- 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 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00032 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving its determination that claims 14, 19, and 22 are patent ineligible under § 101 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of 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'Not reached
“determination that claims 14, 19, and 22 (“the challenged claims”) are directed to patent-ineligible subject matter. Req. Reh’g 5. In its Request, Smartflash presents arguments directed to alleged similarities between the challenged claims and those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016), and alleged differences between the challenged claims and those at issue in Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner
“As we stated in our Final Written Decision and Petitioner argues, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 14, 19, and 22, the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 15–17; Notice Resp. 1–2. These limitations of claims 14, 19, and 22 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1315, Abstract, 10:24–30).” slip op. at 7
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00031 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request and left its decision that claims 1, 5, 8, and 10 are unpatentable under § 101 unchanged.
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 two — inventive conceptStep2 no inventive conceptUnpatentable
“As we stated in our Final Written Decision and Petitioners argue, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 1, 5, 8, and 10 the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 14–17; Notice Resp. 1–2. These limitations of claims 1, 5, 8, and 10 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1215, Abstract, 10:24–30).” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“Rather than providing a proper request for rehearing, addressing particular matters that we previously misapprehended or overlooked, Smartflash’s Request provides new briefing by expounding on argument already made. Smartflash cannot simply allege that an “issue” (e.g., whether the claims are directed to an abstract idea) was previously addressed, generally, and proceed to present new argument on that issue in a request for rehearing. See 37 C.F.R. § 42.71. 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 10–12) 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. 16–25 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 42 (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 5
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jun 10, 2016 · CBM2015-00017 · APJ Matthew R Clements · CBM · Rehearing
The Board denied Patent Owner’s request for rehearing of the final decision holding claims 1, 2, 15, and 31 unpatentable 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 2
- Strike new argumentNew argument disregardedDecided for petitioner
“As noted above, our rules require that the requesting party “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.” 37 C.F.R. 42.71(d) (emphasis added). In its Request, however, Patent Owner does not identify any specific matter that we misapprehended or overlooked. Rather, the only citation to Patent Owner’s previous arguments are general citations, without explanation as to how we misapprehended or overlooked any particular matter in the record. For example, with respect to Patent Owner’s arguments regarding DDR Holdings, Patent Owner simply notes that “[p]ursuant to 37 C.F.R. § 42.71(d), the issue of whether the challenged claims were similar to those in DDR Holdings was previously addressed. See PO Resp. 1, 10–12.” Request 7 n.3. Similarly, in Patent Owner’s” slip op. at 3
Nonecites AlicePatents in suitUS 8,061,598 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCRehearing deniedPTAB · Jun 10, 2016 · CBM2014-00193 · APJ Matthew R Clements · CBM · Rehearing
The Board denied Patent Owner’s request for rehearing, leaving intact its final decision that claim 7 is unpatentable 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
- Strike new argumentNew argument disregardedDecided for petitioner
“particular matters that we previously misapprehended or overlooked, Patent Owner’s Request provides new briefing by expounding on argument already made. Patent Owner cannot simply allege that an “issue” (e.g., whether the claims are directed to an abstract idea) was previously addressed, generally, and proceed to present new argument on that issue in a request for rehearing. See 37 C.F.R. § 42.71. Patent Owner’s arguments are either new or were addressed in our Final Decision. For example, Patent Owner’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Patent Owner did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response (see PO Resp. passim (arguing only the second step of the Mayo and Alice test)). To the extent portions of the Request are supported by Patent Owner’s argument in the general citations to the record, we considered those arguments in our Final Decision, as even Patent Owner acknowledges. See, e.g., Req. Reh’g 6 (citing Final Dec. 14) (“The Board rejected Patent Owner’s reliance on DDR Holdings (at 14), holding that Claim 7 was not ‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’”). For example, Patent Owner’s arguments about inventive concept (Req. Reh’g 5– 6, 12–15) were addressed at pages 9–12 and 16–17 of our Final Decision, Patent Owner’s arguments about preemption (Req. Reh’g. 6) were addressed at pages 17–20 of our Final Decision, and Patent Owner’s arguments about DDR Holdings (Req. Reh’g. 6–9) were addressed at pages 12–16 of our Final Decision. Mere disagreement with our Final Decision also is not a proper basis for rehearing.” slip op. at 4
Nonecites AlicePatents in suitUS 8,061,598 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCRehearing deniedPTAB · Jun 10, 2016 · CBM2014-00194 · APJ Jennifer S Bisk · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its determination that claim 32 is unpatentable 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'Not reached
