• Care N’ Care Insurance Company, Inc. / Trizetto Corporation v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jun 21, 2016 · CBM2015-00064 · APJ Timothy J Goodson · CBM · Final written decision

  Claims 81 and 83–88 are unpatentable under § 101 because they are directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Considering the full record before us, we agree with, and adopt as our own, Petitioners’ explanation of why the challenged claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display into a patent-eligible application of that idea. Pet. 34–43. Stated simply, the challenged claims require no more than generic computer components performing generic computer functions and conventional activities. See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”); TLI, 2016 WL 2865693 at *6 (“These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.”). For example, claim 81 recites receiving data in fields, storing data in memory, determining which data to enter for display using a generic “logic process,” and displaying data. “[A]ll of these computer functions are ‘wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). The parallels that Petitioner draws between the claims challenged here and those addressed in Content Extraction are compelling. See Pet. 35–36. Patent Owner’s reliance on the use of fields in the challenged claims to satisfy the second step of the Mayo/Alice analysis and to distinguish Content Extraction is unpersuasive in view of Petitioners’ argument and evidence that computer software fields are a generic, well-known concept in data processing, and that using fields to transfer information from a field in one form to a correlated field in another form was routine and conventional. Reply 12; Ex. 1001 ¶¶ 36–37.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We agree with Petitioners. We see no reason why the resolution of the issues before us requires an express construction of this term. Even if we were to construe “field” as a “computer software field,” it would not impact our analysis of claims 81 and 83‒88 under 35 U.S.C. § 101. Accordingly, we do not provide an express construction of “field.” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “We agree with Petitioners that the challenged claims are directed to a process of receiving information, storing it, and determining which of its parts to enter into a display. Pet. 29. Claims directed to such a process are analogous to the data processing claims that the Federal Circuit held were directed to an abstract idea in Content Extraction and Cyberfone. In particular, as Petitioners argue, the step in claim 81 “of determining which parts of the information to enter into a graphical display is analogous to the step in [Content Extraction] of ‘recognizing certain data within the collected data set.’” Pet. 33. Further, the steps in claim 81 of receiving information and storing it are similar to the steps in Content Extraction of collecting data and storing the recognized data in a memory. Id. With respect to Cyberfone, we agree with Petitioners that the challenged claims can be “described as directed to methods of ‘obtaining data . . . separating it into component parts, and sending those parts to different destinations’ that the Federal Circuit in Cyberfone held embodied an abstract idea.” Id. at 34 (quoting Cyberfone, 558 F. App’x at 990). We have considered Patent Owner’s arguments that the challenged claims are not directed to an abstract idea, but those arguments are not persuasive for the reasons that follow.” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “Considering the full record before us, we agree with, and adopt as our own, Petitioners’ explanation of why the challenged claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display into a patent-eligible application of that idea. Pet. 34–43. Stated simply, the challenged claims require no more than generic computer components performing generic computer functions and conventional activities. See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”); TLI, 2016 WL 2865693 at *6 (“These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.”). For example, claim 81 recites receiving data in fields, storing data in memory, determining which data to enter for display using a generic “logic process,” and displaying data. “[A]ll of these computer functions are ‘wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). The parallels that Petitioner draws between the claims challenged here and those addressed in Content Extraction are compelling. See Pet. 35–36. Patent Owner’s reliance on the use of fields in the challenged claims to satisfy the second step of the Mayo/Alice analysis and to distinguish Content Extraction is unpersuasive in view of Petitioners’ argument and evidence that computer software fields are a generic, well-known concept in data processing, and that using fields to transfer information from a field in one form to a correlated field in another form was routine and conventional. Reply 12; Ex. 1001 ¶¶ 36–37. We also agree with Petitioners that the challenged claims fail the machine-or-transformation test because the claims “are not tied to any particular novel machine or apparatus, only a general purpose computer,” and “adding a computer to otherwise conventional steps does not make an invention patent-eligible.” Ultramercial, 772 F.3d at 716–17. We discern nothing in the challenged claims requiring a novel machine or apparatus. Indeed, as noted above, Patent Owner concedes that “the hardware components recited by the Challenged Claims were known at the time the application leading to the ’609 Patent was filed.” Prelim. Resp. 19; PO Resp. 20. Turning to the transformation prong of the test, “[a]ny transformation from the use of computers or the transfer of content between computers is merely what computers do and does not change the analysis.” Ultramercial, 772 F.3d at 717. Moreover, as the Federal Circuit explained in CyberSource, the “mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test.” 654 F.3d at 1370. Here, claim 81 recites receiving an electronic communication that includes digital data in fields, some of which include insurance transaction data and at least one of which includes attachment data, storing the electronic communication, and processing the electronic communication by determining which of the received data to display and displaying the selected data and the attachment on a GUI. Ex. 1003, 50:20–43. We agree with Petitioners that the claimed method merely collects and organizes data, which is insufficient to meet the transformation prong of the machine-or-transformation test. Dependent claims 83–88 also do not recite more than the mere collection and organization of data.” slip op. at 24

