Secure Axcess, LLC v. Pnc Bank National Association , 848 F.3d 1370 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
SECURE AXCESS, LLC,
Appellant
v
PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
OF THE WEST, SANTANDER BANK, N.A., ALLY
FINANCIAL, INC., RAYMOND JAMES &
ASSOCIATES, INC., TRUSTMARK NATIONAL
BANK, NATIONWIDE BANK, CADENCE BANK,
N.A., COMMERCE BANK,
Appellees
______________________
2016-1353
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
______________________
Decided: February 21, 2017
______________________
ANDREW 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,
Plano, TX; GREGORY J. GONSALVES, Falls Church, VA.
2 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
GREGORY H. LANTIER, Wilmer Cutler Pickering Hale
and Dorr LLP, Washington, DC, argued for all appellees.
Appellee PNC Bank National Association also represent-
ed by BRITTANY BLUEITT AMADI; WEI WANG, Palo Alto, CA.
TERENCE P. ROSS, Katten Muchin Rosenman LLP,
Washington, DC, for appellees U.S. Bank National Asso-
ciation, U.S. Bancorp.
ANTHONY H. SON, Barnes & Thornburg LLP, Wash-
ington, DC, for appellees Bank of the West, Ally Finan-
cial, Inc., Cadence Bank, N.A. Appellee Cadence Bank,
N.A. also represented by TONYA GRAY, Andrews Kurth
LLP, Dallas, TX; SEAN WOODEN, Washington, DC.
SCOTT WESLEY PARKER, Parker Ibrahim & Berg LLC,
Somerset, NJ, for appellee Santander Bank, N.A. Also
represented by DIANE RAGOSA.
JASON STEWART JACKSON, Kutak Rock LLP, Omaha,
NE, for appellee Raymond James & Associates, Inc.
ERIC C. COHEN, Brinks Gilson & Lione, Chicago, IL,
for appellee Trustmark National Bank.
GARRET A. LEACH, Kirkland & Ellis LLP, Chicago, IL,
for appellee Nationwide Bank.
MARC WADE VANDER TUIG, Senniger Powers LLP, St.
Louis, MO, for appellee Commerce Bank.
______________________
Before LOURIE, PLAGER, and TARANTO, Circuit Judges.
Opinion for the court filed by Circuit Judge PLAGER.
Dissenting opinion filed by Circuit Judge LOURIE.
PLAGER, Circuit Judge.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 3
This is 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.
On appeal, Secure Axcess challenges the Board’s de-
termination to decide the case as a covered business
method patent, as well as the Board’s obviousness deter-
mination. 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.
BACKGROUND
1. The Patent-at-Issue
Secure 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 descriptions.
The ’191 patent is entitled “System and Method for
Authenticating a Web Page.” According to the patent, the
“invention relates generally to computer security, and
4 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
more particularly, to systems and methods for authenti-
cating a web page.” ’191 patent at 1:16–18. The claims
generally support this broad understanding. Claims 1
and 17 are illustrative.
1. A method comprising:
transforming, at an authentication host computer,
received data by inserting an authenticity key to
create formatted data; and
returning, from the authentication host computer,
the formatted data to enable the authenticity key
to be retrieved from the formatted data and to lo-
cate a preferences file,
wherein an authenticity stamp is retrieved from
the preferences file.
Id. at 12:9–18; ’191 Certificate of Correction.
17. An 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 file.
’191 patent at 12:62–67; ’191 Certificate of Correction.
Similarly, 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.
For example, in discussing the invention, the written
description explains that an Internet user might be
misled to the wrong website without proper authentica-
tion. To illustrate the problem, the patent uses
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 5
“‘www.bigbank.com’ vs. ‘www.b[l]gbank.com’ (with an ‘l’
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.
In 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 sys-
tem contemplates the use, sale or distribution of
any goods, services or information over any net-
work having similar functionality described here-
in.
’191 patent at 11:17–21.
The customer and merchant may represent indi-
vidual 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 previ-
ous 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.)
6 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
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 com-
puting units may be used including laptops, note-
books, hand held computers, set-top boxes, and
the like. The merchant has a computing unit im-
plemented in the form of a computer-server, alt-
hough 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 “com-
merce” or a “commerce transaction” in the patent.)
For instance, the customer computer may employ
a modem to occasionally connect to the internet,
whereas the bank computing center might main-
tain a permanent connection to the internet.
Id. at 11:46–49.
Any merchant computer and bank computer are
interconnected via a second network, referred to
as a payment network. The payment network rep-
resents existing proprietary networks that pres-
ently accommodate transactions for credit cards,
debit cards, and other types of financial/banking
cards. The payment network is a closed network
that is assumed to be secure from eavesdroppers.
