- 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 - United Services Automobile Association v. Nader Asghari-Kamrani And Kamran Asghari-KamraniRehearing deniedPTAB · Oct 13, 2016 · CBM2016-00064 · APJ Joni Y Chang · CBM · Rehearing
The Board denied rehearing, leaving in place institution on claims 1–3, 5–28, and 30–55 based on the showing that those claims were more likely than not obvious over Nicholson and Brown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 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. Star Fruits S.N.C. v. U.S., 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2003/0046591 A1 (Ex. 1017), published on March 6, 2003, and WIPO International Publication No. WO 03/021837 A1 (Ex. 1028), published on March 13, 2003, more than one year before the actual filing date of the ’432 patent (September 15, 2008)—are also prior art under § 102(b), showing what was known in the art and the knowledge of a person of ordinary skill in the art at the time of the invention.4 See In re Van Langenhoven, 458 F.2d 132, 136–37 (CCPA 1972) (citing In re Hafner, 410 F.2d 1403 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 690–91 (CCPA 1958)) (noting that, because the patentee could not claim the benefit of the filing date of any prior-filed application, the patentee’s own prior patent or publication that was published more than one year from the actual filing date of the application at issue was available as prior art under § 102(b)). Therefore, we disagree with Patent Owner that we committed a clear error in determining that claim 1 does not recite a technological feature that is novel and unobvious over the prior art, and that we committed a clear error in concluding that Petitioner had demonstrated that the claims at issue are more likely than not unpatentable as obvious over Nicholson and Brown. For the reasons stated above, Patent Owner has not established that we abused our discretion in determining that the ’432 patent is not excluded as a technological invention, and that it is more likely than not that claims 1–3, 4 Petitioner’s asserted ground of unpatentability, on which we instituted a trial, is based on the combination of Nicholson and Brown under § 103(a). See Paper 2, 27–63; Dec. 35. 13 5–28, and 30–55 of the ’432 patent are unpatentable under § 103(a) as obvious over Nicholson and Brown.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner
“was made. Req. Reh’g 13–14 (citing 35 U.S.C. § 103(a)). In the Decision (Dec. 18–19), we noted that in determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). We further noted in the Decision (Dec. 19) that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art). On this record, Nicholson, which was filed on July 14, 2006, and published on January 25, 2007, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.2 Ex. 1034 at [22], [43]. And, Brown, which was filed on June 3, 1996, and issued on April 14, 1998, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.3 Ex. 1035 at [22], [45]. Therefore, based on the current record, both Nicholson and Brown are prior art under § 102(b) as to the challenged claims. In addition, on this record, the publications of the first prior-filed application—U.S. Patent Application Publication No.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“demonstrated based on the current record that the benefit claim to the third prior-filed application complies with the requirements of 35 U.S.C. § 120, among which is the requirement that the original disclosure of the third prior-filed application provides written description support for the challenged claims as required by 35 U.S.C. § 112, first paragraph. See Dec. 26–27. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011); In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). Once again, Patent Owner’s arguments ignore the requirements of 35 U.S.C. § 120. As we determined in our Decision, Patent Owner has not shown, at this juncture, that the original disclosure of the second prior-filed application or the original disclosure of the third prior-filed application provides sufficient written description support for each limitation of the challenged claims. Dec. 23–29. Without this showing, the challenged claims are not entitled to the benefit of the filing date of any prior-filed application. Id. Therefore, on this record, “at the time of the invention” is not August 29, 2001, the filing date of the first prior-filed application, as alleged by Patent Owner, but rather, September 15, 2008, the actual filing date of the application that issued as the ’432 patent.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 8,266,432 - United Services Automobile Association v. Nader Asghari-Kamrani And Kamran Asghari-KamraniRehearing deniedPTAB · Oct 13, 2016 · CBM2016-00063 · APJ Joni Y Chang · CBM · Rehearing
The Board denied rehearing, finding no abuse of discretion in instituting CBM review of claims 1–3, 5–28, and 30–55; it maintained the anticipation and obviousness determinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 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. Star Fruits S.N.C. v. U.S., 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“misapply SightSound or Blue Calypso, as alleged by Patent Owner, in determining that the ’432 patent is a covered business method patent, and, therefore, is eligible for a review. Req. Reh’g 1–10 (citing SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1315 (Fed. Cir. 2015); Blue Calypso LLC v. Groupon, Inc., 815 F.3d 1331, 1338–40 (Fed. Cir. 2016)). As we stated in the Decision, a covered business method patent is 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.” Dec. 5 (quoting AIA § 18(d)(1)). 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, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (Final Rule) (quoting 157 CONG. REC. S5432 (daily ed.” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“requirements that an applicant must satisfy in order for a later filed application to be accorded the same effect as if it were filed on the same date as an earlier application by the same inventor disclosing the same invention. Those conditions are (1) copendency of the applications, and (2) reference in the later filed to the earlier filed application.” In re Costello, 717 F.2d 1346, 1348 (Fed. Cir. 1983) (emphasis added). Our reviewing court also explained that a prior-filed application that was not copending with the later-filed application cannot be used to antedate a reference. Id. at 1350.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Decision, the allegedly technological features appear to have been known in the art, in light of the prior art in the record, and Petitioner has explained sufficiently why claim 1, as a whole, does not recite a technological feature that is novel and non-obvious over the prior art of record. Dec. 12–13. We also explained that “following Petitioner’s showing that Norefors and Rajasekaran constitute prior art relative to the actual filing date of the ’432 patent, the burden of production shifted to Patent Owner to show that the” slip op. at 9
§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 8,266,432 - 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 - 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 - Epicor Software Corporation v. Protegrity CorporationRehearing deniedPTAB · Jun 30, 2015 · CBM2015-00006 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving in place institution on § 101 claims 1–60 and § 102 Denning claims 1, 2, 6, 9, 17, 18, 22, and 25.
