As some background and for those unfamiliar with post grant practice, a CBM ("Covered Business Method") is one mechanism for challenging the validity of an issued patent in front of the Patent Trial and Appeal Board (PTAB). Along with PGRs and IPRs enacted by the American Invents Act (AIA), CBMs are intended as a counter-measure against the enforcement of a myraid of poor quality (and many times invalid) patents which may have issued over the last decade. Compared to the other mechanisms, a CBM review is similar to a PGR review, but becomes available when a PGR review is no longer possible (i.e. 9 months after issuance). Notably, a CBM is available for both patents issued under first-to-invent, as well as first-to-file (post-AIA) rules. The caveat is however, that CBMs only pertain to "covered business method" patents, relating to "financial products or services".
In the instant case, the Federal Circuit reviewed this statutory understanding, noting that AIA Section 18(d) expressly defines a CBM as a patent claiming a method or apparatus used "in practice, administration, or management of a financial product or service". In diving through the AIA's legislative history, the court found that the USPTO improperly relied upon isolated statements of Senator Schumer, and adopted the position that the notion of a "financial product or service" should be interepreted broadly. The court noted that general policy statements, such as this, are not legally binding. See Hamlet v. United States, 63 F.3d 1097, 1105 n.6 (Fed. Cir. 1995) (noting that a “substantive rule” is “far more likely to be considered a binding regulation” than a general statement of policy).
Moreover, the court cited various competing views throughout the legislative debate regarding the scope of CBM review, many of which were contradicting. For instance, Senator Durbin had urged that the section should not cover patents on "novel machinery to count, sort, and authenticate currency and paper instruments". It was in response to this view, that Senator Schumer assured that "it is not the understanding of Congress that such patents would be reviewed and invalidated under Section 18."
This indicated not only a limitation in scope, but also conflicting views on whether certain apparatuses or methods relating to the financial services themselves should be subject to CBM review. Therefore, the court held that the PTAB's present CBM definition, which included claims that were merely "incidental to" or "complementary to" a financial product or service, was improper and insufficient to qualify a patent for a CBM proceeding under 18(d) of the AIA. Rather, CBM patents are limited to those with claims that directed to methods and apparatuses of particular types and with particular uses in the practice, administration, or management of a financial product or service.