• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

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

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

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

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 6, 2022 · PGR2022-00035 · APJ Ken B Barrett · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–17 was unpatentable on the asserted grounds.

  RulingsInstitution decision

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

    “A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that, if unrebutted, it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’580 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have a Bachelor of Science in Electrical Engineering, Computer Science, or another degree related to electromechanical systems, as well as at least 3 years of academic or industry experience in electronic payment systems.” Pet. 25–26 (citing Ex. 1003 ¶ 22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7

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

    “Petitioner states that, “[u]nless otherwise noted, Petitioners submit that the claim terms should be given their plain and ordinary meaning since the claim terminology appears to be the same as that used in the [Multi-Drop Bus] protocol.” Pet. 28. Patent Owner does not propose any constructions, asserting that “the Board need not reach any claim constructions in order to deny this petition.” Prelim. Resp. 12. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “in Anderson of a mobile device making, or the receipt from a mobile device of, a request to access peripheral device-generated signals. See Prelim. Resp. 17–24; see, e.g., id. at 17 (“Petitioners point to no evidence that any external device in Anderson ever requests access to the signals generated by the peripheral.”). We find this argument persuasive. Petitioner, in the section for “receiving” limitation 1.5(f), cites paragraph 44 of Anderson several times. See Pet. 36–39. That paragraph concludes with the statement: The IC 125 may also include a modem (not shown) to display content on external devices such as cellular phones via cellular network or any other network know[n] in the art. Thus, in one implementation, a user may receive nutritional information or balance information on his cell phone. Ex. 1005 ¶ 44. That is a disclosure of data flowing to the cell phone in the form of content to display, and it is ambiguous as to what component could be said to have requested that data flow. Limitation 1.5(f) recites data flow in the opposite direction, from the mobile device, and pertains to a specific message—“a request to access signals generated by the first peripheral device.” Ex. 1001, 53:22–24. Petitioner does not explain adequately how the disclosure in Anderson’s paragraph 44 could support a finding that there was received, from the cell phone, a request to access signals generated by a peripheral device. See, e.g., Pet. 36–37 (quoting Anderson’s paragraph 44).” slip op. at 13

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,074,580
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Oct 26, 2022 · PGR2021-00077 · APJ Meredith C Petravick · PGR · Final written decision

  Claim 1 is unpatentable under § 101; claims 2–27 were not shown unpatentable because the other challenges were deficient.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person having ordinary skill in the art would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, or a related/equivalent field and at least four years of work experience in identity, transaction, and telecommunication solutions.” slip op. at 12

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

    “As can be seen from claim 1 above, all of the claimed method steps occur “at the mobile device” and the final step is to enable completion of a cashless transaction. Claim 1 does not recite completing the purchase. The ’833 patent describes that any commercial transaction is completed at the automatic retail machine, not at the mobile device. Ex. 1001, 11:5–9; see also id. at 21:4–11, 22:18–20, 23:53–61, 30:25–27. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements italicized above recite the concept of obtaining authorization for a purchase and enabling completion of a cashless transaction, prior to user selection of any items or services. See Pet. 22–23 (arguing that the claimed method “is effectively no different than a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and when the customer decides on the item, completing the purchase”); Pet. Reply 5–6 (arguing that the claim recites “obtaining payment authorization and performing a financial transaction, the same as a person entering a store, the store checking the customer’s available credit (or calling a bank to do so) and, when the customer decides on the item, allowing the purchase”). In particular, claim 1 recites steps for obtaining authorization prior to user selection of any items or services — steps of identifying the automatic retail machine, obtaining a request from the electronic payment device, sending the request to a server, and obtaining from the server an authorization grant. Claim 1 also recites steps for enabling the completion of a purchase (i.e., cashless transaction) — detecting a trigger condition and sending the authorization grant to the electronic payment device. Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 18