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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted covered business method patent review of the ’281 patent based upon the following grounds: Ground Prior Art Challenged Claims § 101 n/a 1–60 Denning1 § 102 1, 2, 6, 9, 17, 18, 22, and 25” slip op. at 2
- BurdenDecided for patent owner
“As we 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. Decision 36–37. Providing numerous claim charts and a broad statement that any or all of the prior art could be combined, without articulating the precise combination, is insufficient. Petitioner’s approach of offering a plurality of prior art references for consideration, without the particular and necessary combination to be selected or chosen by the Board, is improper. See 37 C.F.R. § 42.304 (b)(4). We are not persuaded by Petitioner that we abused our discretion in declining to institute review of any claim based on grounds of: obviousness over Denning, Lang, Atalla, and/or Hwang; obviousness over Denning, Lang, Atalla, and/or Hwang, and further over Thomson; and obviousness over Denning, Lang, Atalla, and/or Hwang and further over Abraham.” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“We did not overlook Patent Owner’s argument regarding patent- eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response because it was not commensurate with the scope of the claims. Decision 20–21 (citing Prelim. Resp. 30–32). In the Preliminary Response, Patent Owner argues that the claims are directed toward data protection systems and methods that work on the cell or data element level. Id. The claims, however, do not require that data protection at the data element level or preclude data protection at the record-level. See Decision 16–17. We also did not ignore Patent Owner’s argument regarding the cited disclosure of Denning. Although, Denning is evidence included in the record of this proceeding, Patent Owner does not identify where it was raised in its Preliminary Response with regards to Patent Owner’s abstract idea argument, and we can find no such argument in its Preliminary Response. See PO Req. 9; see Prelim. Resp. 24–33. We could not have overlooked or ignored an argument that was not raised in the Preliminary Response. Nonetheless, Patent Owner’s argument regarding Denning’s alleged disclosure that “that data protection must be done at the record-level, and not at the data element level” (PO Req. 9) is unpersuasive because it is not commensurate with the scope of the claims. The claims do not require that data protection at the data element level or preclude data protection at the record-level. See Decision 16–17. We, thus, are not persuaded by Patent Owner that we abused our discretion in determining that the claims of the ’281 patent are more likely than not directed to a patent-ineligible abstract idea.” slip op. at 9
§ 101 eligibility§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,402,281 - TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Feb 2, 2015 · CBM2014-00133 · APJ Philip J Hoffmann · CBM · Rehearing
The Board denied both rehearing requests, leaving in place institution on claims 1–28 under § 101 and denial of institution under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) on May 19, 2014, which requested review under the transitional program for covered business method patents of U.S. Patent No. 7,676,411 B2 (Ex. 1001, “the ’411 patent”). Trading Technologies International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim. Resp.”) on September 3, 2014. The Board instituted covered business method patent review of claims 1–28 of the ’411 patent under 35 U.S.C. § 101, and denied institution of any claims under 35 U.S.C. § 103. Paper 19 (“Decision”). Petitioner and Patent Owner each filed a Request for Rehearing asking that the Board reconsider its Decision – Petitioner requesting that we institute based on grounds 2 and 3 of the Petition because claims 1–28 are obvious based on Silverman, Gutterman, and Togher with or without Paal (Paper 21, “Petitioner’s Req. Reh’g”), and Patent Owner requesting that we deny institution because the ’411 patent does not qualify for covered business method patent review (Paper 22, “Patent Owner’s Req. Reh’g”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular graphical area in the order entry region through a single action of the user input device to . . . set a price for the trade order and send the trade order . . . to the electronic exchange,” and relied on Togher to disclose the claim limitation “the trade order having a default quantity.” Thus, Petitioner’s argument that Togher discloses “a single action of the user input device [] both set[ting] a price for the trade order and send[ing] the trade order having a default quantity” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3
- BurdenDecided for patent owner
“information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,676,411
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.