• Metavante Corporation / Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00032 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–60 are unpatentable under § 101 because they claim an abstract intermediary function implemented with routine computer activity.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s expert Michael Shamos. Paper 41 (“Mot. to Exclude”). Petitioner opposes Patent Owner's Motion to Exclude on the basis that these statements Patent Owner moves to exclude are proper rebuttal to Patent Owner's experts. Paper 42 (“Opp. to Mot. to Exclude”). Our Final Written Decision does not cite or rely on any of the subject matter Patent Owner seeks to exclude. Therefore, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 23

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

    “We agree with Petitioner. Claim 1 recites the single step of executing computer implemented instructions with one or more processors. Claim 1 recites that those instructions include ones in which the clearinghouse receives a payment request (or a request to add a payee to a payer’s pick list), accesses billing information stored in a database, identifies payee bill presentment information from the accessed information, and generates and transmits to the payer a notification of the bill presentment information.1 Although the one or more processors may also execute instructions to perform routine ancillary functions for the central clearinghouse to receive the request, access the database and transmit the information, there are no such instructions or structures recited in claim 1. Claim 1 of the ’749 Patent does not recite any structure for the bill presentment and payment central clearinghouse—nor does claim 1 recite any particular software instructions, any particular processors, any particular configuration or interconnection of the recited “one or more processors,” or any other structure to execute the claimed functions called for in the instructions. Thus, the bill presentment and payment central clearinghouse in claim 1 must be construed without structural limitations, other than being programmed to carry out the recited functions.” slip op. at 5

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

    “The ’749 Patent describes the payee-pick-list as a list of payees the user may plan to pay electronically and states that each user’s individual list is stored in the form of a database in a memory associated with the central clearinghouse station. Ex. 1001, col. 16, ll. 49–54. We disagree with Patent Owner’s characterization of the payee-pick-list as a data structure merely because it is used directly by the programmed central clearinghouse computer system. PO Resp. 40. Claim 1 recites receiving a request to add a payee to a pick-list associated with the payer, but does not recite any limitations concerning the pick-list. The specification refers to a database known as a payee-pick-list that includes certain information such as payee identifiers, street addresses, cities, states, zip codes, phone numbers and consumer account numbers. Ex. 1001, col. 16, 61–65. Nothing in this list of common information associated with the payee requires any particular data structure. Thus, we do not import a data structure limitation into the construction of "payee-pick-list” or "pick-list."” slip op. at 7

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

    “patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Id. Thus, the first step in our analysis is to consider whether the claims of the ’749 Patent recite a patent-ineligible concept. Patent Owner describes the central clearinghouse as a necessary intermediary between payers and payees interacting with each user station and handling EBPP interactions between thousands, if not millions, of such stations, which themselves are computers. Id. at 22. In Alice, the Supreme Court considered claims drawn to a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk and concluded that on their face, claims drawn to the concept of an intermediated settlement, like the hedging in Bilski, is an “abstract idea” beyond the scope of § 101. Id. at 2355–57.2 We conclude that the claims of the ’749 Patent, which are directed to a clearinghouse that acts as an intermediary between a payer and the payee by notifying the payer about payee bill presentment information, are not directed to patent-eligible subject matter. The steps recited in claim 1, and in each 2 In Bilski v. Kappos, 561 U.S. 593 (2010), the Supreme Court found unpatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counter-risk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. of independent claims 20, 40, 59, and 60, are carried out by a clearinghouse that receives a request from a payer to provide payee information or add a payee to the payer’s pick-list. The claims recite receiving a request and are not limited to any particular number of such requests. The clearinghouse retrieves the payee information from a database and generates and transmits a responsive notification message to the payer. Thus, independent claims 1, 20, 40, 59, and 60 are drawn to the patent-ineligible concept of executing instructions in which an intermediary receives a request, retrieves information from a database, and transmits the information to the requester.” slip op. at 9

  Patent outcomesUS 7,792,749 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,792,749
• Linkedin Corp. v. Avmarkets Inc.All claims unpatentable
  PTAB · Nov 10, 2014 · CBM2013-00025 · APJ Michael P Tierney · CBM · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable under § 101 because they claim an abstract product catalog using routine computer technology.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “While a Motion to Exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a Sur-Reply, and also is not a mechanism to argue that a Reply contains new arguments or relies on evidence that should have been included in the prima facie case. Here, AvMarkets’ Motion to Exclude contains such improper arguments, and is in the nature of a Sur-Reply. Moreover, as discussed below, AvMarkets’ arguments also are without merit.” slip op. at 5

