• Broadsign International, LLC v. T-Rex Property ABInstitution denied
  PTAB · Apr 26, 2017 · CBM2017-00008 · APJ Barbara A Benoit · CBM · Institution

  The Board denied institution because the challenged patent was not shown eligible for CBM review; claims 1, 11, 12, 49, 51-55, and 58-74 were disclaimed.

  RulingsInstitution decision

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

    “We conclude that the information in the Petition does not demonstrate that the challenged patent is eligible for covered business method patent review. In addition, even after Patent Owner submitted, on February 7, 2017, its Preliminary Response and evidence of filing statutory disclaimer, Petitioner did not request an opportunity to present arguments that any other claims would meet the threshold financial requirement for a covered business method patent review. The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53 (encompassing “direct placement of commercial advertisements, public service announcements and other content on electronic displays”). Accordingly, we determine that Petitioner has failed to meet its burden of showing that the challenged patent is eligible for covered business method patent review. Therefore, we do not institute a covered business method patent review for claims 13, 42, 43, 48, 50, 56, and 57 of the ’603 patent.” slip op. at 9

  • Adverse judgmentAdverse judgmentOther

    “that it filed with the Office a statutory disclaimer of claims 1–12, 17, 19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. 1. Disclaimed Claims Challenged in the Petition Of the challenged claims, Patent Owner disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method patent review cannot be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.”). Accordingly, no covered business method patent review will be instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 7

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

    “Petitioner proposes constructions for several terms that recite “means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth “[h]ow the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”). Patent Owner does not address directly Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11. We conclude that no term needs to be construed expressly in order for us to determine whether a covered business method patent review should be instituted.” slip op. at 6

  Claim construction
  Patents in suitUS 6,430,603
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision

  Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32

  • Skill levelOther
  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17

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

    “Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23

  Patent outcomesUS 8,671,057 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish
  Patents in suitUS 8,671,057
• The Kroger Company / Brookshire Grocery Company v. Nexuscard, Inc.All claims unpatentable
  PTAB · Mar 27, 2017 · CBM2015-00183 · APJ Minn Chung · CBM · Final written decision

  Claims 1–11 are unpatentable under § 101 because they claim the abstract idea of collecting, storing, and processing membership discount information without an inventive concept.

  RulingsFinal written decision

  • Burden

    “Upon considering all of the evidence of record, we are persuaded Petitioner has demonstrated by a preponderance of evidence that claims 1 and 11 fail to recite any elements that individually or as an ordered combination transform the claimed abstract idea into a patent-eligible application.” slip op. at 34

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther

    “communication means” Claimed Function: “providing real time (1, 8, 11) 2, 3 communication between [a point of purchase] member merchant’s computer terminal and [a centralized] provider’s computer” Corresponding Structure: a cash register with a communication capability, a credit card verification machine, a terminal, or a scanner, and equivalents “memory storage means” Claimed Function: “containing at least . . . (1, 11) consumer identification code” Corresponding Structure: a magnetic stripe on a card, and equivalents slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “real time “communication without intentional delay, communication” (1, 7, 11) given the processing limitations of the system and the time required to effect the communication” See Dec. on Inst. 8–11. The parties do not dispute these interpretations in their Patent Owner Response and Reply. For this Final Written Decision, after considering the complete record, we see no reason to deviate from those constructions and, therefore, maintain our constructions as set forth above. slip op. at 9

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

    “Under the approach described in Alice and further explained in Enfish, Internet Patents, and Electric Power Group, we are persuaded by Petitioner’s argument and evidence that claims 1 and 11 are directed to an abstract idea. As discussed above, Petitioner has shown that the claims recite a process to “collect, store, and process information about consumer memberships, merchants, manufacturers, and sales transactions” (Pet. 34), a process that qualifies as an “abstract idea” (id. at 71) of “conventional information processing” in the retail industry (id. at 72), for which conventional components, such as a magnetic stripe scanner, computers, and databases, are merely invoked as tools used in their ordinary and conventional manner (Pet. Reply 8–11). In Electric Power Group, the Federal Circuit explained that the “the realm of abstract ideas” includes “collecting information, including when limited to particular content.” Elec. Power Grp., 830 F.3d at 1353. The court determined, therefore, that the claims at issue were directed to an abstract idea because “the focus of the asserted claims” is “on collecting information, analyzing it, and displaying certain results of the collection and analysis.” Id. We are persuaded that claims 1 and 11 in this case are similarly directed to an abstract idea because Petitioner’s argument and evidence shows that the focus of the claims, the claims’ “character as a whole,” is on conventional information processing in the context of membership discount programs that use generic computers and conventional devices as tools to provide discounts without coupons.” slip op. at 18

  Patent outcomesUS 5,924,080 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 5,924,080
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Feb 17, 2017 · CBM2015-00179 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101 and § 103 over TSE, Togher, Schott, and Cooper, and over Silverman, Togher, Cooper, and Hogan.

