Bank Of America National Association v. Intellectual Ventures

1. Case Identification

• Case #: CBM2014-00028
• Patent #: 8,083,137
• Filed: November 12, 2013
• Petitioner(s): PNC Financial Services Group, Inc.; PNC Bank, N.A.; Bank of America Corporation; Bank of America, National Association
• Patent Owner(s): Intellectual Ventures I LLC; Intellectual Ventures II LLC
• Challenged Claims: 1-24

2. Patent Overview

• Title: Administration of Financial Accounts
• Brief Description: The ’137 patent discloses systems and methods for managing financial accounts. The technology allows a user to establish self-imposed spending limits for various user-selected categories and to receive notifications and transaction summaries related to those limits.

3. Grounds for Unpatentability

Ground 1: Claims 1-24 are unpatentable under 35 U.S.C. §101 as being directed to an unpatentable abstract idea.

• Prior Art Relied Upon: Petitioner primarily relied on legal precedent establishing the abstract idea exception (e.g., Mayo, Bilski, Benson) and asserted that all recited hardware components were generic and conventional at the time of filing.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the claims are directed to the fundamental abstract idea of sending a notification to a person when they reach a self-imposed limit on a particular category of transactions. It contended that the claims add no "inventive concept" beyond this abstract idea, instead merely implementing it with generic, conventional computer components.
  • Independent Claim 1 (System): Petitioner asserted that independent claim 1, a system claim in means-plus-function format, merely appends generic limitations to the abstract idea. It argued the "means for storing" (a profile) and "means for presenting" (summary data) correspond to nothing more than a conventional processor and database and a generic user device with a screen, respectively. These components, performing their well-understood functions, were argued to be insufficient to confer patentability.
  • Independent Claim 5 (Method): Petitioner contended that method claim 5 mirrors system claim 1 by replacing the "means for" limitations with corresponding method steps ("storing" and "causing communication"). It argued that performing the abstract idea using generic computing components like a database and an unspecified "communication medium" such as the Internet constituted insignificant post-solution activity that does not make the claim patent-eligible.
  • Independent Claim 12 (Method): This claim adds the limitation that transaction summary data is presented "in a table." Petitioner argued this is a conventional format for presenting data and represents another instance of insignificant post-solution activity that fails to add a meaningful limitation to the underlying abstract idea.
  • Independent Claim 19 (System): Petitioner argued this system claim parallels claim 1, reciting a "means for listing" and "means for presenting" financial transactions. It contended that the underlying structures for these functions are, again, a generic processor and database performing their conventional data organization and display functions, which do not meaningfully limit the claim beyond the abstract concept.
  • Dependent Claims: Petitioner argued that the various dependent claims add only routine and conventional concepts. These additions—such as specifying transaction types, assigning items to categories, adding "sub-users," or limiting the communication medium to a network, wireless, or cellular medium—were characterized as basic mental processes for organizing transactions or applying the idea in a generic technological environment, which are insufficient to transform the abstract idea into a patentable invention.
  • Key Aspects: A central part of the argument was that the claims fail the machine-or-transformation test. Petitioner asserted the claims are not tied to any particular machine (only generic computers) and do not transform any article into a different state or thing, as they only involve the basic processing and organization of data.

4. Key Claim Construction Positions

• Petitioner argued that numerous claim terms are in means-plus-function format under 35 U.S.C. §112(f). The proposed constructions were critical to its §101 invalidity argument.
• For key limitations such as "means for storing," "means for presenting," "means for listing," and "means for assigning," Petitioner contended that the only corresponding structure disclosed in the ’137 patent specification is a combination of generic and conventional components. These components were identified as a "central processor" working in conjunction with a "database," a "network," and a user's "computing device" (e.g., a computer, cell phone, or pager).
• By construing these means-plus-function limitations as being tied only to generic hardware, Petitioner sought to establish that the claims added no inventive technological concept beyond the implementation of an abstract idea on a standard computer system.

5. Key Technical Contentions (Beyond Claim Construction)

• A key contention was that the ’137 patent is not directed to a "technological invention" and is therefore eligible for review as a Covered Business Method patent.
• Petitioner argued that the patent fails both prongs of the "technological invention" test. First, it contended the claims merely recite generic, well-known technological features (e.g., database, processor, network, telephone) that were conventional at the time of filing and do not represent a novel and unobvious technological feature.
• Second, Petitioner asserted the patent does not solve a technical problem with a technical solution. It argued that the problem addressed—helping users avoid the "financial distress" of exceeding spending limits—is a purely financial or business problem, not a technical one. The patent's proposed solution was characterized as merely applying conventional computer functions to this business concept without providing any improvement to the underlying technology itself.

6. Relief Requested

• Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-24 of the ’137 patent as unpatentable under 35 U.S.C. §101.