• Epicor Software Corporation v. Protegrity CorporationSome claims unpatentable
  PTAB · Apr 18, 2016 · CBM2015-00006 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 33–38, 41, 43–52, 55, and 57–60 are unpatentable under § 101; claims 39, 40, 42, 53, 54, and 56 were not shown unpatentable. Substitute claims 61–68 were denied.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Patent Owner’s Request to Cancel Claims 1–32 In the Patent Owner’s Response and the Motion to Amend, Patent Owner requests cancellation of claims 1–32 of the ’281 patent. PO Resp. 2– 3; Mot. Amend 1. Patent Owner’s request to cancel these claims is not contingent on the claims being determined to be unpatentable or on the entry of the proposed substitute claims. Patent Owner’s request to cancel claims 1–32 is granted and we need not address these claims further.” slip op. at 3

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

    “1998) (citing Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 619–20 (Fed. Cir. 1995)). Independent claim 33 recites “[a] computer-implemented data processing method” that includes, among other steps, a step of “maintaining a database comprising a plurality of data portions.” Ex. 1001, 13:38–41. Similarly, independent claim 47 recites “[a] computer system” that includes, among other elements, “a database storing a plurality of data portions.” Id. at 14:47–48. As can be seen from the above, claims 33 and 47 recite that the database comprises or stores data portions. Neither of claims 33 and 47, nor any claims dependent therefrom, recites that the database performs any other function, such as producing a compelling calling to the data protection catalogue to retrieve the data processing rules. See id. at 13:38–16:29. Indeed, unlike the parent ’201 patent, none of the claims of the ’281 patent recite a compelling calling at all. See id.; Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Notably, independent claim 8 of the parent ’201 patent recite an apparatus having a database that stores data to be protected. Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Claim 8 of the parent ’201 patent was amended during reexamination to recite that the apparatus, not the database, controls the user’s processing of the data according to the data processing rules, and the apparatus, not the database, also produces the compelling calling to the data element protection catalogue. Id. at Ex Parte Reexamination Certificate 1:41–51. The words of the claims of the ’281 patent, thus, are consistent with Petitioner’s proposed construction as the broadest reasonable construction.” slip op. at 10

  • BurdenDecided for petitioner

    “We are persuaded by Petitioner that a preponderance of the evidence shows that at least claim 33 encompasses activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.” slip op. at 21

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

    “Independent claim 33 recites a data processing method that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion is satisfied. Ex. 1001, 13:38–54. Claim 33 requires a database that comprises the data portions and requires a separate data protection table comprising data processing rules that must be satisfied before the data portion can be accessed. Id. The data processing rules are associated with the data category. Id. Independent claim 47 recites a corresponding computer system. Id. at 14:47–63. Independent claims 33 and 47, thus, recite a method or system that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion are satisfied. Ex. 1001, 13:38–54. Given the above, we are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. We are not persuaded by Patent Owner that the claims are not directed to an abstract idea, because Patent Owner’s argument is based upon elements not required by the claims. See PO Resp. 29–38. Given our construction of “data portion” and “database” in section II (A) above, the claims do not require protection on the data element level based on rules stored in a separate database, where the first database calls out to the second database. Patent Owner’s argument is not commensurate with the scope of the claims.” slip op. at 30

  Patent outcomesUS 8,402,281 mixed
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 8,402,281
• Travelers Lloyds Of Texas Insurance Co. / The Travelers Indemnity Co. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2014-00187 · APJ Hyun J Jung · CBM · Final written decision

  Claims 27, 30, 36, 42, 43, 45, and 50–52 are unpatentable under § 101; claim 27 is also anticipated by Toy under § 102. The motion to amend is granted.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Supreme Court clarified the process for analyzing claims to determine whether claims are directed to patent-ineligible subject matter. In Alice, the Supreme Court applied the framework set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If they are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297, 1298). In other words, the second step is to “search for an ‘inventive concept’––i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post solution activity.”’ Bilski v. Kappos, 561 U.S. 593, 610– 11 (2010) (quoting Diamond v. Diehr, 450 U.S.175, 191–92 (1981)).” slip op. at 22