  Patent outcomesUS 8,676,609 unpatentable
  Claim construction§ 101 eligibilitycites Mayo
  Patents in suitUS 8,676,609
• Google Inc. / Apple Inc. v. Contentguard Holdings, Inc.All claims unpatentable
  PTAB · Jun 21, 2016 · CBM2015-00040 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1, 5, and 11 are unpatentable as anticipated by Stefik and obvious over Stefik with ordinary skill; the motion to amend is granted for substitute claim 37.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “claims of the ’280 patent at issue in this proceeding based on the same grounds of unpatentability. The Petition in Case CBM2015-00160 was accompanied by a Motion for Joinder that requests we join Apple as a party to this proceeding. Pursuant to § 324 and § 18(a) of the AIA, we instituted another covered business method patent review proceeding as to claims 1, 5, and 11 of the ’280 patent, and then granted Apple’s Motion for Joinder. Paper 14.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Petitioners have set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Court held that, “[w]hen there is a design need or market pressure to solve a problem and 50 there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. Upon considering the record in its entirety, we are satisfied that Petitioners’ rationale for modifying Stefik by allowing a NSOR to be exercised at a different time from a usage right suffices as an articulated reasoning with rational underpinnings that justifies the legal conclusion of obviousness. We first address whether a design need or market pressure existed to solve a particular problem, and then we turn to whether there were a finite number of identified, predictable solutions. As to the first inquiry, both the Background of the Invention of the ’280 patent and Stefik serve as evidence that there was a need to address particular problems associated with exercising and enforcing the rights of content owners during the distribution and use of their digital works in a multi-level distribution scheme. Ex. 1001, 1:29–61; Ex. 1002, 1:23–2:48.” slip op. at 50

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “’280 patent provides an explicit definition for the claim term “meta-right.” Dec. on Inst. 16. In particular, the specification discloses that “[m]eta-rights are the rights that one has to generate, manipulate, modify, dispose of or otherwise derive other rights.” Ex. 1001, 5:47–49. By using the verb “are” following “meta-rights,” the specification sets forth an explicit definition for this claim term with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification contradicts this definition of the claim term “meta-right” or suggests another definition for this claim term. We, therefore, do not agree with Patent Owner’s argument that this cited disclosure in the specification is only one of many fundamental characteristics pertaining to a meta-right. PO Resp. 23. Although we agree with Patent Owner that it is proper to consult the entire specification of the ’280 patent to interpret what the patentee meant by the claim term “meta-right” (PO Resp. 19–22), we do not agree with Patent Owner’s argument that the specification further defines the claim term “meta-right” to import a negative limitation into the claims—namely, “a right that . . . is not itself a usage right because exercising a meta-right does not result in action to content” (id. at 23–25). For convenience, the relevant portion of the specification relied upon by Patent Owner is reproduced below:” slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (second alteration in original) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this asserted ground based on anticipation with the principles stated above in mind.” slip op. at 30

