from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. CBM2014-00100.
J. Wright, Bruster PLLC, Southlake, TX, argued for appellant.
Also represented by ANTHONY Kyle Bruster; Eric M. Albritton,
Albritton Law Firm, Longview, TX; Andre J. Bahou, Secure
Axcess, LLC, Piano, TX; GREGORY J. GONSALVES, Falls Church,
GREGORY H. Lantier, Wilmer Cutler Pickering Hale and Dorr
LLP, Washington, DC, argued for all appellees. Appellee PNC
Bank National Association also represented by Brittany
Blueitt Amadi; Wei Wang, Palo Alto, CA.
Terence P. Ross, Katten Muchin Rosenman LLP, Washington, DC,
for appellees U.S. Bank National Association, U.S. Bancorp.
ANTHONY H. Son, Barnes & Thornburg LLP, Washington, DC,
for appellees Bank of the West, Ally Financial, Inc., Cadence
Bank, N.A. Appellee Cadence Bank, N.A. also represented by
TONYA GRAY, Andrews Kurth LLP, Dallas, TX; Sean WOODEN,
Wesley Parker, Parker Ibrahim & Berg LLC, Somerset, NJ,
for appellee Santander Bank, N.A. Also represented by DIANE
Stewart Jackson, Kutak Rock LLP, Omaha, NE, for appellee
Raymond James & Associates, Inc.
C. Cohen, Brinks Gilson & Lione, Chicago, IL, for
appellee Trustmark National Bank.
A. Leach, Kirkland & Ellis LLP, Chicago, IL, for appellee
Wade Vander Tuig, Senniger Powers LLP, St. Louis, MO, for
appellee Commerce Bank.
LOURIE, Plager, and TARANTO, Circuit Judges.
a patent case-the issue turns on what is a covered business
method patent. Appellant Secure Ax-cess, 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.
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 Un-wired 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.
Axcess owns the '191 patent, which issued from a
continuation application of U.S. Patent Application No.
09/656, 074. That parent application issued as U.S. Patent
No. 7, 203, 838 ("'838 patent"). The '191
and '838 patents have substantially the same written
'191 patent is entitled "System and Method for
Authenticating a Web Page." According to the patent, the
"invention relates generally to computer security, and
more particularly, to systems and methods for authenticating
a web page." '191 patent at 1:16-18. The claims
generally support this broad understanding. Claims 1 and 17
transforming, at an authentication host computer, received
data by inserting an authenticity key to create formatted
returning, from the authentication host computer, the
formatted data to enable the authenticity key to be retrieved
from the formatted data and to locate a preferences file,
wherein an authenticity stamp is retrieved from the
Id. at 12:9-18; '191 Certificate of Correction.
authentication system comprising:
an authentication processor configured to insert an
authenticity key into formatted data to enable authentication
of the authenticity key to verify a source of the formatted
data and to retrieve an authenticity stamp from a preferences
'191 patent at 12:62-67; '191 Certificate of
the written description of the '191 patent generally
discusses computer security with a focus on authenticating a
web page. However, on occasion, the written description
contains references that might be considered to concern (at
least facially) activities that are financial in nature, a
consideration in determining CBM patent status.
example, in discussing the invention, the written description
explains that an Internet user might be misled to the wrong
website without proper authentication. To illustrate the
problem, the patent uses "'www.bigbank.com' vs.
'www.b[l]gbank.com' (with an T instead of an
'i')." '191 patent at 1:31-33, see also
id. at 8:22-24 (again, by way of example, using
'"bigbank.com"'). Also, despite typically
referring to Internet "users, " the patent
occasionally refers to "customers, " id.
at 1:28-29, and "consumers, " id. at 1:44.
The written description further explains that "[t]he web
server can be any site, for example a commercial web site,
such as a merchant site, a government site, an educational
site, etc." Id. at 3:34-37.
contrast to such brief references, the last several
paragraphs of the written description provide several more
detailed and possibly relevant references:
Moreover, while the exemplary embodiment will be described as
an authentication system, the system contemplates the use,
sale or distribution of any goods, services or information
over any network having similar functionality described
'191 patent at 11:17-21.
The customer and merchant may represent individual people,
entities, or business. The bank may represent other types of
card issuing institutions, such as credit card companies,
card sponsoring companies, or third party issuers under
contract with financial institutions. It is further noted
that other participants may be involved in some phases of the
transaction, such as an intermediary settlement institution,
but these participants are not shown.
Id. at 11:22-29. (There is no previous mention of
"the bank" in the patent-there is only the
"www.bigbank.com" reference. Similarly, the only
previous mention of a "merchant" is the
"merchant site" at 3:36, and the only previous
mention of a "customer" is the
"customers" at 1:28-29.)
Each participant is equipped with a computing system to
facilitate online commerce transactions. The customer has a
computing unit in the form of a personal computer, although
other types of computing units may be used including laptops,
notebooks, hand held computers, set-top boxes, and the like.
The merchant has a computing unit implemented in the form of
a computer-server, although other implementations are
possible. The bank has a computing center shown as a main
frame computer. However, the bank computing center may be
implemented in other forms, such as a mini-computer, a PC
server, a network set of computers, and the like.
Id. at 11:30-40. (There is no previous mention of
"commerce" or a "commerce transaction" in
For instance, the customer computer may employ a modem to
occasionally connect to the internet, whereas the bank
computing center might maintain a ...