  United States Court of Appeals
      for the Federal Circuit
               ______________________

              SECURE AXCESS, LLC,
                   Appellant

                          v.

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                     2016-1353
               ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

   ON PETITIONS FOR REHEARING EN BANC
            ______________________
2         SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



    Before PROST, Chief Judge, NEWMAN, PLAGER ∗, LOURIE,
     DYK, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO,
            CHEN, and HUGHES, Circuit Judges. ∗∗
     TARANTO, Circuit Judge, with whom MOORE, Circuit
    Judge, joins, concurs in the denial of rehearing en banc.
O’MALLEY, Circuit Judge, concurs in the denial of rehear-
                     ing en banc.
 REYNA, Circuit Judge, concurs in the denial of rehearing
                        en banc.
    LOURIE, Circuit Judge, with whom PROST, Chief Judge,
    DYK, WALLACH, and HUGHES, Circuit Judges, join, dis-
         sents from the denial of rehearing en banc.
 DYK, Circuit Judge, with whom WALLACH and HUGHES,
Circuit Judges, join, dissents from the denial of rehearing
                          en banc.
     PLAGER, Circuit Judge, concurs in the denial of panel
                         rehearing.
PER CURIAM.
                          ORDER
    Appellees U.S. Bank National Association and U.S.
Bancorp and appellees PNC Bank National Association;
Santander Bank, N.A.; and Nationwide Bank filed sepa-
rate petitions for rehearing en banc. A response to the
petitions was invited by the court and filed by the appel-
lant Secure Axcess, LLC. Two motions for leave to file
amici curiae briefs were also filed and granted by the
court.




      ∗
        Circuit Judge Plager participated only in the
decision on panel rehearing.
    ∗∗
        Circuit Judge Stoll did not participate.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION     3



    The petitions were referred to the panel that heard
the appeal, and thereafter the petitions, response, and
briefs of amici curiae were referred to the circuit judges
who are in regular active service. A poll was requested,
taken, and failed.
   Upon consideration thereof,
   IT IS ORDERED THAT:
   The petitions for panel rehearing are denied.
   The petitions for rehearing en banc are denied.
   The mandate of the court will be issued on June 13,
2017.


                                 FOR THE COURT

June 6, 2017                     /s/ Peter R. Marksteiner
   Date                          Peter R. Marksteiner
                                 Clerk of Court
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               SECURE AXCESS, LLC,
                    Appellant

                            v.

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                       2016-1353
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

TARANTO, Circuit Judge, with whom MOORE, Circuit
Judge, joins, concurring in the denial of rehearing en
banc.
    This case involves a targeted and time-limited pro-
gram—“a transitional post-grant review proceeding for
review of the validity of covered business method [CBM]
patents.”    Leahy–Smith America Invents Act (AIA)
§ 18(a)(1), Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
2       SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



The program is now more than halfway through its speci-
fied eight-year life; it is set to expire in a little over three
years. AIA § 18(a)(3). The program has consistently been
small in scale, unlike the permanent program for inter
partes reviews (IPR), 35 U.S.C. §§ 311–319, and the issue
presented in this case has arisen only rarely. Although
the statute grants relevant rulemaking authority to the
Director of the Patent and Trademark Office (PTO), AIA
§ 18(a)(1), the legal issue comes to this court unaccompa-
nied by any regulation except one that, regarding this
issue, merely incorporates the statutory language. 37
C.F.R. § 42.301(a). On the question thus presented, the
panel opinion in this case adopts a resolution that soundly
resolves an ambiguity in the statutory language and is
consistent with every one of our precedents and with a
number of Patent Trial and Appeal Board decisions
dating to when the program began. In these circumstanc-
es, further review of the CBM issue here would be a poor
use of judicial resources. Should an extension of the CBM
program in some form be deemed desirable, congressional
redrafting is a better process through which to address
the issues raised by the statute’s current language. 1



    1   The present case now involves only claim 24 of
U.S. Patent No. 7,631,191, challenged on anticipation and
obviousness grounds. All other claims of the patent were
determined to be unpatentable in a separate IPR (re-
quested by persons other than appellees here), and the
present panel affirmed. See Secure Axcess, LLC v. EMC
Corp., No. 2016-1354, 2017 WL 676603 (Fed. Cir. Feb. 21,
2017). Appellees may challenge remaining claim 24 in
court if Secure Axcess alleges that they infringe that
claim. The PTO may also further review claim 24, e.g.,
through an ex parte reexamination (initiated sua sponte
or at someone’s request, 35 U.S.C. § 303) or through an
IPR (if properly requested, see 35 U.S.C. § 315(b), (e)).
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION      3



    The statutory language defines the essential gateway
qualification for entry into the CBM program: a CBM
patent is one “that claims a method or corresponding
apparatus for performing data processing or other opera-
tions used in the practice, administration, or management
of a financial product or service . . . .” AIA § 18(d)(1)
(emphasis added). That language makes one thing un-
ambiguously clear and leaves a familiar ambiguity as to a
second textual issue.
    The clear prescription is that what counts is what the
patent claims—which, as the panel explained, is a matter
of proper claim construction, in which the specification
plays a large role (the roster of litigation defendants does
not). In this case, there is not even a contention that any
claim, properly construed, incorporates any requirement
based on the specification’s mention of banks or any
reference to “use[] in the practice, administration, or
management of a financial product or service.” AIA
§ 18(d)(1). It is undisputed that the claims in this case all
apply to certain computer access technologies, whether or
not they are used in the practice, administration, or
management of a financial product or service.
     The second textual issue, addressing the words that
follow “claims” in section 18(d)(1), is whether the verb
“claims” applies to both the “method or corresponding
apparatus” language and the “used in the practice, ad-
ministration, or management of a financial product or
service” language or, instead, applies just to the “method
or corresponding apparatus” language. This is a common
type of ambiguity where a verbal phrase precedes a
predicate that expressly or implicitly has two parts. Cf.
Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754,
760–61, 766 (2011) (recognizing ambiguity as to whether,
in the phrase “induces infringement,” the implicit
knowledge requirement in “induce” applies not just to the
act that infringes but also to its infringing character;
4     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