  • Skill levelSkill level board ownDecided for patent owner

    “We also hold that both Mr. Pollastro and Dr. Freedman are qualified to testify as to the level and knowledge of one of ordinary skill in the art as of 2007, the time of the invention. Specifically, one of ordinary skill in the art would have at least a bachelor’s degree in computer science or equivalent experience in the art of software and hardware development, including the development of Web applications. Ex. 1012 ¶ 3; Ex. 2001 ¶ 4. Mr. Pollastro is qualified to testify as, at the time of the invention, he was a Microsoft Certified Professional who had years of experience building and managing servers for an in-house network. Ex 2001 ¶¶ 2–3. Dr. Freedman is qualified to testify as, at the time of the invention, he possessed a Bachelor’s degree and Master’s degree from the Massachusetts Institute of Technology in Computer Science and Engineering, and a Ph.D. in Computer Science from New York University. Ex. 1012 ¶ 3.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find that the claimed invention merely requires the use of a general-purpose computer. This finding is based on the teachings of the ’430 patent Specification and Dr. Freedman’s testimony. We credit the testimony of Dr. Freedman over that of Mr. Pollastro, as Dr. Freedman’s testimony is consistent with the teachings of the ’430 Specification and provides a thorough, well-reasoned analysis as to why the ’430 claims require nothing more than a general-purpose computer.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “See Dec. on Inst. 4–6. The parties do not dispute these interpretations in their Patent Owner Response and Reply. We adopt the above claim constructions based on our previous analysis, and see no reason to deviate from those constructions for purposes of this decision.” slip op. at 8

  Patent outcomesUS 7,856,430 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Phillips
  Patents in suitUS 7,856,430
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Sep 18, 2014 · CBM2013-00013 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–3 and 11 are unpatentable under §§ 101 and 103, and claims 1–6 and 11 are unpatentable under § 112, second paragraph.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Under Federal Rules of Evidence (“FRE”) 901(b)(1) a proponent may authenticate evidence through testimony that the evidence is what it is claimed to be. In Loraine v. Markel American Insurance Co., 241 F.R.D. 534, (D. Md. 2007), the court noted that a witness authenticating electronic evidence must “provide factual specificity about the process by which the electronically stored information is created, acquired, maintained, and preserved without alteration or change, or the process by which it is produced if the result of a system or process that does so.” Id. at 545. The inventor’s statements do not meet these criteria. However, under FRE 901(b)(4) a party may authenticate evidence using circumstantial evidence in conjunction with the appearance, contents, substance, internal patterns, or other distinctive characteristics of the evidence. Although Patent Owner has not provided evidence such as hash values or metadata (see Lorraine at 547), the contents and substance of the documents indicate that they are what they purport to be. Given their technical nature of the documents, this panel can assign them appropriate weight.” slip op. at 28

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

    “As discussed further in this decision, based on Patent Owner’s contentions and the language of the Specification, we conclude that the term “routed transactional data structure” fails to inform a person of ordinary skill in the art of the scope of the claim with reasonable certainty and is therefore indefinite under 35 U.S.C. § 112 , second paragraph. See, Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014) . However, to the extent that the claim can be construed in order to analyze its relationship to the prior art in this proceeding and whether the claim recites patent eligible subject matter under 35 U.S.C. § 101, we have reconsidered our use of the expression “switching a user” in the construction we applied in our Decision to Institute. Dec. to Inst. 15-16. Claim 1 recites that the “routed transactional data structure” is specific to a POSvc application, which is a software program that facilitates execution of transactions requested by a user. Upon reconsideration, we conclude that “utilizing a routed transaction data structure” encompasses using a data structure that facilitates switching the processing of information associated with a user selected transactional application that provides immediate processing.” slip op. at 11

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

    “In our Decision to Institute, we noted that “object routing” requires the use of individual networked objects to route a user from a selected transactional application to the processing provided by the service provider. In contrast, the limitation “routed transactional data structure,” does not impose a meaningful limit on the scope of claims 1–3 and 11 because it does not play a significant part in permitting the claimed method to be performed. See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). For example, as explained below in our 35 U.S.C. § 112 , second paragraph analysis, the Specification does not describe clearly how a data structure is transactional, as opposed to non-transactional, or routed, as opposed to non-routed. As discussed above, to the extent that “utilizing a routed transactional data structure that is both complete and non-deferred,” can be construed, we have interpreted it to mean using a data structure that facilitates switching the processing of information associated with a user– selected a transactional application that provides immediate processing. Switching the processing of information from one resource to another, such as from one program or data base to another, is a well-known abstract concept that is not limited to any particular technical approach, such as object routing, as recited in claim 4. The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter.” slip op. at 16