Examples of the payment network include the
American Express®, VisaNet® and the Veri-
phone® network. In an exemplary embodiment,
the electronic commerce system is implemented at
the customer and issuing bank. In an exemplary
implementation, the electronic commerce system
is implemented as computer software modules
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 7
loaded onto the customer computer and the bank-
ing computing center. The merchant computer
does not require any additional software to partic-
ipate in the online commerce transactions sup-
ported by the online commerce system.
Id. at 11:52–67.
2. Procedural History
At the initial decision-to-institute stage, the Board de-
termined that the ’191 patent was a CBM patent. After
consolidating three separate CBM review proceedings
with regard to the ’191 patent, in each of which the patent
was treated as a CBM patent, the Board issued the Final
Written Decision at issue on appeal. See PNC Bank, N.A.
v. Secure Axcess, LLC, CBM2014-00100; Bank of the West
v. Secure Axcess, LLC, CBM2015-00009; T. Rowe Price
Inv. Servs., Inc. v. Secure Axcess, LLC, CBM2015-00027. 1
In its Final Written Decision, the Board maintained
(in keeping with its institution decisions) that the ’191
patent was a CBM patent. On the merits, the Board held
that claims 1–32 of the ’191 patent were unpatentable
because they would have been obvious under 35 U.S.C.
§ 103 in light of the cited prior art.
In applying the statutory test for determining wheth-
er a patent is a CBM patent, the Board quoted the stat-
ute, which is found in AIA § 18(d)(1) and which is
repeated verbatim in the rules of the Patent and Trade-
mark Office (“PTO”) at 37 C.F.R. § 42.301(a). Invoking
the PTO’s rulemaking discussion and this court’s opinion
1 In a separate proceeding, the Board declined to
institute a fourth CBM review of the ’191 patent. PNC
Bank, N.A. v. Secure Axcess, LLC, CBM2015-00039, 2015
WL 4467374 (PTAB July 10, 2015).
8 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
in Versata, the Board rejected the patent owner’s conten-
tion that the ’191 patent was not a CBM patent.
The Board first rejected the patent owner’s contention
that the statutory phrase “financial product or service”
included “only financial products such as credit, loans,
real estate transactions, check cashing and processing,
financial services and instruments, and securities and
investment products.” J.A. 9 (citation omitted).
The Board acknowledged the scope of the patent:
“[t]he ’191 patent relates to authenticating a web page
and claims a particular manner of doing so.” J.A. 10
(citing the ’191 patent at 1:16–18, 12:9–18). However, the
Board reasoned that because “[t]he ’191 patent is directed
to solving problems related to providing a web site to
customers of financial institutions . . . the ’191 patent
covers the ancillary activity related to a financial product
or service of Web site management and functionality and
so, according to the legislative history of the AIA, the
method and apparatus of the ’191 patent perform opera-
tions used in the administration of a financial product or
service.” J.A. 10–11.
Despite recognizing our guidance in Versata Develop-
ment Group, Inc. v. SAP America, Inc., 793 F.3d 1306(Fed. Cir. 2015), questioning the use of various legislators’
competing statements in the legislative history of the
AIA, the Board “note[d] nonetheless that at least one
legislator viewed ‘customer interfaces’ and ‘Web site
management and functionality,’ which are at issue here,
as ancillary activities intended to be encompassed by the
language ‘practice, administration and management’ of a
financial product or service.” J.A. 11 (quoting 157 Cong.
Rec. S1364–65 (daily ed. Mar. 8, 2011) (statement of Sen.
Schumer)).
Further, while recognizing that the factor was not de-
terminative, the Board observed that the patent owner’s
allegations of infringement by “approximately fifty finan-
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 9
cial institutions is a factor weighing toward the conclusion
that the ’191 patent claims a method or apparatus that at
least is incidental to a financial activity, even if other
types of companies also practice the claimed invention.”
J.A. 11.
The Board stated that the ’191 patent disclosed “a
need by financial institutions to ensure customers are
confident that the financial institution’s web page is
authentic.” J.A. 10 (citing the ’191 patent at 1:28–33).
The Board also stated that the patent disclosed “alterna-
tive embodiments of the invention as being used by finan-
cial institutions.” Id. (citing ’191 patent at 8:21–23,
11:23–40, 11:52–67).
The Board then analyzed whether the ’191 patent was
for a “technological invention”—the exception to the CBM
definition pursuant to AIA § 18(d)(1) and 37 C.F.R.
§ 42.301(b)—and determined that the ’191 patent was not
for a technological invention. The Board concluded its
analysis of the issues, including the question of obvious-
ness, and determined that all 32 claims of the ’191 patent
would have been obvious over the cited prior art and were
therefore unpatentable.
Secure Axcess timely appeals the Board’s Final Writ-
ten Decision; we have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
As we have noted, appellant raises two issues on
appeal. First, “whether United States Patent No.
