In Symphony Health Solutions Corp. v. IMS Health Incorporated, CBM2015-00085, the Board instituted Covered Business Method patent review (CBM) for an IMS patent having claims in the healthcare field. The IMS patent “relates to a system and method for the gathering and analysis of health-care related data” and “techniques for de-identifying the individuals from such pharmaceutical data, in order to maintain privacy.”
In its Preliminary Response, IMS contended that “the patent has no particular relation to the financial services industry, and does not ‘particularly target’ the financial sector.” IMS relied on JP Morgan Chase & Co. v. Intellectual Ventures LLC, CBM2014-00160 in which the Board denied institution of CBM for an encryption technique, stating that CBM eligibility “has limits and does not cover every method that might be used in a way that is incidental or complementary to a financial activity.”
In denying institution of CBM in JP Morgan Chase, the Board stated that “[w]e do not see anything in the claims, specification, or prosecution history of the ’574 patent, pointed to by Petitioner or otherwise, showing that the ’574 patent is directed to ‘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’ or ‘activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” The Board determined that any references to financial activity, which were found in non-patent literature cited in the specification or in the Examiner’s search, were relevant to patentability, but not determinative in interpreting the claims.
In contrast, the Board in Symphony Health Solutions determined there was sufficient evidence to construe the claims to “recite activities used in the practice, administration, or management of a financial product or service.” The Board relied on the following considerations:
- The claim language “’health care field’ relating to ‘health care data,’  is described in the specification as insurance claims data, such as pharmaceutical, medical and hospital claims data, i.e., claims for receiving payment or reimbursement.”
- “The specification discusses the use of the claimed system “in a number of ways to help make business decisions,” including enhanced sales force targeting, early warning of market share shifts, and accurate intelligence on market size and demand.”
The Board in Symphony Health Solutions did not directly distinguish its determination from JP Morgan Chase in its opinion. Nevertheless, both decisions stress that eligibility for CBM is focused on the claims, and claim interpretation that relies on the intrinsic record — the claims, specification and prosecution history. Whereas the Board in JP Morgan refused to look too far afield to identify references to financial activity, the Board in Symphony Health Solutions found ample support in the specification for its conclusion. Practitioners are advised to craft their applications with a deliberate intent to encompass or avoid financial application.