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Board will interpret claims according to their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.300(b). In our Decision to Institute, we construed “unitary data stream” to mean a “transmitted set of information.” Dec. on Inst. 13. The parties do not present arguments for another interpretation (see Reply 6), and based on the complete record, we do not perceive any reason or evidence that now compels any deviation from this interpretation.” slip op. at 20

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

    “We agree with Petitioner that Patent Owner’s proposed construction reads a particular embodiment in the Abstract into claim 27, which only requires “a unitary data stream including N fields of data.” See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). “Parsing” does not seem to appear in the specification of the ’020 patent. We thus decline to accept Patent Owner’s proposed construction and give “parsing the unitary data stream” its ordinary and customary meaning.” slip op. at 21

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

    “Patent Owner also proposes that the broadest reasonable interpretation of “field” in view of the specification is a “computer software field” with citations to the specification. PO Resp. 15–24 (citing Ex. 1001, 8:32–37, 9:59–10:12, 10:19–35, 11:53–63, 13:40–14:20, 14:29–38, 15:26–47, 16:26– 32, 17:3–11, 18:5–18, 18:50–19:3, 19:61–20:6, 24:19–31, 24:38–43). Petitioner argues that the plain meaning should be applied. Reply 8. We do not see that the dispute impacts the analysis set forth in the Decision, so we need not decide between the two competing proposals. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 21

  Patent outcomesUS 7,178,020 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo · Bilski
  Patents in suitUS 7,178,020
• Travelers Lloyds Of Texas Insurance Co. / The Travelers Indemnity Co. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2014-00186 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 6, 10-17, and 28-31 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 6, 10–17, and 28–31 of the ’768 patent are unpatentable. We also grant the motion to amend and deny the motion to dismiss.” slip op. at 2

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

    “MOTION TO AMEND In its Motion to Amend, Patent Owner moves to amend the ’768 patent by canceling claims 11 and 30. Paper 15, 1; see 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). The Motion to Amend does not indicate that Patent Owner’s request to cancel claims 11 and 30 is contingent on the claims being determined to be unpatentable. We, therefore, grant the request.” slip op. at 42

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

    “construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.300(b). In our Institution Decision, we did not need to construe any term expressly. Patent Owner proposes that the broadest reasonable interpretation of “field” in view of the specification is a “computer software field” with citations to the specification and claim 1. PO Resp. 14–15 (citing Ex. 1001, 10:6–10, 12:66–13:38, 15:57–64, 17:62–66, 28:5–21). Petitioner argues that the plain meaning should be applied. Reply 6 (citing Ex. 1007, 8). We do not see that the dispute impacts the analysis set forth in the Decision, so we need not decide between the two competing proposals. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 21

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

    “Claim 1 requires accepting data, generating a first subset of that data, generating a second subset of that data, and transmitting the first and second subsets of data. Ex. 1001, 45:27–46. We determine that the subject matter of the challenged claims, when considered as a whole, is directed to an abstract idea, namely, examining information to extract relevant portions of that information. In particular, the complete record persuades us that the idea of examining information and extracting relevant portions of that information represents a disembodied, well-known concept, a basic building block of human ingenuity and rises to the level of an abstract idea. See Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”); see also Alice, 134 S. Ct. at 2354 (“in applying the § 101 exception, we must distinguish between patents that claim the ‘“building[g] block[s]”’ of human ingenuity and those that integrate the building blocks into something more”) (quoting Mayo, 132 S. Ct. at 1303).” slip op. at 24

  Patent outcomesUS 7,346,768 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,346,768
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Mar 29, 2016 · CBM2015-00016 · APJ Jeremy M Plenzler · CBM · Final written decision