7,631,191 is a ‘covered business method’ patent subject to
review under Section 18 of the AIA.” Appellant’s Br. at 6.
Appellant states that “[t]his is a patent-specific question
that involves an issue of first impression that has broad
implications for other CBM cases: Should a patent’s
eligibility for CBM review be determined on its claim
language in light of the specification as understood at the
10 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
earliest effective filing date, or should the PTAB also
consider post-grant evidence such as a patent owner’s
litigation history?” Id.The second issue raised by appellant relates to partic-
ular claim constructions made by the Board, which appel-
lant alleges are unreasonable even under the ‘broadest
reasonable interpretation’ standard the Board applied.
According to appellant, the Board’s claim constructions
fatally tainted the obviousness analysis.
1. Jurisdiction and Standard of Review
Neither party challenges this court’s authority to
review on appeal a Final Written Decision of the Board,
including, when challenged, whether the Board correctly
determined that a particular patent was subject to Board
review under the special provisions of AIA § 18 dealing
with CBM patents. See 35 U.S.C. §§ 329, 141–44; Versa-
ta, 793 F.3d at 1314–23.
We review the Board’s determination regarding
whether the ’191 patent is within the scope of the CBM
statute under the Administrative Procedure Act (“APA”),
specifically 5 U.S.C. § 706(2): “The reviewing court shall
. . . hold unlawful and set aside agency action, findings,
and conclusions found to be—(A) arbitrary, capricious, an
abuse of discretion, or otherwise not in accordance with
law . . . [or] (C) in excess of statutory jurisdiction, authori-
ty, or limitations, or short of statutory right . . . .” 2
Both appellant and appellees are of the view that the
applicable standard of review in this case is whether the
Board’s decision was arbitrary and capricious. That is
incorrect. The issue here is not whether a particular
2 See Dickinson v. Zurko, 527 U.S. 150 (1999) (the
United States Patent and Trademark Office is an admin-
istrative agency and as such is subject to the APA).
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 11
patent falls within the properly-understood scope of the
statutory definition of a CBM patent; rather, the issue
here is whether the Board properly understood the scope
of the statutory definition. That is a question of law. As
we shall explain, we conclude that, as a matter of law, the
statutory definition of a CBM patent precludes the
Board’s determination. Thus the Board acted “not in
accordance with law,” and “in excess of statutory jurisdic-
tion, authority, [and] short of statutory right.” 3
2. The Statute and the Board’s Understanding
As the Supreme Court forcefully reminds, “in inter-
preting a statute . . . courts must presume that a legisla-
ture says in a statute what it means and means what it
says.” Conn. Nat’l Bank v. Germain, 503 U.S. 249, 253–
54 (1992). In the statute before us, Congress did not leave
the decision of what qualifies as a CBM patent to chance.
The statute first states that “The Director may institute a
3 SightSound Technologies, LLC v. Apple Inc., 809
F.3d 1307 (Fed. Cir. 2015), is miscited for the arbitrary or
capricious standard. In SightSound, this court observed
that there was no statutory-interpretation issue to be
decided, because “the only legal questions regarding
application of AIA § 18 were decided” by an earlier prece-
dent of this court. Id. at 1315. All that was presented for
decision was whether the particular patents came within
the legal standards that themselves were no longer sub-
ject to dispute in the case. On that patent-specific law-
application question, the court asked whether the Board’s
determination was arbitrary or capricious, and supported
by substantial evidence. Id. at 1315–16. A question of
legal interpretation, the statutory interpretation question
that is dispositive here, is not reviewed under the ‘arbi-
trary or capricious’ or ‘substantial evidence’ portions of 5
U.S.C. § 706.
12 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
[CBM proceeding under § 18] only for a patent that is a
covered business method patent.” AIA § 18(a)(1)(E).
Congress then defined a “covered business method pa-
tent” 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 . . . .
Id. § 18(d)(1). 4
a. A Patent That Claims . . .
The statutory definition by its terms makes what a
patent “claims” determinative of the threshold require-
ment for coming within the defined class. The first defini-
tional question presented by this statutory provision is
whether the requirement that the patent claim ‘some-
thing’ applies only to the first clause—a method or corre-
sponding apparatus for performing data processing or
other operations—or whether it applies to that clause and
the second clause—used in the practice, etc., of a financial
product or service. In order for a patent to qualify as a
CBM patent, is it enough if the patent be one “that claims
a method or corresponding apparatus,” as long as that
method or apparatus is in fact “used in the practice . . . of
a financial product or service,” even if that use is not
recited, whether explicitly or implicitly, by the patent’s
claims? Or must the patent contain at least one claim to
the effect that the method or apparatus is “used in the
practice . . . of a financial product or service”?