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

    “The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter. Claims 2, 3, and 11 do not add limitations that contribute to patent eligibility. Thus, we conclude that Petitioner has demonstrated that claims 1–3 and 11 do not recite patentable subject matter under 35 U.S.C. § 101.” slip op. at 17

  Patent outcomesUS 8,037,158 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Nautilus
  Patents in suitUS 8,037,158
• Interthinx, Inc. v. Corelogic Solutions, LLCAll claims unpatentable
  PTAB · Jan 30, 2014 · CBM2012-00007 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1, 6, 9, and 10 are unpatentable under § 101 and anticipated by or obvious over Jensen-1; the Board did not reach the remaining prior-art challenges.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “determinations are pure questions of law, not subject to the clear and convincing evidence standard, is not supported by the Federal Circuit. “[T]he analysis under [35 U.S.C.] § 101, while ultimately a legal determination, is rife with underlying factual issues.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (citing, e.g., CLS Bank Int'l v. Alice Corp., 717 F.3d 1269, 1304–05 (Fed. Cir. 2013) (en banc)) (Chief Judge Rader, and Judges Linn, Moore, and O'Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.)). In denying Petitioner’s motion for judgment as a matter of law under 35 U.S.C. § 101, the District Court stated only that Petitioner failed to show that claims 1 and 10 of the ’201 Patent do not cover a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Ex. 2039, 2. The District Court’s decision applied the clear and convincing evidence standard to the facts underlying its determination of law when denying Petitioner’s motion for summary judgment and motion for judgment as a matter of law that the claims of the ’201 Patent do not recite eligible subject matter. In contrast, the Board reviews the patentability of a claim, rather than its validity, and applies a preponderance of the evidence standard to the underlying factual determinations, e.g., whether the claims contain limitations that narrow or tie them to specific applications of an otherwise abstract concept. 35 U.S.C. § 326(e); Ultramercial, 722 F.3d at 1339. Because the Board applies to the underlying facts an evidentiary standard that is different from the standard applied by the courts, the issue decided by the Board is not identical to the one decided or litigated in the first action and could not have been essential to the final judgment in the first action. See In re Freeman, 30 F.3d, 1459, 1465 (Fed. Cir. 1994). Petitioner did not have an opportunity to litigate the issue in the first action. Id. Therefore, we conclude that Petitioner’s challenge under 35 U.S.C. § 101 is not barred by res judicata or collateral estoppel.” slip op. at 5

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

    “abstract idea, the claim instead is drawn to the abstract idea itself. Ultramercial, 722 F.3d at 1343. Inventor, Dr. Jost considers his invention to be the process for predicting the selling price of a home (a point estimate) using statistical analysis to develop the point estimate, and a co-inventor’s error model, which was also developed using statistical analysis. Ex. 1022, 72-73, 81-82. Dr. Jost’s testimony is consistent with claims 1 and 10, which recite appraising real estate by developing and storing a predictive model and generating a signal indicative of the appraised (predicted) value, and developing and storing an error model and generating a signal indicative of the error range for the appraised (predicted) value. Patent Owner’s expert Dr. Lipscomb characterizes the invention as “a way to determine the sales price of a property that may not have a recent sales transaction” and that predictive models “have been around a long time.” Ex. 1024, 42-43. Determining a price has been found to be abstract as a method of calculating. See, SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012- 00001, 2013 WL 3167735, at *16 (PTAB, June 11 2013). Dr. Jost testified that it was common in statistics to provide a confidence interval around estimates. Ex. 1022, 102. The testimony of Dr. Jost and Dr. Lipscomb indicates that determining an error can be accomplished using the same well known techniques as those applied to the predictive model and that bounding a price estimate by an error range is an abstract concept. Therefore, we find the claimed development of a model to predict a value and an error model to assess the error range around the predicted value, as recited in claims 1 and 10, is an abstract concept. Similarly, claims 6 and 9 recite limitations that bound the geographic area from which data is obtained to develop the model. The limitations in claims 6 and 9 recite the abstract and well known concept of examining the geographic area around the subject property so that relevant samples can be obtained to predict the price of the property.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “54-55. Patent Owner’s argument is similar to its underlying theme that CAMA prior art does not apply to the claimed AVM system. As discussed above, we do not find this argument persuasive because the ultimate objective of each system is to determine a value for each individual parcel. The same sentence in Jensen-1 that refers to a model estimating the sales price of all the properties also refers to adjustments necessary to correct the actual sales prices of selected recent comparable sales for the property characteristic differences between the subject property being valued and each comparable sale, in order to ascertain what each comparable property would have sold for had it been identical to the subject property in a physical descriptive sense on the valuation date. Ex. 1014, p. 194. (Emphasis added). Thus, as recited in claims 1, 6, 9 and 10, Jensen-1 obtains individual property data and recognizes a relationship between individual property data and the training data. Jensen-1 also discloses using the training data to predict the individual property value, as recited in claims 1, 6, 9 and 10. Jensen-1 discusses a model in which the value of a property is based on the land value qualified by a set of adjustments. Ex. 1014, p. 198. The adjustments reflect specific property characteristics. For example, up to a point, the value of a property can be expected to increase with increasing frontage. Id. Thus, specific properties with different frontage are valued differently. Jensen-1 discloses other modeling approaches that determine various per unit rates within a market model using regression analysis, Longini and Carbone’s adaptive estimation, and Carlson’s iterative correlative estimation procedure. Id. at 200. Jensen-1’s discussion of interactive correlative estimation specifically states that, within each iteration, “the model estimate and then the residual error (the actual sale price minus the model estimate) are computed on a per parcel basis.” Ex. 1014, p. 220. Thus, Jensen-1 discloses generating an appraised value responsive to the application of individual property data to the predictive error model. Jensen-1 specifically states that “[o]nce meaningful market models have been developed from the available sales, they can be used to estimate the fair market values of all of the parcels in the jurisdiction whether recently sold or not.” Ex. 2014, p. 224. As discussed above, the reference to all parcels in the jurisdiction does not imply that all the parcels are evaluated the same. Jensen discloses that the market models take into account the various characteristics of each parcel and determine a value for each parcel. Jensen-1 notes that the model estimate, i.e., the fair market value of each parcel as determined by the market models, is an abstract number and its reliability as an approximation of true market value depends on the quality of the individual estimates. Ex. 1014, p. 224. Jensen-1 specifically notes that when an actual sale price falls below the value estimate, it may or may not indicate a problem with the appraisal. Id. Thus, Jensen-1 applies to individual appraisals and attempts to assess an error in the appraisal of each parcel.” slip op. at 13