  RulingsFinal written decision

  • BurdenUnpatentable

    “The individual elements of the claims do not transform the nature of the claims into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Contrary to Patent Owner’s argument, the claims simply recite the use of a generic computer with routine and conventional functions. Further, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claims into a patent-eligible application. For all of the above reasons, Petitioner has shown sufficiently that claims 1–15 of the ’056 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We do not agree with Patent Owner that the term “price axis” requires reading into the claim the additional “clarification” that a list of prices that do not contain gaps in between prices is not a price axis. There is nothing in the claim language itself that describes gaps or how data is arranged along the price axis or what contains a price axis. The passages and figures of the ’056 patent that Patent Owner (and Mr. Thomas) directs attention to are examples or embodiments of what is claimed, and do not indicate that Patent Owner disclaimed or limited price axis to consist of a list of prices that contains gaps in between prices. Moreover, Mr. Thomas’ illustration of what constitutes a price axis is conclusory and not supported by record evidence. Ex. 2169 ¶¶ 41–42. He has not directed attention to any evidence in support of his testimony as to what does and does not constitute a price axis as illustrated in 14 paragraph 41 of his declaration. As pointed out by Petitioner, an axis may be represented by scale breaks or logarithmic scales, and thus, need not retain an order of gaps as Patent Owner and Mr. Thomas contend. Pet. Reply 11–12; Ex. 1058, 103–109. We also have considered Patent Owner’s arguments and evidence that remarks made by the then applicant during prosecution of the application that matured into the ’056 patent amount to an express and clear disclaimer of the meaning for price axis. PO Resp. 6–7 (citing Ex. 1002, 178–179; Ex. 2169 ¶ 39). We are not persuaded by such arguments because the comments made during prosecution have not been shown to amount to a disclaimer of having a price axis without gaps in between prices. For example, Patent Owner directs attention to page 178 of Exhibit 1002 from the prosecution file in support of its disclaimer argument. On that page, however, is quoted language from several lines of the claim with an argument just prior stating that Silverman does not describe an axis of prices and all that is contained in the quoted language. Patent Owner has not explained sufficiently why we should construe such general remarks as a disclaimer. We also have reviewed the remarks made by the then applicant that the applied prior art displayed prices for which orders exist, but do not agree that Patent Owner has shown why such comments amount to a clear disclaimer or disavowal of the scope of the term “price axis.” To disavow claim scope, “the specification or prosecution history [must] make clear that the invention does not include a particular feature.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (internal citation, quotation, and alterations omitted).” slip op. at 14

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

    “icon at a location that corresponds to the desired price level along the price axis, the order icon indicating the user’s order at the electronic exchange.” (Emphasis added). Patent Owner argues that an “order icon indicating the user’s order at the electronic exchange” should be interpreted to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.” PO Resp. 9. Petitioner argues that no construction of the phrase is necessary and that Patent Owner’s construction is inconsistent with Figure 3A, which shows the user’s order aggregated with other users. Pet. Reply 12. Petitioner further argues that any icon that indicates a user’s order, whether aggregated with other orders or separate, meets the claim term. Id. We agree with Petitioner. There is nothing in the language of claim 5 that requires indicating the specific user order (separating it out from all other orders) or indicating to the user that it is his order. If an order is placed by a user, resulting in the total quantity of orders placed at that same price to increase, the total number would indicate an increase, and thus, indicate the user’s order. Patent Owner argues that because claim 1 recites bid indicators and offer indicators, an order icon must represent something distinct from the 16 bid/offer indicators. PO Resp. 7–8. But even Patent Owner does not explain why an order icon cannot be one of the offer or bid indicators. Indeed, for the embodiment that Patent Owner directs attention to there is no distinction between offer and bid indicators with order icons (an order icon is one of the indicators). Id. We agree with Petitioner that a person of ordinary skill in the art would have understood the ’056 patent to use “icons” and “indicators” interchangeably. See, e.g., Pet. 18–20. Thus, we disagree with Patent Owner that the “order icon” of claim 5 cannot be one of the offer or bid indicators. For all of the above reasons, we decline to interpret an “order icon indicating the user’s order at the electronic exchange” to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.”” slip op. at 16

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art10, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). 10 The parties’ submissions focus primarily on the degrees, occupations, and experience, as opposed to what the hypothetical person of ordinary skill in the art would have known at the time of the invention. As such, and as the triers of fact, based on the record before us, we do not find such information particularly helpful.” slip op. at 17

  Patent outcomesUS 7,533,056 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,533,056
• Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00130 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112.

