- American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentablePTAB · Oct 30, 2019 · CBM2018-00035 · APJ Frances L Ippolito · CBM · Final written decision
Claims 1, 2, 5, 6, 9, 10, 13, and 14 are unpatentable under § 101; proposed substitute claims 17–20 are unpatentable under § 101, and the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelOther
“F. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”)” slip op. at 32
- Expert testimonyOther
“For the above reasons, we are persuaded that Petitioner has met its” slip op. at 62
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1. Principles of Law Use of the word “means” in a claim gives rise to a rebuttable” slip op. at 12
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Further, based on the entirety of the record, we determine that proposed substitute claims 17–20 are unpatentable by a preponderance of the evidence based on 35 U.S.C. § 101. Motion to Amend Outcome Claims Substitute Claims: Proposed in the Amendment 17–20 Substitute Claims: Motion to Amend Denied 17–20” slip op. at 101
Patent outcomesUS 8,423,402 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 8,423,402 - Teradata Operations, Inc. v. Berkley*ieorRehearing deniedPTAB · Sep 27, 2019 · CBM2019-00015 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Teradata’s rehearing request, leaving institution denied for claims 1, 3–5, and 10–26 because it had not shown the patent was not a technological invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity for a petitioner to respond to an institution decision to make a better argument for any given matter than that which was initially presented in a petition. Notably, in now challenging the claim construction of the above-noted term, Petitioner does not cite or identify any portion of the Petition that was misapprehended or overlooked. Instead, Petitioner seeks to make a better case through citation to portions of the record that were not previously relied upon. For instance, Petition now points to content of the prosecution history (Ex. 1002) pertaining to claim amendments made during prosecution that Petitioner would have us infer as demonstrating that the applicant “knew” how to limit the claims to calculations “in the RDBMS” but chose not to. Req. Reh’g 2– 3. That was not an argument on which Petitioner previously relied, and thus was not an argument that we could have misapprehended or overlooked. Moreover, in now making the argument, Petitioner seemingly discounts the plain language of the claims in specifically reciting “using” the RDBMS “to independently calculate” marginal values of profit. Ex. 1001, 30:61–63. We have considered Petitioner’s arguments pertaining to claim construction, but are not persuaded that they demonstrate that we misapprehended or overlooked content of the Petition that warrants a change in the claim constructions that were identified in the Institution Decision.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition, and which we found unpersuasive. As we explained in the Institution Decision, we were not satisfied that “bulk citations” to large portions of the record provided “meaningful explanation that the prior art shows an RDBMS, itself, that is performing the necessary profit calculations.” Inst. Dec. 13–14. We were not persuaded that Petitioner’s assessment of the prior art showed adequately that the “requirements of limitation 1[d] pertaining to independent profitability calculation by an RDBMS are non-novel or obvious.” Id. at 15. Although Petitioner may disagree with our determination in that respect, mere disagreement is not the proper basis for rehearing.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of deciding whether to institute trial, we adopted the Patent Owner’s construction of claim element 1[d(i)] (id. at 8), concluding that the construction was supported by “(1) the ’521 patent itself [see, e.g., id. at 15 (citing Ex. 1001, 10:42–47)]; (2) the testimony of Patent Owner’s declarant [see, e.g., id. at 14–16 (referencing Ex. 2001, ¶¶ 58–67, 75, 81– 85)]; and (3) the prosecution history of the ’521 patent [see, e.g., id. at 16” slip op. at 3
- BurdenDecided for patent owner
“Page 12 of the Petition, however, makes no connection between Blain’s teachings and the pertinent claim limitation 1[d]. There is no reasonable inference from the above-noted content of page 12 of the Petition that paragraph 85 of Dr. Weber’s testimony should be evaluated in the context of viewing an RDBMS as independently performing profitability calculations. We simply were not persuaded that the Petition and the applicable portions of Dr. Weber’s testimony cited therein, including paragraph 85, adequately addressed the features required by claims limitation 1[d].” slip op. at 7
Claim constructionPatents in suitUS 7,596,521 - Teradata Operations, Inc. v. Berkley*ieorRehearing deniedPTAB · Sep 27, 2019 · CBM2019-00016 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Teradata’s rehearing request and left in place denial of CBM review of claims 2, 6-9, and 27-32 because it had not shown the patent was not for a technological invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition, and which we found unpersuasive. As we explained in the Institution Decision, we were not satisfied that “bulk citations” to large portions of the record provided “meaningful explanation that the prior art shows an RDBMS, itself, that is performing the necessary profit calculations.” Inst. Dec. 14. We were not persuaded that Petitioner’s assessment of the prior art showed adequately that the “requirements of limitation 1[d] pertaining to independent profitability calculation by an RDBMS are non-novel or obvious.” Id. at 16. Although Petitioner may disagree with our determination in that respect, mere disagreement is not the proper basis for rehearing. We also concluded that record evidence conveyed that the claims solved a technical problem with a technical solution in providing “a distinctive software-based process that harnesses benefits to computer performance.” Id. at 17. In reaching that conclusion, we rejected Petitioner’s premise that the claims were simply directed to solving a business problem using a business solution. Petitioner does not address adequately the issue of improved computer performance, or identify any matter that we misapprehended or overlooked in determining that record evidence reasonably conveyed that such improved computer performance emerges from the method of claim 1.