  Patent outcomesUS 7,774,280 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,774,280
• Google Inc. / Apple Inc. v. Contentguard Holdings, Inc.All claims unpatentable
  PTAB · Jun 21, 2016 · CBM2015-00160 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1, 5, and 11 are unpatentable as anticipated by Stefik and obvious over Stefik with ordinary skill knowledge; the contingent motion to substitute claim 37 is granted.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “claims of the ’280 patent at issue in this proceeding based on the same grounds of unpatentability. The Petition in Case CBM2015-00160 was accompanied by a Motion for Joinder that requests we join Apple as a party to this proceeding. Pursuant to § 324 and § 18(a) of the AIA, we instituted another covered business method patent review proceeding as to claims 1, 5, and 11 of the ’280 patent, and then granted Apple’s Motion for Joinder. Paper 14.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “transitional program for covered business method patents of claims 1, 5, 11, 12, and 22 of U.S. Patent No. 7,774,280 B2 (“the ’280 patent,” Ex. 1001). Paper 1 (“Pet.”). ContentGuard Holdings, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Taking into account the arguments presented in the Preliminary Response, we determined that the information presented in the Petition establishes that claims 1, 5, and 11 of the ’280 patent are more likely than not unpatentable under 35 U.S.C. §§ 102(b) and 103(a). We, however, determined that the information presented in the Petition did not establish that claims 12 and 22 of the ’280 patent are more likely than not unpatentable. Pursuant to 35 U.S.C. § 324 and § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329–31 (2011) (“AIA”),2 we instituted this covered business method patent review proceeding on June 24, 2015, only as to claims 1, 5, and 11 of the ’280 patent. Paper 9 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “2. Level of Skill in the Art There is sufficient evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioners’ declarant, Dr. Goldberg, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who (1) possesses a bachelor’s degree in electrical engineering, computer science, or a related field; and (2) has at least two years of experience with digital content distribution and/or computer security. Ex. 1014 ¶ 10. Patent Owner’s declarant, Dr. Martin, agrees with Dr. Goldberg’s assessment. Compare Ex. 1014 ¶ 10, with Ex. 2009 ¶ 16. In addition, we note that the prior art of record in this proceeding—namely, Stefik—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 48

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “8. Summary For the foregoing reasons, Patent Owner has demonstrated by a preponderance of the evidence that proposed, substitute independent claim 37 satisfies the requirements of 37 C.F.R. § 42.221 and is patentable over the prior art. Accordingly, we grant Patent Owner’s request to cancel independent claim 1 of the ’280 patent and replace it with proposed, substitute independent claim 37.” slip op. at 72

  Patent outcomesUS 7,774,280 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,774,280
• T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · CBM2015-00027 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1, 3, 5, 16, and 29–32 are unpatentable as anticipated by Houser; claims 2 and 4 are unpatentable as obvious over Houser and Yoshiura.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Contrary to Petitioner’s contentions, the proper inquiry is whether one is “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding “it is an abuse of discretion to permit a witness to testify as an expert on the issue[s] of . . . invalidity unless that witness is qualified as an expert in the pertinent art.”). The Federal Circuit continues by noting that being one of ordinary skill in the art would not “automatically entitle[] a witness to testify as an expert” as to invalidity issues, but the Federal Circuit clarifies that it does not “suggest[] that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert.” Id. at 1363. Furthermore, 6 Dr. Katz’s declaration states that his curriculum vitae is included as Attachment A (Ex. 2008 ¶ 6), which is not correct. Petitioner also incorrectly states in its Motion that Dr. Katz’s declaration from IPR2014-00475 (Ex. 2007) was “submitted as Exhibit 1037 in this proceeding.” Mot. 4. Accordingly, for clarity and completeness of the record in this proceeding, we have entered Dr. Katz’s Declaration, filed as Exhibit 2007 (including its Attachment A) in IPR2014-00475, as Exhibit 3001 in the instant proceeding. 21 the Federal Circuit has upheld admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admitting that he was not a person of ordinary skill in the art. Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). In holding that, to testify as an expert under FRE 702, one must be qualified as an expert in the pertinent art, the Federal Circuit has not placed temporal restrictions, such as requiring an expert be qualified in the pertinent art at the time of the invention.” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “patent shall be given its broadest reasonable construction, in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest reasonable construction standard in a covered business method patent review); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment 27 appearing in the written description should not be read into the claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the terms below and discuss terms relative to prior art disclosures in accordance with these principles.” slip op. at 27

