- Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Sep 28, 2017 · CBM2016-00091 · APJ Glenn J Perry · CBM · Rehearing
The Board denied Facebook and Instagram’s rehearing request, finding no abuse of discretion in denying CBM review because the disclaimed claims could not establish eligibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Adverse judgmentOther
“when a patent owner files a statutory disclaimer after the filing of the petition but before institution, CBM patent review eligibility can be based on the disclaimed claims. Specifically, Petitioner relies upon limitations of disclaimed claims 6 and 8−11 as supporting its contention that the ’502 patent qualifies for CBM patent review. See Pet. 4–8 (citing claim 6, for example, which recites “charging a fee, to the user”). Patent Owner, however, statutorily disclaimed claims 6 and 8−11, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). See Prelim. Resp. 4; Ex. 2001. In the Decision on Institution, for purposes of establishing CBM patent review eligibility and in accordance with Federal Circuit case law, we treated the ’502 patent as though these claims never existed. Dec. on Inst. 8–10.” slip op. at 7
NonePatents in suitUS 9,037,502 - Google Inc. v. Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, And Morgan Lee RozmanInstitution deniedPTAB · May 2, 2017 · CBM2017-00015 · APJ Brian J Mcnamara · CBM · Institution
The Board denied institution because the challenged patent does not qualify for covered business method review; its claims are not directed to a financial activity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We perceive no “issue of material fact” that should be resolved in favor of the Petitioner at the institution stage. Pet. Supp. Brief 3. Although the Petition discusses the construction of several claim terms, none of the proposed interpretations includes any reference to features that are related to internet banking or any other feature that is financial in nature. See Pet. 27 (e.g., proposing that “web browser process” be construed as a “process that can access data on websites” in which “this ‘access’ to website data can be direct or indirect”). In short, none of the claims of the ’528 Patent is “directed to” a financial activity on its face, and we do not read any such financial activity into them based on the Specification’s assertion that malware protection could be useful in internet banking. Thus, we are not persuaded that the ’528 Patent qualifies for covered business method patent review.” slip op. at 13
- BurdenDecided for patent owner
“We perceive no “issue of material fact” that should be resolved in favor of the Petitioner at the institution stage. Pet. Supp. Brief 3. Although the Petition discusses the construction of several claim terms, none of the proposed interpretations includes any reference to features that are related to internet banking or any other feature that is financial in nature. See Pet. 27 (e.g., proposing that “web browser process” be construed as a “process that can access data on websites” in which “this ‘access’ to website data can be direct or indirect”). In short, none of the claims of the ’528 Patent is “directed to” a financial activity on its face, and we do not read any such financial activity into them based on the Specification’s assertion that malware protection could be useful in internet banking. Thus, we are not persuaded that the ’528 Patent qualifies for covered business method patent review.” slip op. at 13
None - Broadsign International, LLC v. T-Rex Property ABInstitution deniedPTAB · Apr 26, 2017 · CBM2017-00008 · APJ Barbara A Benoit · CBM · Institution
The Board denied institution because the challenged patent was not shown eligible for CBM review; claims 1, 11, 12, 49, 51-55, and 58-74 were disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We conclude that the information in the Petition does not demonstrate that the challenged patent is eligible for covered business method patent review. In addition, even after Patent Owner submitted, on February 7, 2017, its Preliminary Response and evidence of filing statutory disclaimer, Petitioner did not request an opportunity to present arguments that any other claims would meet the threshold financial requirement for a covered business method patent review. The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53 (encompassing “direct placement of commercial advertisements, public service announcements and other content on electronic displays”). Accordingly, we determine that Petitioner has failed to meet its burden of showing that the challenged patent is eligible for covered business method patent review. Therefore, we do not institute a covered business method patent review for claims 13, 42, 43, 48, 50, 56, and 57 of the ’603 patent.” slip op. at 9
- Adverse judgmentAdverse judgmentOther
“that it filed with the Office a statutory disclaimer of claims 1–12, 17, 19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. 1. Disclaimed Claims Challenged in the Petition Of the challenged claims, Patent Owner disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method patent review cannot be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.”). Accordingly, no covered business method patent review will be instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes constructions for several terms that recite “means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth “[h]ow the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”). Patent Owner does not address directly Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11. We conclude that no term needs to be construed expressly in order for us to determine whether a covered business method patent review should be instituted.” slip op. at 6
