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Bozeman Fin. LLC v. FRB of Atlanta

United States Court of Appeals for the Federal Circuit

April 10, 2020, Decided

2019-1018, 2019-1020

Opinion

 [*974]  Moore, Circuit Judge.

Bozeman Financial LLC appeals from the Patent Trial and Appeal Board's covered business method (CBM) review decisions holding all of the claims of U.S. Patent Nos. 6,754,640 and 8,768,840 ineligible under 35 U.S.C. § 101.1 On appeal, Bozeman challenges the Board's authority to decide the petitions because it argues the Banks2 are not "persons" under the America Invents Act (AIA). It further challenges the Board's eligibility decisions. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

For the reasons set forth below, we hold that the Banks are "persons" who may [**2]  petition for post-issuance review under the AIA. We further hold that claims 21-24 of the '640 patent and 1-20 of the '840 patent are ineligible under § 101. Accordingly, the Board's decisions are affirmed.

Bozeman filed a supplemental brief arguing that the Banks are not "persons" under the AIA, and therefore they may not petition for post-issuance review under the AIA. Bozeman contends that the Banks are government entities, which the Supreme Court held in Return Mail, Inc. v. U.S. Postal Serv., are not "persons" under the AIA. 139 S. Ct. 1853, 204 L. Ed. 2d 179 (2018). The Banks argue that Bozeman waived this argument by not raising it to the Board or in its opening brief. Additionally, they argue that Return Mail is inapplicable because the Banks are distinct from the United States government.

] The general rule is "that a federal appellate court does not consider an issue not passed upon below." Singleton v. Wulff, 428 U.S. 106, 120, 96 S. Ct. 2868, 49 L. Ed. 2d 826 (1976). We generally do not consider arguments not raised to the Board. See In re Baxter, 678 F.3d 1357, 1362 (Fed. Cir. 2012); In re DBC, 545 F.3d 1373 (Fed. Cir. 2008). We similarly consider arguments not raised in an appellant's opening brief waived absent exceptional circumstances. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006). There are circumstances where we will exercise our discretion to consider an issue despite its not being raised below or in an appellant's opening brief, however. See Interactive Gift Exp., Inc. v. Compuserve, Inc., 256 F.3d 1323, 1344-45 (Fed. Cir. 2001); L.E.A. Dynatech, Inc. v. Allina, 49 F.3d 1527, 1531 (Fed. Cir. 1995) [**3] ; Cemex, S.A. v. United States, 133 F.3d 897, 902 (Fed. Cir. 1998); Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir. 1990). Here, we find that the circumstances warrant deviating from the general rule of waiver.

Whether the Banks are "persons" for purposes of the AIA is an issue of statutory interpretation, a purely legal question. Resolving this issue is limited to interpretation of provisions of the AIA that apply to the Board, an issue that would only be appealable to this court,  [*975]  even if addressed by the Board in the first instance. Patent law questions of this sort fall squarely within the role of this court to create a uniform body of patent law. Reaching the issue is unlikely to substantially prejudice the parties. Bozeman moved for supplemental briefing to address the Supreme Court's decision in Return Mail, which the Banks opposed, arguing that Bozeman forfeited its argument by not raising that argument in its opening brief. That motion was granted and the parties were given the opportunity to brief the issue. While resolution of this issue may not have a large impact (beyond this case) on pending post-issuance proceedings before the Board, it is pertinent to multiple pending and future patent litigations involving the Banks. Oral Arg. at 23:08-12. Because the issue is narrow and legal, and the parties are not prejudiced [**4]  by our resolution, we exercise our discretion to reach the issue. We note that this decision is limited to the status of the Banks and does not prejudice other entities whose status as "persons" under the AIA may separately be questioned.

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955 F.3d 971 *; 2020 U.S. App. LEXIS 11315 **; 2020 U.S.P.Q.2D (BNA) 10332

BOZEMAN FINANCIAL LLC, Appellant v. FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS, FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO, FEDERAL RESERVE BANK OF ST. LOUIS, Appellees

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2017-00035.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. CBM2017-00036.

Federal Reserve Bank of Atlanta v. Bozeman Financial, LLC, 2018 Pat. App. LEXIS 7290 (P.T.A.B., July 23, 2018)Federal Reserve Bank of Atlanta v. Bozeman Financial, LLC, 2018 Pat. App. LEXIS 7288 (P.T.A.B., July 23, 2018)

Disposition: AFFIRMED.

CORE TERMS

patent, eligibility, ineligible, inventive, post-issuance, electronic, parameters, database, verify, patent-eligible, comprises, entities, recite

Civil Procedure, Appeals, Reviewability of Lower Court Decisions, Preservation for Review, Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Substantial Evidence, Subject Matter