4 There is an exception, not relevant here, for
“technological inventions.” For a discussion of the mean-
ing of that term, at least as best it can be understood, see
Versata, 793 F.3d at 1323, 1326–27.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 13
To sharpen the question in a way relevant to this
case, we must first ask, what is meant by the phrase “a
patent that claims” something? Claims how, and in what
terms? Must that ‘something’ be found in that part of the
patent document that is toward the end of the document
and preceded typically by “I (or we) claim” or “the inven-
tion claimed is,” or the equivalent? If we look to the claim
as such, what role do we assign to the written description?
Though this particular statutory phrasing—“patent
that claims”—is not common, 5 when viewed in context
this language would seem to have a clear meaning,
whether in the usual noun form of “claim,” or, as in this
case, the verb form “claims.” It invokes one of the most
familiar, settled concepts in patent law, derived directly
from § 112(b). It is referring to the claims of the patent,
which, as properly construed, define “the scope of the
patentee’s rights.” See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 835 (2015) (quoting Markman v.
Westview Instruments, Inc., 517 U.S. 370, 372 (1996)).
And, as the Supreme Court instructs in such circum-
stances, it is therefore incorporating the established
meaning of “claim.” See Evans v. United States, 504 U.S.
255, 259–60 (1992) (quoting Morissette v. United States,
342 U.S. 246, 263 (1952)). 6
5 It appears on only two other occasions and is no-
where defined. See 35 U.S.C. § 291 (2016); 42 U.S.C.
§ 262; see also 35 U.S.C. § 156 (“patent which claims”).
6 “[W]here Congress borrows terms of art in which
are accumulated the legal tradition and meaning of
centuries of practice, it presumably knows and adopts the
cluster of ideas that were attached to each borrowed word
in the body of learning from which it was taken and the
meaning its use will convey to the judicial mind unless
otherwise instructed. In such case, absence of contrary
14 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
The matter does not end there, however. A claim in a
patent does not live in isolation from the rest of the pa-
tent, as if it can be cut out of the document and read with
Webster’s Dictionary at hand. Established patent doc-
trine requires that claims must be properly construed—
that is, understood in light of the patent’s written descrip-
tion; that is a fundamental thesis in claim construction.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir.
2005) (en banc). Indeed, patent drafters can be their own
lexicographers, using ordinary words in unordinary ways
if the drafter, in the written description, clearly so indi-
cates. It follows that under § 18(d)(1) the written descrip-
tion bears importantly on the proper construction of the
claims. But the written description alone cannot substi-
tute for what may be missing in the patent “claims,” and
therefore does not in isolation determine CBM status.
Returning to our earlier question, reading the statute
as applying only to the first phrase in the statutory defi-
nition would give the CBM program a virtually uncon-
strained reach. Under that reading, a patent would
qualify if it claimed a method or corresponding apparatus
for performing any operations that happen to be used in
“the practice, administration, or management of a finan-
cial product or service.” The “practice, administration, or
management of a financial product or service” phrase, as
earlier noted, is not limited to the financial services
industry, but reaches a wide range of sales and similar
transactional activity. In fact, nearly everything that is
invented can and likely will be used in someone’s sale of a
good or service. If that use does not have to be part of the
claim as properly construed, essentially every patent
could be the subject of a CBM petition—a petition filed by
direction may be taken as satisfaction with widely accept-
ed definitions, not as a departure from them.”
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 15
any person sued for or charged with infringement at any
time during the life of the CBM program.
Congress intended that the CBM program was to be
more limited in scope than that. Its restriction to “cov-
ered business method” patents, and its temporary nature
(eight years), make clear that it is a program established
for a defined set of patents, not for virtually every patent.
Moreover, in the AIA, the same statute that established
the CBM program, Congress carefully set out limits on
the inter partes review (“IPR”) program for review of
patents after issuance. Persons sued for infringement
had no more than one year to petition for IPR, and were
restricted to presenting only certain §§ 102 and 103
grounds of unpatentability, thus excluding grounds based
on, for example, § 101 or § 112. It is not sensible to read
AIA § 18(d)(1) as obliterating these important limits for
review of essentially any patent, subject only to the “tech-
nological invention” exception. See note 3, supra.
It follows that bifurcating the statute so that the
phrase “a patent that claims” should apply only to the
first phrase, and not to the entire definition Congress
provided, would be radically out of keeping with the
statute and congressional intent, considered in the con-
text of other provisions in the statute.
Finally then, how are we to understand the phrase “a
patent that claims”? It is the claims, in the traditional
patent law sense, properly understood in light of the
written description, that identifies a CBM patent. And
for the reasons set out, what a qualifying patent must
“claim” requires compliance with the clauses of the statu-
tory definition.