  Claims 6, 8, and 10 are unpatentable under § 101; claim 11 is unpatentable under § 112 ¶ 2; the proceeding is terminated as to claim 1.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “B. Related Matters and Termination In a previous covered business method patent review, CBM2014- 00106, we issued a Final Written Decision determining claim 1 unpatentable under 35 U.S.C. § 103. CBM2014-00106, Paper 52. Because Apple was the petitioner in that proceeding, we found that § 325(e)(1) estops Apple from filing or maintaining a proceeding before the Office with respect to claim 1, i.e., the same claim, in this case. Paper 50 (“Estoppel Order”), 4. We, therefore, ordered Apple not to present argument with respect to the patentability of that claim at the oral hearing on November 9, 2015. Id. at 8.” slip op. at 3

  • Adverse judgmentAdverse judgmentGranted

    “We are persuaded that the particular facts of this proceeding now counsel in favor of termination with respect to claim 1. 37 C.F.R. § 42.72. Claim 1 of the ’458 patent has been finally cancelled and any decision we might reach in this proceeding regarding the patentability of this claim would be moot and purely advisory. We do not see how the just, speedy, and inexpensive resolution of every proceeding (37 C.F.R. § 42.1(b)) would be secured by rendering a final written decision with respect to claim 1.” slip op. at 3

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

    “We agree that the challenged claims are drawn to a patent-ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of controlling access to content. For example, claim 6 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.” As discussed above, the ’458 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1201, 1:20–55. The ’458 patent proposes to solve this problem by restricting access to data on a device based upon satisfaction of use rules linked to payment data. Id. at 9:7–25. As Petitioner notes (Pet. 26), the ’458 patent makes clear that the claimed subject matter is directed to paying for data and providing access to data. See Ex. 1201 at 2:20–23 (“This invention is . . . particularly . . . relate[d] to a portable data carrier for storing and paying for data and to computer systems for providing access to data.”). Although the specification discusses data piracy on the Internet (see id. at 1:29–39), the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the ’458 patent specification, is controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611. We are, thus, persuaded, based on the ’458 patent specification and the language of the challenged claims, that claims 6, 8, and 10 are directed to an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of intermediated settlement at issue in Alice was an abstract idea); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event”).” slip op. at 8

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

    “The specification of the ’458 patent treats as well-known all potentially technical aspects of the claims, which simply require generic computer components (e.g., interfaces, program store, and processor). The linkage of existing hardware devices to supplier-defined access rules appear to be “‘well-understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359; Mayo, 132 S. Ct. at 1294. Further, the claimed computer code simply performs generic computer functions, such as accessing, retrieving, and evaluating data. See Pet. 29–30. The recitation of these generic computer functions is insufficient to confer specificity. See Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). Moreover, we are not persuaded that claims 6, 8, and 10 “recite specific ways of using distinct memories, data types, and use rules that amount to significantly more than” conditioning and controlling access to content based on payment. See PO Resp. 18. The challenged claims do not recite any particular or “distinct memories.” To the extent Patent Owner argues that the claimed “program store” is a memory, Patent Owner does not provide any argument as to how it is constructed or implemented in an unconventional manner. Moreover, the claims recite several generic data types, such as “code,” “use status data,” and “use rules data.” We are not persuaded that the recitation of these data types, by itself, amounts to significantly more than the underlying abstract idea. Patent Owner does not point to any inventive concept in the ’458 patent related to the way these data types are constructed or used. The recitation of generic data types, being used in the conventional manner, is insufficient to confer the specificity required to elevate the nature of the claims into a patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294) (“We have described step two of this analysis as a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’”) (brackets in original). In addition, the ’458 patent simply recites data types with no description of the underlying implementation or programming that results in these data types. See Content Extraction and Transmission LLC, 776 F.3d at 1347 (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). In addition, because the recited elements can be implemented on a general purpose computer, the challenged claims do not cover a “particular machine.” Pet. 36; see Bilski, 561 U.S. at 604–05 (stating that machine-or-transformation test remains “a useful and important clue” for determining whether an invention is patent eligible). And the challenged claims do not transform an article into a different state or thing. Pet. 36.” slip op. at 10

  Patent outcomesUS 8,033,458 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Nautilus
  Patents in suitUS 8,033,458
• NRT Technology Corp. / NRT Technologies, Inc. v. Everi Payments, Inc.Institution denied
  PTAB · Jan 22, 2016 · CBM2015-00167 · APJ Michael J Fitzpatrick · CBM · Institution

  The Board denied institution because Petitioner did not show any challenged claim was more likely than not unpatentable under § 101, Akel, or grounds relying on Reeder.