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “specifically, “a preferences file.”7 Challenged independent claims 1, 29, and 31 each recites “an authenticity stamp is retrieved from the preferences file,” and independent claim 32 similarly recites “retrieving an authenticity stamp from the preferences file.” Additionally, each of the challenged claims requires that the authentication key either be retrieved to locate a preferences file or to be able to locate a preferences file. The dependent claims do not recite additional features or functions for a file. Thus, the plain language of the claims requires a “file” to be able to store something that can be retrieved.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “We decline to read limitations into a claim from these preferred embodiments described in the Specification when the claim language is broader than the embodiment. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d at 1184. Here, the claim language is broader than the preferred embodiments describing the location of the preferences file as obscured or not readily known and, therefore, should not be narrowed by embodiments in the ’191 patent. Furthermore, the ’191 patent does not set forth a special definition for that claim term with reasonable clarity, deliberateness, or precision that would impose a special meaning requiring the location of the preferences file be obscured or hidden. See In re Paulsen, 30 F.3d at 1480. Accordingly, neither the term “to locate a preferences file” in claims 1, 31, and 32, nor the term enabling “location of a preferences file” in claim 29, require the location of the preferences file be obscured or hidden. Nor does “enabl[ing] authentication of the authenticity key . . . to retrieve an” slip op. at 52

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,191
• Epicor Software Corporation v. Protegrity CorporationAll claims unpatentable
  PTAB · Jun 2, 2016 · CBM2015-00030 · APJ Kevin F Turner · CBM · Final written decision

  Claim 8 is unpatentable under § 101 because it is directed to an abstract idea and lacks an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTION TO EXCLUDE Patent Owner moves to exclude Exhibit 1002, Declaration of Mr. Bruce Schneier, from the record. Mot. Exclude. This filing is largely identical to a similar filing in CBM2015-00002, with the exception that the instant Motion to Exclude also seeks to exclude Ex. 1014 as well, in addition to Ex. 1002, by the same affiant on the same basis. Compare CBM2015- 00030, Paper 30, with CBM2015-00002, Paper 37. We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declarations should be excluded for the same reasons provided previously. See ’02 FWD 35–36.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “Similar to the CBM2015-00002 proceeding, we find that the cross- examination of Mr. Bruce Schneier occurred before Patent Owner filed its last substantive paper, making Patent Owner’s Motion for Observation improper. See ’02 FWD 36-38. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In addition, Patent Owner argues that the claim term in claim 8, “initially produc[ing] a calling,” should be read as “the database itself that produces the calling to the data element protection catalogue,” as compared to the operating system or the individual field producing the calling. Resp. 23 (citing Ex. 1001, 3:53–61; Ex. 2047 ¶ 22; Ex. 2046 ¶ 40). We do not agree. As discussed in ’02 FWD and incorporated above, we are persuaded that the application 40, control module 20, and program module 30 handle system calls in the ’201 Patent, and the calling need not be produced by the first database itself.” slip op. at 5