  RulingsFinal written decision

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

    “We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15. As discussed above, the ’221 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by internet users who may not even realize that it is pirated. Id. The ’221 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’221 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is controlling access to content based upon payment as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 10

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

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34

  Patent outcomesUS 8,118,221 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,118,221
• Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00126 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112, ¶ 2.

  RulingsFinal written decision

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

    “Petitioner argues that the challenged claims are directed to the abstract idea of “controlling access to something based on validation that payment has been made” (’126 Pet. 21) or “payment for and/or controlling access to data” (Pet. 41). Specifically, Petitioner contends that “each challenged claim is drawn on its face to the concept of payment for and/or controlling access to data.” Pet. 43; see also ’126 Pet. 22 (“challenged claim 3 simply performs four steps inherent in the abstract idea of conditioning access on payment validation.”). We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15.” slip op. at 10

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

    “132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34

  Patent outcomesUS 8,118,221 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,118,221
• United Services Automobile Association v. Nader Asghari-Kamrani And Kamran Asghari-KamraniRehearing denied
  PTAB · 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 Phillips
  Patents in suitUS 8,266,432
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00096 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 12–16 are unpatentable under § 103 over DeLorme; Patent Owner’s secondary-consideration evidence did not outweigh the showing of obviousness.

  RulingsFinal written decision

  • Skill levelOther

    “B. Unpatentability Over DeLorme Under 35 U.S.C. § 103, a claim is unpatentable if: the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. The ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 338 U.S. at 17–18). Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 15

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’850 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claim 12, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’850 patent, as a “control program [that] monitors and routes all communications [as] to the appropriate devices” in the ’850 patent and as “a single point of entry for all hospitality application to communicate with one another wirelessly or over the Web.” Ex. 1001, col. 9, ll. 21–22, col. 11, ll. 24–27. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the Specification of the ’850 patent into the claims. Although the specification of the ’850 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” The plain language of claim 12, does not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and 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).” slip op. at 13

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,384,850
• Petitioner v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00080 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 12–16 are unpatentable under § 103 over DeLorme because its TRIPS system teaches or renders obvious the claimed elements; secondary considerations do not outweigh that showing.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 16

  • ExcludeOther

    “Patent Owner moves to exclude certain paragraphs of Exhibit 1070 and the entirety of Exhibits 1071, 1072, 1073, 1078, 1079, 1080, 1081, and 1082. Paper 33. We do not rely on these exhibits in reaching our Decision and, thus, dismiss Patent Owner’s motion to exclude these exhibits as moot. Petitioner moves to exclude the entirety of Exhibits 2021, 2023, 2025, 2027, 2030–2051, and 2053–2056 and with the annotated portions of Exhibit 2024. Paper 31. We also dismiss Petitioner’s motion to exclude these exhibits. Petitioner’s motion to exclude theses exhibits are moot because we have found this evidence insufficient regardless of their admissibility.” slip op. at 51

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8

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

    “Petitioner proposes that “applications” be construed to mean “sequences of instructions that can be executed on a computer that are designed to help people perform a specific task.” Pet. 22. To support its proposed construction, Petitioner cites to the Microsoft Computer Dictionary, 4th ed., which defines “application” as “a program designed to assist in the performance of a specific task” and “program” as “[a] sequence of instructions that can be executed by a computer.” Ex. 1034, 4, 10. Patent Owner does not propose an explicit construction of “applications” but does state that “[i]t is clear from the specification, consistent with the ordinary meaning as would be understood by a POSA, that an application is a software program, not data.” PO Resp. 32 n.15. This is consistent with Petitioner’s proposed construction, which is based in-part on the definition of application, as a program. Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’850 patent, of “hospitality applications” is a sequences of instructions that can be executed on a computer (i.e., a program) that are designed to assist in the performance of a specific task in the hospitality industry.” slip op. at 10

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,384,850
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00097 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 11, 13, and 15 are unpatentable as obvious over DeLorme because the reference teaches or renders obvious their limitations.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Petitioner contends that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 51–63. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 419–473. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–3, 14–80, PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 18

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9

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

    “We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and 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). We, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 15

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,871,325

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.