• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 23, 2017 · CBM2016-00025 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under § 101 as patent-ineligible subject matter.

  RulingsFinal written decision

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

    “II. ANALYSIS A. Claim Construction Although Petitioner presents constructions for several claim terms (Pet. 39), we determine that no terms require express construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

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

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibility
  Patents in suitUS 6,996,538
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing denied
  PTAB · Apr 27, 2017 · CBM2015-00179 · APJ Sally C Medley · CBM · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 5–7 unpatentable under § 103 and ineligible under § 101.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Analysis A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for petitioner

    “In rendering our Decision, we did not focus on individual claim elements and overlook the claimed combination as a whole as Patent Owner asserts. Req. Reh’g 8–9. Rather, we applied the Supreme Court’s guidance that to be patent eligible, a claim to an otherwise abstract idea must recite additional elements that constitute an inventive concept and that one looks to elements of each claim individually and as an ordered combination. Dec. 26 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357 (2014) 4 and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297–98 (2012). We considered elements of each claim individually and as an ordered combination. Dec. 26–29. And with respect to considering the claimed combination as a whole, we specifically held that “considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claims into a patent-eligible application.” Id. at 29 (emphasis added). Thus, Patent Owner’s argument is not persuasive.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Decided for petitioner

    “unpatentable under 35 U.S.C. § 103 over TSE2, Togher3, Schott4, and Cooper5. Req. Reh’g 2–8. Essentially, Patent Owner disagrees with our interpretation of claim 5. Id. Claim 5 depends directly from claim 1 and recites “displaying an order icon at a location that corresponds to the desired price level along the price axis, the order icon indicating the user’s order at the electronic exchange.” We did not adopt Patent Owner’s proposed interpretation such that the phrase means “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.” Dec. 16. Rather, we explained that claim 5 was broad enough to also cover that when an order is placed by a user,” slip op. at 5

  • Strike new argumentNew argument disregardedNot reached

    “Patent Owner also argues that dependent claim 7, which depends from claim 5, is instructive for interpreting claim 5. Req. Reh’g 7. Specifically, Patent Owner argues that claim 7 requires that the order icon indicate the default quantity working at the electronic exchange and that in order for the order icon to indicate the default quantity selected by the user, the order icon must indicate the user’s own order. Id. This argument in connection with construing claim 5 is newly presented and improper for our consideration. We need not and do not consider this newly presented argument. In any event, we observe that Patent Owner has not explained sufficiently, with any supporting evidence, why claim 7 informs a person of ordinary skill in the art that we must read claim 5 as narrowly as Patent Owner proposes.” slip op. at 7

  § 101 eligibility§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 7,533,056
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Feb 17, 2017 · CBM2015-00179 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101 and § 103 over TSE, Togher, Schott, and Cooper, and over Silverman, Togher, Cooper, and Hogan.

  RulingsFinal written decision

  • BurdenUnpatentable

    “The individual elements of the claims do not transform the nature of the claims into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Contrary to Patent Owner’s argument, the claims simply recite the use of a generic computer with routine and conventional functions. Further, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claims into a patent-eligible application. For all of the above reasons, Petitioner has shown sufficiently that claims 1–15 of the ’056 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We do not agree with Patent Owner that the term “price axis” requires reading into the claim the additional “clarification” that a list of prices that do not contain gaps in between prices is not a price axis. There is nothing in the claim language itself that describes gaps or how data is arranged along the price axis or what contains a price axis. The passages and figures of the ’056 patent that Patent Owner (and Mr. Thomas) directs attention to are examples or embodiments of what is claimed, and do not indicate that Patent Owner disclaimed or limited price axis to consist of a list of prices that contains gaps in between prices. Moreover, Mr. Thomas’ illustration of what constitutes a price axis is conclusory and not supported by record evidence. Ex. 2169 ¶¶ 41–42. He has not directed attention to any evidence in support of his testimony as to what does and does not constitute a price axis as illustrated in 14 paragraph 41 of his declaration. As pointed out by Petitioner, an axis may be represented by scale breaks or logarithmic scales, and thus, need not retain an order of gaps as Patent Owner and Mr. Thomas contend. Pet. Reply 11–12; Ex. 1058, 103–109. We also have considered Patent Owner’s arguments and evidence that remarks made by the then applicant during prosecution of the application that matured into the ’056 patent amount to an express and clear disclaimer of the meaning for price axis. PO Resp. 6–7 (citing Ex. 1002, 178–179; Ex. 2169 ¶ 39). We are not persuaded by such arguments because the comments made during prosecution have not been shown to amount to a disclaimer of having a price axis without gaps in between prices. For example, Patent Owner directs attention to page 178 of Exhibit 1002 from the prosecution file in support of its disclaimer argument. On that page, however, is quoted language from several lines of the claim with an argument just prior stating that Silverman does not describe an axis of prices and all that is contained in the quoted language. Patent Owner has not explained sufficiently why we should construe such general remarks as a disclaimer. We also have reviewed the remarks made by the then applicant that the applied prior art displayed prices for which orders exist, but do not agree that Patent Owner has shown why such comments amount to a clear disclaimer or disavowal of the scope of the term “price axis.” To disavow claim scope, “the specification or prosecution history [must] make clear that the invention does not include a particular feature.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (internal citation, quotation, and alterations omitted).” slip op. at 14