We turn then to the second clause.
b. … a financial product or service
The patent owner argued to the Board that the ’191
patent was ineligible for CBM review because its inven-
16 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
tion was not directed to a financial product or service and
can be used by institutions other than financial institu-
tions. Specifically, the patent owner contended that
covered financial products and services were limited to
products and services such as credit, loans, real estate
transactions, securities and investment products, and
similar financial products and services.
The Board correctly pointed out that both the Patent
Office in its rulemaking discussion, and this court in its
then-recent Versata opinion, rejected that narrow view.
(The patent owner submitted its argument before the
Versata opinion issued.) We agree that the patent owner’s
position before the Board is incorrect as too limiting,
particularly since the argument is essentially the same
one made to and rejected by us in Versata.
The Board, however, as part of its broader considera-
tion of what is a “financial product or service,” concluded
that “[t]he method and apparatus claimed by the ’191
patent perform operations used in the practice, admin-
istration, or management of a financial product or service
and are incidental to a financial activity.” J.A. 10 (em-
phasis added). In Versata, to decide this part of the case
it was enough to establish our jurisdiction to adjudge the
question of the Board’s authority in a CBM case, and to
conclude, as the Board had, that the patent in that case
was a CBM patent under the statute. It was unnecessary
to go further and opine about where the boundaries of the
CBM definition lay.
More recently, in Unwired Planet, 841 F.3d at 1379–
82, we were called upon to determine if the Board in that
case had misstated the meaning of the statutory defini-
tion of what is a CBM patent. The Board, in determining
that the patent under review was a CBM, did not limit
itself to the express language of the statutory definition of
a CBM patent. The Board explained that the inquiry of
whether a particular patent is a CBM patent involved
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 17
determining “whether the patent claims activities that
are financial in nature, incidental to a financial activity,
or complementary to a financial activity.” Id. at 1378
(emphases added and citation omitted).
We concluded in Unwired Planet that the emphasized
phrases are not part of the statutory definition, and when
used “as the legal standard to determine whether a patent
is a CBM patent [that standard] was not in accordance
with law.” Id. at 1382. We vacated the Board’s decision
and remanded for the Board to decide, in the first in-
stance using a correct statutory definition, whether the
patent at issue is a CBM patent.
In arriving at its mistaken legal standard, the Board
had cited to language used by the PTO in its comments
during the process of adopting regulations regarding the
AIA. See, comments of the Director upon promulgation of
the regulation in 2012: “[T]he legislative history explains
that the definition of covered business method patent was
drafted to encompass patents ‘claiming activities that are
financial in nature, incidental to a financial activity or
complementary to a financial activity.’” Transitional
Program for Covered Business Method Patents—
Definitions of Covered Business Method Patent and
Technological Invention, 77 Fed. Reg. 48,734, 48,735
(Aug. 14, 2012) (Final Rule) (quoting 157 Cong. Rec.
S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schum-
er)).
Despite these comments, in its final regulation defin-
ing what is a CBM patent the PTO simply adopted the
statutory definition of a CBM patent without alteration or
expansion. 37 C.F.R. § 42.301(a); see also Versata, 793
F.3d at 1323. The Board also referred to legislative
history for remarks made by Senator Schumer. In Un-
wired Planet we found that no such extra-statutory
sources were persuasive when the plain words of the
18 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
statute did not support such additional interpretive
phrases. See Unwired Planet, 841 F.3d at 1381–82.
In the case before us, the Board as part of its broader
discussion of what is a “financial product or service,”
concluded that “[t]he method and apparatus claimed by
the ’191 patent perform operations used in the practice,
administration, or management of a financial product or
service and are incidental to a financial activity.” J.A. 10
(emphasis added). Consistent with Unwired Planet, we
hold that the emphasized phrase is not a part of the
statutory definition of what is a CBM patent, and, as we
did in Unwired Planet, we conclude that such a definition
of a CBM patent is beyond the scope of the statutory
standard and thus “not in accordance with law.”
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331(Fed. Cir. 2016), is not to the contrary. There the phrase
used by the Board was “financial in nature,” which does
not involve the statutory broadening at issue in Unwired
Planet. And the court in Blue Calypso agreed with the
Board that “financial in nature” was an accurate overall
description of the challenged claims, and therefore the
patent was adjudged properly under the CBM rubric. See
Blue Calypso, 815 F.3d at 1340.
This is not a quibble over abstract phrasing. In this
case, the Board’s broadened definition of a CBM patent
led it, in deciding the status of the ’191 patent, to reach
out beyond the question of whether the claims, as under-
stood in light of the written description, met the statutory
definition. The Board, in addition to relying on language
found in the legislative history and in the PTO’s regulato-
ry proceedings, took into consideration the litigation
history of patent owner Secure Axcess in which it sued a
large number of defendants who could be described as
“financial” in their business activities.