Claim constructionPatents in suitUS 6,430,603 - Facebook, Inc. / Instagram, LLC v. Skky, LLCInstitution deniedPTAB · Apr 12, 2017 · CBM2017-00003 · APJ Karl D Easthom · CBM · Institution
The Board denied institution for claims 1–4, 6, and 7 because the ’810 patent did not qualify as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, at best, establishes that the existing challenged claims encompass methods that may include potential financial activity such as a sale. Petitioner’s showing is not sufficient, because “[a]ll patents, at some level, relate to potential sale of a good or service.” See Unwired Planet, 2016 WL 6832978, at *5. As Patent Owner argues, “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.” Prelim. Resp. 9 (quoting Unwired Planet, 2016 WL 6832978, at *8). Based on the foregoing discussion, Petitioner fails to meet its burden of showing that the ’810 patent is eligible for the transitional covered business method patent review program.” slip op. at 15
- Adverse judgmentAdverse judgmentOther
“I. INTRODUCTION Petitioner, collectively Facebook, Inc. and Instagram, LLC, filed a Petition (Paper 2, “Pet.”) requesting covered business method (“CBM”) patent review of claims 1–7 of U.S. Patent No. 9,219,810 B2 (Ex. 1001, the “’810 patent”) under Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner, Skky, LLC, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it filed with the Office a statutory disclaimer of claim 5 of the ’810 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex. 2001). After the Preliminary Response, Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response, as authorized by the panel pursuant an e-mail request by Petitioner, to address the consequences of Patent Owner’s disclaimer of claim 5. Paper 7 (“Pet. Prelim. Reply”). In response to the Preliminary Reply, Patent Owner filed a Preliminary Sur-Reply, also as authorized by the panel. Paper 8 (“PO Sur-Reply”).” slip op. at 2
NonePatents in suitUS 9,219,810 - Google Inc. v. Klaustech, Inc.Rehearing deniedPTAB · Apr 6, 2017 · CBM2016-00096 · APJ Michael R Zecher · CBM · Rehearing
The Board denied Google’s rehearing request and left in place the denial of CBM review for claims 20, 21, 23-26, 28, and 29 because they were not shown to be financial in nature.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Google in turn.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“allowing “advertising control to be maintained.” Ex. 1001, 3:40–43. In other words, the existing data in the record identifying which ads have already been displayed and timed out is used for the purpose of altering the ads and ad content available for the next display. See id. at 3:12–23. Independent claims 20 and 25 are illustrative of this use as they recite using the record for “retaining . . . the timer timeout of the ad content,” and “transmitting . . . new ad content . . . in response to receipt of the timer timeout report.” Id. at Reexamination Certificate, 2:43–49, 3:40–45.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“its position, quoting for the first time a sentence from Mr. Schulz’s testimony repeating Google’s position that “the only reason ‘records’ are generated and retained in [independent] claims 20 and 25 (and their dependent claims) is for processing payments for ad placements,” and characterizing Mr. Schulz’s testimony as “unrebutted.” Req. Reh’g 5 (emphasis omitted) (quoting Ex. ¶ 31). This newly-quoted testimony is flawed for the same reasons we discussed in our Decision. That is, Mr. Schulz relies on permissive and optional language as a basis for his opinion. See Ex. 1003 ¶ 31 (quoting Ex. 1001, Abstract (“websites can be compensated for ad display and advertisers billed for the ad display” (emphasis added)); id. at 4:32–37 (“record may be used to compensate” (emphasis added))). These optional compensation and billing aspects, however, are nowhere recited in the challenged claims. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (“[AIA] § 18(d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.”); see also Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1378–79 (Fed. Cir. 2017) (“[T]he written description alone cannot substitute for what may be missing in the patent ‘claims,’ and therefore does not in isolation determine CBM status.”).” slip op. at 6
NonePatents in suitUS 6,128,651 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Nov 9, 2016 · CBM2016-00032 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied petitioner’s rehearing request, finding no error in its denial of the proposed obviousness combination of TSE, Schott, and Subler.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). In its request for rehearing, the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“and evidence but were not persuaded that a POSITA would have combined TSE, Schott, and Subler in the manner proposed in the Petition. The Decision states: We disagree that the proposed combination is nothing more than an obvious design choice or nothing more than combining prior art elements according to a known method to yield predictable and desirable results of increasing the efficiency and decreasing the complexity of order entry. As can be seen from the annotated figure above, the proposed combination results in a more complex order entry system because it requires not merely the substitution of a point-and-click technique for a drag-and-drop technique but the addition of a window, such as Subler’s Viewer window 334, having the order icons to drag-and-drop. Dec. 25 (referring to a figure from page 49 of the Petition, reproduced on page 24 in the Decision). Petitioner effectively disagrees with our Decision, which is not an appropriate basis for rehearing.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,212,999 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Sep 20, 2016 · CBM2016-00031 · APJ Jeremy M Plenzler · CBM · Rehearing