resolving the ambiguity by requiring knowledge of both).
The panel resolved the ambiguity by reading “claims” as
reaching both parts of the predicate (much as Global-Tech
did for its similar ambiguity): the latter portion (“used
in . . .”) as well as the former (“method or corresponding
apparatus . . .”) must be referenced among what is
claimed, explicitly or implicitly, in at least one claim of
the patent.
     That resolution is not just a textually familiar one; it
is in accord with all of our court’s precedents. Even before
Unwired Planet, LLC v. Google Inc., 841 F.3d 995 (Fed.
Cir. 2016), we read section 18(d)(1) in this way. In Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.
2016), we explained that “§ 18(d)(1) directs us to examine
the claims when deciding whether a patent is a CBM
patent.” Id. at 1340. And in approving the standard
applied by the Board in a number of decisions that had
rejected CBM status, we said: “each of these cases proper-
ly focuses on the claim language at issue and, finding
nothing explicitly or inherently financial in the construed
claim language, declines to institute CBM review.” Id.
(emphases added). The panel opinion in the present case
reflects the same interpretation.
     All of our precedents also accord with this interpreta-
tion on their facts. Each of our cases finding a petition
proper under the CBM program has involved a reference
to a financial element (shorthand for the statutory “used
in . . .” phrase) in at least one claim. In Blue Calypso, the
language of claim 1 of the patent at issue—“subsidizing
the qualified subscriber according to the chosen subsidy
program,” id. at 1339 (quoting U.S. Patent No. 7,664,516,
col. 7, lines 39–40)—established that “the claims of the
Blue Calypso Patents are directed to methods in which
advertisers financially induce ‘subscribers’ to assist their
advertising efforts,” id. at 1340. Financial claim elements
were present, too, in SightSound Technologies, LLC v.
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION      5



Apple Inc., 809 F.3d 1307, 1311, 1315–16 (Fed. Cir. 2015)
(claiming methods for “selling the desired digital video or
digital audio signals to [a party] for a fee through tele-
communications lines”), and Versata Development Group,
Inc. v. SAP America, Inc., 793 F.3d 1306, 1311–13, 1327
(Fed. Cir. 2015) (claiming product grouping and pricing
software).
    The same is true of DataTreasury’s Ballard patents,
U.S. Patent Nos. 5,910,988 and 6,032,137, which helped
prompt enactment of the CBM program. See DataTreas-
ury Corp. v. Fid. Nat’l Info. Servs., Inc., 669 F. App’x 572,
573 (Fed. Cir. 2016) (affirming the Board’s rejection of
challenged claims of the ’988 and ’137 patents in CBM
proceedings), cert. denied, 137 S. Ct. 1338 (2017). Each of
the two Ballard patents contains at least one claim di-
rected to “the practice, administration, or management of
a financial product or service.” For example: In the ’137
patent, every independent claim (thus every claim) con-
tains a requirement regarding “transactions from checks.”
’137 patent, claims 1, 26, 42, 43. In the ’988 patent,
claims 3–8, 28, 45, 50, 87, 92, 96, 101, and 113 refer to
“electronic transactions from credit cards, smart cards[,]
and debit cards”; claims 51, 55, 64, 70, 75–77, and 102–
109 refer to credit cards, debit cards, credit-card transac-
tions or statements, or bank statements; and more gener-
ally, every independent claim (thus every claim) contains
a requirement regarding “receipts” (and some also refer to
“transactions”), ’988 patent, claims 1, 16, 42, 46, 84, 88,
93, 97, 102, 106, 110, 114, 118, 121. Those patents plainly
are CBM patents under the panel ruling in the present
case. Nothing similar appears, expressly or by construc-
tion, in the claims of the patent at issue here.
    The panel’s reading of the statute accords as well with
several Board decisions, dating back to the launching of
the CBM program, that rejected CBM status for similar
reasons. See Fairchild Semiconductor Corp. v. In-Depth
6     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



Test LLC, CBM2015-00060, 2015 WL 4652717, at *5–6
(P.T.A.B. Aug. 3, 2015) (rejecting CBM status for semi-
conductor devices, despite ubiquitous use in the financial
system, because the “statutory language . . . requires us to
focus on the challenged claims rather than speculate on
possible uses of products recited in the claims”); Par
Pharm., Inc. v. Jazz Pharm., Inc., CBM2014-00149, -
00150, -00151, -00153, 2015 WL 216987, at *5–6 (P.T.A.B.
Jan. 13, 2015) (rejecting CBM status because “our focus is
firmly on the claims” and petitioner had not “analyze[d]
the claim language, in detail and in context, to explain
how the claim language recites method steps involving
the movement of money or extension of credit in exchange
for a product or service”); PNC Fin. Servs. Grp., Inc. v.
Intellectual Ventures I LLC, CBM2014-00032, 2014 WL
2174767, at *6 (P.T.A.B. May 22, 2014) (rejecting CBM
status of computer file-security patent, despite suit
against financial institutions, because “the focus is on the
claims”).
    The panel’s reading of the statutory language, and all
of the just-cited authorities, reflect the common-sense,
circumscribed scope of what Congress said it was target-
ing—certain “business method patents.” In contrast, the
alternative resolution of the statutory ambiguity—
excluding the “used in . . .” qualifier from what must be
“claimed” (explicitly or implicitly)—would produce a
meaning not plausibly attributed to Congress.
    Under that resolution of the ambiguity, the language
would refer to any claim to any “method or corresponding
apparatus for performing data processing or other opera-
tions,” AIA § 18(d)(1) (emphases added)—a phrase of vast
scope—as long as that method or apparatus is, in fact,
“used in the practice, administration, or management of a
financial product or service” by someone somewhere, id.,
even when no claim of the patent at issue refers explicitly
or implicitly to such a use. Even if we restricted our focus
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION        7



to the financial industry, such a “used in fact” resolution
of the textual ambiguity would reach patents claiming
computers, networks, phone apps, HVAC, glass (in offices
and on computer screens), and far more: they are all in
fact used in carrying out the transactions that character-
ize banking. That is an implausible understanding of
what Congress meant by “business method,” especially, as
the panel noted, in light of the restrictions Congress
imposed on the other new programs for PTO reconsidera-
tion of issued patents, notably, the IPR program. 2
     In fact, the breadth of a “used in fact” resolution of the
textual ambiguity is even greater than that. This court
has read section 18(d)(1)’s “used in . . .” language very
broadly, to go well beyond the financial industry—
seemingly to include, for example, any money-transfer
activity in normal selling, no matter what product is sold,
be it pharmaceuticals, medical devices, or anything else.
Versata, 793 F.3d at 1325 (“[T]he definition of ‘covered
business method patent’ is not limited to products and
services of only the financial industry, or to patents
owned by or directly affecting the activities of financial
institutions such as banks and brokerage houses.”); see
SightSound, 809 F.3d at 1315–16. That broad concept of
“the practice, administration, or management of a finan-
cial product or service,” accepted by the panel in this case,
makes the consequences of the “used in fact” resolution of
the statutory ambiguity even more implausibly extreme.
    In dissent, Judge Lourie has advanced a different
statutory interpretation in an effort to avoid the unrea-
sonable breadth of a “used in fact” reading of the text.