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

    “We are not persuaded. Patent Owner’s arguments rest on the alleged novelty of the abstract idea itself, not the “specific limitation beyond the judicial exception,” i.e., the additional elements. “[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Patent Owner and Dr. Shamos do not identify, and we cannot find, anything in the claim suggesting that the mobile device, server, or automated retail device (i.e., the additional elements) are more than generic components. Indeed, the ’833 patent’s specification demonstrates that these elements were well-understood, routine, and conventional to the industry. Ex. 1001, 2:23–29, 37–42, 3:25–38 (explaining that Offer “teaches permitting the cashless utilization of a vending machines via a communications service, such as a cellular telephone;” Khan teaches an application on a user’s “personal trusted device” used to effectuate cashless purchases; and Carlson teaches “a system and a method for using a portable consumer device such as a mobile phone for payments and the like,” the method including prompting a user to select, from his mobile device, a product for purchase at a vending machine, after/if the user is authorized to make the purchase, and sending an authorization response to the vending machine from a “remote payment server”).” slip op. at 26

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

    “At the institution stage, we determined that no claim term required explicit construction. Inst. Dec. 35–37. Petitioner does not challenge our determination or otherwise advance its claim constructions in its Reply. See generally Pet. Reply. Patent Owner does not advance any explicit claim construction. PO Resp. 7–13. Regarding the identifying limitation, Patent Owner indicates that it is “undisputed between the parties that the claims require automatically determining the identity of the specific automatic retail machine based on an electronic transmission received from an electronic payment device of that automatic retail machine.” Id. at 7–8 (emphasis in original, citing Ex. 2018, 3; Ex. 2016 ¶ 68). Patent Owner submits that Petitioner’s constructions for each of the obtaining, authorization, and payment limitations should be rejected “for lacking accordance with the plain meaning of the claim in view of the specification” or “ignor[ing] the plain meaning of the term.” Id. at 9, 12, 13. As to the detecting limitation, Patent Owner argues that certain prior art asserted in the grounds in the Petition fails to teach the term as construed. Id. at 9. We determine that we need not expressly construe these claim terms” slip op. at 33

  Patent outcomesUS 10,719,833 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,719,833
• Freedom To Operate, Inc. v. Compass Pathfinder LimitedInstitution denied
  PTAB · Jun 22, 2022 · PGR2022-00018 · APJ Tina E Hulse · PGR · Institution

  The Board denied institution on claims 1–23 because Petitioner did not show it was more likely than not that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “post-grant review may not be instituted “unless . . . the information presented in the petition . . ., if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence presented by the parties, we determine Petitioner has not demonstrated that it is more likely than not that any of the claims challenged in the Petition are unpatentable.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “G. Remaining Arguments Patent Owner also argues we should deny the Petition for failure to identify all real parties-in-interest in the Petition. Prelim. Resp. 31–44. Because we determine that Petitioner has not sufficiently established that in this Decision.” slip op. at 24

  • Skill levelSkill level petitioner adoptedOther

    “B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had an advanced degree (i.e., a Master’s degree with two or more years of experience, or a Ph.D.) in inorganic or organic chemistry, chemical engineering, pharmacology, or a related discipline” and “would be familiar with medicinal chemistry or pharmaceutical chemistry, and with analytical methods to characterize and differentiate solid forms of compounds, (‘DSC’) and thermogravimetric analysis (‘TGA’).” Pet. 27 (citing Ex. 1106 ¶ 38). Petitioner further contends that “[a]lternatively, one of ordinary skill could have less education and approximately five or more years of relevant experience.” Id. Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. See generally Prelim. Resp. Absent opposition from Patent Owner, we adopt Petitioner’s definition because it is consistent with the level of ordinary skill in the art reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner’s proposed construction, as it is most consistent with the intrinsic evidence. The claim language makes clear that “Polymorph A” is “characterized by” the specific peaks set forth in the claims. Ex. 1101, claims 1, 8, 16. Thus, regardless of the alleged conventional definition of a “polymorph,” urged by Petitioner, the inventors are entitled to act as their own lexicographers to define “Polymorph A” according to the recited peaks on the XRPD diffractogram. See Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007) (“When a patentee defines a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term.”). That the Specification consistently refers to “Polymorph A” as a proper noun and describes Polymorph A as “characterized by” the recited peaks in an XRPD diffractogram further highlights the inventors’ clear intent to act as their own lexicographer. See, e.g., Ex. 1101, 4:4–5:36; Merck & Co. v. Teva Pharms. USA, 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts away from their ordinary meaning, he must clearly express that intent in the written description.”). Finally, we agree with Patent Owner that the prosecution history of the parent ’257 patent is relevant to the construction of the claims of the ’259 patent, which is a continuation of the ’257 patent. Prelim. Resp. 6 (citing Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1350 (Fed. Cir. 2019) (“Statements made during prosecution of a parent application are relevant to construing terms in a patent resulting from a continuation application if such statements relate to the subject matter of the claims being construed.”)). During prosecution of the parent ’257 patent application, the examiner rejected original claim 1 as indefinite because it did not define “Polymorph A,” and required one to “refer to the specification to determine what is Polymorph A.” Ex. 2133, 7. Patent Owner then amended the claims to define Polymorph A by adding the specific XRPD peaks recited in claim 1. Ex. 2134, 2; see also id. at 6. Thus, we find the intrinsic evidence supports Patent Owner’s proposed construction.” slip op. at 9