But a patent owner’s choice of litigation targets could
be influenced by a number of considerations, such as the
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 19
volume of a particular target’s perceived infringement;
the financial condition of the target; which targets are
most likely to be willing to settle rather than bear the cost
of litigating; available and friendly venues; and so on.
Those choices do not necessarily define a patent as a CBM
patent, nor even necessarily illuminate an understanding
of the invention as claimed.
To be clear: the phrasing of a qualifying claim does
not require particular talismanic words. When properly
construed in light of the written description, the claim
need only require one of a “wide range of finance-related
activities,” examples of which can be found in the cases
which we have held to be within the CBM provision. See
Versata, 793 F.3d at 1312–13, 1325–26; Blue Calypso, 815
F.3d at 1339–40; SightSound, 809 F.3d at 1315–16.
In sum, if a patent that fits the term covered business
method patent, as defined in AIA § 18(d)(1), is to be use-
fully distinguished from all other patents, the distinction
will not lie based on non-statutory phrases like “inci-
dental to” or “complementary to” financial activity. Such
phrases can have unintended consequences. For example,
it is safe to assume that most, if not virtually all, inven-
tors of methods or products claimed in a patent have some
expectation that complementary financial activity will
result—stated another way, that eventually their inven-
tion will produce financial rewards for their efforts. A
definition that could sweep that broadly obviously will not
do. Necessarily, the statutory definition of a CBM patent
requires that the patent have a claim that contains,
however phrased, a financial activity element.
3. The Remedy
Having determined that the Board erred in deciding
this case as a CBM under its overly-broad statutory
definition, we are confronted with determining the appro-
priate remedy. Secure Axcess, believing that the Board
misapplied the statute, asks that we vacate the Board’s
20 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
determination that this is a CBM patent, and remand for
the Board to decide the CBM question under the correct
definition.
The Board considered claims 1 and 17, among others,
reproduced above, as illustrative of the claimed subject
matter. J.A. at 7–8. In the course of its decision, the
Board made several claim construction determinations
based on its ‘broadest reasonable construction’ standard,
approved by the Supreme Court in Cuozzo. See Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016).
Secure Axcess objects to several of these rulings, specifi-
cally those related to the issue of whether the patent
requires an authenticity key to be used to, or provide the
ability to, determine the location of a preferences file, and
that these claim constructions tainted the court’s obvi-
ousness determinations. However that may be, for pur-
poses of deciding whether the claims qualify the patent as
a CBM patent, we find that the Board’s constructions are
reasonable in light of the Board’s standard of review. 7
In that light, and giving the patentee the broad scope
available for claiming “the practice, administration, or
management of a financial product or service,” we have
examined with care the relevant claims as set forth
earlier. Based on the record before us, and applying the
definition of a CBM patent provided by Congress in AIA
§ 18(d), and viewed as of the earliest effective filing date,
we do not find in the ’191 patent, when the claims are
properly construed in light of the written description, a
single claim that could qualify this patent as a “patent
that claims . . . a method or corresponding apparatus . . .
7 See, e.g., In re Morris, 127 F.3d 1048 (Fed. Cir.
1997) (holding that, in reviewing a claim construction
decided under the ‘broadest reasonable interpretation’
standard, we determine whether the interpretation is
within the range of reasonableness).
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 21
used in the practice [etc.] of a financial product or ser-
vice.” Like the lightbulb example in Unwired Planet, just
because an invention could be used by various institutions
that include a financial institution, among others, does
not mean a patent on the invention qualifies under the
proper definition of a CBM patent.
A remand to the Board for further consideration of the
question whether this patent qualifies as a CBM thus
would be a wasteful act, since an affirmative finding,
applying the proper statutory definition, that this patent
so qualifies would be, in terms of the APA standard,
arbitrary or capricious. The Board’s conclusion that this
is a CBM patent is reversed. The Board’s other determi-
nations, including claim constructions as they bear on
obviousness and the obviousness determination itself, are
vacated.
CONCLUSION
Reversed in part; vacated in part.
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
______________________
SECURE AXCESS, LLC,
Appellant
v.
PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
OF THE WEST, SANTANDER BANK, N.A., ALLY
FINANCIAL, INC., RAYMOND JAMES &
ASSOCIATES, INC., TRUSTMARK NATIONAL
BANK, NATIONWIDE BANK, CADENCE BANK,
N.A., COMMERCE BANK,
Appellees
______________________
2016-1353
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
______________________
LOURIE, Circuit Judge, dissenting.
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
2 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
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 perform-
ing data processing or other operations used in the prac-
tice, 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, admin-
istration, or management of a financial product or ser-
vice.” Id. (emphasis added).
Claim 1 recites “[a] method comprising: transforming
. . . received data . . . to create formatted data . . . .” ’191
patent col. 12 ll. 9–18. Claim 17 recites “[a]n authentica-
tion 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 . . . .” Id. col. 12 ll.