The Board denied rehearing of its decision denying inter partes review on the Silverman, Gutterman, and Togher challenge, finding no error in its static-price-axis analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). In its request for rehearing, the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).” slip op. at 2
NonePatents in suitUS 7,813,996 - HP Inc. / SAP America, Inc. v. Big Baboon, Inc.Institution deniedPTAB · Jun 28, 2016 · CBM2016-00020 · APJ Trenton A Ward · CBM · Institution
The Board denied institution because Petitioner did not show that claims 15 and 20–34 were more likely than not unpatentable under § 101 or any of the three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons that follow, Petitioner failed to establish that it is more likely than not that at least one of the challenged claims is unpatentable. Therefore, we deny the Petition.” slip op. at 2
- BurdenDenied
“We believe the same is true in this matter. Petitioner fails to identify specific documentary evidence indicating that the claim element “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” would have been obvious to a person of ordinary skill in the art at the time of the ’275 patent. At best, Petitioner provides a string cite to nine different documents, without pointing to any particular page or disclosure in any of those documents, as allegedly illustrating an “industry-wide push to Web-enable,” and provides a string cite to eight different paragraphs of testimony from Dr. Greenspun, as allegedly indicating why a skilled artisan “would have seen a strong need to provide Web-enabled system administration capabilities for the R/3 system described in R/3 Online and R/3 Book.” See Pet. 63–64 (citing Exs. 1017– 1021, 1023, 1026, 1027, 1030; Ex. 1032 ¶¶ 58–60, 85–86, 110–112). Petitioner, however, fails to identify with specificity which documentary evidence indicates that it would have been common knowledge to provide a Web interface for system administration of the system described by R/3 Online and the R/3 Book and, thus, that claim 15 would have been obvious to an ordinarily skilled artisan based on combining this alleged common knowledge with the system described by R/3 Online and R/3 Book. The Board, and Patent Owner, are left to speculate as to which particular evidence Petitioner is relying on. See Pet. 12, 42; 37 C.F.R. §§ 42.304(b)(4)–(5) (a petition must “specify where each element of the claim is found in the prior art” and identify “specific portions of the evidence that support the challenge”), 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). In view of this deficiency, we determine that Petitioner fails to articulate sufficient reasoning to support its assertion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, based on the record before us, we determine that Petitioner fails to demonstrate that it is more likely than not that independent claim 15, and claims 20–34 dependent therefrom, would have been obvious over R/3 Online and R/3 Book.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner urges the Board to construe two claim phrases. First, Petitioner urges us to construe the claimed “end-to-end, business-to-business, e-commerce business automation software for automation business functions across multiple business domains” to mean “[s]oftware that, using a computer network, at least partially automates business functions relating to two or more businesses and from two or more business domains (such as products, payments, and financial performance).” Pet. 19. Second, Petitioner urges us to construe the claimed “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” to mean “producing a software configuration in which modules can be enabled or disabled by (1) changing the configuration parameters of a web server program or (2) using a Web browser to change configuration parameters of software running on a server.” Pet. 21. Patent Owner does not offer any proposed constructions of claim terms in its Preliminary Response. For the reasons explained below, in this case determining the scope of the terms proffered by Petitioner is not necessary to determine whether Petitioner has met the standard for institution of a covered business method patent review, and we decline to adopt the constructions sought by Petitioner. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“Claim 15 (the only claim substantively addressed by Petitioner), however, does not recite any “gathering” steps, and Petitioner does not explain sufficiently how the limitations of claim 15 are directed to the concept of “gathering” information. For example, claim 15 merely recites “providing . . . business automation software, “identifying multiple modules of the software,” and producing a “software configuration.” Additionally, claim 15 requires producing a “workscope/workflow structured display of complex database records,” which constitutes “an integrated decision-making environment for a particular business function.” Thus, the method of claim 15 does not expressly require that information be gathered across “multiple business domains.” Rather, claim 15 requires providing “business automation software” to produce a “structured display” of “records” pertaining to a “business transaction,” such that the display constitutes an “integrated decision-making environment for a particular business