  • BurdenUnpatentable

    “Upon review of Petitioner’s analysis and supporting evidence and taking into account Patent Owner’s arguments, discussed below, we are persuaded by Petitioner that claim 8 does not recite additional elements that transform the claim into a patent-eligible application of an abstract idea. We are not persuaded by Patent Owner’s arguments that the claims require additional elements that transform that abstract idea into a patent-eligible application (Resp. 43–49) because they are based upon an overly narrow construction of the claimed elements, as discussed in section II(A)(i) above, i.e., the ability of the first database calling out to the data protection catalogue, and based on additional elements not recited or required by the claims, as discussed previously.” slip op. at 14

  Patent outcomesUS 6,321,201 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Graham
  Patents in suitUS 6,321,201
• Informatica Corporation v. Protegrity CorporationAll claims unpatentable
  PTAB · May 31, 2016 · CBM2015-00021 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1–8 and 18–53 are unpatentable under § 101; claims 1, 2, 8, 19–26, 29, 31–35, 37–44, and 47–53 are also unpatentable under § 103.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’201 Patent provides specific definitions of many terms (Ex. 1001, 2:64–3:43) but does not contain a definition of “database.” The claimed database for storing a plurality of data element values corresponds to the O-DB database disclosed in the ’201 Patent. The O-DB database is part of a larger “database management system” that includes multiple databases. Id. at 5:49–6:12, Fig. 3. Similar to the other databases, the O-DB database is described as containing data and, in particular, data to be protected. Id. at 5:53–58. Contrary to Patent Owner’s argument (Resp. 20), the ’201 Patent does not describe the O-DB database, or any other database, as performing any other data processing or managing functions. In particular, the ’201 Patent does not describe that the O-DB database produces the compelling calling to the data protection catalogue. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54– 61, 3:51–65, 4:16–22, 7:57–61 (describing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “Claims 1 and 8 do not recite unencrypted data element values, and only recites “encrypted data element values.” Those claims do not specify that the “given data element value” should be encrypted or unencrypted. We are not persuaded by Patent Owner’s declarants (Ex. 2063 ¶ 33; Ex. 2064 ¶ 48) as their testimonies are conclusory and are unsupported by the Specification or claims of the ’201 Patent. Although the “given data element value” could be the unencrypted data element value, it need not be in the context of claim 1.” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013- 00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Petitioner to exclude Exhibits 2064, 2089, and 2093 and Petitioner’s Motion to Exclude is denied. Additionally, we are also not persuaded that Dr. Direen is unqualified to testify as an expert. As Petitioner points out, Dr. Direen has knowledge, skill, experience, and training beyond degrees and is the holder of several patents. Opp. to Mot. Exclude 3–8; See Ex. 1002 ¶¶ 1–7 (discussing additional credentials and qualifications). Given this, we are persuaded that Dr. Direen is qualified to testify as an expert as to what a person of ordinary skill in the art would know or understand during the relevant time frame.” slip op. at 52

  • Strike new argumentNew argument disregardedGranted

    “The scheduling order states “[a] motion for observation on cross- examination provides the parties with a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply” and refers to the Office Patent Trial Practice Guide. Paper 15, 4–5. The Trial Practice Guide states: In the event that cross-examination occurs after a party has filed its last substantive paper on an issue, such cross-examination may result in testimony that should be called to the Board’s attention, but the party does not believe a motion to exclude the testimony is warranted. The Board may authorize the filing of observations to identify such testimony and responses to observations, as defined below. 77 Fed. Reg. at 48,767–68 (emphasis added).” slip op. at 53