62–67. There can be little doubt that such claims meet
the “method or apparatus for performing data processing”
limitation of the statute.
They also meet the “financial product or service” lan-
guage of the statute. Examination of the ’191 patent
makes clear that the invention is to be used in the man-
agement of a financial service. The exemplary embodi-
ment is described, inter alia, as follows:
The customer and merchant may represent in-
dividual people, entities, or business. The bank
may represent other types of card issuing insti-
1 Section 18 of the AIA, pertaining to CBM review,
is not codified. References to AIA § 18 herein are to the
statutes at large.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 3
tutions, such as credit card companies, card
sponsoring companies, or third party issuers
under contract with financial institutions. . . .
The bank has a computing center shown as a
main frame computer. However, the bank com-
puting center may be implemented in other
forms, such as a mini-computer, a PC server, a
network set of computers, and the like. . . . Any
merchant computer and bank computer are in-
terconnected via a second network, referred to
as a payment network. The payment network
represents existing proprietary networks that
presently accommodate transactions for credit
cards, debit cards, and other types of finan-
cial/banking cards. The payment network is a
closed network that is assumed to be secure
from eavesdroppers. Examples of the payment
network include the American Express®,
VisaNet® and the Veriphone® network. In an
exemplary embodiment, the electronic com-
merce system is implemented at the customer
and issuing bank. In an exemplary implemen-
tation, the electronic commerce system is im-
plemented as computer software modules loaded
onto the customer computer and the banking
computing center. The merchant computer does
not require any additional software to partici-
pate in the online commerce transactions sup-
ported by the online commerce system.
Id. col. 11 ll. 22–67. Similarly, the ’191 patent uses
“bigbank.com” as the only exemplary URL. Id. col. 1 ll.
29–33, col. 8 ll. 21–23. No other applications of the inven-
tion are described in the patent.
And, if there were any doubt of the use of the inven-
tion in financial management, the identity of the compa-
nies Secure Axcess, LLC (“Secure Axcess”) has sued for
infringement of the ’191 patent should settle the matter.
4 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
Their litigation pattern speaks volumes about what they
believe their invention is “used” for.
Secure Axcess filed complaints alleging that the fol-
lowing companies infringe the ’191 patent by “using” the
invention: PNC Bank National Association, PNC Finan-
cial Services Group, Inc., U.S. Bank National Association,
U.S. Bancorp, Bank of the West, BNP Paribas, Cantander
Bank, N.A., Ally Financial Inc., Ally Bank, GE Capital
Retail Bank, GE Capital Bank, General Electric Capital
Corporation, General Electric Company, Raymond James
& Associates, Inc., Raymond James Financial, Inc.,
Trustmark National Bank, Trustmark Corporation,
Nationwide Financial Services, Inc., Nationwide Corpora-
tion, Nationwide Mutual Insurance Company, Nationwide
Bank, Cadence Bank, N.A., Commerce Bank, Commerce
Bancshares, Inc., Santander Bank, N.A., Vanguard Group
Inc., Vanguard Marketing Corporation, Charles Schwab
Bank, Charles Schwab Corporation, Ocwen Financial
Corporation, Orange Savings Bank, SSB, First Financial
Bank National Association, First Financial Bankshares,
Inc., Texas Capital Bank, N.A., Texas Capital
Bancshares, Inc., T. Rowe Price Investment Services, Inc.,
T. Rowe Price Associates, Inc., T. Rowe Price Group, Inc.,
Bank of America Corporation, Bank of America, N.A.,
A.N.B. Holding Company, Ltd., American National Bank
of Texas, Arvest Bank Group, Inc., Arvest Bank, Austin
Bankcorp, Inc., Austin Bank, Texas N.A., Bank of the
Ozarks, Inc., Bank of the Ozarks, Citizens 1st Bank,
Compass Bancshares, Inc., Compass Bank, Cullen/Frost
Bankers, Inc., the Frost National Bank, Diboll State
Bancshares, Inc., First Bank & Trust East Texas, First
Community Bancshares, Inc., First National Bank Texas,
First National of Nebraska, Inc., First National Bank of
Omaha, First National Bank Southwest, Sterling
Bancshares, Inc., Sterling Bank, Harris Bankcorp., Inc.,
Harris N.A., Intouch Credit Union, Credit Union, ING
Direct Bancorp, ING Bank, FSB, North Dallas Bank &
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 5
Trust Co., Zions Bancorportion, Zions First National
Bank, and Amegy Bank N.A.
