C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart D—Transitional Program for Covered Business Method Patents

37 C.F.R. § 42.301

Definitions

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In addition to the definitions in § 42.2, the following definitions apply to proceedings under this subpart D:

(a) Covered business method patent means 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.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

[77 FR 48753, Aug. 14, 2012]
Notes of Decisions
Cited in 16 cases, 2013–2019 · leading case: Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
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Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). · cites it 4× “37 C.F.R. § 42.301 (b). This court has noted that this regulation offers little towards understanding the meaning of the term “technological invention.”
Blue Calypso, LLC. v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016). · cites it 4× “In Versata II, we examined the resulting regulation, 37 C.F.R. § 42.301 (b), which explains that a patent claims a techno- logical invention if “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a…”
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). · cites it 6× “” 37 C.F.R. § 42.301 (b). The parties disagree as to whether the invention in this case is such an excepted “technological invention.”
Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016). · cites it 4× “See AIA § 18(d); 37 C.F.R. § 42.301 . The Board based its review on “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.”
Trading Techs. Int'l, Inc. v. Ibg LLC, 921 F.3d 1378 (Fed. Cir. 2019). · cites it 2× “Pursuant to its authority under § 18(d)(2), the Patent and Trademark Office promulgated 37 C.F.R. § 42.301 (b), which requires the Board to consider the following on a case-by-case basis in determining whether a patent is for a technological invention: "whether the claimed…”
Trading Tech. Int'l v. Ibg LLC, 921 F.3d 1084 (Fed. Cir. 2019). · cites it 2× “Pursuant to its authority under § 18(d)(2), the Patent and Trademark Office ("PTO") promulgated 37 C.F.R. § 42.301 (b), which requires the Board to consider the following on a case-by-case basis in determining whether a patent is for a technological invention: "whether the…”
Secure Axcess, LLC v. Pnc Bank Nat'l Ass'n, 848 F.3d 1370 (Fed. Cir. 2017). · cites it 6× “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…”
Ancora Tech., Inc. v. Htc Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018). “" 37 C.F.R. § 42.301 (b). On December 1, 2017, the Board rejected the request to institute a review, concluding that the '941 patent claims a technical solution to a technical problem and comes within the "technological inventions" exception for such reviews.”
Sipco, LLC v. Emerson Elec. Co., 939 F.3d 1301 (Fed. Cir. 2019). · cites it 4× “Under 37 C.F.R. § 42.301 (b), the Board must consider “whether the claimed subject matter as a whole recites a technologi- cal feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.”
Sightsound Tech., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). “See AIA § 18(d); 37 C.F.R. § 42.301 . The Board first determined that the '573 and '440 patents are CBM patents because they recite the electronic movement of money between financially distinct entities, an activity that is “financial in nature,” and do not include novel and…”
Mkt.-Alerts Pty. Ltd. v. Bloomberg Fin. L.P., 922 F. Supp. 2d 486 (D. Del. 2013). “37 C.F.R. § 42.301 (b) (2012). As the PTO has noted, this definition is consistent with the legislative history of the AIA.”
Versata Software, Inc. v. Callidus Software, Inc., 41 F. Supp. 3d 414 (D. Del. 2014). “284 , 329-31 (2011), and 37 C.F.R. 42.301(a), a “covered business method patent” is "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 .”
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— 37 C.F.R. § 42.301(a) — 1 case
Versata Software, Inc. v. Callidus Software, Inc., 41 F. Supp. 3d 414 (D. Del. 2014). “284 , 329-31 (2011), and 37 C.F.R. 42.301(a), a “covered business method patent” is "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 .”
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