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of deciding whether to institute trial, we adopted the Patent Owner’s construction of claim element 1[d(i)] (id. at 9), concluding that the construction was supported by “(1) the ’521 patent itself [see, e.g., id. at 16–17 (citing Ex. 1001, 10:42–47)]; (2) the testimony of Patent Owner’s declarant [see, e.g., id. at 15–17 (referencing Ex. 2001, ¶¶ 58–67, 75, 81–85)]; and (3) the prosecution history of the ’521 patent [see, e.g., id.” slip op. at 3
- BurdenDecided for patent owner
“Page 13 of the Petition, however, makes no connection between Blain’s teachings and the pertinent claim limitation 1[d]. There is no reasonable inference from the above-noted content of page 13 of the Petition that paragraph 85 of Dr. Weber’s testimony should be evaluated in the context of viewing an RDBMS as independently performing profitability calculations. We simply were not persuaded that the Petition and the applicable portions of Dr. Weber’s testimony cited therein, including paragraph 85, adequately addressed the features required by claims limitation 1[d].” slip op. at 7
Claim constructionPatents in suitUS 7,596,521 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq Ise, LLCRehearing grantedPTAB · Feb 15, 2019 · CBM2018-00021 · APJ Kristi L R Sawert · CBM · Rehearing
The Board granted rehearing on the ethics rules and granted Interrogatories 4 and 5 and Document Request 2, while denying rehearing on the remaining specified discovery requests.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the” slip op. at 2
- Additional discoveryAdditional discovery, grantedGranted in part
“Upon reconsideration, we agree with Patent Owner that the timing of Dr. Hendershott’s preparation and the editing of common paragraphs 18–36 is unclear on the current record. For example, Dr. Hendershott testified that he could not remember whether Fish suggested that he provide a history of Wall Street and the exchanges, which are embodied in paragraphs 18–36. See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from Fish versions of his declaration containing edits, but did not remember whether any of those edits were substantive in nature. See id. at 51:19–25, 52:8–22. Dr. Hendershott also did not review the edits to his declarations and thus was arguably not prepared to testify as to the circumstances surrounding the creation and editing of the common paragraphs. See id. at 58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as relevant information only in the possession of Fish and Reed Smith (Bloomberg Factor 3). We deny Document Request 3, however, because we remain unpersuaded that it is relevant to showing that confidential information could have found its way from Fish to Reed Smith. Ord. 11. In particular, Document Request 3 relates to information flowing from Reed Smith to Dr. Hendershott, and is therefore not relevant to whether Fish used or revealed information to Reed Smith relating to its prosecution of the Nasdaq patents.” slip op. at 12
NonePatents in suitUS 6,618,707 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq Ise, LLCRehearing grantedPTAB · Feb 15, 2019 · CBM2018-00020 · APJ Kristi L R Sawert · CBM · Rehearing
The Board granted rehearing on the ethics rules and three discovery requests, denied it on five others, and ordered additional responses and production.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the 2 The parties filed identical papers in CBM2018-00020, CBM2018-00021, and CBM2018-00031. Patent Owner requested to file motions for additional discovery in CBM2018-00029, CBM2018-00030, and CBM2018-00032 on the same basis. See Ex. 2016. We held that request in abeyance. See Paper 21. The requested additional discovery would be substantially the same in all of these proceedings, and, thus, we include CBM2018-00029, CBM2018- 00030, and CBM2018-00032 in this order as well. See Ex. 2016. For efficiency, we only refer to the papers filed in CBM2018-00021. decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Additional discoveryAdditional discovery, grantedGranted in part
“Upon reconsideration, we agree with Patent Owner that the timing of Dr. Hendershott’s preparation and the editing of common paragraphs 18–36 is unclear on the current record. For example, Dr. Hendershott testified that he could not remember whether Fish suggested that he provide a history of Wall Street and the exchanges, which are embodied in paragraphs 18–36. See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from Fish versions of his declaration containing edits, but did not remember whether any of those edits were substantive in nature. See id. at 51:19–25, 52:8–22. Dr. Hendershott also did not review the edits to his declarations and thus was arguably not prepared to testify as to the circumstances surrounding the creation and editing of the common paragraphs. See id. at 58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as relevant information only in the possession of Fish and Reed Smith (Bloomberg Factor 3). We deny Document Request 3, however, because we remain unpersuaded that it is relevant to showing that confidential information could have found its way from Fish to Reed Smith. Ord. 11. In particular, Document Request 3 relates to information flowing from Reed Smith to Dr. Hendershott, and is therefore not relevant to whether Fish used or revealed information to Reed Smith relating to its prosecution of the Nasdaq patents.” slip op. at 12