    2   In Cuozzo Speed Technologies, LLC v. Lee, 136 S.
Ct. 2131 (2016), the dissent cited a patent claiming “tem-
pered glass” as an example of a plainly improper reading
of the “CBM” definition. Id. at 2155 (Alito, J., dissenting).
8     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



That alternative focuses on aspects of the specification not
even contended to limit claim scope and the list of defend-
ants sued under the patent. In my view, there are at
least two important problems with that focus.
    First, the relied-on considerations do not have a sound
grounding in the statutory text. Section 18(d)(1) defines a
qualifying patent by what it “claims,” as determined by
claim construction, not mere non-limiting embodiments in
the specification and not who has been sued first. Moreo-
ver, if the “use[] in the practice, administration, or man-
agement of a financial product or service” need not be
reflected in the “claims,” what is left, as a textual alterna-
tive, is only that such use in fact occur. It should not
matter how that fact (which often will be indisputable, as
with goods sold or computers or glass, etc.) is proved,
whether through the specification’s non-limiting (merely
exemplary) identification of uses or the patentee’s in-
fringement complaints or any other evidence.
    Second, the dissent’s effort to confine the scope of the
CBM program to the intended “business method patents”
boundary is also intrinsically indeterminate to an unac-
ceptable degree. What record of lawsuits should count?
What happens when more suits are brought? What
mention of banking or other particular applications in the
specification should count—short of having a claim-
narrowing effect? Indeterminacy in the standard for
deciding Board jurisdiction, it seems to me, should be
avoided for much the same reasons as those the Supreme
Court has recited in rejecting indeterminate standards for
court jurisdiction. See Bolivarian Republic of Venezuela v.
Helmerich & Payne Int’l Drilling Co., 137 S. Ct. 1312,
1321 (2017) (for “a jurisdictional matter,” “clarity is
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION       9



particularly important”) (citing Hertz Corp. v. Friend, 559
U.S. 77, 94–95 (2010)). 3
    For at least those reasons, I believe, the panel’s reso-
lution of the statutory issue is sound, on its own terms
and compared to the alternatives, and comports with all
of our precedent. It also avoids the implausible-breadth
and indeterminacy problems of the alternatives. 4 And



    3    See Hertz, 559 U.S. at 94–95 (“[A]dministrative
simplicity is a major virtue in a jurisdictional statute.
Sisson v. Ruby, 497 U.S. 358, 375 (1990) (Scalia, J., con-
curring in judgment) (eschewing ‘the sort of vague bound-
ary that is to be avoided in the area of subject-matter
jurisdiction wherever possible’). Complex jurisdictional
tests complicate a case, eating up time and money as the
parties litigate, not the merits of their claims, but which
court is the right court to decide those claims. . . . Com-
plex tests produce appeals and reversals, encourage
gamesmanship, and, again, diminish the likelihood that
results and settlements will reflect a claim’s legal and
factual merits. Judicial resources too are at stake. . . .
[C]ourts benefit from straightforward rules under which
they can readily assure themselves of their power to hear
a case. . . . [¶] Simple jurisdictional rules also promote
greater predictability. Predictability is valuable to corpo-
rations making business and investment deci-
sions. . . . Predictability also benefits plaintiffs deciding
whether to file suit in a state or federal court.”).
     4   The CBM program, within its basic “business
method” limits, is further narrowed by an exception for
“technological inventions,” AIA § 18(d)(1), but that excep-
tion cannot sensibly be understood as serving the primary
boundary-defining function for the program. “Technologi-
cal invention” is a phrase with no established meaning;
and the Director, granted regulatory authority to specify
its scope, § 18(d)(2), has defined the term to call for a full
10    SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



this case does not present other issues about coverage of a
patent by AIA § 18. 5
    If Congress chooses to consider extending or revising
the CBM program, it might of course conclude that a
different definition of the scope of a CBM program is
preferable. It is free to do so, and to address the relevant
practical, policy, and textual issues in pursuing its aims.
In the meantime, investment of further judicial resources
to struggle with the issues as an interpretive matter is
not worthwhile for this sunsetting, comparatively little-
used program.




anticipation and obviousness analysis.           37 C.F.R.
§ 42.301(b). That is not a gateway determination, let
alone one that avoids problems of indeterminacy.
     5  Questions have been raised, in two non-
precedential Board decisions Judge Lourie cites in dis-
senting from denial of en banc rehearing, about whether
§ 18 coverage that would otherwise exist is eliminated by
the patent owner’s disclaimer of particular claims of the
patent under 35 U.S.C. § 253. We have not reviewed
those decisions, and the Director has not regulated on the
questions raised. Without suggesting the contours of a
proper analysis, I note two points of possible relevance.
First, a disclaimer of a patent claim does not require that
the patent be treated, for all legal purposes, as if it never
contained the claim. See Rembrandt Wireless Techs., LP
v. Samsung Elecs. Co., 853 F.3d 1370, 1382 (Fed. Cir.
2017). Second, as a general rule, a court’s jurisdiction
depends on the facts at the time of the complaint and is
not defeated by later actions of the defendant (a disclaim-
er is basically a surrender of rights with prejudice). See,
e.g., Cent. Pines Land Co., L.L.C. v. United States, 697
F.3d 1360, 1365–66 (Fed. Cir. 2012); Ford Motor Co. v.
United States, 688 F.3d 1319, 1326 (Fed. Cir. 2012).
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION    11



    The particular issue presented has arisen only rare-
ly—which would not be true if Board panels had common-
ly been finding CBM status with no express or implicit
claim reference to a “use[] in the practice, administration,
or management of a financial product or service.” Where
the issue arises in the next three years or so, the panel
decision here clarifies matters. And where a patent does
not qualify for CBM review, other remedies are available,
including the IPR program for anticipation and obvious-
ness challenges of the sort presented here, reexamination
on similar grounds, and the traditional remedy of litiga-
tion in the district courts. As to litigation, it is worth
noting that, for many patent-eligibility challenges under
35 U.S.C. § 101 of the sort often presented in CBM re-
views (though not in this case), recent experience makes
clear that relatively fast adjudications are now often
available in court.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

                SECURE AXCESS, LLC,
                     Appellant

                            v

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                       2016-1353
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

O’MALLEY, Circuit Judge, concurring in the denial of
rehearing en banc.
   I concur in the court’s order denying rehearing en
banc in this matter. I do so for the reasons articulated by
Judge Plager in his opinion concurring in the denial of
panel rehearing.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               SECURE AXCESS, LLC,
                    Appellant

                            v

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                       2016-1353
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

REYNA, Circuit Judge, concurring in the denial of rehear-
ing en banc.
    I agree with the analysis expressed in Judge Plager’s
opinion concurring in the denial of panel rehearing. For
the reasons stated in Judge Plager’s opinion, I concur in
the court’s order denying rehearing en banc.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               SECURE AXCESS, LLC,
                    Appellant

                            v.