  RulingsInstitution decision

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

    “We may not institute a CBM patent review “unless the Director[2] determines that the information presented in the petition . . . 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).3 Based on our review of the record, we conclude that Petitioner is less likely than not to prevail with respect to all of the challenged claims. Accordingly, we deny the Petition to institute a CBM patent review, as set forth below.” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “As Patent Owner points out, Petitioner has oversimplified the challenged claims. Prelim. Resp. 31. The challenged claims are not directed simply to the idea of providing money to an account holder or using trial-and-error until success is achieved. Rather, the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed. See Alice, 134 S. Ct. at 2354 (“Applications of such concepts to a new and useful end . . . remain eligible for patent protection.”) (internal quotation marks and brackets omitted). Further, Petitioner’s analysis omits any consideration of the elements of the claims as ordered combinations to determine whether the additional elements transform the nature of the claims into a patent-eligible application. It was Petitioner’s burden to do so. Petitioner has not shown that the claims are more likely than not patent-ineligible. Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).” slip op. at 11

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

    “It is a petitioner’s burden to explain how a challenged claim should be construed and how, being so construed, it is unpatentable. 37 C.F.R. § 42.204(b)(3)–(4). Petitioner does not propose an express construction for “personal identification number” and does not show that its plain and ordinary meaning would include a password. Further, claim 1 requires entering a PIN into the terminal. In the context of the specification and surrounding claim language, this step is part of the claimed “method of providing money or an item of value to an account-holder.” The teaching on which Petitioner relies, however, relates to a system operator’s back-end access of the Akel system. See Ex. 1006, 6:58–62 (“Each system operator requires a password to access the system . . . .”) (emphasis added). Elsewhere, Akel describes a “customer” (distinct from a system operator) as using a kiosk to obtain cash. Id. at 2:56–3:11. But, Akel does not describe entering a password into a terminal, let alone a PIN, as part of that process. Thus, even if Akel’s password fell within the scope of the recited PIN, the Petition would still fail to show how its use by an operator “to access the system” (see Ex. 1006, 258–60) meets the recited “entering a personal identification number into the terminal” as part of the claimed “method of providing money or an item of value to an account-holder.” Petitioner has not shown that Akel teaches “entering a personal identification number into the terminal.” Accordingly, Petitioner has not shown that claim 1, or dependent claims 2–8, are more likely than not anticipated by Akel.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “The invention date of the ’792 patent is no later than its filing date, which is January 5, 1998. Although the Reeder application was filed, and thus privately known to Mr. Reeder, before the ’792 filing date, such private knowledge is not within the scope of § 102(a). See, e.g., Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986) (“The statutory language, ‘known or used by others in this country’ (35 U.S.C. § 102(a)), means knowledge or use which is accessible to the public.”). Reeder was 8 The AIA took effect on March 18, 2013. Because the application from which the ’792 patent issued was filed before that date, our citations to 35 U.S.C. § 102 are to its pre-AIA version. eventually patented of course but not until after the filing date of the ’792 patent. For these reasons, Reeder is not prior art under 35 U.S.C. § 102(a), which is the only provision under which the Petition asserted Reeder. Reeder presumptively is prior art to the ’792 patent under a different subsection of the statute, namely § 102(e). However, a reference that is prior art under only § 102(e) may not be asserted in a CBM patent review. Under the AIA, a Petition for a CBM patent review may challenge novelty or non-obviousness of a claim only on the basis of: (i) prior art that is described by section 102(a) . . . ; or (ii) prior art that— (I) discloses the invention more than 1 year before the date of the application for patent in the United States; and (II) would be described by section 102(a) . . . if the disclosure had been made by another before the invention thereof by the applicant for patent. AIA § 18(a)(1)(C). Because Petitioner has not shown that Reeder is prior art that may be asserted in a Petition for a CBM patent review, all of the grounds that rely on Reeder are denied.” slip op. at 15

