- PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5
§ 101 eligibilitycites BerkheimerPatents in suitUS 9,669,308 - Google, Inc. / Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00130 · APJ Jennifer S Bisk · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving in place its determination that claims 3–10, 15–31, and 33 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for petitioner
“Id. at 13–14 (citing Ex. 1001, 25:59–61 (claim 1), 26:42–67 (claim 15), 27:36–55). But McRO does not stand for the general proposition that use of rules or conditions to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained that “it [was] the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id. at 1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from situations “where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (citing Parker v. Flook, 437” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for petitioner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which “provides the requisite ‘something more’ than the performance of ‘well-” slip op. at 8
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 8,118,221 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00127 · APJ Rama G Elluru · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its determination that claims 4–12 and 16–18 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify any specific matter that we misapprehended or overlooked. Although Patent Owner repeatedly states that the Board “misapprehends” Smartflash’s argument (see, e.g., Req. Reh’g 5, 10), it does not offer sufficient explanation as to how we misapprehended or overlooked any particular “matter [that] was previously addressed in a motion, an opposition, or a reply.” Rather than providing a proper request for rehearing, addressing particular matters that we previously allegedly misapprehended or overlooked, Patent Owner’s Request provides new briefing by expounding on argument already made.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for patent owner
“Id. at 13 (citing Ex. 1001, 26:59–67 (claims 4–12), 28:12–19 (claims 16– 18)). But McRO does not stand for the general proposition that use of rules or conditions, such as payment, to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained that “it [was] the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id. at 1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from situations “where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (citing Parker v. Flook, 437 U.S. 584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Alice, 134 S. Ct. at 2356)). As explained in our Final Decision, the challenged claims “merely implement an old practice in a new environment.” Final Dec. 12 (quoting FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016)). The challenged claims are similar to the claims found ineligible in FairWarning, which the Court distinguished from those at issue McRO. FairWarning, 839 F.3d at 1094–95. In FairWarning, the Court explained that “[t]he claimed rules ask . . . the same questions . . . that humans in analogous situations . . . have asked for decades, if not centuries” and that it is the “incorporation of a computer, not the claimed rule, that purportedly ‘improve[s] [the] existing technological process.’” Id. at 1095 (citing Alice, 134 S. Ct. at 2358). This is similar to the challenged claims, where the “payment validation data” and “access rule” in claim 4, via its dependency from claim 3, for example, is merely a condition for “determin[ing] what access is permitted to data stored on the data carrier,” that the ’720 patent explains “will normally be dependent upon payments made for data stored on the data carrier” (i.e., allowing access when the data has been purchased). Ex. 1001, 9:21–25.” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for patent owner
“understood, routine, [and] conventional activities previously known to the industry.’” Id. (citations omitted). We are not persuaded that we misapprehended Amdocs. As noted in our Final Decision, “[t]he ’720 patent treats as well-known all potentially technical aspects of the challenged claims, which simply require generic computer components.” Final Dec. 15. Unlike the generic components at issue in Amdocs, the generic components recited in claims 4–12 and 16–18 of the ’720 patent do not operate in an unconventional manner to achieve an improvement in computer functionality. See id. at 17–21. The challenged claims of the ’720 patent simply recite generic memories, data types, processors, and “code to” perform well-known functions with no description of the underlying implementation or programming. See id. at 14–17.” slip op. at 8
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 7,334,720 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00124 · APJ Rama G Elluru · CBM · Rehearing
The Board denied Patent Owner’s rehearing request and left intact its determination that claims 2–5, 9–11, 14, 15, 17, and 19 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for patent owner
“[b]ecause the challenged claims are a technological improvement over the then-existing systems, and limit transfer and retrieval of content based on payment and/or access rules in a process specifically designed to achieve an improved technological result in conventional industry practice, the challenged claims are not directed to an abstract idea. Id. at 13 (citing Ex. 1001, 22:36–57 (claim 11), 26:4–7 (claim 2–5), 26:58– 27:17 (claims 14, 15), 28:16–23 (claim 17)). But McRO does not stand for the general proposition that use of rules or conditions, such as payment, to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily” slip op. at 7
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 7,942,317 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00123 · APJ Jeremy M Plenzler · CBM · Rehearing