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                       2016-1353
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

LOURIE, Circuit Judge, with whom PROST, Chief Judge,
DYK, WALLACH, and HUGHES, Circuit Judges, join dissent-
ing from the denial of rehearing en banc.
     For reasons stated in my dissent from the panel’s de-
cision and those that follow, I respectfully dissent from
the court’s decision not to rehear this case en banc. The
panel held that “the statutory definition of a [covered
business method (“CBM”)] patent requires that the patent
2       SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



have a claim that contains, however phrased, a financial
activity element.” Secure Axcess, LLC v. PNC Bank Nat’l
Ass’n, 848 F.3d 1370, 1381 (Fed. Cir. 2017) (emphasis
added). However, I believe that conclusion is contrary to
the statutory language, congressional intent, and our case
law.
    Although not every error by a panel is enbancable, the
statutory interpretation question presented here certainly
satisfies the requirements for en banc review, see, e.g.,
Suprema, Inc. v. Int’l Trade Comm’n, 796 F.3d 1338,
1344–45 (Fed. Cir. 2015) (en banc) (petition for en banc
rehearing granted to consider whether certain acts were
covered by 19 U.S.C. § 1337). In particular, both the
Federal Rules of Appellate Procedure and our Internal
Operating Procedures (“IOPs”) provide that en banc
review is available for cases that involve “a question of
exceptional importance.” FED. R. APP. P. 35(a)(2); IOP
13(2)(b). Additionally, our IOPs provide that “maintain-
ing uniformity of decisions” is an appropriate basis to
grant rehearing en banc. IOP 13(2)(a).
     The interpretation of the statutory language “a patent
that claims a method or corresponding apparatus for
performing data processing or other operations used in
the practice, administration, or management of a finan-
cial product or service,” Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112–29, § 18(d)(1), 125 Stat. 284,
329–31 (2011), 1 presents an enbancable issue. There may
be many patents whose identity as a CBM patent either
will be at issue during the life of this statutory provision
in proceedings before the Board, or would have been at
issue under the correct statutory interpretation. A sub-
sidiary issue is whether “a financial activity element”


    1   Section 18 of the AIA, pertaining to CBM review,
is not codified. References to AIA §§ 3, 6, and 18 herein
are to the statutes at large.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION        3



must appear in a claim of the patent in order for a
claimed process to qualify as a CBM patent. If it must,
then this case illustrates how the intent of Congress to
provide for special examination of CBM patents can be
subverted by an unduly limited interpretation of the
statute.
     As we have recognized, concerns “regarding litigation
abuse over business method patents . . . caused Congress
to create a special program for these patents in the first
place.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1325 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2510
(2016). To avoid “expensive litigation” over invalid pa-
tents, Congress created CBM review to be an “inexpensive
and speedy alternative to litigation—allowing parties to
resolve these disputes more efficiently rather than spend-
ing millions of dollars in litigation costs.” Ltr. From Rep.
Smith, Chairman of the House Judiciary Comm., to Sens.
Kyl, Schumer, Leahy, and Grassley, dated Sept. 8, 2011,
reprinted in 157 Cong. Rec. S7413-02 (daily ed. Nov. 14,
2011) [hereinafter Rep. Smith Ltr.]; see also 157 Cong.
Rec. S1363 (daily ed. Mar. 8, 2011) (statement of Sen.
Schumer) (“The [CBM program] is designed to provide a
cheaper, faster alternative to district court litigation over
the validity of business-method patents. This program
should be used instead of, rather than in addition to, civil
litigation.”). Congress intended for the CBM program “to
be construed as broadly as possible” to allow the PTO “to
correct egregious errors that were made in the granting of
a wide range of business method patents.” Rep. Smith
Ltr.; see also 157 Cong. Rec. S1364–65 (daily ed. Mar. 8,
2011) (statement of Sen. Schumer).
    The panel majority’s interpretation severely limiting
what constitutes a CBM patent under AIA § 18 and what
may be considered in making that determination clearly
frustrates Congress’s intent in establishing CBM review.
The Patent Trial and Appeal Board (“the Board”) has had
to apply the panel majority’s incorrect statutory interpre-
4     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



tation in denying institution of CBM reviews. See, e.g.,
Ford Motor Co. v. Versata Dev. Grp., Inc., CBM2016-
00100, slip op. at 2 (P.T.A.B. Mar. 20, 2017) (Turner,
APJ., concurring) (“Because of Secure Axcess . . . we
cannot interpret what may be explicitly absent from
independent claims by looking to the written description.
Thus, even though independent claims . . . are sufficiently
broad to cover their use with financial products, and the
clear intent was for them to be applied to financial prod-
ucts, they cannot render the ’825 patent to be subject to a
covered business method patent review.”); Twilio Inc. v.
Telesign Corp., CBM2016-00099, slip op. at 13 (P.T.A.B.
Feb. 27, 2017) (explaining “our focus is on what the ’792
patent claims, not solely the exemplary embodiments
described in the Specification, some of which are related
to finance and some of which are not” (citing Secure
Axcess, 848 F.3d at 1379–80)); see also Br. of the Clearing
House Payments Co., L.L.C. & Fin. Servs. Roundtable at
4–6, Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, No. 16-
1353 (Fed. Cir. Apr. 20, 2017), ECF No. 150 [hereinafter
Clearing House Amicus Br.].
    Additionally, patent owners have selectively dis-
claimed dependent claims that on their face seem to
include “a financial activity element” to avoid CBM insti-
tution. See, e.g., Ford, slip op. at 2 (Turner, APJ., concur-
ring) (“Had [dependent] claim 5 not been disclaimed, it is
readily apparent that claim 5 would have been found to be
a [CBM].”); Twilio, slip op. at 2, 9; Clearing House Amicus
Br. at 6–8. As an amicus points out, “[a]lthough a broader
independent claim and its narrower dependent claims
both necessarily cover the financial product or service
[covered by the dependent claims], now an artful drafter
may eliminate the narrower claims (or the ‘financial
activity element[s]’ that they recite) to dodge CBM re-
view.” Clearing House Amicus Br. at 7 (third alternation
in original). Thus, despite the panel majority’s assurance
that “the phrasing of a qualifying claim does not require
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION       5