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

    “icon at a location that corresponds to the desired price level along the price axis, the order icon indicating the user’s order at the electronic exchange.” (Emphasis added). Patent Owner argues that an “order icon indicating the user’s order at the electronic exchange” should be interpreted to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.” PO Resp. 9. Petitioner argues that no construction of the phrase is necessary and that Patent Owner’s construction is inconsistent with Figure 3A, which shows the user’s order aggregated with other users. Pet. Reply 12. Petitioner further argues that any icon that indicates a user’s order, whether aggregated with other orders or separate, meets the claim term. Id. We agree with Petitioner. There is nothing in the language of claim 5 that requires indicating the specific user order (separating it out from all other orders) or indicating to the user that it is his order. If an order is placed by a user, resulting in the total quantity of orders placed at that same price to increase, the total number would indicate an increase, and thus, indicate the user’s order. Patent Owner argues that because claim 1 recites bid indicators and offer indicators, an order icon must represent something distinct from the 16 bid/offer indicators. PO Resp. 7–8. But even Patent Owner does not explain why an order icon cannot be one of the offer or bid indicators. Indeed, for the embodiment that Patent Owner directs attention to there is no distinction between offer and bid indicators with order icons (an order icon is one of the indicators). Id. We agree with Petitioner that a person of ordinary skill in the art would have understood the ’056 patent to use “icons” and “indicators” interchangeably. See, e.g., Pet. 18–20. Thus, we disagree with Patent Owner that the “order icon” of claim 5 cannot be one of the offer or bid indicators. For all of the above reasons, we decline to interpret an “order icon indicating the user’s order at the electronic exchange” to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.”” slip op. at 16

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art10, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). 10 The parties’ submissions focus primarily on the degrees, occupations, and experience, as opposed to what the hypothetical person of ordinary skill in the art would have known at the time of the invention. As such, and as the triers of fact, based on the record before us, we do not find such information particularly helpful.” slip op. at 17

  Patent outcomesUS 7,533,056 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,533,056
• Apple Inc. v. Smartflash LLCRehearing denied
  PTAB · Jan 27, 2017 · CBM2015-00131 · APJ Jeremy M Plenzler · CBM · Rehearing

  The Board denied Smartflash’s rehearing request, leaving in place its determination that challenged claims 3–6, 8–14, 16–25, 27–30, and 32–41 are ineligible under § 101.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The 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, an opposition, or a reply.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “Id. at 13 (citing Ex. 1001, 26:5–11 (claim 3)). But McRO does not stand for the general proposition that use of rules or conditions to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained” slip op. at 5

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached

    “In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which “provides the requisite ‘something more’ than the performance of ‘well-” slip op. at 7

  § 101 eligibilitycites Alice · Bilski · Enfish
  Patents in suitUS 8,061,598
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 1, 5, 8, and 10 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded that claims 1, 5, 8, and 10 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 1 recites “code to receive payment validation data . . . for said at least one selected item of multimedia content.” Independent claim 8 recites “code to control access to said selected content data item responsive to the payment validation data.” Claim 5 depends from claim 1 and recites “code to retrieve supplementary data via said wireless interface and output said supplementary data to said user using said display.” Claim 10 depends from claim 8 and recites “said data access terminal is integrated with a mobile communications device and audio/video player.” Furthermore, as discussed above, the ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1201, 1:23–57. The patent specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by Internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored content based on validation of payment. Id.” slip op. at 11

