conventional activity does not add significantly more to the abstract idea.” Dec. 32.
Lastly, the Board was not persuaded by the Patent Owner’s evidence that the ’201 patent provides a novel and nonobvious solution to “a problem deeply rooted in computer technology” because the Patent Owner failed to establish the relationship between the commercial application purportedly solving the problem and the claims of the ’201 patent. Dec. 34.
Ultimately, the Board held that claim 1–8 and 18–53 are unpatentable under 35 U.S.C. § 101 as being directed to non-statutory subject matter.