particular talismanic words,” Secure Axcess, 848 F.3d at
1381, the practical effect of its holding promotes that
result. Such a result “elevate[s] form over substance” and
allows “[c]lever drafting” to “avoid PTO review under [the
CBM provisions]” in contravention of congressional in-
tent. 157 Cong. Rec. S1364 (daily ed. Mar. 8, 2011)
(statement of Sen. Schumer).
    For at least these reasons, the fact that CBM review
is currently set to sunset on September 16, 2020, AIA
§ 18(a)(3), does not diminish the current importance of
this issue. Congress may “extend[] or mak[e] permanent
[the CBM] program in the future.” See Rep. Smith Ltr.
Because we generally do not have authority to review
Board decisions denying institution of CBM review, see
Versata, 793 F.3d at 1315 (explaining “we are not here
called upon to review the determination by the PTAB
whether to institute a CBM review, and indeed the stat-
ute expressly instructs that we may not” (citing 35 U.S.C.
§ 324(e)), it was especially important that we correct this
erroneous statutory interpretation now.
     Moreover, the availability of inter partes review
(“IPR”) and post grant review (“PGR”) does not support
denying en banc rehearing in this case. CBM review
permits validity challenges to issued patents that are not
available in an IPR, e.g., pursuant to §§ 101, 112. Com-
pare AIA § 18(a)(1), with 35 U.S.C. § 311(b). Although
CBM review and PGR permit the same types of validity
challenges, AIA § 18(a)(1), only patents that have a claim
with a priority date on or after March 16, 2013 are subject
to PGR, id. §§ 3(n)(1), 6(f)(2)(A). Additionally, a petition
for PGR must be filed within nine months of the patent’s
grant or reissuance. 35 U.S.C. § 321(c). Thus, PGR is not
available for the majority of patents about which Con-
gress expressed specific concern in creating CBM review,
i.e., “poor business-method patents” that issued “during
the late 1990’s through the early 2000’s.” H.R. REP. 112-
98, at 54 (2011), reprinted in 2011 U.S.C.C.A.N. 67, 84;
6      SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



see also 157 Cong. Rec. S1363 (daily ed. Mar. 8, 2011)
(statements of Sens. Pryor, Leahy, and Schumer).
    Regarding the specifics of this case, the panel deter-
mined that the patent at issue was not a CBM patent and
that the Board therefore erroneously reviewed its validity
under the CBM provisions of the AIA. I submit this was
incorrect, and the result of that decision frustrates the
clear intent of Congress in enacting the CBM portion of
the AIA.
     The statute defines a CBM patent as “a patent that
claims a method or corresponding apparatus for perform-
ing data processing or other operations used in the prac-
tice, administration, or management of a financial
product or service, except that the term does not include
patents for technological inventions.” AIA § 18(d)(1). The
claims of the ’191 patent are surely claims 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.”       Id.
(emphasis added).
      Claim 1 recites “[a] method comprising: transforming
. . . received data . . . to create formatted data . . . .” ’191
patent col. 12 ll. 9–18. Claim 17 recites “[a]n authentica-
tion system comprising: an authentication processor
configured to insert an authenticity key into formatted
data to enable authentication of the authenticity key to
verify a source of the formatted data . . . .” Id. col. 12 ll.
62–67. There can be little doubt that such claims meet
the “method or corresponding apparatus for performing
data processing” limitation of the statute.
    They also satisfy the “used in the practice, admin-
istration, or management of a financial product or service”
language of the statute. Examination of the ’191 patent
makes clear that the invention is to be used in the man-
agement of a financial service. The exemplary embodi-
ment is described, inter alia, as follows:
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION       7



   The customer and merchant may represent indi-
   vidual people, entities, or business. The bank
   may represent other types of card issuing institu-
   tions, such as credit card companies, card sponsor-
   ing companies, or third party issuers under
   contract with financial institutions. . . . The bank
   has a computing center shown as a main frame
   computer. However, the bank computing center
   may be implemented in other forms, such as a
   mini-computer, a PC server, a network set of com-
   puters, and the like. . . . Any merchant computer
   and bank computer are interconnected via a sec-
   ond network, referred to as a payment network.
   The payment network represents existing proprie-
   tary networks that presently accommodate trans-
   actions for credit cards, debit cards, and other
   types of financial/banking cards. The payment
   network is a closed network that is assumed to be
   secure from eavesdroppers.       Examples of the
   payment network include the American Express®,
   VisaNet® and the Veriphone® network. In an ex-
   emplary embodiment, the electronic commerce
   system is implemented at the customer and issu-
   ing bank. In an exemplary implementation, the
   electronic commerce system is implemented as
   computer software modules loaded onto the cus-
   tomer computer and the banking computing cen-
   ter. The merchant computer does not require any
   additional software to participate in the online
   commerce transactions supported by the online
   commerce system.
Id. col. 11 ll. 22–67. Similarly, the ’191 patent uses
“bigbank.com” as the only exemplary URL. Id. col. 1 ll.
29–33, col. 8 ll. 21–23. No other applications of the inven-
tion are described in the patent.
    If there were any doubt of the use of the invention in
financial management, the identity of the companies the
8     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



patent owner has sued for infringement of the ’191 patent
should settle the matter. See, e.g., 157 Cong. Rec S1365
(daily ed. Mar. 8, 2011) (statement of Sen. Schumer) (“[I]f
a patent holder alleges that a financial product or service
infringes its patent, that patent shall be deemed to cover
a ‘financial product or service’ for purposes of this
amendment regardless of whether the asserted claims
specifically reference the type of product [or] service
accused of infringing.”). Their litigation pattern speaks
volumes about what they believe their invention is “used”
for. Secure Axcess filed complaints alleging that numer-
ous companies infringe the ’191 patent by “using” the
invention.
     Moreover, at oral argument before the panel, Secure
Axcess’s counsel, in response to a question, stated that no
companies have been sued other than financial institu-
tions. Oral Argument at 7:15–7:30, Secure Axcess, LLC v.
PNC Bank N.A., No. 16-1353 (Fed. Cir. Nov. 2, 2016),
available at http://www.cafc.uscourts.gov/oral-argument-
recordings?title=&field_case_number_value=20161353&-
field_date_value2%5Bvalue%5D%5Bdate%5D=&=Search.
    Additionally, indicating the importance of this issue,
we have received amicus briefs, including from organiza-
tions that represent the interests of financial entities,
urging us to rehear the panel’s decision en banc. These
financial entities obviously know that this patent is a
CBM patent. No amicus briefs were received arguing
against rehearing.
     The patent at issue here clearly is a patent claiming
methods and apparatuses used in the practice of a finan-
cial product or service. The written description of the ’191
patent, in accordance with the requirements of the stat-
ute, see 35 U.S.C. § 112, tells us that the invention is to be
used for financial management. See ’191 patent col. 11 ll.
22–67; see also id. col. 1 ll. 29–33, col. 8 ll. 21–23. The
inventors, complying with the statute, 35 U.S.C. § 112,
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION             9