“Patent Owner’s arguments are either new or were addressed in our Final Decision. For example, Patent Owner’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Patent Owner did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response (see PO Resp. passim (arguing only the second step of the Mayo and Alice test)). To the extent portions of the Request are supported by Patent Owner’s argument in the general citations to the record, we considered those arguments in our Final Decision, as even Patent Owner acknowledges. See, e.g., Req. Reh’g 7 (citing Final Dec. 15) (“The Board rejected Patent Owner’s reliance on DDR Holdings (at 15), holding that Claim 7 was not ‘rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.’”). For example, Patent Owner’s arguments about inventive concept (Req. Reh’g 5– 7, 12–15) were addressed at pages 10–13 and 18–20 of our Final Decision, Patent Owner’s arguments about preemption (Req. Reh’g. 6–7) were addressed at pages 20–22 of our Final Decision, and Patent Owner’s arguments about DDR Holdings (Req. Reh’g. 7–10) were addressed at pages 14–18 of our Final Decision. Mere disagreement with our Final Decision also is not a proper basis for rehearing.” slip op. at 5
§ 101 eligibilitycites AlicePatents in suitUS 8,118,221 - Epicor Software Corporation v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Rehearing
The Board denied both rehearing requests, leaving the institution of § 101 review of claims 1, 5, 8, 19, 20, and 27–31 and denial of prior art grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“D. Conclusion We are not persuaded of an abuse of discretion either by Patent Owner or Petitioner. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that each Request for Rehearing is denied.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted covered business method patent review of the ’201 Patent based upon the following ground, combined from both proceedings: Ground Prior Art Challenged Claims § 101 n/a 1, 5, 8, 19, 20, and 27–31 Papers 17 and 13 (’02 Decision and ’30 Decision, respectively). The Board did not institute covered business method patent review upon any prior art grounds. See ’02 Decision 6 and ’30 Decision 4–5 (listing grounds proffered by Petitioner).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 27 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the date element level”). However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” ’02 Decision 20. See also Pet. 20. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Although Atalla discloses authorization to a file based on information about the file, Ex. 1007, 3:27–58, Petitioner has not shown that the information about the file is individual data element types. Overall, Atalla addresses accessing files, in part, based on whether the files were previously accessed, but a file in not the same as an individual data element value. The section of Atalla cited in Petitioner’s Rehearing Request discloses the need for a correct key code, but that key code is for the entire file and not specific to the data element type. Pet. Req. 6 (citing Ex. 1007, 3:27–58). Although “information about the file” could include information about individual data element types, Petitioner has not demonstrated any such teaching or suggestion in Atalla. As stated in the ’02 Decision, Atalla “does not describe that access authorization file 15 comprises ‘a data element protection catalogue (DPC), which contains each individual data element type (DT) and one or more protection attributes stating processing rules for data element values’ as requires by claim 1.” ’02 Decision 28. Thus, we are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 1, 5, 19, 20, and 27–31 over the anticipation ground of Atalla provided in the Petition.” slip op. at 16
§ 101 eligibility§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,321,201 - Epicor Software Corporation v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00030 · APJ Kevin F Turner · CBM · Rehearing
The Board denied both parties’ rehearing requests and left in place institution on the § 101 ground for claims 1, 5, 8, 19, 20, and 27–31.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“’201 Patent based upon the following ground, combined from both proceedings: Ground Prior Art Challenged Claims § 101 n/a 1, 5, 8, 19, 20, and 27–31 Papers 17 and 13 (’02 Decision and ’30 Decision, respectively). The Board did not institute covered business method patent review upon any prior art grounds. See ’02 Decision 6 and ’30 Decision 4–5 (listing grounds proffered by Petitioner).” slip op. at 2
- Burden
“Although Atalla discloses authorization to a file based on information about the file, Ex. 1007, 3:27–58, Petitioner has not shown that the information about the file is individual data element types. Overall, Atalla addresses accessing files, in part, based on whether the files were previously accessed, but a file in not the same as an individual data element value. The section of Atalla cited in Petitioner’s Rehearing Request discloses the need for a correct key code, but that key code is for the entire file and not specific to the data element type. Pet. Req. 6 (citing Ex. 1007, 3:27–58). Although “information about the file” could include information about individual data element types, Petitioner has not demonstrated any such teaching or suggestion in Atalla. As stated in the ’02 Decision, Atalla “does not describe that access authorization file 15 comprises ‘a data element protection catalogue (DPC), which contains each individual data element type (DT) and one or more protection attributes stating processing rules for data element values’ as requires by claim 1.” ’02 Decision 28. Thus, we are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 1, 5, 19, 20, and 27–31 over the anticipation ground of Atalla provided in the Petition.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found
“As stated in the Decision: “Petitioner’s approach of offering a plurality of prior art references for consideration, with the particular and necessary combination to be selected or chosen by the Board is improper.” ’02 Decision 31. The fact that the group of references might teach every feature of a claim is not persuasive to demonstrate the combination of those references. Similarly, the assertion of Petitioner’s declarant, Bruce Schneier, that the aspects could have been combined as “common-sense application of known systems in a known manner with expected outcome,” Ex. 1002 ¶ 54, is conclusory and generic. As stated in the Decision: “Petitioner must identify and articulate clearly each prior art combination relied on to support an assertion of unpatentability based on obviousness.” ’02 Decision 31. The bare assertions made in the Petition and by Petitioner’s declarant do not rise to that standard.” slip op. at 17