  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,954,259
• Tiz Inc. D/B/A Provi v. Jason K. SmithAll claims unpatentable
  PTAB · Mar 23, 2022 · CBM2020-00029 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 because they claim an abstract idea without integrating it into a practical application or adding an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “For the reasons expressed below, we conclude that Petitioner has demonstrated by a preponderance of evidence that claims 1–19 are unpatentable as being directed to ineligible subject matter.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art Based on the full trial record, including our review of the ’585 patent and the types of problems and solutions described in the ’585 patent and cited reference materials, we agree with Dr. Min that a person of ordinary skill in the art would have had “the equivalent of a Bachelor’s degree or higher in electrical engineering, computer science or computer networking, and at least 2 years working experience designing communication systems.” See Ex. 1008 ¶ 21. Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art.2 See generally PO Resp. 2 In opposing Petitioner’s Motion to Exclude, Patent Owner states that “the Board should modify its definition of person of ordinary skill in the art,” Opp. Exclude 5 n.1, but never proposes a different definition and does not dispute Petitioner’s definition in its Response or Sur-Reply.” slip op. at 19

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

    “Only terms that are in controversy need to be construed, and then 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). Petitioner does not propose any explicit constructions for any claim terms. See Pet. 44. Patent Owner also does not propose any explicit constructions for any claim terms. See PO. Resp. We determine that no explicit construction is necessary in order to resolve the issues before us.” slip op. at 19

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

    “items by collecting, analyzing, and transmitting information related to inventory, promotions, and particular sellers” is not an abstract idea because it “requires multiple steps that may or may not be implicated (collecting, analyzing, and transmitting) for information from multiple sources that may or may not be used (inventory, promotions, distributors, i.e., ‘particular sellers’).” PO Resp. 33–34. Contrary to Patent Owner’s position, we do not agree that this abstract idea (or the claims) requires a complex or complicated, multi-step process. Rather, the claims are directed to the collecting, analyzing, and transmitting of information. Claim 1, for example, requires only a list and inventory order of “one or more products” (i.e., the claim may be satisfied with only a single product). The Federal Circuit has explained that, generally, “claims focused on ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ are directed to an abstract idea.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (quoting Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “Information as such is an intangible,” hence abstract, and “collecting information, including when limited to particular content (which does not change its character as information), [i]s within the realm of abstract ideas.” Electric Power, 830 F.3d at 1353 (citing cases). Thus, even assuming that different types of information may be implicated by a claim limitation, the fact remains that the type or source of information, e.g., inventory, promotions, distributors,” slip op. at 45