NonePatents in suitUS 8,386,371 - PTAB · Nov 20, 2018 · CBM2018-00018 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review of claims 1–17 and 22–24 because the patent did not qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“completion of a purchase of a ticket, is a “recitation of a financial operation” sufficient to establish that claims 23 recite a covered business method. See 37 C.F.R. § 42.304(a) (“The petitioner must demonstrate that the patent for which review is sought is a covered business method patent . . . .”). Petitioner simply does not now explain persuasively why the transmission of a secured validating display by a computer system in the course of validating a ticket that had been purchased constitutes activity that is “active[] and contemporaneous[]” with the “management or administration of a financial product or service.” See Req. Reh’g 3–4. In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). After considering the Petition, we determined that Petitioner did not meets its burden of demonstrating that the patent for which review is sought is a covered business method patent. Although Petitioner may disagree with our determination as to claim 23, disagreement is not, itself, a proper basis for requesting rehearing. Here, Petitioner does not identify persuasively that we misapprehended or overlooked any matter in reaching a determination other than that desired by Petitioner.” slip op. at 5
- BurdenDecided for patent owner
“The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
NonePatents in suitUS 9,239,993 - Comcast Cable Communications, LLC v. Promptu Systems Corp.Institution deniedPTAB · Oct 10, 2018 · CBM2018-00033 · APJ Karl D Easthom · CBM · Institution
The Board denied institution of CBM review of claims 14–52, exercising discretion because Comcast advanced a conflicting claim construction in concurrent proceedings.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Petitioner argues the Board should not exercise its discretion to deny this CBM Petition based on the ’344 and ’345 Petitions, because “the grounds for unpatentability identified in this petition are different than the grounds for unpatentability identified in the IPR petitions—indeed, the grounds for unpatentability raised here are not permitted in an IPR proceeding,” and Patent Owner had “not yet filed a preliminary response to the pending IPR petitions challenging the ’196 Patent.” Pet. 4, n.1 (citing General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (identifying relevant factors)). Nevertheless, as Patent Owner argues, General Plastic cites a non-exhaustive list of factors. See Prelim. Resp. 5–6. Petitioner fails to explain why it filed this CBM 2 “Congress enacted § 112, ¶ 6, in response to Halliburton,” 329 U.S. at 1. Warner–Jenkinson Co. Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). Petition (filed April 2, 2018) about three and a half months after it filed the ’344 and ’345 Petitions (both filed Dec. 19, 2017) with competing claim construction arguments that impact central aspects of both trials. Petitioner’s implied argument that Congress only authorized certain grounds for inter partes reviews and limited other grounds to CBM reviews (e.g., § 112, ¶ 2), fails to explain sufficiently why the Board should entertain Petitioner’s new claim construction that potentially would impact central and major aspects of the concurrent ’344 and ’345 IPRs instituted based on a prior contradictory claim construction advanced by Petitioner.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“A potential consequence of instituting the instant CBM based on Petitioner’s arguments related to the scope issue raised by Patent Owner involves at least raising the related issue of whether to terminate the ’344 and ’345 IPRs. See BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013- 00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). Petitioner does not propose terminating the ’344 and ’345 IPRs in the event that we decide to institute the instant CBM proceeding. Without terminating the ’344 IPR and ’345 IPR, instituting the instant CBM proceeding based on Petitioner’s means plus function arguments would result in different Board panels proceeding under two contradictory claim constructions on a central issue––i.e., for the same claim term of the same patent, involving all of the challenged claims in the CBM and a slight majority of the collectively challenged claims in the ’344 and ’345 IPRs. The Board’s reviewing court disfavors conflicting “reasoning on a point . . . central to [the Board’s] analysis” absent an adequate explanation for the conflict. See Emerson Electric Co. v. Sipco, LLC, No. 2017-1866, 2018 WL 4145081, slip op. at *3 (Aug. 29, 2018 Fed. Cir.) (“Because the Board did not adequately explain its reasoning on a point that was central to its analysis and its conclusion on that point was contrary to another Board opinion on nearly identical facts, we vacate the Board’s determination as to the appealed claims and remand for further proceedings.”) (nonprecedential); Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017) (“[W]here a panel simultaneously issues opinions on the same technical issue between the same parties on the same record, and reaches opposite results without explanation, we think the best course is to vacate and remand these findings for further consideration.”). As noted above, Petitioner does not present an adequate explanation for the contradictory claim constructions. Whether a recitation constitutes a means-plus-function element does not depend on whether the claim is construed in an inter partes review or a covered business method patent review.