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

    “2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).” slip op. at 13

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “Smartflash has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Smartflash has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 14, 19, and 22 are unpatentable under § 101 because they claim the abstract idea of conditioning and controlling access to content without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded that claims 14, 19, and 22 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 14 recites “code responsive to said user selection of said selected at least one item of multimedia content to transmit payment data relating to payment for said selected at least one item of multimedia content.” Independent claim 19 is similar and recites “code responsive to said user selection of said selected at least one content data item to transmit payment data relating to payment for said selected at least one content item.” Claim 22 depends from claim 19 and recites “wherein said data access terminal is integrated with a mobile communications device and audio/video player.”” slip op. at 11

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

    “claims are either field of use limitations—limiting the ideas of payment and controlling access to content to payment for retrieving “data” and controlling access to content based on “payment data” and “payment validation data”— or generic computer implementations, which Petitioner argues is insufficient to bring the claims within § 101 patent eligibility. Pet. 25–31. Specifically, Petitioner contends that the challenged claims “recite no more than generic computer elements and functions that were well-known, routine, and conventional to a POSITA at the time of filing.” Reply 6 (citations omitted); see id. at 10–12. Petitioner persuades us that claims 14, 19, and 22 of the ’772 patent do not add an inventive concept sufficient to ensure that the claims in practice amount to significantly more than claims on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Petitioner’s rationale that the additional elements of claims 14, 19, and 22 are field of use limitations and/or are generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 25–31; Reply 4–6.” slip op. at 14

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Petitioner. As noted above, Smartflash, as movant, has the burden to show that these exhibits are inadmissible. Smartflash’s reference to FRE 703 in unavailing because while this rule does not establish the admissibility of the exhibits, it also does not speak to whether these exhibits are inadmissible. Because Mr. Wechselberger attests that he reviewed these exhibits in reaching the opinions he expressed in this case, Smartflash has not shown that they are irrelevant under FRE 401 and 402. Accordingly, we decline to exclude Exhibits 1324, 1329, 1330, 1333, and 1335. We grant the motion as to Exhibit 1305.” slip op. at 30

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing denied
  PTAB · Aug 24, 2016 · CBM2015-00033 · APJ Matthew R Clements · CBM · Rehearing

  The Board denied Smartflash’s rehearing request, leaving claims 25, 26, 30, and 32 unpatentable under § 101 because the request did not show the Board misapprehended or overlooked a matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The 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, an opposition, or a reply.” slip op. at 3

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

    “Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 11–13) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 15–29 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 38 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 4

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
  § 101 eligibilitycites Alice
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing denied
  PTAB · Aug 24, 2016 · CBM2015-00032 · APJ Gregg I Anderson · CBM · Rehearing

  The Board denied Smartflash’s rehearing request, leaving its determination that claims 14, 19, and 22 are patent ineligible under § 101 unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The 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, an opposition, or a reply.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “determination that claims 14, 19, and 22 (“the challenged claims”) are directed to patent-ineligible subject matter. Req. Reh’g 5. In its Request, Smartflash presents arguments directed to alleged similarities between the challenged claims and those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016), and alleged differences between the challenged claims and those at issue in Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).” slip op. at 4

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner

    “As we stated in our Final Written Decision and Petitioner argues, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 14, 19, and 22, the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 15–17; Notice Resp. 1–2. These limitations of claims 14, 19, and 22 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1315, Abstract, 10:24–30).” slip op. at 7

  § 101 eligibilitycites Alice
  Patents in suitUS 8,336,772
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

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

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

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

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• HP Inc. / SAP America, Inc. v. Big Baboon, Inc.Institution denied
  PTAB · Jun 28, 2016 · CBM2016-00020 · APJ Trenton A Ward · CBM · Institution

  The Board denied institution because Petitioner did not show that claims 15 and 20–34 were more likely than not unpatentable under § 101 or any of the three § 103 grounds.