function.” Thus, even if Petitioner is correct that “gathering information from across a business and using the information to make decisions” by itself is an abstract idea, Petitioner’s analysis does not address sufficiently the specific language of claim 15 and explain why claim 15 is directed to that idea. See Pet. 27. Similarly, dependent claims 20–34 are not directed to “gathering information,” and Petitioner provides no analysis of the language of the dependent claims. In light of the above, we determine that Petitioner has failed to establish the first step of the Mayo framework; i.e., Petitioner fails to identify sufficiently an abstract idea to which claim 15 is directed.8 Petitioner combines its arguments under § 101 against dependent claims 20– 34 with its arguments against claim 15 and fails to provide any additional arguments for these dependent claims. See Pet. 25 (arguing that the “sixteen challenged claims of the ’275 patent are likewise unpatentable under §101”). Therefore, we similarly determine that Petitioner fails to establish the first step of the Mayo framework with respect to dependent claims 20–34. Based on the foregoing, we determine Petitioner has failed to establish, based on the record presented, that claims 15 and 20–34 are more likely than not directed to patent ineligible subject matter under 35 U.S.C. § 101. 8 We need not decide whether claim 15 is directed to a different abstract idea, and only determine that Petitioner has not shown sufficiently that claim 15 is directed to the alleged abstract idea that Petitioner proposes in the Petition.” slip op. at 19
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · MayoPatents in suitUS 6,343,275 - Corelogic, Inc. v. Boundary Solutions, Inc.Institution deniedPTAB · May 24, 2016 · CBM2016-00016 · APJ Peter P Chen · CBM · Institution
The Board denied institution for claims 1–19 because the petition did not establish that the ’957 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“method patent,” as defined by the AIA. CoreLogic bears the burden of persuasion that the ’957 patent is a covered business method patent. See 37 C.F.R. § 42.304(a). For the reasons discussed below, we determine CoreLogic has made an insufficient showing that the ’957 patent is a “covered business method patent.” The AIA defines “covered business method patent” as “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 financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). The legislative history of the AIA “explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims. AIA § 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R. § 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4) (“[T]he definition set forth in § 42.301(a) . . . is based on what the patent claims.”). A patent need have only one claim directed to a covered business method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 8) (“A patent having one or more claims directed to a covered business method is a covered business method patent for purposes of the review, even if the patent includes additional claims.”).” slip op. at 5
- Adverse judgmentAdverse judgmentOther
“patent because “[a]t least claim 1 of the ’957 patent claims data processing or other operations that are financial in nature or, at a minimum, incidental or complementary to a financial activity.” Pet. 7. CoreLogic also relies on dependent claims 13 and 16–18, and argues that those claims “explicitly limit the claims to financial applications.” Id. at 9; see also id. at 11 (alleging that claims 16–18 cover “subject matter incidental or complementary to a financial activity”). As noted above, however, BSI disclaimed claims 13 and 16–18 at the same time it filed its Preliminary Response. See Ex. 2003. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). We agree with other panels that have considered this issue under similar facts and concluded that the disclaimed claims should not be consulted when determining whether the patent is a covered business method patent under AIA §18(d)(1).1 We are mindful that other Board decisions have evaluated compliance with CBM standing requirements at the time of filing, but those cases are distinguishable2 and not binding here. Any suggestion in those cases that a decision on institution should address the disclaimed claims because they existed at the time the petition was filed is inconsistent with Federal Circuit precedent instructing us to treat the claims as if they never existed, and our Rules forbidding institution “based on disclaimed claims.” Guinn, 96 F.3d at 1422; 37 CFR § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); see also Google Inc. v. SimpleAir, Inc., CBM2015- 00019, slip op. at 5–6 (PTAB Aug. 19, 2015) (Paper 15) (Order Denying Request for Rehearing) (rejecting petitioner’s argument that disclaimed claim should be considered because it existed at the time the petition was 1 See, e.g., AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015- 00185, slip op. at 9–10 (PTAB May 4, 2016) (Paper 10); Great West Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at 7–9 (PTAB Feb. 9, 2016) (Paper 10); Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper 11). 2 In Travelers Lloyds of Texas Ins. Co. v. Integrated Claims Sys., LLC, CBM2014-00187, slip op. at 7, 8 n.1 (PTAB Mar. 30, 2016) (Paper 31), the Patent Owner attempted to cancel a claim after institution, not disclaim a claim prior to institution. In J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, slip op. at 9 (PTAB Jan. 12, 2016) (Paper 40), the Patent Owner’s disclaimer occurred after institution, not prior to institution. filed). We therefore do not consider disclaimed claims 13 and 16–18 in our analysis.” slip op. at 6
