- Google Inc. v. Patrick ZuiliAll claims unpatentablePTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision
Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40
- ExcludeMotion to exclude, deniedDenied
“to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29
Patent outcomesUS 7,953,667 unpatentableClaim construction§ 101 eligibilitycites Mayo · Bilski · EnfishPatents in suitUS 7,953,667 - Motorola Mobility, LLC v. Intellectual Ventures I, LLCAll claims unpatentablePTAB · Mar 21, 2016 · CBM2015-00004 · APJ Phillip J Kauffman · CBM · Final written decision
Claims 1, 8, 16, and 17 are unpatentable under § 101 because they claim the abstract idea of distributing electronic content using only routine, conventional activity.
RulingsFinal written decision- BurdenDecided for petitioner
“Final Written Decision is entered pursuant to 35 U.S.C. § 328(a). For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 8, 16, and 17 of the ’464 patent are unpatentable.” slip op. at 2
- ExcludeMotion to exclude, deniedDenied
“This argument is unpersuasive for two independent reasons. First, Petitioner’s objections do not mention an alleged failure to identify all material relied upon, and consequently the objection did not identify the grounds for the objection with sufficient particularity to permit Patent Owner to correct in the form of supplemental evidence. See 37 C.F.R. § 42.64(b)(1), (c). Second, our rules provide that the opinion of an expert witness may be given little or no weight if the expert does not disclose the underlying facts or data on which the opinion relies. See 37 C.F.R. § 42.65. Therefore, the absence of such underlying facts or data is a matter relating to the weight to be given such evidence rather than to the admissibility of that evidence. Further, Petitioner does not identify a Federal Rule of Evidence that supports exclusion as requested, and Petitioner’s citation to the Federal Rules of Civil Procedure (FRCP) is unpersuasive because the Board has not adopted those rules. See Mot. 2; Opp. Reply 2; 37 C.F.R. § 42.62 (applying the Federal Rules of Evidence (“Fed. R. Evid.”) to inter partes reviews); see generally Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 8 n.5 (PTAB Jan. 6, 2015) (Paper 88) (noting that the Board has not adopted the Federal Rules of Civil Procedure).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for patent owner
“EXHIBIT 2010 – THE DECLARATION OF DR. SHORT Petitioner presents five arguments that all or some of the Declaration of Dr. Short (Ex. 2010) should be excluded. Before addressing those arguments, we observe that Dr. Short’s qualifications align sufficiently with the challenged subject matter (software for use on a user station) such that his knowledge is helpful in understanding the evidence and determining facts in issue. For example, as noted by Patent Owner, Dr. Short has a Ph.D. in Electrical Engineering and more than 35 years of experience as a practicing engineer, which includes experience in computer programming. Opp. 2–3; Ex. 2010 ¶¶ 5–7; Ex. 2019 (Dr. Short’s personal data sheet).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim 1 is directed to a software product comprised of computer executable instructions for use at a user station that includes a processor and a storage device. Step (a) recites “enable a user at the user station to select content,” and step (b) recites “effect transport of the selected content.” Step (b) requires effecting transport of the content that was selected (i.e., “the selected content”) in step (a). Use of the past tense of select (i.e., “selected”) in step (b) indicates that selection of the content occurred before transport was effected. Consequently, the language of claim 1 indicates that step (a) (the selecting step) must occur before step (b) (the transporting step). Likewise, step (c) effects storage of “the transported content,” meaning the content transported in step (b), and step (d) requires effecting presentation of “the stored content,” meaning the content that was stored in step (c). Accordingly, the plain language of claim 1 suggests that the steps must be performed in the order presented. See PO Resp. 25; see also E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222 (Fed. Cir. 2007) (holding that where subsequent steps to completed results of the prior step, the steps of the claim must be performed in order). We consider this interpretation, in light of the specification, as interpreted by a person of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (“The construction that stays true to the claim language and most” slip op. at 7
Patent outcomesUS 6,658,464 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · PhillipsPatents in suitUS 6,658,464 - Apple, Inc. / Domino’S Pizza, Inc. et al. v. Ameranth, Inc.Some claims unpatentablePTAB · Mar 20, 2015 · CBM2014-00013 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1, 2, 4, 5, 10, and 12 are unpatentable under § 101; claims 3, 6–9, 11, and 13–16 were not shown unpatentable because the petition did not establish their claimed features were conventional.
