• Viglink, Inc. / Skimlinks, Inc. et al. v. Linkgine, Inc.All claims unpatentable
  PTAB · Mar 16, 2016 · CBM2015-00086 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–7 are unpatentable under § 101; claims 1–6 are also anticipated by Landau, but claim 7 was not shown anticipated.

  RulingsFinal written decision

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

    “We note that the fundamental issue at hand, allocating commissions, can be performed by humans, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea); Tr. 17:16–21. Although we have considered Patent Owner’s arguments to the contrary, we see little difference between replacing one character set with another character set to denote the recipient of a commission and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.2 As established by the record, the concept of commissions, as well as the practice of allocating commissions, existed long before the internet. See, e.g., Pet. 8–9 (citing Ex. 1004, 128, 132, 356–57).” slip op. at 11

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

    “Patent Owner’s argument that the claims are meaningfully limited because they recite steps performed by an intermediate computer is unavailing. PO Resp. 22–23. We are not convinced that reciting a standard computer performing a standard computer operation imposes meaningful limitations on the abstract idea. We agree with Petitioner that the disclosures regarding the technical details of the “intermediary computer” are sparse, and do not make the intermediary computer specialized. Claims do not become patent-eligible under § 101 simply for reciting a known, general purpose computer. Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes that “can be carried out in existing computers long in use, no new machinery being necessary,” or “can also be performed without a computer”). The Supreme Court rejected a similar argument, determining that “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Alice Corp., 134 S. Ct. at 2360 (quoting Mayo, 132 S. Ct. at 1298).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Based on Petitioner’s argument and the record before us, we are persuaded that Landau discloses a preferred affiliate code. Landau’s lookup operation determines that the existing affiliate code (Landau’s source Webmaster ID) is present, but recognizes that it is not the preferred affiliate code to complete the transaction. The existing affiliate code (Landau’s source Webmaster ID) is swapped out for the preferred affiliate code (Landau’s target Webmaster ID). The target Webmaster ID is the preferred affiliate code used by Landau to complete the transaction. Use of the word “preferred” to modify the term “affiliate code” indicates that the preferred affiliate code is a different element than existing affiliate code, and is preferred to the existing affiliate code within the affiliate manipulation system. We have not been directed by Patent Owner to any portion of the specification that persuasively indicates otherwise.3 Thus, Landau’s identification of the target Webmaster ID as the preferred alternative affiliate code to the existing affiliate code meets this limitation of the claims.” slip op. at 19

  • ExcludeMotion to exclude, deniedDenied

    “which Patent Owner responded (Paper 36) and on which Petitioner filed a Reply (Paper 37). Petitioner’s motion seeks to exclude Exhibits 2003 and 2004 as irrelevant. Mot. to Excl. 1–4. The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Patent Owner does not cite to Exhibits 2003 and 2004 in its Response, and we do not rely upon Exhibits 2003 and 2004 in our present determination. The Motion to Exclude, therefore, need not be decided as to these Exhibits. Accordingly, the Motion to Exclude is dismissed as to Exhibits 2003 and 2004.” slip op. at 26

  Patent outcomesUS 7,818,214 unpatentable
  § 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 7,818,214
• Viglink, Inc. / Skimlinks, Inc. et al. v. Linkgine, Inc.All claims unpatentable
  PTAB · Mar 16, 2016 · CBM2014-00185 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–8 are unpatentable under § 101 and anticipated by Priest; claims 1–7 are also anticipated by Landau, but claim 8 is not.

  RulingsFinal written decision

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

    “The Board interprets claims in an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning in view of the specification, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Claim terms generally are given their ordinary and customary meaning, unless it appears from the specification or the file history that they were used differently by the inventor, in a clear, deliberate, and precise manner. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In instituting trial, we expressly construed the terms “automatic/automatically” to mean “without human intervention.” Dec. 7–8. Neither party specifically addresses or contests this claim construction. Accordingly, we maintain our construction of the terms “automatic/automatically” to mean “without human intervention.” B. Patentability of Claims 1–8 Under 35 U.S.C. § 101” slip op. at 7

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

    “We note that the fundamental issue at hand, allocating commissions, can be performed by humans, or with the aid of pencil and paper. See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (noting that the steps of the claims could be performed by a human without the use of a computer in concluding that the claims at issue were drawn to an abstract idea); Tr. 17:16–21. Although we have considered Patent Owner’s arguments to the contrary, we see little difference between replacing one character set with another character set to denote the recipient of a commission and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.2 As established by the record, the concept of commissions, as well as the practice of allocating commissions, existed long before the internet. See, e.g., Pet. 8–9 (citing Ex. 1004, 128, 132, 356–57).” slip op. at 11