- BurdenDecided for patent owner
“We agree with BSI. CoreLogic does not explain adequately how any of the claims of the ’957 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way. Claim 1 claims a “method for retrieving geographic parcel boundary polygon maps and associated parcel attribute data,” which has applicability to retrieving and displaying map data, not financial products and services. CoreLogic suggests that the “transmitting” step of claim 1 “can be used” by various entities in a business context, but does not argue, let alone establish, that the claim terms on their face are financial in nature. See Pet. 1. CoreLogic asserts that the Specification of the ’957 patent describes several methods of generating revenue using the claimed methods, and that numerous businesses may pay for access to map data generated using the claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the Specification is unavailing. First, CoreLogic fails to address how these disclosures relate directly to, or meaningfully informs our analysis of, the language of the claims. For example, CoreLogic does not direct us to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods. Second, CoreLogic fails to address portions of the Specification that indicate the claimed invention can be used “for free,” i.e., without any generation of revenue or financial aspect at all. See Ex. 1001, 2:58 (“These end users may access for free . . . .”), 14:11–15 (“Another public-private alliance option is to offer the free use of the NPDP server to such data sponsors in addition to or in lieu of their revenue share.”), 14:41–45 (“[C]ommodity service subscriber end users (customers) can have access to the NPDP at no charge.”), 16:8–12 (“It is also contemplated that other independent public and private data sponsors could be provided with links as part of the NPDP display which end users could access on a free or fee basis.”). Given that the Specification contemplates use of the claimed inventions for free, it is not apparent that the “purpose of the claimed method is to provide data in exchange for money,” as CoreLogic suggests. Pet. 10. At most, CoreLogic has established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step. Under these circumstances, we conclude that the “financial prong” has not been met. Numerous Board decisions have taken a similar approach in situations where the Specification refers to potential financial applications for the claimed inventions but the claim language does not expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab,” slip op. at 10
NonePatents in suitUS 7,092,957 - AT&T Mobility LLC v. Intellectual Ventures II LLCInstitution deniedPTAB · May 4, 2016 · CBM2015-00185 · APJ Georgianna W Braden · CBM · Institution
The Board denied institution for claims 1, 2, 5, and 9 because the petitioner did not show that the patent qualifies for covered business method review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“illustrative embodiment directed to an application of the claimed method for billing purposes (see Ex. 1001, 2:54–64 (describing billing of wireless cellular subscribers)), we find that such an example is insufficient to make the challenged claims of the ’352 patent eligible for covered business method patent review. The primary justification for covered business method review eligibility provided by Petitioner is that the illustrative embodiments in the specification of the ’352 patent merely show that the invention may be used for billing. Pet. 9. Mere ability to use the claimed invention in a financial context, standing alone, does not require a finding that the financial prong has been met, especially when the specification as a whole suggests a broader application. See ServiceNow, Inc., CBM2015-00108, slip. op. at 17 (claims were directed to the general utility of managing a conversation in a Web service and did not cover a financial transaction); ServiceNow, Inc. v. BMC Software, Inc., Case CBM2015-00107, slip op. at 11–12 (PTAB Sept. 11, 2015) (Paper 12) (panel found instructive that the problem addressed by the patent was non-financial in nature, and that a significant portion of the specification described the claimed method in general terms). Petitioner’s citations to the specification, however, do not provide a persuasive basis to conclude that the claims deal with the movement of money or are involved directly in a financial transaction in anything other than a tangential way. Rather, we find that the challenged claims recite a method of general utility for providing a directory assistance call completion service to a wireless communication service subscriber, and the cited example from the ’352 patent makes clear that any financial aspect of the invention as discussed in the specification is, at most, a non-limiting example. See Ex. 1001, 4:55–66, 8:44–57; see ServiceNow, Inc., CBM2015-00108, slip. op. at 15; PNC Bank NA v. Parus Holding, Inc., CBM2015-00112, slip op. at 16–17 (PTAB Nov. 9, 2015) (Paper 11). The facts before us, as outlined above, establish that the claimed method is of general utility, and Petitioner has not introduced persuasive evidence to show that at least one claim of the ’352 patent recites a method used in the practice, administration, or management of a financial product or service. See 37 C.F.R. § 42.301(a); see ServiceNow, Inc., CBM2015-00108, slip. op. at 17. Accordingly, Petitioner has not met its burden of demonstrating that the ’352 patent is eligible for covered business method patent review.” slip op. at 12
NonePatents in suitUS 5,339,352
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