  Patent outcomesUS 6,321,201 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Bilski · Graham
  Patents in suitUS 6,321,201
• Informatica Corporation v. Protegrity CorporationAll claims unpatentable
  PTAB · May 9, 2016 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 33–60 are unpatentable under § 101; the motion to amend is denied as to substitute claims 61–68 and granted as to cancellation of claims 1–32.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Patent Owner’s Request to Cancel Claims 1–32 In the Patent Owner’s Response and the Motion to Amend, Patent Owner requests cancellation of claims 1–32 of the ’281 patent. PO Resp. 2– 3; Mot. Amend 1. Patent Owner’s request to cancel these claims is not contingent on the claims being determined to be unpatentable or on the entry of the proposed substitute claims. Patent Owner’s request to cancel claims 1–32 is granted and we need not address these claims further. Paper 23. Patent Owner, subsequently, filed the Motion to Amend as Exhibit 2098. See Paper 43.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Vehicular Techs. Corp. v. Titan Wheel Int'l, 141 F.3d 1084, 1088 (Fed. Cir. 1998) (citing Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 619–20 (Fed. Cir. 1995)). Independent claim 33 recites “[a] computer-implemented data processing method” that includes, among other steps, a step of “maintaining a database comprising a plurality of data portions.” Ex. 1001, 13:38–41. Similarly, independent claim 47 recites “[a] computer system” that includes, among other elements, “a database storing a plurality of data portions.” Id. at 14:47–48. As can be seen from the above, claims 33 and 47 recite that the database comprises or stores data portions. Neither of claims 33 and 47, nor any claims dependent, therefrom, recite that the database performs any other function, such as producing a compelling calling to the data protection catalogue to retrieve the data processing rules. See id. at 13:38–16:29. Indeed, unlike the parent ’201 patent, none of the claims of the ’281 patent recite a compelling calling at all. See id.; Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Notably, independent claim 8 of the parent ’201 patent recite an apparatus having a database that stores data to be protected. Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Claim 8 of the parent ’201 patent was amended during reexamination to recite that the apparatus, not the database, controls the user’s processing of the data according to the data processing rules, and the apparatus, not the database, also produces the compelling calling to the data element protection catalogue. Id. at Ex Parte Reexamination Certificate 1:41–51. The words of the claims of the ’281 patent, thus, are consistent with Petitioner’s proposed construction as the broadest reasonable construction.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “v. Other Proposed Constructions Petitioner also proposed a construction of “encryption/encrypted” and “separate data protection table.” Pet. 15–18. Patent Owner also proposed a construction of “data element type.” PO Resp. 27–28. For the purposes of our review of the claims of the ’281 patent, however, no explicit construction of any other claim term is needed.” slip op. at 18

  • BurdenInstitution denied meritsDecided for petitioner

    “A party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a). In SecureBuy, LLC, the Board determined the 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, LLC, CBM2014-00035 (PTAB April 25, 2014) (Paper 12). Here, 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 id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing 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 7 On May 4, 2015, Petitioner, via email, informed the Board of a clerical typographical error on page 11 of the Petition. The sentence starting with “[i]n the prior cases, petitioner was sued . . .” should be read as “[i]n the prior cases, petitioner was not sued . . . .” legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21). “The 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)).” slip op. at 19

  Patent outcomesUS 8,402,281 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 8,402,281
• Square, Inc. v. Protegrity CorporationAll claims unpatentable
  PTAB · Apr 28, 2016 · CBM2015-00014 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1–7 and 18–35 are unpatentable under § 101 as ineligible subject matter and under § 103 as obvious over the instituted reference combinations.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’201 Patent. As discussed above, the ’201 Patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:49–6:12. The ’201 Patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:53–58, 6:13–45. The ’201 Patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract; 2:54–61, 3:51–65; 4:16–22; 7:57–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’201 Patent. See, e.g., Ex. 2066 ¶¶ 13, 17–19, 37; Ex. 2067 ¶ 57. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics, 90 F.3d at 1584 (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer (Ex. 2066 ¶ 1) and has an interest in the outcome of this proceeding.” slip op. at 11