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

    “Patent Owner’s argument that the claims are meaningfully limited because they recite steps performed by an intermediate computer is unavailing. PO Resp. 20–21. We are not convinced that reciting a standard computer performing a standard computer operation imposes meaningful limitations on the abstract idea. We agree with Petitioner that the disclosures regarding the technical details of the “intermediary computer” are sparse, and do not make the intermediary computer specialized. Claims do not become patent-eligible under § 101 simply for reciting a known, general purpose computer. Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes that “can be carried out in existing computers long in use, no new machinery being necessary,” or “can also be performed without a computer”). The Supreme Court rejected a similar argument, determining that “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Alice Corp., 134 S. Ct. at 2360 (quoting Mayo, 132 S. Ct. at 1298).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Based on Petitioner’s argument and the record before us, we are persuaded that Landau discloses a preferred affiliate code. Landau’s lookup operation determines that the existing affiliate code (Landau’s source Webmaster ID) is present, but recognizes that it is not the preferred affiliate code to complete the transaction. The existing affiliate code (Landau’s source Webmaster ID) is swapped out for a preferred affiliate code (Landau’s target Webmaster ID). The target Webmaster ID is the preferred affiliate code used by Landau to complete the transaction. Use of the word “preferred” to modify the term “affiliate code” indicates that the preferred affiliate code is a different element than existing affiliate code, and is preferred to the existing affiliate code within the affiliate manipulation system. We have not been directed by Patent Owner to any portion of the specification that persuasively indicates otherwise.3 Thus, Landau’s identification of the target Webmaster ID as the preferred alternative affiliate code to the existing affiliate code meets this limitation of the claims.” slip op. at 20

  Patent outcomesUS 8,027,883 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 8,027,883
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01533 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 2, 3, 9–13, 18, 24, 49, 52, and 53 are unpatentable as obvious over Powell and Guillou; the motion to amend substitute claims 56–67 is denied.

  RulingsFinal written decision

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

    “We agree with Petitioner’s position. Particularly, we credit the testimony of Petitioner’s witness, Mr. Anthony J. Wechselberger, who explains that Campbell, Block, and Furukawa teach “force” or “automatic” tuning of a receiver, i.e., “sending a signal that forces a receiver to tune to a particular channel” and that such technology was well-known in 1981. Ex. 1035 ¶¶ 122–125. Patent Owner and Patent Owner’s expert, Dr. Weaver, also acknowledged that Furukawa teaches that a television system in which a signal is received from a central facility that causes the television to tune to a different channel. Mot. 15 (stating that “Furukawa describes the operation of a spot channel wherein a television set receiving any channel may be forced by a central facility to receive a spot channel”); PO Reply to Opp. 3 (discussing prior art “disclosure of the ‘automatic channel tuning’ feature which [Patent Owner] has already acknowledged in Furukawa”); Ex. 1038, 137:11–24, 140:16–21, 145:1–11. Patent Owner’s witness testified that “[a] person of ordinary skill in the art before 1981 would have known that you could send a signal to a properly equipped and responsive television and make it change channels.” Ex. 1038, 136:19–24. Additionally, other references (i.e., Hartung and Cogswell) that disclose “automatic channel tuning” are cited in the prosecution history of the ’749 patent. PO Reply to Opp. 3 (citing Exs. 1045, 1046). According to Patent Owner, these references describe “the state of the art.” Id. Thus, we are satisfied that “automatic channel tuning,” as taught by Campbell, Block, and Furukawa, was known to a person of ordinary skill in the art at the time of the invention of the ’749 patent. Although Patent Owner argues that applying such “automatic channel tuning” to digital television systems (rather than using analog television systems) would have been difficult and that one of ordinary skill in the art would not have been motivated to use such technology to change channels and to send encrypted digital data (Mot. 20–23; PO Reply to Opp. 10–11), we are not persuaded given the state of the art as shown by Guillou, discussed in detail previously. Guillou discloses the decryption of digital data (Ex. 2014 ¶ 85) and explains that such technology “could be applied to other systems without difficulty for the man skilled in the art, and notably to the CEEFAX or ORACLE systems or the VIEWDATA or PRESTEL systems” (Ex. 1022, 21:23–28). The Ceefax, Oracle, Viewdata, and Prestel systems are analog systems that send signals over television channels or telephone lines. Therefore, we are satisfied that a person of skill in the art would have had reason to use “automatic channel tuning” and apply digital encryption technology in order to “transmit messages to a receiver station on a first communication channel that, when processed by the receiver station, causes the receiver station to connect [to] a communication channel different from the first channel to receive encrypted programming or data.” Accordingly, we find that Patent Owner has not demonstrated the patentability of proposed substitute claims 56–62.” slip op. at 37