  Patent outcomesUS 10,467,585 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Berkheimer · Enfish · Electric Power · Phillips
  Patents in suitUS 10,467,585
• Square, Inc. v. Electronic Receipts Delivery Systems, LLCAll claims unpatentable
  PTAB · Nov 29, 2021 · CBM2020-00015 · APJ Miriam L Quinn · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 and the asserted Moran-based anticipation and obviousness grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “been “charged with infringement,” Pet. 10, but that statement does not foreclose reading that allegation as a charge of infringement against Petitioner. Under 37 C.F.R. § 42.302(a), “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” “[W]here a patent holder accuses customers of direct infringement based on the sale or use of a supplier’s equipment, the supplier has standing to commence a declaratory judgment action if,” for instance, “there is a controversy between the patentee and the supplier as to the supplier’s liability for induced or contributory infringement based on acts of direct infringement by its customers.” Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011); see also ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345 (Fed. Cir. 2011) (holding federal court had subject matter jurisdiction over claim for declaratory judgment of noninfringement where the plaintiff “had an interest in determining whether it would be liable for indemnification, which turned on whether [its contractor] would be liable for infringement”). Further, an allegation of direct infringement of a U.S. patent against the manufacturer’s customers may amount to an implicit allegation of indirect infringement against the manufacturer. Arris Group, 638 F.3d at 1375–76. Petitioner has shown persuasively that it sought to intervene in the district court litigation against its customers to “seek a declaratory judgement that [the] Square Register and Square’s other products and services do not infringe any valid claim of the ’551 [p]atent.” Ex. 1034, 3; Reply 1011. Patent Owner, the plaintiff in that suit, consented to the motion. Ex. 1034, 7; Reply 11. The district court granted Petitioner’s motion to intervene and Petitioner filed its Complaint in Intervention in district court, deeming Petitioner the “true defendant” in the dispute. See Reply 6; Ex. 1018. There is no question that the underlying district court litigation in which Petitioner seeks to assert non-infringement of the ’551 patent stems from Patent Owner’s allegations that Petitioner’s products directly or indirectly infringe the ’551 patent. These facts prove that Petitioner’s involvement in the district court litigation as an intervenor, together with Patent Owner’s accusation of infringement in its Answer and Affirmative Defenses, show a real and substantial controversy between Patent Owner and Petitioner. And the record shows that a federal court indeed has exercised jurisdiction over Patent Owner’s claim of infringement against Petitioner as intervenor, with Petitioner actually defending such a claim. This is sufficient to conclude that at the time of the filing of the Petition, Petitioner had been charged with infringement, and, therefore, had standing to file the Petition in this proceeding.” slip op. at 12

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

    “The parties do not identify claim constructions necessary for the Board to resolve the issues in this proceeding. Pet. 12; see generally Prelim. Resp.; PO Resp. We determine that it is unnecessary to expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms in controversy must be construed and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Skill levelOther

    “Petitioner proffers that [a] person of ordinary skill in the art . . . would have a Bachelor’s degree in Computer Science, Computer Engineering, Data Science or Electrical Engineering or any undergraduate degree plus three to five years of professional experience in software development, computer programming, or network engineering or equivalent additional formal education such as graduate studies, or work experience to replace formal education. Pet. 13 (citing Hochman Decl. ¶¶ 16–22). There is no dispute as to whether Petitioner’s proffered level of ordinary skill in the art is appropriate in this case. We do not find it necessary to define the level of skill with specificity save to note that the level of ordinary skill is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 23

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

    “components “implemented in a generic computer environment” for performing that abstract idea. Pet. 68. Petitioner further annotates claim 1 to provide identifiers for each limitation. Id. For this part of the analysis, we address specifically limitation [vi], which recites “automatically transmitting a digital receipt for the transaction to the destination associated with the first customer without input from the first customer.” Limitation [vi] recites transmission of a credit card receipt according to instructions previously provided by the credit card user, which constitutes a fundamental economic practice, one of the certain methods of organizing human activity identified in the Guidance as a judicial exception. See Pet. 74 (arguing that issuing receipts for a purchase transaction is “nothing more than the organization of a fundamental and economic activity”). The claim’s recitation of an “automatic[]” transmission does not alter the fundamental business transaction recited in the claim: providing a customer a receipt for a credit card charge. The limitation provides no technological detail of how to automate the transmission of such a receipt or how to effectuate the delivery to a “destination.” See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.”). The recitation of a “digital” receipt does not alter our analysis either. The modifier adds only that the receipt is in electronic form. The claim language, however, is silent as to how such a receipt is generated or otherwise prepared for transmission to the credit card user. There is no technological detail that would place the “digital” receipt outside of an abstract idea of a fundamental economic practice of providing a credit card receipt to a customer. The other recited limitations also support our determination that the claims are directed to an abstract idea of a fundamental economic practice. For instance, in its simplest form the claimed process includes three basic steps: registering a customer e-mail address for receiving credit card digital receipts (steps [i]—[ii]), initiating a credit card transaction for a sales transaction of the customer (steps [iii]—[v]), and transmitting the digital receipt in accordance with the information received and stored in steps [i] and [ii]. Thus, the claim explains the basic concept of providing a credit card receipt to a customer. These recited steps place no meaningful limit on the claim scope, as the claim lacks specificity as to how any computer or database is specially programmed to perform the claimed steps. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”). Each of claims 11 and 16 also recites the automatic transmission of a digital receipt for a credit card transaction to a user. Petitioner provides an explanation accounting for those claims, see id. at 93–94, and our analysis of claim 1 concerning the determination of an abstract idea equally applies to those claims. We determine that Petitioner has shown that claims 1, 11, and 16 recite a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Guidance as a judicially excepted abstract idea.” slip op. at 30