thus told us what the invention is to be used for. The
claims recite an invention used in the practice of a finan-
cial product, and the uses are described in the written
description of the patent. The panel majority’s interpre-
tation of the statute, which a majority of the court has
determined not to review en banc, flies in the face of that
plain fact.
    The fact that a “financial activity element” does not
appear in the claim does not mean that the patent is not
used in the practice of a financial service. CBM patents
are not even limited to financial services products and
services. See Versata, 793 F.3d at 1325 (holding that “the
definition of ‘covered business method patent’ is not
limited to products and services of only the financial
industry, or to patents owned by or directly affecting the
activities of financial institutions”); see also Blue Calypso,
LLC v. Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir.
2016) (affirming the Board’s decision “declin[ing] to limit
application of CBM review to patent claims tied to the
financial sector”); id. at 1339 n.2 (explaining the Board
correctly concluded that claims referring to “an incentive
program” were eligible for CBM review where the patent
“repeatedly, and almost exclusively discloses ‘incentive’
and ‘incentive program’ in a financial context”) (internal
citation omitted); SightSound Techs., LLC v. Apple Inc.,
809 F.3d 1307, 1315 (Fed. Cir. 2015) (explaining Versata
“foreclosed” limiting the CBM patent definition to patents
“directed to the management of money, banking, or in-
vestment or credit”).
    Although the statute states “a patent that claims,”
this does not suggest that the reference to the financial
product or service has to be in the claim language itself,
rather than in the specification. Requiring financial
language to be in the claims is inconsistent with the
legislative background of this provision. “This section
grew out of concerns originally raised . . . about financial
institutions’ inability to . . . clear checks electronically . . .
10       SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



without infringing the so-called Ballard patents, patents
number 5,910,988 and 6,032,137.” 157 Cong. Rec. S1379
(daily ed. Mar. 8, 2011) (statement of Sen. Kyl). The
majority opinion would hold that the independent claims
of one of these Ballard patents, U.S. Patent No. 5,910,988,
do not fall under CBM review because they make no
reference to financial products or services. 2 See also 157
Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of
Sen. Schumer: “Even the notorious ‘Ballard patents’ do
not refer specifically to banks or even to financial transac-
tions.”).
    Finally, as a matter of patent law, claims do not nec-
essarily need to recite uses of products. Certainly, claims
to products or apparatus do not, and AIA § 18(d)(1) refers
to a “method or corresponding apparatus.” If a method
claim otherwise satisfies the requirements of 35 U.S.C.
§ 112, it need not recite an ultimate use.
     In my view, the Board correctly concluded that the
“method and apparatus claimed by the ’191 patent per-
form operations used in the practice, administration, or
management of a financial product or service,” in accord-
ance with the CBM patent statutory definition. PNC
Bank, N.A. v. Secure Axcess, LLC, CBM2014-00100, 2015
WL 5316490, at *5 (P.T.A.B. Sept. 8, 2015). It is true that
the Board also used overly broad language in stating in
the alternative that the “method and apparatus claimed
by the ’191 patent . . . are incidental to a financial activi-
ty,” id. (emphasis added), and that “the ’191 patent claims


     2   To be sure, four dependent claims (out of the fifty
total claims) refer to “credit cards” in U.S. Patent No.
5,910,988. The PTO guidelines now indicate that a patent
is CBM-eligible as long as one of its claims is CBM-
eligible. See 77 Fed. Reg. 48736. However, there is no
suggestion that this type of subtlety was the basis for
which the notorious Ballard patents were CBM-eligible.
SECURE AXCESS, LLC v. PNC BANK NATIONAL ASSOCIATION       11



a method or apparatus that at least is incidental to a
financial activity, even if other types of companies also
practice the claimed invention.” Id. at *6. However,
overstatement does not change the basic fact that, as the
written description of the patent itself indicates, the
invention is directed to a method and apparatus used in
financial management, as referred to in the statute. See,
e.g., Blue Calypso, 815 F.3d at 1339 n.2.
     The panel majority disparaged the clear use of this
invention in the practice of a financial product or service
by worrying that the CBM program would have “virtually
unconstrained reach” and that “a patent would qualify
[for CBM review] if it claimed a method or corresponding
apparatus for performing any operations that happen to
be used in ‘the practice, administration, or management
of a financial product or service.’” Secure Axcess, 848 F.3d
at 1379 (emphasis in original). The answer to such con-
cerns is that we need not probe the limits of the statutory
language by reciting all sorts of non-financial products to
show that a sensible interpretation of this statute must
include what Secure Axcess itself considers to be a finan-
cial product. Common sense is not precluded from use in
interpreting statutes and claims. See Price Waterhouse v.
Hopkins, 490 U.S. 228, 241 (1989) (“We need not leave our
common sense at the doorstep when we interpret a stat-
ute.”). I agree that the subject matter of the claim must
have a particular relation to a financial product or service,
and not merely be an incidentally-used invention like a
lightbulb or ditch-digging. Cf. Unwired Planet, LLC v.
Google, Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016).
    Moreover, the statutory language itself places limits
on the definition of a CBM patent that the panel majority
largely ignores. The definition expressly excludes “pa-
tents for technological inventions,” AIA § 18(d)(1), alt-
hough this issue was not decided by the panel in this case.
12    SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



    Additionally, the definition may be further limited by
the sensible application of statutory canons of construc-
tion. For example, the panel majority’s concern regarding
the potential breadth of “other operations” in the statute
may be alleviated by application of canons of statutory
construction such as noscitur a sociis and ejusdem generis.
See e.g., Washington State Dep’t of Soc. & Health Servs. v.
Guardianship Estate of Keffeler, 537 U.S. 371, 384 (2003)
(“[U]nder the established interpretative canons of noscitur
a sociis and ejusdem generis, ‘[w]here general words follow
specific words in a statutory enumeration, the general
words are construed to embrace only objects similar in
nature to those objects enumerated by the preceding
specific words.’” (quoting Circuit City Stores, Inc. v. Ad-
ams, 532 U.S. 105, 114–15 (2001) (second alteration in
original)); Jarecki v. G. D. Searle & Co., 367 U.S. 303, 307
(1961) (“The maxim noscitur a sociis, that a word is
known by the company it keeps, while not an inescapable
rule, is often wisely applied where a word is capable of
many meanings in order to avoid the giving of unintended
breadth to the Acts of Congress.”). The statute here
specifies “data processing or other operations used in . . . a
financial product or service,” AIA § 18(d)(1) (emphasis
added), so that inventions that are widely different from
these are not likely to be improperly caught by this lan-
guage.
    I therefore respectfully dissent from the court’s denial
to rehear this case en banc. I would hold that applying
the correct statutory interpretation, the ’191 patent is a
CBM patent because it claims methods and systems used
in the practice of a financial product, as indicated by the
written description, notwithstanding that a “financial
activity element” does not appear in the claims.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

                SECURE AXCESS, LLC,
                     Appellant

                            v

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                       2016-1353
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