  • BurdenUnpatentable

    “We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Rather, “the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” See id. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Thus, Patent Owner’s contentions regarding backward compatibility are not persuasive and fail to show that a skilled artisan would have been discouraged from combining the teachings of the cited references in the manner claimed.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “We are not persuaded. In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were a less costly alternative to defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added) (citation omitted). Moreover, our reviewing court has held that “without a showing of [a] nexus, ‘the mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness.’” In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (quoting Iron Grip Barbell, 392 F.3d at 1324). Like the applicant in Antor Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 52 (citing Ex. 2018). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2018 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). We find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’749 patent and the taking of the licenses. Although Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2018 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d at 140 (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’749 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 26

  Patent outcomesUS 7,805,749 unpatentable
  § 101 eligibility§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,805,749
• NRT Technology Corp. / NRT Technologies, Inc. v. Everi Payments, Inc.Institution denied
  PTAB · Jan 22, 2016 · CBM2015-00167 · APJ Michael J Fitzpatrick · CBM · Institution

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

  RulingsInstitution decision

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

    “We may not institute a CBM patent review “unless the Director[2] determines that the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).3 Based on our review of the record, we conclude that Petitioner is less likely than not to prevail with respect to all of the challenged claims. Accordingly, we deny the Petition to institute a CBM patent review, as set forth below.” slip op. at 2

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

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

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

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

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

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

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

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

  RulingsInstitution decision

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

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

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

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

  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 5,816,918
• Carecloud Corporation v. Athenahealth, Inc.All claims unpatentable
  PTAB · Nov 18, 2015 · CBM2014-00143 · APJ Richard E Rice · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 as directed to ineligible subject matter; obviousness was not shown for claims 1–3, 5, 8, 11–13, 15, 17, 18, and 20.

  RulingsFinal written decision

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

    “Neither party proposes any change to the interpretations set forth above, and our review of the evidence does not indicate that any change is necessary. Consequently, we maintain our interpretations. Patent Owner proposes constructions for two additional claim terms— “rule” and “database.” PO Resp. 10. With respect to “rule,” Patent Owner proposes the definition set forth expressly in the Specification, i.e., “a rule is coded logic that evaluates data and then performs an action.” Id. (citing Ex. 1001, 5:59–60). Petitioner does not dispute Patent Owner’s proposed construction of “rule,” and we agree that it is the broadest reasonable interpretation consistent with the Specification. For the claim term “database,” Patent Owner relies on Mr. Goodin’s statement, based on a dictionary definition, that a “database” is a “collection of data with a given structure for accepting, storing, and providing, on demand, data for multiple users.” Id. (citing Ex. 2012 ¶ 44); see Ex. 2015, 21. We note Mr. Goodin’s additional testimony that a POSA “would understand a ‘database’ is a stored collection of data” (Ex. 2012 ¶ 45), and that the Specification “contrasts a database, consisting of stored data, which can be updated on demand, with a set of rules that are hard coded into a software application” (id. ¶ 46, citing Ex. 1001, 6:27–28). Petitioner does not propose a construction for “database” or challenge Mr. Goodin’s testimony, discussed above. Based on the above, we determine that the broadest reasonable interpretation consistent with the Specification of “database” is a stored collection of data that can be updated on demand.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s Declarant, Dr. Bergeron, provides the following definition of a person of ordinary skill in the art (“POSA”): [A] POSA in the 2000 time frame would have had a Bachelor’s degree in computer science or the equivalent, or commensurate industry experience of at least four to five years of experience with computer programming and general knowledge of database technologies and networking or similar fields. A POS[A] in the 2000 time frame would also have at least two years of experience in the healthcare, or healthcare-related, industry. Ex. 1013 ¶ 16. Patent Owner’s Declarant, Dr. Goodin, agrees with Dr. Bergeron’s definition (Ex. 2012 ¶ 41). We agree with and adopt this definition for the purposes of our Final Written Decision.” slip op. at 8