  Patent outcomesUS 8,534,551 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,534,551
• Quantile Technologies Limited v. Trioptima ABAll claims unpatentable
  PTAB · Sep 17, 2021 · CBM2020-00011 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–22 are unpatentable under § 101; the contingent motion to amend proposing substitute claims 23–28 is denied because those claims are also ineligible.

  RulingsFinal written decision

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

    “Id. at 32:41–33:15 (emphasis added). The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed system accomplishes this through collecting information, linking related information together, and then using mathematical techniques on the information to generate a “proposal package” of transactions for “termination and assignment.” This is all a mental process, an example of an abstract idea.” slip op. at 24

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

    “Claim 1 uses a generic processor to perform well-understood, routine, conventional activities previously known to the industry, such as receiving and analyzing data and performing mathematical calculations. See Bancorp Servs., L.L.C v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an otherwise patent-ineligible process for no more than its most basic function--making calculations or computations-- fails to circumvent the prohibition against patenting abstract ideas and mental processes.”). We do not discern any claimed element for accomplishing the claimed solution that is other than what was generically known for performing those conventional functions. See Credit Acceptance, 859 F.3d at 1057 (“[T]he claims do not provide details as to any non-conventional software for enhancing the financing process.”); see Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Our law demands more” than claim language that “provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it.”); Elec. Power, 830 F.3d at 1354 (explaining that claims are directed to an abstract idea where they do not recite “any particular assertedly inventive technology for performing [conventional] functions”). Despite Patent Owner’s assertions that the claim steps add enough to make the claims patentable, we find the bare recitation of the steps performed by a generic processor at a high level of generality is insufficient to supply an inventive concept.” slip op. at 39

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

    “The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed system accomplishes this through collecting information, linking related information together, and then using mathematical techniques on the information to generate a “proposal package” of transactions for “termination and assignment.” This is all a mental process, an example of an abstract idea. Patent Owner’s efforts to mimic the claim language in McRO does not change the result here. To begin with, the Supreme Court has cautioned against patent eligibility turning on the claim drafter’s art. See Flook, 437 U.S. at 593 (stating that patent eligibility does not turn “on the draftsman’s art”). Thus, merely parroting some language of an eligible claim of a completely different invention does not make the claims for this invention any less abstract. More importantly, the fact that the language is similar does not change the fundamental differences between the claimed invention here and the invention that was claimed in McRO. Proposed substitute claims 26, 27, and 28 are similar to proposed substitute claim 25 and add similar limitations that do not take the claim outside the realm of abstract ideas for Step 1 of the Alice inquiry. Accordingly, Petitioner has shown that the proposed substitute claims” slip op. at 61

  • 101 substituteMotion to amend, deniedDenied

    “The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed system accomplishes this through collecting information, linking related information together, and then using mathematical techniques on the information to generate a “proposal package” of transactions for “termination and assignment.” This is all a mental process, an example of an abstract idea. Patent Owner’s efforts to mimic the claim language in McRO does not change the result here. To begin with, the Supreme Court has cautioned against patent eligibility turning on the claim drafter’s art. See Flook, 437 U.S. at 593 (stating that patent eligibility does not turn “on the draftsman’s art”). Thus, merely parroting some language of an eligible claim of a completely different invention does not make the claims for this invention any less abstract. More importantly, the fact that the language is similar does not change the fundamental differences between the claimed invention here and the invention that was claimed in McRO. Proposed substitute claims 26, 27, and 28 are similar to proposed substitute claim 25 and add similar limitations that do not take the claim outside the realm of abstract ideas for Step 1 of the Alice inquiry. Accordingly, Petitioner has shown that the proposed substitute claims” slip op. at 61