RulingsFinal written decision- BurdenMixed
“We are persuaded by Patent Owner’s argument. Petitioner states that the claimed linking is a “classic example[] of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Reply 15. However, Petitioner fails to provide sufficient evidence to support its statement. See Pet. 49–66; Reply 9–15. Petitioner provides insufficient evidence to establish that a menu having the functionality to perform the claimed linking from a GUI on a hand-held device, was well-known or conventional and merely require a general purpose computer. See id. Upon review, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 3 and 11 recite patent-ineligible subject matter.” slip op. at 37
- Skill levelOther
“B. Claim Construction The Board interprets claims of unexpired patents using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 31), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 34–36). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). Below, we construe the limitations that are relevant to the issues of patent-eligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’733 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033, col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium® microprocessor”). Further, Petitioner’s construction is consistent with the Specification, which as discussed above, discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15
Patent outcomesUS 6,982,733 mixedClaim construction§ 101 eligibilitycites Alice · MayoPatents in suitUS 6,982,733 - Agilysys, Inc. / Expedia, Inc. et al. v. Ameranth, Inc.All claims unpatentablePTAB · Mar 20, 2015 · CBM2014-00016 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–10 are unpatentable under § 101 because they claim the abstract idea of generating a criteria-based menu and transmitting it using conventional computer elements.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patent of claims 1–15 of U.S. Patent No. 6,871,325 B1 (Ex. 1032, “the ’325 patent”). On March 26, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–10 of the ’325 patent on only one proposed ground of unpatentability, 35 U.S.C. § 101. Paper 19 (“Dec. to Inst.”). We did not institute as to claims 11–16 on any of the grounds proposed in the Petition. Ameranth, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 26, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Reply”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 30), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 33–35). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). We construe, below, the limitations that are relevant to the issues of patenteligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’325 patent uses typical hardware elements in the form of a computer workstation and that “[a] typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1032, col. 5, ll. 43–45; see also id. at col. 5, ll. 54–56 (“a CPU, e.g., Pentium® microprocessor”). Further the Specification discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 6, l. 33–col. 9, l. 3), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 31–37). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15
Patent outcomesUS 6,871,325 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 6,871,325 - Agilysys, Inc. v. Ameranth, Inc.All claims unpatentablePTAB · Mar 20, 2015 · CBM2014-00015 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–11 are unpatentable under § 101 because they claim the abstract idea of generating and transmitting menus using only generic computer elements and conventional activity.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. The body of claim 1 recites a system that includes a central processing unit (“CPU”), a data storage device, an operating system with a GUI, a first menu, a modifier menu, a sub-modifier menu, and application software. Ex. 1031, col. 14, l. 48–col. 15, l. 11. The application software is recited as “for generating a second menu from said first menu” and the wherein clause further defines how the second menu is generated from the first menu. Id. at col. 15, ll. 1–11. The application software is recited, further, as “for . . . transmitting said second menu to a wireless handheld computing device or Web page.” Id. at col. 15, l. 1–2. As can be seen from the above, the body of claim 1 recites a structurally complete invention; one that corresponds to the embodiment that has a desktop PC and a menu configuration application described in the Specification at column 6, line 9 thru column 8, line 62 and depicted in Figure 1. See also Ex. 1031, col. 3, ll. 35–41 (describing the present invention as a software tool for building a menu, modifying a menu, and downloading it to a handheld device or Web Page). As described in the Specification, a menu is updated using the GUI of the menu configuration application and, then, the updated menu is downloaded to a connected handheld device by clicking on a “Download Database” item or icon in GUI 1. Ex. 1031, col. 8, ll. 45–62; see also id. at col. 3, ll. 35–37; col. 6, ll. 22– 25; col. 7, ll. 12. Thus, the updated menu is the same on the desktop PC and the handheld device. At the oral hearing, Patent Owner indicated that downloading is synchronizing, as “[i]t’s making something the same with something else.” See Tr. 28. For these reasons, we agree with Petitioner that the preamble is non- slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’850 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1031, col. 5, ll. 34–40; see also id. at col. 5, ll. 48–49 (“a CPU, e.g., Pentium ® microprocessor”). Further, as discussed above, the Specification discloses using a desktop PC to generate and downloads menus to a connected handheld device (see id. at col. 6, l. 22–col. 8, l. 62), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 29–33). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“We are not persuaded by Patent Owner that its proposed construction is the broadest reasonable construction in light of the Specification. We see nothing in the Specification, and Patent Owner does not point to anything in the Specification, that provides support for Patent Owner’s proposed construction, in particular that the menus have a “linked levels” feature. Although the Specification discloses some menus that are linked to additional menus, this “linked levels” feature is extraneous and should not be read from the Specification into the claim. See Ex. 1031, col. 5, ll. 23–33 (“File options can have additional subordinate or child options associated with them. If a file option having a subordinate option is selected . . .” (emphases added)). We give “menu” its ordinary and customary meaning. RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options available to a user, as displayed on a computer or TV screen.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This definition is consistent with the Specification, which describes menus as providing choices or options in a GUI. See Ex. 1031, col. 5, ll. 17–20; see Fig. 1 (depicting a menu, a modifier menu, and a sub modifier menu). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of “menu” is a list of options available to a user displayable on a computer. v. “the second menu is capable of being displayed on the display screen of a” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“The claims recite a system that generates a second menu from a first menu by selecting menu categories and items from the first menu, adding menu categories and items to the second menu, and selecting parameters from modifier and sub-modifier menus to assign to items in the second menu. The claims also recite that the system transmits the second menu to a wireless handheld computing device or Web page. As discussed in section I(A) above, the Specification discloses a user generating a menu by adding or deleting menu categories, such as salads or desserts; menu items, such as caesar salad or green salad; menu modifiers, such as dressing; and menu sub-modifiers, such as ranch or blue cheese to create the second menu. Ex. 1031, col. 6, l. 35–col. 8, l. 20. The Specification states: [w]hile the preferred embodiment of the invention includes the selection of items from a master menu wherein the master menu is displayed using a graphical user interface, it is to be appreciated that any means for displaying the master menu to the user and generating another menu in response to and comprised of the selections made is encompassed by the contemplated invention. (id. at col. 13, ll. 52–58) and [t]he inventive concept encompasses the generation of a menu in any context known to those skilled in the art where an object is to facilitate display of the menu so as to enable selection of items from that menu. . . . Likewise, displaying menus generated in accordance with the invention on PDAs and Web pages to facilitate remote ordering are but a few examples of ways in which such menu might be used in practice. Any display and transmission means known to those skilled in the art is equally usable with respect to menus generated in accordance with the claimed invention.” slip op. at 18
Patent outcomesUS 6,384,850 unpatentableClaim construction§ 101 eligibilitycites Alice · MayoPatents in suitUS 6,384,850 - Salesforce.Com, Inc. v. Virtualagility, Inc.All claims unpatentablePTAB · Sep 16, 2014 · CBM2013-00024 · APJ Georgianna W Braden · CBM · Final written decision
Claims 1–21 are unpatentable under §§ 101 and 102 over Ito; the contingent motion to amend with substitute claims 22–30 is denied.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notTerm construed board ownPreamble limitingDecided for patent owner
“1. “system being implemented using a processor and a storage device accessible to the processor” The preamble of claim 1 recites a “system being implemented using a processor and a storage device.” Petitioner contends that the recited processor and storage device need not be components of the claimed system because they are not positively recited elements. Pet. 11 (citing Ex. 1002 ¶ 39). We are not persuaded by Petitioner’s reasoning, because the processor and storage device recited in the preamble of each independent claim of the ’413 patent serve as the antecedent basis for “said processor” and “the storage device” recited in the body of each claim. Dec. to Inst. 18– 19 (citing C.W. Zumbiel Co., Inc., v. Kappos & Graphic Packaging Int’l, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (noting that a preamble constitutes a limitation when the elements in the body of a claim depend on it for antecedent basis)). Furthermore, if the plain language of a claim indicates that a system is implemented by certain components, then those components constitute required parts of the system. “Implemented,” in that setting, can mean “constituted” or “formed.” Therefore, we construe the clause as setting forth that the processor and the storage device are both components of the claimed system.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the specification of the ’413 patent teaches that “model entity” is a set of assembled computer data or data item that represents fundamental components of a model. See Ex. 1001, col. 2, ll. 37–42. Patent Owner, however, does not (1) point to any disclosure in the specification that requires a data object to provide the capability for a user to perform specified operations on the model in order for the data object to qualify as a “model entity,” or (2) offer any persuasive evidence regarding the meaning of “model entity.” Therefore, we construe the phrase “model entity” as “a set of assembled computer data or data item that represents fundamental components of a model.”” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“issue are directed to a patent-ineligible concept, such as an abstract idea. See Alice, 134 S. Ct. at 2355. “[I]t is important at the outset to identify and define whatever fundamental concept appears wrapped up in the claim so that the subsequent analytical steps can proceed on a consistent footing.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282 (Fed. Cir. 2013) (plurality opinion). Here, the challenged claims are directed to a representation of a model for use in processing management information of a collaborative activity. Ex. 1001, col. 2, ll. 37–47. To aid in the management of a collaborative activity (e.g., developing customer relationships), a computer database is created that represents a model of the collaborative activity. Ex. 1004, 116. The model includes model entities (e.g., goals and projects) organized into a plurality of hierarchies (e.g., goals to be done and project hierarchy for doing them, or domain hierarchy of functional areas) having a plurality of types. Id.; see also Ex. 1001, Fig. 3 (hierarchy of goals and projects), Fig. 8 (hierarchy of domains). The model may contain data such as the customer segment, products, needs, etc. Ex. 1001, col. 2, l. 60– col. 3, l. 16. A processor provides a graphical user interface (“GUI”) for interaction with a user. Ex. 1004, p. 0116; see Ex. 1001, Fig. 9 (GUI displaying goals belonging to a domain). Therefore, given this disclosure, we find that the challenged claims are directed to an abstract idea, the creation and use of models to aid in processing management information by organizing and making the information readily accessible by the collaborators of the project. See, e.g., Ex. 1001, col. 2, l. 9–col. 5, l. 8. The model, as described by the specification, is a disembodied concept that is not tied to a specific algorithm or specialized computer. Thus, at the first step of the analysis, we determine the claims at issue here are directed to a patent-ineligible concept: an abstract idea.” slip op. at 21
Patent outcomesUS 8,095,413 unpatentableClaim construction§ 101 eligibility§ 102 anticipationcites Alice · MayoPatents in suitUS 8,095,413
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.