  RulingsInstitution decision

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

    “For the reasons that follow, Petitioner failed to establish that it is more likely than not that at least one of the challenged claims is unpatentable. Therefore, we deny the Petition.” slip op. at 2

  • BurdenDenied

    “We believe the same is true in this matter. Petitioner fails to identify specific documentary evidence indicating that the claim element “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” would have been obvious to a person of ordinary skill in the art at the time of the ’275 patent. At best, Petitioner provides a string cite to nine different documents, without pointing to any particular page or disclosure in any of those documents, as allegedly illustrating an “industry-wide push to Web-enable,” and provides a string cite to eight different paragraphs of testimony from Dr. Greenspun, as allegedly indicating why a skilled artisan “would have seen a strong need to provide Web-enabled system administration capabilities for the R/3 system described in R/3 Online and R/3 Book.” See Pet. 63–64 (citing Exs. 1017– 1021, 1023, 1026, 1027, 1030; Ex. 1032 ¶¶ 58–60, 85–86, 110–112). Petitioner, however, fails to identify with specificity which documentary evidence indicates that it would have been common knowledge to provide a Web interface for system administration of the system described by R/3 Online and the R/3 Book and, thus, that claim 15 would have been obvious to an ordinarily skilled artisan based on combining this alleged common knowledge with the system described by R/3 Online and R/3 Book. The Board, and Patent Owner, are left to speculate as to which particular evidence Petitioner is relying on. See Pet. 12, 42; 37 C.F.R. §§ 42.304(b)(4)–(5) (a petition must “specify where each element of the claim is found in the prior art” and identify “specific portions of the evidence that support the challenge”), 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). In view of this deficiency, we determine that Petitioner fails to articulate sufficient reasoning to support its assertion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, based on the record before us, we determine that Petitioner fails to demonstrate that it is more likely than not that independent claim 15, and claims 20–34 dependent therefrom, would have been obvious over R/3 Online and R/3 Book.” slip op. at 29

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

    “Petitioner urges the Board to construe two claim phrases. First, Petitioner urges us to construe the claimed “end-to-end, business-to-business, e-commerce business automation software for automation business functions across multiple business domains” to mean “[s]oftware that, using a computer network, at least partially automates business functions relating to two or more businesses and from two or more business domains (such as products, payments, and financial performance).” Pet. 19. Second, Petitioner urges us to construe the claimed “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” to mean “producing a software configuration in which modules can be enabled or disabled by (1) changing the configuration parameters of a web server program or (2) using a Web browser to change configuration parameters of software running on a server.” Pet. 21. Patent Owner does not offer any proposed constructions of claim terms in its Preliminary Response. For the reasons explained below, in this case determining the scope of the terms proffered by Petitioner is not necessary to determine whether Petitioner has met the standard for institution of a covered business method patent review, and we decline to adopt the constructions sought by Petitioner. See, e.g., 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.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

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

    “Claim 15 (the only claim substantively addressed by Petitioner), however, does not recite any “gathering” steps, and Petitioner does not explain sufficiently how the limitations of claim 15 are directed to the concept of “gathering” information. For example, claim 15 merely recites “providing . . . business automation software, “identifying multiple modules of the software,” and producing a “software configuration.” Additionally, claim 15 requires producing a “workscope/workflow structured display of complex database records,” which constitutes “an integrated decision-making environment for a particular business function.” Thus, the method of claim 15 does not expressly require that information be gathered across “multiple business domains.” Rather, claim 15 requires providing “business automation software” to produce a “structured display” of “records” pertaining to a “business transaction,” such that the display constitutes an “integrated decision-making environment for a particular business function.” Thus, even if Petitioner is correct that “gathering information from across a business and using the information to make decisions” by itself is an abstract idea, Petitioner’s analysis does not address sufficiently the specific language of claim 15 and explain why claim 15 is directed to that idea. See Pet. 27. Similarly, dependent claims 20–34 are not directed to “gathering information,” and Petitioner provides no analysis of the language of the dependent claims. In light of the above, we determine that Petitioner has failed to establish the first step of the Mayo framework; i.e., Petitioner fails to identify sufficiently an abstract idea to which claim 15 is directed.8 Petitioner combines its arguments under § 101 against dependent claims 20– 34 with its arguments against claim 15 and fails to provide any additional arguments for these dependent claims. See Pet. 25 (arguing that the “sixteen challenged claims of the ’275 patent are likewise unpatentable under §101”). Therefore, we similarly determine that Petitioner fails to establish the first step of the Mayo framework with respect to dependent claims 20–34. Based on the foregoing, we determine Petitioner has failed to establish, based on the record presented, that claims 15 and 20–34 are more likely than not directed to patent ineligible subject matter under 35 U.S.C. § 101. 8 We need not decide whether claim 15 is directed to a different abstract idea, and only determine that Petitioner has not shown sufficiently that claim 15 is directed to the alleged abstract idea that Petitioner proposes in the Petition.” slip op. at 19

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 6,343,275

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.