  Patent outcomesUS 7,613,649 unpatentable
  § 101 eligibilitycites Mayo · Bilski · Enfish · Electric Power · Phillips
  Patents in suitUS 7,613,649
• Supercell OY v. Gree, Inc.All claims unpatentable
  PTAB · Jun 2, 2020 · PGR2019-00018 · APJ Lynne H Browne · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to an abstract idea without a practical application or inventive concept; the § 112(b) and § 112(d) challenges were not shown.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionDecided for petitioner

    “We agree with Petitioner that “the holding in In re Smith does not require that the claims be directed to rules for playing a ‘particular’ game.” Pet. Reply 5. Rather, the Federal Circuit held that “claims, describing a set of rules for a game, are drawn to an abstract idea.” In re Smith, 815 F.3d at 819. Notably, the Federal Circuit did not require that such rules only be applicable to a particular game. Id. Further, we agree that the claims at issue are similar to those in Planet Bingo as explained by Petitioner in its Reply. See Pet. Reply 6–8; see also Ex. 1009, 11.” slip op. at 14

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

    “We agree with Petitioner that the challenged claims do not integrate the judicial exception into a practical application. Pet. Reply 9. The claimed “input face” is simply not claimed in sufficient detail to require the type of specific user interface found to transform the claims into a practical application in Core Wireless, DDR Holdings, and other similar cases. Rather, as admitted by Patent Owner’s expert, the claims recite a generic “input face.” See Ex. 1005, 52:16–20, 78:22–79:1, 79:13–18, 108:11–109:8.” slip op. at 25

  • Skill levelSkill level board ownOther

    “2. Level of Ordinary Skill in the Art In the Petition, Petitioner does not proffer a definition of the level of ordinary skill in the art. See generally Pet. In its Response, Patent Owner does not provide a definition either. See generally PO Resp. In its Reply, Petitioner relies on the testimony of Patent Owner’s expert, Dr. Shamos, that a person of ordinary skill in the art has “two years of experience implementing interactive software having touchscreen user interfaces.” Pet. Reply 2 (citing Ex. 2001 ¶ 38). In its Sur-Reply. Patent Owner essentially agrees with Petitioner’s definition, but asserts that this definition does not require such a person to have personally written code for touchscreen user interfaces. See PO Sur-Reply 5. Having reviewed the entire record in this proceeding, we agree with both Petitioner and Patent Owner that a person of ordinary skill in the art would have had “two years of experience implementing interactive software having touchscreen user interfaces” as this is consistent with the level of ordinary skill reflected in the ’799 patent and evidence of record. Pet. Reply 2; PO Sur-Reply 5. We further agree with Patent Owner that such a person need not have personally written code for such implementation for the same reasons.” slip op. at 37

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “We find unpersuasive Petitioner’s contentions regarding the claim terms “direction” and “direction operation,” as well as the limitation “moving . . . one or more of the plurality of associated objects as a group.” Dec. 24. Specifically, we credit Dr. Shamos’s testimony that the terms “direction” and “direction operation” is not indefinite and that, although the limitation “moving . . . one or more of the plurality of associated objects as a group” may be broad, it is not indefinite. Id. Having considered the entire record in this proceeding, Petitioner has not demonstrated that claims 1–20 are indefinite. 4. Conclusion Regarding 35 U.S.C. § 112(b) For the reasons discussed above, we are not persuaded that Petitioner has demonstrated that claims 1–20 fail to comply with 35 U.S.C. § 112(b).” slip op. at 41

  Patent outcomesUS 9,891,799 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 9,891,799
• Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentable
  PTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.

  RulingsFinal written decision

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

    “does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35

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

    “Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41

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

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  • 101 substituteMixed

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  Patent outcomesUS 7,134,087 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 7,134,087
• American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 8,423,402

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.