  Patent outcomesUS 5,361,201 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo
  Patents in suitUS 5,361,201
• SAP America, Inc. v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Jun 11, 2013 · CBM2012-00001 · APJ Michael P Tierney · CBM · Final written decision

  Claims 17 and 26–29 are unpatentable under § 101 because they claim abstract pricing and hierarchy concepts without meaningful limitations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “SAP, as petitioner, bears the ultimate burden of proof that Versata’s claims are unpatentable under § 101. To place SAP’s and Versata’s contentions in context, we begin our analysis by first discussing our construction of the challenged claims. Bancorp Serv., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[I]t will ordinarily be desirable—and often necessary— to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “The parties’ experts disagree as to whether the appended steps are merely routine, conventional steps or reflect meaningful limitations. Dr. Siegel, SAP’s expert, testifies that besides the abstract ideas, the claims merely recite routine, conventional activities. Ex. 1005, ¶ 49.19 In contrast, Dr. Liebich, Versata’s expert, testifies that the SAP R/3 pricing technology available at the time of the invention did not practice the combination of steps (storing, retrieving, sorting, eliminating, and determining) recited in the claims. Ex. 2091, ¶ 62. Dr. Liebich further testifies that he was not aware of any pricing technology in the marketplace at that time that performed the combination of steps. Id. Patent eligibility is distinct from the question of whether or not the claims recite subject matter that was not in the marketplace at the time of the invention. Flook, 437 U.S. at 593 (“[Section 101] does not involve the familiar issues of novelty and obviousness that routinely arise under §§ 102 and 103.”).20 We agree with SAP that Versata and Dr. Liebich fail to establish that the additional “specific” steps that are appended to the abstract idea provide meaningful limitations. The contention that the combination of the abstract idea and the specific steps represents an improvement in marketplace technology does not demonstrate that the additional steps are anything other than conventional, routine steps that are a consequence of implementing the abstract idea. Specifically, the Court in Flook held that a claim for an “improved” method is” slip op. at 31

  • Skill levelOther

    “after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

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

    “We agree with SAP that claim 17 does not itself impose a temporal limitation on when the pricing information is sorted. As SAP contends, Versata’s arguments and expert testimony as to what is “generally” the case do not demonstrate that Versata sought to limit claim 17 in the way that claim 1 expressly was limited. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1314 (Fed. Cir. 2003) (holding that similar language did not require separate and consecutive performance of various steps). Versata contends that the specification demonstrates that sorting must occur after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

  Patent outcomesUS 6,553,350 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Phillips
  Patents in suitUS 6,553,350

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.