DYK, Circuit Judge, with whom WALLACH and HUGHES,
Circuit Judges, join, dissenting from the denial of rehear-
ing en banc.
    I join Judge Lourie’s dissent. I write separately to
point out that this case also presents a predicate question
of whether the “financial product or service” issue is
appealable under the AIA. In Versata Development
2       SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1323
(Fed. Cir. 2015), a panel of this court held that the issue
was appealable. Subsequent panels, bound by Versata,
have reached the same result. 1 In my view, Versata
wrongly held that the appeal bar does not apply to the
question of whether the Board correctly determined that a
patent is CBM-eligible because it involves a “financial
product or service.” Such reviews are inconsistent with
the statute as interpreted in Cuozzo Speed Technologies,
LLC v. Lee, 136 S. Ct. 2131 (2016), which held that the
appeal bar in Section 314(d), identical to the appeal bar
here, precludes review. 2
                                I
    AIA § 18(a)(1) provides that CBM proceedings “shall
be regarded as, and shall employ the standards and
procedures of, a post-grant review.” The post-grant
review (“PGR”) provisions, in turn, provide that “[t]he
determination by the Director whether to institute a post-
grant review under this section shall be final and nonap-
pealable.” 35 U.S.C. § 324(e). Section 18(a)(1) thus bars
review of the decision to institute review of a CBM patent.
That decision to institute includes the issue of whether



    1   Unwired Planet, LLC v. Google Inc., 841 F.3d
1376, 1379 (Fed. Cir. 2016); Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016);
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307,
1314 (Fed. Cir. 2015).
    2   I note that our court is currently considering the
scope of Cuozzo as presented in Wi-Fi One, LLC v. Broad-
com Corp., No. 2015-1944 (en banc), which relates to
whether Achates Reference Publishing, Inc. v. Apple Inc.,
803 F.3d 652 (Fed. Cir. 2015), should be overruled. Acha-
tes held that the one-year time bar of § 315(b) is subject to
the § 314(d) appeal bar. 803 F.3d at 658.
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION    3



the patent is a covered business method patent. The
statute provides that “[t]he Director may institute a
[CBM] proceeding only for a patent that is a covered
business method patent.” AIA § 18(a)(1)(E) (emphasis
added). A patent is a covered business method patent if it
“claims a method or corresponding apparatus for perform-
ing data processing or other operations used in the prac-
tice, administration, or management of a financial
product or service, except that the term does not include
patents for technological inventions.” AIA § 18(d)(1).
    Based on the plain language of 35 U.S.C. § 324(e) and
AIA § 18(a)(1)(E), it is my view that the appeal bar pre-
cludes review of the institution decision, including wheth-
er the financial product or service requirement is
satisfied. Whether a patent qualifies as a CBM is neces-
sarily part of the institution decision that is non-
appealable.
                             II
     This court addressed the § 324(e) appeal bar in Versa-
ta before the Supreme Court’s decision in Cuozzo. The
panel held that § 324(e) does not bar our review of the
Board’s determination that a patent is CBM-eligible,
because the court is reviewing “the ultimate authority of
the PTAB to invalidate a patent . . . [and] the restriction
of [this authority in] § 18 to CBM patents.” Versata, 793
F.3d at 1319. Versata concludes that even where CBM-
eligibility is determined exclusively at the institution
stage, this somehow permeates into the final written
decision and, in turn, implicates PTAB authority, so that
§ 324(e) does not bar review. 3 It seems to me that Versa-


   3     Specifically, the Versata panel found that
“[i]nstitution and invalidation are two distinct actions,”
and that these distinct stages of a post-grant review “do
not become the same just because the agency decides
4     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



ta’s reasoning is inconsistent with Cuozzo, which inter-
preted the same language in § 314(d).
    First, Cuozzo specifically holds that the appeal bar is
not limited to interlocutory appeals, and that we are thus
not “free to review the initial decision to institute review
[even] in the context of the agency’s final decision.” 136 S.
Ct. at 2140.
    Second, Cuozzo directly holds that the appeal bar en-
compasses questions of statutory authority. Cuozzo’s
challenge, which the Supreme Court deemed barred,
presented the question of whether the Board exceeded its
statutory authority by instituting IPR in violation of
§ 312(a)(3) because there was no valid IPR petition. The
statutory authority questions that are barred are thus
“closely tied” to the decision to institute. Cuozzo teaches
that the appeal bar
    applies where the grounds for attacking the deci-
    sion to institute . . . consist of questions that are
    closely tied to the application and interpretation
    of statutes related to the Patent Office’s decision
    to initiate review. This means that we need not,
    and do not, decide the precise effect of [the appeal
    bar] on appeals that implicate constitutional ques-
    tions, that depend on other less closely related
    statutes, or that present other questions of inter-
    pretation that reach, in terms of scope and impact,
    well beyond “this section.”




certain issues at both stages of the process. Nor do they
become the same just because the agency chooses . . . to
decide an issue determining final-action authority at the
initiation stage and then does not revisit the issue later.”
Versata, 793 F.3d at 1319 (emphasis added).
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION     5



136 S. Ct. at 2141 (citation omitted). Because the “Direc-
tor may institute a [CBM] proceeding only for a patent
that is a covered business method patent,” AIA
§ 18(a)(1)(E) (emphasis added), determining what is a
CBM is not only “closely tied” to the institution decision,
but is expressly part of the institution decision itself.
Indeed, it would be difficult to see how the CBM review
program, as a five-part statute—where the requirement
for institution is discussed in Section (a) and the defini-
tion for what is a CBM is discussed in Section (d)—can be
read as separating the institution decision from the
definition of what is a covered business method patent.
The two are not just “closely tied,” but are inextricably
intertwined.
    Third, as here, an institution decision that determines
whether a patent involves a financial product or service is
well within the appeal bar. It does not constitute the
“shenanigans” that Cuozzo held could be appealed, where
   the agency . . . act[s] outside its statutory limits
   by, for example, canceling a patent claim for indef-
   initeness under § 112 in inter partes review. Such
   shenanigans may be properly reviewable . . . [and
   the] reviewing courts [can] set aside agency action
   that is . . . in excess of statutory jurisdiction.
136 S. Ct. at 2141–42 (quotation marks and citations
omitted). This passage cannot mean that every statutory
authority issue is reviewable, since the Court specifically
held that the statutory limit of § 312(a)(3) is not appeala-
ble. Rather, the Supreme Court appears to deem review-
able “shenanigans” to concern, for example, agency
reliance on grounds for invalidation other than those
permitted by the statute, since those grounds necessarily
carry forward to the final written decision.
    In light of Cuozzo, my view is that Versata is wrong in
holding that the § 324(e) appeal bar does not preclude our
6    SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



review of the Board’s determination of what is a CBM
patent, and that, therefore, the issue here was non-
appealable.
  United States Court of Appeals
      for the Federal Circuit
                ______________________

               SECURE AXCESS, LLC,
                    Appellant

                           v

PNC BANK NATIONAL ASSOCIATION, U.S. BANK
NATIONAL ASSOCIATION, U.S. BANCORP, BANK
 OF THE WEST, SANTANDER BANK, N.A., ALLY
    FINANCIAL, INC., RAYMOND JAMES &
  ASSOCIATES, INC., TRUSTMARK NATIONAL
 BANK, NATIONWIDE BANK, CADENCE BANK,
          N.A., COMMERCE BANK,
                   Appellees
            ______________________

                      2016-1353
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100.
                 ______________________

