- Freedom To Operate, Inc. v. Compass Pathfinder LimitedInstitution deniedPTAB · 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 · GrahamPatents in suitUS 10,954,259 - Tiz Inc. D/B/A Provi v. Jason K. SmithAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilitycites Mayo · Bilski · Berkheimer · Enfish · Electric Power · PhillipsPatents in suitUS 10,467,585 - Ironsource Ltd. v. Digital Turbine Inc.InstitutedPTAB · Jan 6, 2022 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Institution
Instituted PGR on claims 1–18 under § 101, claims 1, 3–12, and 14–18 under § 102(a) over Pasha, and the listed § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition presents information demonstrating it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“For the purposes of this Decision, we agree with Petitioner. Figure 7 of the ’951 patent shows the Downloader & Installer Module as a module within the “installation client,” not as the installation client itself. Ex. 1001, 14:4–45 (discussing “installation client 700” and its various modules); Fig. 7 (showing Download & Installer 720 as part of Installation Client 700). The ’951 patent states: Installation client 700 is represented as several modules performing separate functions. The division of functionality demonstrated in FIG. 7 is illustrative, and not intended to be limiting. Other embodiments of an installation client may organize the various functions performed by the installation client 700 in a different manner. Id. at 14:6–12. Accordingly, the proper construction of the term “installation client” does not limit the number or arrangement of components” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element not only ignores that that limitation recites installing software, which we are not persuaded is an abstract idea, but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. Nor are we persuaded by Petitioner’s characterization of the claims as directed to multitasking, which Petitioner characterizes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings except in rare circumstances”). Although the claimed invention may result in multitasking on the device, the claims are directed to downloading and installing an application in the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps— invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding claims that address the problem of retaining website visitors after clicking on an advertisement hyperlink not directed to an abstract idea). Accordingly, based on the current record, we question whether Petitioner establishes sufficiently that the claims are directed to a judicial exception under Step 2A of the Guidance. Nevertheless, because Petitioner has shown that it is more likely than not that challenged claims are unpatentable under 35 U.S.C. §§ 102, 103 (see infra §§ III.F–I), we include this ground in the instituted post-grant review. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to embracing all challenges included in the petition”).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As discussed above (supra Section II.C.1), at this preliminary stage, we do not construe “installation client” so narrowly as to limit the number or arrangement of components required to meet that claim element. Also, as discussed above (id.), the specification of the ’951 patent supports that multiple modules performing separate functions may comprise the installation client. Therefore, based on our review and consideration of the current record, we are not persuaded by Patent Owner’s argument that Pasha fails to disclose the claimed installation client. Petitioner’s arguments are inconsistent across the Petition. The Petition clearly alleges that “the App Manager 180 and Installer 182 disclose the claimed ‘installation client for downloading and installing applications on said device.’” Pet. 58. Petitioner’s description of Pasha’s App Manager is consistent with Pasha’s disclosure itself. For example, although Pasha discloses that “the host application 132 may use an App Manager component 180 and an Installer component 182,” it also states that “[t]he App Manager 180 may control portions of the application download and install process.” Ex. 1003, 17:22–26; Pet. 38. Pasha further discloses that “[t]he App Manager 180 [itself] may perform at least a portion of one or more of the steps 310–350 of FIG. 3,” i.e., including the step of “[i]nstalling the downloadable application on the computer system from the application package by executing program code having permission to install applications.” Ex. 1003, 17:35–36, Fig. 3. Patent Owner’s argument that Pasha’s “App Manager does not have the role of installing software applications,” is therefore contrary to Pasha’s disclosure. Also, Petitioner’s reasoning and evidentiary underpinnings here are based not so much on modifying Pasha, as Patent Owner suggests, as explaining how one of ordinary skill in the art would have understood Pasha’s disclosure. Between its App Manager and Installer, Pasha discloses the claimed functionality of the “installation client,” but, similar to the ’951 patent, Pasha teaches flexibility between the use of those components to implement the claimed functionality. For the purposes of institution, we are unpersuaded that Petitioner fails to meet its threshold burden of showing anticipation under Net MoneyIN. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (explaining that a reference need not always as it teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination). Based on our review of the current record, we therefore determine that the information presented supports sufficiently, for the purpose of institution, Petitioner’s assertion that Pasha discloses this limitation.” slip op. at 26
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · PhillipsPatents in suitUS 10,782,951 - PTAB · Dec 17, 2021 · PGR2021-00093 · APJ Meredith C Petravick · PGR · Institution
