PTAB Issues First AIA Review Decisions Applying Section 101 Guidance, Invalidating Financial Document Management Patents

April 26, 2019

The Patent Trial and Appeal Board (PTAB) has just issued its first decisions applying the USPTO’s January Section 101 guidance in an America Invents Act (AIA) review. On April 22, the PTAB invalidated four financial document processing patents held by Mirror Imaging L.L.C. in covered business method (CBM) reviews filed by Fidelity Information Services (FIS), after ruling that the patents fell into several categories of subject matter that the guidance deems to be abstract. Since the patents did not contain a “practical application” of the claimed abstract idea, the claims failed the first step of the Alice test as implemented in the guidance. The Board then proceeded to find that the claims lacked the “inventive concept” needed to survive Alice step two. While the guidance is not binding on district courts, these rulings provide an early indication of how it might be applied in future litigation.

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