PLAGER, Circuit Judge, concurring in the denial of panel
rehearing.
    The view that this court’s panel opinion in Secure
Axcess 1 was designed to accomplish, or inadvertently
resulted in, a significant narrowing of the Director’s

   1  Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848
F.3d 1370 (Fed. Cir. 2017).
2       SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



ability to institute covered business method (“CBM”)
reviews is mistaken, and often overstated. See the
several amicus briefs in this case. Such overstatements
may cause some Patent Trial and Appeal Board (“Board”)
judges to shy away from using the CBM process in cases
in which CBM review otherwise would be proper, but if so
it is the misunderstanding that is the cause, not the
opinion in Secure Axcess. The court properly rejected
requests to undertake a do-over.
    The discussion in the court’s issued opinion in Secure
Axcess consists of two substantive sections: 1) on the
statute at issue, America Invents Act (“AIA”) § 18(d)(1) 2,
and the Board’s interpretation and application of the
statute in this case; and 2) on the scope of this court’s
authority in fashioning the proper remedy for the appeal
before us.
    With regard to the statute, the court’s opinion, as it
must, follows the court’s governing precedents—most
directly the express holding in our recent case of Unwired
Planet, to the effect that it is error for the Board to add to
the statute phrases like “incidental to a financial
activity.” 3 See Judge Taranto’s opinion concurring in the
denial of rehearing en banc, at 4–6, for a detailed review
of the cases and Board opinions; I concur fully in Judge
Taranto’s views regarding this case, expressed in his
opinion.
    The Secure Axcess opinion explains why the statute
read as a whole results in a focus on the claims of the
patent, and on the necessity for at least one claim to show
how the patent claims a method or apparatus for
performing operations used in the practice of a financial
product or service, as the statute requires. It is not

    2Pub. L. No. 112-29, 125 Stat. 284, 331 (2011).
    3Unwired Planet, LLC v. Google Inc., 841 F.3d 1376,
1379–82 (Fed. Cir. 2016).
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION      3



enough for the claim simply to be “incidental to a
financial activity.” (Judge Lourie, in his dissent to the
denial of en banc, seems to agree: “the subject matter of
the claim must have a particular relation to a financial
product or service, and not merely be an incidentally-used
invention like a light-bulb or ditch-digging.” Op. at 11.)
      To meet the statutory test, Secure Axcess does not
require that the claim specifically use the term
“financial,” nor even specifically mention the financial
product or service to which the invention is addressed: “a
qualifying claim does not require particular talismanic
words.” 841 F.3d at 1381. Nor is consideration limited to
only the words in the claim as written: “A claim in a
patent does not live in isolation from the rest of the patent
. . . claims must be properly construed—that is,
understood in light of the patent’s written description
. . . .” Id. at 1378.
    In this case, the claims in Secure Axcess were
construed by the Board in light of the written description,
and on appeal we found those claim constructions
consistent with the Board’s approved standard for claim
construction. Id. at 1382. But the claim constructions
related only to certain design characteristics of the
technology, a technology designed generally to
authenticate a webpage; they were not aimed at the issue
here, that is, the question how, if at all, was this
invention particularly to be used in the performance of a
financial product or service.
    Judge Lourie in his opinion suggests that the court on
appeal could make an apparently common sense
connection between the claims and the rest of the patent.
Presumably, we could do this by interpreting the claims
in light of the written description as meeting the
statutory standard.     Certainly the patent’s written
description in places has language that might support
such a conclusion. The thought is a perfectly sensible one,
4     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



but the answer lies in the difference between an appeal
from a district court and an appeal from an
administrative agency.
    When an appeal is from the judgment of a district
court, it is the judgment, not the trial court’s opinion, that
is on appeal; the appellate court can affirm on any ground
the record supports. By contrast, when the appeal is from
an administrative agency—and the Board is such an
agency—the appellate court can only review the record on
appeal and the decision of the agency in light of that
record.     The appellate court cannot stray afield to
determine how the matter at issue could have been
resolved had the agency explained its decision differently,
perhaps under a different theory. It is what the agency
said it decided that is the subject of the appeal.
   As the Supreme Court made clear in SEC v. Chenery
Corp., 332 U.S. 194, 196 (1947):
    [A] reviewing court, in dealing with a
    determination     or    judgment    which     an
    administrative agency alone is authorized to
    make, must judge the propriety of such action
    solely by the grounds invoked by the agency. If
    those grounds are inadequate or improper, the
    court is powerless to affirm the administrative
    action by substituting what it considers to be a
    more adequate or proper basis. To do so would
    propel the court into the domain which Congress
    has set aside exclusively for the administrative
    agency.
To be clear—at issue is not whether we can correct a
claim construction made by the Board in the course of its
determination regarding the validity vel non of a patent
properly before it. As an appellate court, of course we
can. The issue rather is whether, in the absence of some
basis in law supporting the Board’s undertaking review of
a patent pursuant to a governing statute, may we
SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION       5



reinterpret the Board’s decision, and the record
underlying that decision, in order to correct somehow for
the absence of compliance with that statutory authority—
Chenery tells us we cannot.
    That leads naturally to the second issue dealt with in
Secure Axcess—the proper remedy to correct the Board’s
error in its interpretation and application of the statutory
standard. Absent anything in the Board decision that
supports a conclusion that one or more of the claims at
issue in Secure Axcess meets the statutory standard—and
in the panel majority’s view there was not a single claim
at issue that could “qualify this patent,” Secure Axcess,
848 F.3d at 1382—the only proper conclusion was a
reversal of the decision. The agency does not have
statutory authority to pursue this decisional route in this
case. 4
    That of course does not pre-judge the merits of the
patent, or of the original petition for Board review.
Assuming no other statutory obstacles, the patent and its
claims are subject to review in a district court action, or in
the course of other Board reviews. Since the validity of
the patent is tested as of the issuance of the patent, and
not on the basis of subsequent events or activities by the
owner, the litigation history of the issued patent is
irrelevant for that reason, as well as for the reasons noted
in the panel opinion.


    4  Though it is not an issue in this case, our
precedents make clear that on final written decision from
the Board, this court has a constitutional obligation as an
Article III court to ensure that final actions by an
administrative agency subject to the court’s jurisdiction
are valid and proper. See Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1314–23 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 2510 (2016); see also Marbury v.
Madison, 1 Cranch 137, 177 (1803).
6     SECURE AXCESS, LLC   v. PNC BANK NATIONAL ASSOCIATION



    In sum, the panel opinion in Secure Axcess fits
comfortably in this court’s tradition of carefully
considered opinions based on precedent and respect for
legislative requirements in the law. The obituaries being
issued for CBM reviews in consequence of Secure Axcess
are at best premature. In another few years they may be
appropriate if Congress does not renew the statute or
something like it; in the meantime, the court properly
declined further review of the matter in this case.