  • BurdenUnpatentable

    “element type, are stored in a separate data protection catalogue. Ex. 1001, 11:15–28. Data processing computers having separate databases, which store associated data and associated attributes, were well-known and conventional at the time of filing the ’201 Patent. See Ex. 1023 ¶¶ 17–20, 23–28. Storing data and associated rules in separate databases is nothing more than routine data gathering and does not transform the abstract idea into a patent-eligible invention. See CyberSource, 654 F.3d at 1370. Claim 1 also recites that the first database has a table structure with rows and columns, which is also conventional and was well-known. See Ex. 1023 ¶ 19. Restricting access to columns or fields of databases is well-understood and conventional activity. See Ex. 1023 ¶ 24. Well-understood, routine, conventional activity does not add significantly more to the abstract idea. Mayo, 132 S. Ct. at 1298. Claim 1 further requires that for each user-initiated measure aiming at processing of a given data element value, a calling is produced to the data element protection catalogue for the protection attributes of the data element type. Ex. 1001, 11:29–34. This is well-understood, routine, conventional activity that does not add significantly more to the abstract idea. Mayo, 132 S. Ct. at 1298; see Pet. 30; Ex. 1023 ¶ 27.” slip op. at 32

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “b. Written Description The written description is “always highly relevant” in construing a claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’201 Patent provides specific definitions of many terms (Ex. 1001, 2:64–3:43) but does not contain a definition of “database.”” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “vi. Other Proposed Constructions Both Petitioner and Patent Owner propose constructions for various other claim terms. See Pet. 13–22; Prelim. Resp. 49–53. For the purposes of our review of the claims of the ’201 Patent, however, no explicit construction of any other claim term is needed.” slip op. at 16

  Patent outcomesUS 6,321,201 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Graham
  Patents in suitUS 6,321,201
• Epicor Software Corporation v. Protegrity CorporationSome claims unpatentable
  PTAB · Apr 20, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1, 5, 19, and 20 are unpatentable under § 101; claims 27–31 were not shown unpatentable under that ground.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “e. Broadest Reasonable Construction of “Database” We determine that the broadest reasonable construction, in light of the specification of the ’201 Patent, and the proffered evidence, of “database” is “an organized collection of structured data.” As discussed above, this construction is consistent with the words of the claims, the disclosure of the ’201 Patent, the testimony of Mr. Schneier and Dr. Shamos and the position taken by Patent Owner in the related district court proceeding. We are not persuaded by Patent Owner’s arguments, Patent Owner’s declarants’ testimony, database manual, or technical encyclopedia that this construction is unreasonably broad.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’201 Patent. As discussed above, the ’201 Patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:49–6:12. The ’201 Patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:53–58, 6:13–45. The ’201 Patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54–61, 3:51–65, 4:16–22, 7:57–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’201 Patent. See, e.g., Ex. 2045 ¶¶ 12– 16, 22, 29; Ex. 2046 ¶ 57. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics, 90 F.3d at 1584 (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer (Ex. 2045 ¶ 1) and has an interest in the outcome of this proceeding.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declaration should be excluded under FRE Rule 702 or 403. Patent Owner’s arguments attack the sufficiency and credibility of Mr. Schneier’s testimony. As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Patent Owner to exclude Exhibit 1002 and Patent Owner’s Motion to Exclude is denied.” slip op. at 35

  • Strike new argumentNew argument disregardedGranted

    “The scheduling order authorizes the filing of such a motion for observations regarding cross-examination of a reply witness by Due Date 4. Mr. Schneier cross-examination testimony was given on June 12, 2015, prior to Patent Owner filing its Patent Owner’s Response, on June 24, 2105. The cross-examination did not occur after Patent Owner filed its last substantive paper. Patent Owner’s Motion for Observation, thus, is improper. The Scheduling Order did not authorize Patent Owner to file a Motion for Observation of cross-examination that occurred prior to Patent Owner filing its last substantive paper on an issue, the Patent Owner’s Response and Patent Owner did not seek other authorization for such. The improper observations are akin to an unauthorized sur-reply to argument made in Petitioner’s Reply. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 37

  Patent outcomesUS 6,321,201 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski
  Patents in suitUS 6,321,201
• Epicor Software Corporation v. Protegrity CorporationRehearing denied
  PTAB · 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 obviousness
  Patents 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.