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, based on the particular circumstances involved as discussed above, we decline to decide whether to adopt Petitioner’s means plus function claim construction position asserted here. On one hand, if we decided to adopt it and institute a CBM review on that basis, concurrent trials would proceed on diametrically opposed claim construction positions––unless the panel in the ’344 and ’345 IPRs decided to terminate those trials based on our adoption of the diametrically opposed claim construction asserted here. At the least, even without a termination the ’344 and ’345 IPRs, the diametrically opposed positions would infiltrate the three proceedings and raise collateral issues, undermining the Board’s resources and effort “to secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b). On the other hand, if we decide Petitioner’s showing here lacks sufficient support on the merits for purposes of a CBM review, a decision denying institution may serve to advise the parties on this limited record that Petitioner’s means plus function claim construction position in the ’344 and ’345 IPRs appears to be correct even though no final decision has been reached there yet.” slip op. at 11
- BurdenNot reached
“As presented, Petitioner advances the second and third theories of unpatentability as contingent upon not adopting its central argument that “program steps” represents a means plus function term. Because we do not decide the issue of whether “program steps” constitutes a means plus function term, we decline Petitioner’s invitation to investigate further its second and third contingent theories. In addition, given the prominence of the means plus function claim construction issue raised by the parties, in the event we were to decide to institute the instant CBM proceeding, the means plus function issue likely would dominate the CBM trial and may impact the ’344 IPR and ’345 IPR, as discussed above.” slip op. at 10
Discretionary denialPatents in suitUS 7,047,196 - PTAB · Aug 21, 2018 · CBM2018-00011 · APJ Barry L Grossman · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review because the challenged claims were not shown to meet the statutory covered-business-method definition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). We construed the scope of all the challenged claims, including claims 2 and 19, based on the words in the claims and the Specification of the ’967 patent. Dec. 12–16. Proper claim construction demands interpretation of the entire claim in context, not a single element in isolation. Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999). While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).” slip op. at 6
NonePatents in suitUS 8,494,967 - DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentablePTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.
RulingsFinal written decision- BurdenOther
“Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22
- Adverse judgmentOther
“Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26
Patent outcomesUS 9,053,494 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Mayo · EnfishPatents in suitUS 9,053,494 - Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentablePTAB · Jul 23, 2018 · CBM2017-00029 · APJ Michael R Zecher · CBM · Final written decision
Claims 1 and 9 are unpatentable under § 101 because they claim pre-authorized automatic auction payments using conventional computer components, without an inventive concept.
RulingsFinal written decision- BurdenDecided for petitioner
“4. Summary In summary, we determine that Petitioner has demonstrated by a preponderance of the evidence that all of the challenged claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 34
- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In a covered business method patent review, we interpret claim terms in an unexpired patent according to the broadest reasonable interpretation in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes a construction for the claim term “web site.” Pet. 23. We, however, need not address the construction of any claim term to resolve the issues before us.” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that independent claim 1 is directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a payment account to automatically effect a pre-authorized financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7. The language of independent claim 1 supports the finding that it is directed to the abstract idea of using a payment account to automatically effect a pre-authorized financial transaction in an electronic auction. This claim recites a method for automatically effecting payment by a process that includes the steps of maintaining and storing funds in payment accounts for use in transactions in an electronic auction system; receiving authorization prior to an electronic auction to execute an automatic payment; and executing the automatic payment by deducting and transferring funds from a payment account. Ex. 1001, 18:20–53. This purchaser-seller arrangement is not meaningfully distinct from the financial arrangements found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”), and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a payment account to automatically effect a pre-authorized financial transaction is a fundamental economic practice.” slip op. at 22
Patent outcomesUS 7,567,937 unpatentableClaim construction§ 101 eligibilitycites Alice · Bilski · Enfish · Electric PowerPatents in suitUS 7,567,937
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.