The Board denied Patent Owner’s rehearing request and left intact its determination that claims 2–5, 7, 9, and 12 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Id. at 13 (citing Ex. 1001, 26:27–35 (claim 3)). But McRO does not stand for the general proposition that use of rules to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction &” slip op. at 7
§ 101 eligibilitycites Alice · EnfishPatents in suitUS 8,033,458 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00121 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving in place its determination that claims 1–28 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Id. at 13 (citing Ex. 1001, 26:35–37 (claim 1), 28:3–9 (claim 14)). But McRO does not stand for the general proposition that payment validation to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” McRO, 837 F.3d at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner
“because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily 7 This is the only instance where one of Patent Owner’s papers is cited in the Request. incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which “provides the requisite ‘something more’ than the performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Id. (citations omitted). We are not persuaded that we misapprehended Amdocs. As noted in our Final Decision, “[t]he ’516 patent treats as well-known all potentially technical aspects of the challenged claims, which simply require generic computer components.” Final Dec. 15. Unlike the generic components at issue in Amdocs, the generic components recited in claims 1–28 of the ’516 patent do not operate in an unconventional manner to achieve an improvement in computer functionality. See Final Dec. 20–22. Claims 1– 28 of the ’516 patent simply recite generic memories, processors, and “code to” perform well-known functions with no description of the underlying implementation or programming.” slip op. at 7
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 8,794,516 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00131 · APJ Jeremy M Plenzler · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving in place its determination that challenged claims 3–6, 8–14, 16–25, 27–30, and 32–41 are ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“Id. at 13 (citing Ex. 1001, 26:5–11 (claim 3)). But McRO does not stand for the general proposition that use of rules or conditions to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which “provides the requisite ‘something more’ than the performance of ‘well-” slip op. at 7
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 8,061,598 - Apple Inc. / Google, Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00133 · APJ Jeremy M Plenzler · CBM · Rehearing
The Board denied Patent Owner’s rehearing request and left intact its determination that challenged claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Id. at 13 (citing Ex. 1001, 26:35–37 (claim 1)). But McRO does not stand for the general proposition that use of rules or conditions to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained 7 Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). that “it [was] the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id. at 1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from situations “where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (citing Parker v. Flook, 437 U.S. 584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Alice, 134 S. Ct. at 2356)). As explained in our Final Decision, the challenged claims “merely implement an old practice in a new environment.” Final Dec. 12–13 (quoting FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016)). The challenged claims are similar to the claims found ineligible in FairWarning, which the Court distinguished from those at issue McRO. FairWarning, 839 F.3d at 1094–95. In FairWarning, the Court explained that “[t]he claimed rules ask . . . the same questions . . . that humans in analogous situations . . . have asked for decades, if not centuries” and that it is the “incorporation of a computer, not the claimed rule, that purportedly ‘improve[s] [the] existing technological process.’” Id. at 1095 (citing Alice, 134 S. Ct. at 2358). This is similar to the challenged claims, where the “payment validation data” in claim 2, for example, is merely a condition for “enabl[ing] access to . . . multimedia content” that the ’772 patent explains “will normally be dependent upon payments made for data stored on the data carrier” (i.e., allowing access when the data has been purchased). Ex. 1001, 9:28–30.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which 8 This is the only instance where one of Patent Owner’s papers is cited in the Request. “provides the requisite ‘something more’ than the performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Id. (citations omitted). We are not persuaded that we misapprehended Amdocs. As noted in our Final Decision, “[t]he ’772 patent treats as well-known all potentially technical aspects of the challenged claims, which simply require generic computer components.” Final Dec. 15. Unlike the generic components at issue in Amdocs, the generic components recited in claims 2–4, 6, 7, 9, 11– 13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not operate in an unconventional manner to achieve an improvement in computer functionality. See Final Dec. 20–24. Claims 2–5, 7, 9, and 12 of the ’772 patent simply recite generic memories and data types with no description of the underlying implementation or programming.” slip op. at 8
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 8,336,772 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00033 · APJ Matthew R Clements · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving claims 25, 26, 30, and 32 unpatentable under § 101 because the request did not show the Board misapprehended or overlooked a matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Other
“Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 11–13) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 15–29 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 38 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.