The Board instituted PGR on claims 1–25 on all petition grounds after finding the § 101 challenge to claim 1 met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv sets forth the factors that we weigh in determining whether to exercise our discretion to deny institution of the post-grant patent review proceeding here under 35 U.S.C. § 324(a). See Fintiv, Paper 11, 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. “[T]he Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because the claims at issue here, in particular claim 1, differ from the March 2015 amended claims of the ’859 patent and the August 2014 amended claims of the ’296 patent (see, e.g., Ex. 1001, 46:59–47:34), we are not persuaded that the cited prosecution history equally applies to the claims here. In particular, we note that claim 1, which we discuss in the analysis below, does not recite a first transceiver corresponding to a short-range communication mode and a second transceiver corresponding to a long-range communication mode, and does not specify whether a first or second transceiver perform certain actions recited in the claim. Id. As Patent Owner points out (Prelim. Resp. 19), claim 1 of the ’614 patent more but claim 1 does not specify whether it is long or short range and merely recites it being used to establish a connection for the exchange of information between a mobile device and a payment accepting unit in some of the claimed steps. Id. Thus, considering Becton, Dickinson factors (a) and (d), we are not persuaded that the same or substantially the same arguments concerning § 101 were previously presented to the Office. Because we determine that the same or substantially the same arguments with respect to § 101 were not previously presented to the Office, we need not address part two of the Advanced Bionics framework with respect to those arguments.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)] 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 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’614 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionInstituted
“Ex. 1001, 46:61–47:34. Based on the current record, we are persuaded that the limitations above recite the concept of identifying a merchant and making a purchase from the merchant. In particular, claim 1 recites steps for identifying payment accepting units (i.e., a merchant) — limitations 1.2– 1.7.1. Claim 1 also recites steps for conducting the purchase —limitations 1.7.2–1.11. Based on the current record, we find that identifying a merchant and making a purchase from the merchant is a commercial interaction, a sales activity. It falls within the enumerated “[c]ertain methods of organizing human activity” grouping of abstract ideas set forth in MPEP § 2106.04(a)(2).” slip op. at 28
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Berkheimer · Phillips · NautilusPatents in suitUS 10,891,614 - Square, Inc. v. Electronic Receipts Delivery Systems, LLCAll claims unpatentablePTAB · 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 1011. 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 unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 8,534,551 - Quantile Technologies Limited v. Trioptima ABAll claims unpatentablePTAB · Oct 1, 2021 · CBM2020-00012 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–46 are unpatentable under § 101 because they claim abstract financial and mathematical processes without integrating them into a practical application or adding an inventive concept.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On October 6, 2020, based on the record before us at the time, we instituted a covered business method patent review of all challenged claims on all grounds alleged. Paper 11 (“Institution Decision” or “Dec.”). The claims and ground in this proceeding are indicated in the table below.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.200(b) (2019). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary meaning as they would be understood by an ordinarily skilled artisan. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). 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). Patent Owner seeks construction of the terms “linking unit” and “combining unit” from claims 5 and 23, and “converting unit” from claim 6. Pet. 14–18. However, because we determine that even under Patent Owner’s constructions, the claims would be ineligible as discussed below, we discern no terms in need of express interpretation. Accordingly, we apply the legal standards set forth above when reading the claims. B. CBM PATENT REVIEW ELIGIBILITY” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Id. at 33:66–34:12 (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 method accomplishes this through collecting information, grouping related information together, and then using mathematical techniques on the information, calculating a total value of the group, and selecting a certain group that meets certain criteria. This is all a mental process, an example of an abstract idea.” slip op. at 23
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Claims 4 and 5 use 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 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 40
Patent outcomesUS 8,010,441 unpatentableClaim construction§ 101 eligibilitycites Mayo · Bilski · Enfish · Electric Power · PhillipsPatents in suitUS 8,010,441 - Quantile Technologies Limited v. Trioptima ABAll claims unpatentablePTAB · 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 · PhillipsPatents in suitUS 7,613,649 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · 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 · NautilusPatents in suitUS 9,891,799 - Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · 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 · EnfishPatents in suitUS 7,134,087 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987
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.