Moreover, at oral argument, Secure Axcess’s counsel,
in response to a question, stated that no companies have
been sued other than financial institutions. Oral Argu-
ment at 7:15–7:30, Secure Axcess, LLC v. PNC Bank N.A.,
No. 16-1353 (Fed. Cir. Nov. 2, 2016), available at
http://www.cafc.uscourts.gov/oral-argument-recordings?-
title=&field_case_number_value=2016-1353&field_date_-
value2%5Bvalue%5D%5Bdate%5D=&=Search.
It is true that the word “financial” does not appear in
the claims. However, that fact should not decide this
case. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1325 (Fed. Cir. 2015) (holding that “the defini-
tion of ‘covered business method patent’ is not limited to
products and services of only the financial industry, or to
patents owned by or directly affecting the activities of
financial institutions”); see also Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016) (af-
firming Board’s decision “declin[ing] to limit application of
CBM review to patent claims tied to the financial sector”);
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307,
1315 (Fed. Cir. 2015) (explaining Versata “foreclosed”
limiting the CBM patent definition to patents “directed to
the management of money, banking, or investment or
credit”). As a matter of patent law, claims do not neces-
sarily need to recite uses of products. Certainly, claims to
products or apparatuses do not (note that AIA § 18(d)(1)
refers to a “method or corresponding apparatus”). And, if
a method claim otherwise satisfies the requirements of 35
U.S.C. § 112, it need not recite an ultimate use.
The written description of the ’191 patent, in accord-
ance with the requirements of the statute, see 35 U.S.C.
§ 112 (“The specification shall contain a written descrip-
tion of the invention, and of the manner and process of . . .
using it . . . .”), tells us that the invention is to be used for
6 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
financial management. See ’191 patent col. 11 ll. 22–67;
see also id. col. 1 ll. 29–33, col. 8 ll. 21–23. The inventors,
complying with the statute, thus told us what the inven-
tion is to be used for. The claims recite an invention used
in the practice of a financial product, and the uses are
described in the written description of the patent.
In my view, the Board correctly concluded that the
“method and apparatus claimed by the ’191 patent per-
form operations used in the practice, administration, or
management of a financial product or service,” in accord-
ance with the CBM patent statutory definition. PNC
Bank, N.A. v. Secure Axcess, LLC, No. CBM2014-00100,
2015 WL 5316490, at *5 (P.T.A.B. Sept. 8, 2015). It is
true that the Board also used overly broad language in
stating in the alternative that the “method and apparatus
claimed by the ’191 patent . . . are incidental to a financial
activity.” Id. (emphasis added). And the Board did state
that “the ’191 patent claims a method or apparatus that
at least is incidental to a financial activity, even if other
types of companies also practice the claimed invention.”
Id. at *6. But overstatement does not change the basic
fact that, as the written description of the patent itself
indicates, the invention is directed to a method and
apparatus used in financial management, as referred to in
the statute. See, e.g., Blue Calypso, 815 F.3d at 1339 n.2
(explaining the Board correctly concluded that claims
referring to “an incentive program” were eligible for CBM
review where the patent “repeatedly, and almost exclu-
sively discloses ‘incentive’ and ‘incentive program’ in a
financial context”) (internal citation omitted).
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 Plan-
et, 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.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION 7
Such a decision was not based only on the forbidden
language. See PNC Bank, 2015 WL 5316490, at *10
(“Having determined that the ’191 patent claims a method
or corresponding apparatus for performing data pro-
cessing or other operations used in the practice, admin-
istration, or management of a financial product or service
and does not fall within the exception for technological
inventions, we maintain our determination that the ’191
patent is eligible for a covered business method patent
review.”).
The majority attempts to escape the clear purport of
the invention by ranging into a discussion of the meaning
of claims in patent law. Its use of language such as “on
occasion,” “might be considered,” and “at least facially”
pointedly overlooks the nature of the invention and the
meaning of the statute. The opinion has subsections
headed “A patent that claims . . .” and “. . . a financial
product or service,” but it virtually ignores the statutory
language “used in the practice.” The written description
clearly describes how this invention is “used in the prac-
tice” of a financial product. And, while not conclusive, the
post-issuance litigation history makes the point unmis-
takable. To ignore that is to close one’s eyes to the obvi-
ous.
The majority disparages the clear use of this inven-
tion in the practice of a financial product or service by
worrying that the CBM program would have “virtually
unconstrained reach” and that “a patent would qualify
[for CBM review] if it claimed a method or corresponding
apparatus for performing any operations that happen to
be used in ‘the practice, administration, or management
of a financial product or service.’” The answer to such
concerns is that we need not probe the limits of the statu-
tory language by reciting all sorts of non-financial prod-
ucts to show that a sensible interpretation of this statute
must include what Secure Axcess itself considers a finan-
cial product. Common sense is not precluded from use in
8 SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION
interpreting statutes and claims. 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.
I therefore respectfully dissent from the conclusion
that the ’191 patent is not a CBM patent.