  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice
  Patents in suitUS 6,081,792
• Intermix Media, LLC v. Bally Gaming, Inc.Institution denied
  PTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution

  The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.

  RulingsInstitution decision

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

    “Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7

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

    “Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7

  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 5,816,918
• Riverbed Technology, Inc. v. Silver Peak Systems, Inc.Other
  PTAB · Dec 30, 2014 · IPR2013-00402 · APJ Justin T Arbes · IPR · Final written decision

  The Board canceled claims 1–12 and granted the motion to amend for substitute claims 13 and 15, but denied it for claims 14 and 16–18 based on unmet amendment and eligibility requirements.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “In a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art and, thus, entitlement to the claims. Idle Free at 7. This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner: A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. Id. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the opportunity, in its opposition, to argue any deficiency in the patent owner’s motion and “come forward with specific evidence and reasoning, including citation and submission of any applicable prior art,” to rebut the patent owner’s position on patentability. Idle Free at 8.” slip op. at 16

  • ScopeMotion to amend, grantedGranted

    “1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 13 as a substitute for claim 4, claim 14 as a substitute for claim 3, claim 15 as a substitute for claim 8, claim 16 as a substitute for claim 7, claim 17 as a substitute for claim 12, and claim 18 as a substitute for claim 11. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’226 patent. See Mot. 8–9. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 11

  • 112 supportGranted

    “2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundDecided for patent owner

    “Patent Owner argues that it would not have been obvious to incorporate the technique of Spring into a network data de-duplication system, as recited in the proposed substitute claims, because Spring “had very limited practical application in the network memory context.” Mot. 12. Patent Owner’s position is supported by the statement in McCanne ’376 that due to Spring’s small cache and first-in first-out replacement policy, “the efficacy of [Spring’s] approach is limited to detecting and exploiting communication redundancies that are fairly localized in time.” Ex. 1003 ¶ 20; see Mot. 12. The proposed substitute claims, which identify sync points from which forward and backward memory comparisons are performed, are not limited to only recently transmitted data. Patent Owner also asserts that the specific combination of “fine and coarse filtering of hash values” and “forward and backward memory comparison” limitations recited in the proposed substitute claims represents a practical solution to the “tradeoff” that exists with data de-duplication systems, and is not solved by any of the prior art of record. Mot. 12–13. Specifically, Patent Owner states that there is a “tradeoff” between the size of an index and the likelihood that an indexed segment will be matched. Id. Spring uses a small fixed-size cache and small packets, and, thus, works best for only recently transmitted data. Id. By contrast, according to Patent Owner, the proposed substitute claims provide a practical solution to the tradeoff by operating at the byte-level and using a combination of fine and coarse filters to identify sync points from which forward and backward memory comparisons are performed. Id. Patent Owner’s explanations regarding the prior art and why the proposed substitute claims allegedly would not have been obvious are supported by the record and are persuasive. We also note that although Petitioner addresses the “fine and coarse filtering of hash values” limitations in its Opposition (arguing that they are taught by Hsu), Petitioner does not argue that Hsu—or any other reference— teaches or suggests the “forward and backward memory comparison” limitations. Nor does Petitioner propose any specific combination of references that allegedly would have rendered obvious the proposed substitute claims as a whole. Thus, Patent Owner’s assertions regarding key aspects of the prior art, such as Spring, essentially are unrebutted.” slip op. at 23

  § 101 eligibility§ 103 obviousness
  Patents in suitUS 8,312,226

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.