§ 103 obviousnessPatents in suitUS 6,321,201 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00021 · APJ Kevin F Turner · CBM · Rehearing
The Board denied the Patent Owner’s rehearing request and left institution in place, including the § 101 and § 103 grounds against the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response. Decision 21–23 (citing Prelim. Resp. 27–41). In the Preliminary Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 31 (“[t]he ’201 Patent’s claims provide a solution to a computer technology problem – how to protect data at the data element level, something thought to be technologically not possible.”); see also Req. 12. However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” Decision 21. See also Pet. 17. As such, the abstract idea goes directly to the concept of protecting data at the data element level. Patent Owner also argues that the claims are directed to more than a generic computing device. Req. 12. Such arguments, however, are not commensurate with the scopes of the contested claims, where those claims are drawn to processing of protected data, using conventional databases. Although the claims can be applied to “prevent those with administrative responsibilities from having too much access to confidential information” (id. at 12), nothing in the subject claims themselves explicitly recites or suggests such an intrinsic utility, and is not specifically addressed in the Specification. We, thus, are not persuaded by Patent Owner that we abused our discretion in determining that the claims of the ’201 Patent are more likely than not directed to a patent-ineligible abstract idea.” slip op. at 11
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“SecureBuy. In SecureBuy, the Board determined that 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy slip op. at 2–3. Although only an informative Decision, the Board has also determined that “[t]he dismissal of an action without prejudice leaves the parties as though the action had never been brought.” Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). See also Decision 9. In this case, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See Decision 9. Dismissal without prejudice does not trigger the statutory bar. See Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013- 00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21). As such, we did not ignore the statute or the precedential decision in SecureBuy, but applied both and took into account that the action for declaratory judgment of non-infringement and invalidity dismissed without prejudice. As well, we also do not agree that we cited to Ariosa Diagnostics as authority, as Patent Owner alleges (Req. 4), but rather agreed with the reasoning provided in that informative decision.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“arguments that Hoffman lacks a second database. Req. 14–15. Patent Owner continues that even if the blocks “ACCESS” and “CONTROL” in Hoffman are considered databases, they would be two separate databases and that they cannot be a single second database as required by claim 1. Id. We do not agree. The “comprising” language found in claim 1 connotes that the claim is not exclusively limited to just the elements recited. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Further, we concur with Petitioner’s argument that “to the extent that the Board does not find that the protection catalog of Hoffman has the claimed protection catalog and data element types stored as data element values, IBM DB2, or the references of the DB2 Documentation, cures this ‘deficiency.’” Pet. 56. Implementing the blocks “ACCESS” and “CONTROL” in Hoffman as a single database would have been motivated to ordinarily skilled artisans for the reasons supplied by Petitioner’s declarant. Id. As such, we are not persuaded by Patent Owner that we abused our” slip op. at 13
§ 103 obviousnessPatents in suitUS 6,321,201 - Square, Inc. v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00014 · APJ Kevin F Turner · CBM · Rehearing
The Board denied Patent Owner’s request for rehearing, leaving institution intact on the § 101 and § 103 grounds for the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“In the Decision, we discussed the proper construction of the claim term “data element type,” as well as data processing rules related to encryption. Decision 14–17. As such, the Decision evidences that the challenged claims recite both encryption and data element types. Thus, we agree that our statement that “claim 1 does not require data element types or encryption elements” is incorrect. The statement was made in the context of determining whether claim 1 solves a technical problem using a technical solution, where we remain persuaded that it does not. We remain persuaded, as discussed above, that at least claim 1 of the ’201 Patent does not recite a novel or unobvious technological feature and does not solve a technological problem with a technological solution, notwithstanding the errant statement.” slip op. at 10
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (informative). “[P]arties are not permitted to request, and panels do not authorize, panel expansion.” Id. The Chief Judge was informed of Patent Owner’s request, and the Chief Judge declined to expand the panel.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for petitioner
“eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response. Decision 20–21 (citing Prelim. Resp. 31–36). In the Preliminary Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 34 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the data element level.”); see also Req. 11. However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” Decision 20–21. See also Pet. 24. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 11
Claim construction§ 101 eligibility§ 103 obviousnessDiscretionary denialPatents in suitUS 6,321,201
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.