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

    “On this record, we are persuaded that claims 1–20 are directed to the broad concept of scrubbing medical claims before submission, i.e., pre- processing medical claims to identify and correct errors. See Pet. 16; Pet. Reply 3. In particular, the patent claims all require automatically interacting with the completed claim submission by the medical practice management server to correct an error in the completed claim submission, wherein the error is resolved by the medical practice client before processing the completed claim submission, by applying one or more rules from a class of rules associated with the payor server, wherein the one or more rules comprises a new rule, an updated rule, or both received from the payor server. Ex. 1001, 20:12–20 (claim 1), 22:24–32 (claim 18), 23:11–19 (claim 20) (emphases added). Further, the concept of scrubbing medical claims before submission is consistent with the ’116 Patent Specification, which explains: “Given the extent of wasted time and money associated with the process [for filing and processing health insurance claims], there exists a need to manage a medical practice in a more efficient manner and [to] provide insurance claims with fewer or no errors.” Id. at 1:64–67. According to the Specification, “[t]he present invention automatically and repeatedly interacts with an insurance company system and/or applies rules to efficiently manage a medical practice and provide insurance claims with a reduced number of errors.” Id. at 2:3–6. In a preferred embodiment, rules engine 60 applies rules to the claim entry form and thereby “scrubs” the claim before submission. Id. at 13:31–59; see Ex. 1001, 13:33–34, Fig. 3F (“The rules engine 60 ‘scrubs’ the claim (step 390), or examines the claim for claim errors.”); Pet. 28 n.2. Given these disclosures, we are unpersuaded that any specific claim limitations need to be added to the above articulated abstract concept, as we discern that they merely provide support to the abstract concept of scrubbing medical claims before submission. Despite Patent Owner’s arguments to the contrary, we see little difference between scrubbing medical claims before submission and the type of fundamental economic practice considered to be an abstract idea by the Supreme Court in Alice.1 As established by the record, scrubbing medical claims before submission is a practice that existed long before the ’116 Patent. See, e.g., Ex. 1001, 1:31–40; Ex. 1012, 2:27–39; Ex. 1013 ¶¶ 33–34; Ex. 1024,2 107–108; Ex. 1029 ¶¶ 10–12, 14, 27. That the claims recite using a database of updated rules, multiple computers, and a claim edit screen, for scrubbing medical claims before submission, does not render the claims any less abstract. See Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “while the claims recite budgeting using a ‘communication medium’ (broadly including 1 In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. 134 S. Ct. at 2356. The Supreme Court also determined that “[l]ike the risk hedging in Bilski [Bilski v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” 134 S. Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice, and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice., 134 S. Ct. at 2357. 2 Bringing Health Care Online: The Role of Information Technologies, U.S. Congress, Office of Technology Assessment (Sept. 1995). the Internet and telephone networks), that limitation does not render the claims any less abstract”). We conclude, therefore, that Petitioner has demonstrated that the ʼ116 Patent claims, like the claims in Alice, are directed to an abstract idea, namely, scrubbing medical claims before submission.” slip op. at 14

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

    “For reasons that parallel those articulated by the Federal Circuit in Intellectual Ventures I, we determine, contrary to Patent Owner’s arguments, that claims 1–20 of the ’116 Patent do not incorporate an inventive concept. See Alice, 134 S. Ct. at 2355; Intellectual Ventures I, 792 F.3d at 1368–70. Rather, the steps and limitations in the claims, whether considered individually or as an ordered combination, amount to a mere instruction to implement the abstract idea on a computer. See Alice, 134 S. Ct. at 2358. Like the claims at issue in Alice and Intellectual Ventures I, the ’116 Patent claims all recite generic computer elements (servers, rules, database, interactive screen, etc.) performing generic computer tasks such as storing rules in a database, receiving data, performing automated operations, and transmitting data. See, e.g., Ex. 1001, 20:2–42 (claim 1); see Alice, 134 S. Ct. at 2359; Intellectual Ventures I, 792 F.3d at 1368, 1370; Ex. 1001, 4:27–57 (servers), 5:60–61 (rule), 5:66–6:8 (rules database), 14:62–65 (interactive screen); Ex. 1013 ¶¶ 54, 56, 57, 62; Ex. 1029 ¶¶ 22– 27; Ex. 2011, 158:23–159:5; Ex. 2024, 94:4–17. Patent Owner’s argument, on page 76 of the Response, that the claims” slip op. at 21

  Patent outcomesUS 7,617,116 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · Graham
  Patents in suitUS 7,617,116
• The United States Postal Service (Usps) / The United States Of America, As Represented By The Postmaster General v. Return Mail, Inc.All claims unpatentable
  PTAB · Oct 15, 2015 · CBM2014-00116 · APJ Kevin F Turner · CBM · Final written decision

  Claims 39–44 are unpatentable under § 101 because they claim the abstract idea of relaying mailing address data without significantly more; anticipation by 1997 ACS was not shown.

  RulingsFinal written decision

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

    “II. ANALYSIS A. Claim Construction We construe all terms, whether or not expressly discussed here, using the broadest reasonable construction in light of the ’548 Patent specification. See 37 C.F.R. § 42.300(b); see also In re Cuozzo Speed Techs., LLC, 93 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). During the pre-trial stage of this proceeding, the parties submitted their constructions for specific claim terms and we adopted constructions consistent with the constructions adopted by the U.S. Court of Federal Claims (Ex. 1011). Dec. 8–10. Return Mail does not dispute the constructions adopted. PO Resp. 16–27. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Dec. 8–10. For convenience, our claim constructions are reproduced in the table below:” slip op. at 6

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

    “USPS has shown, by a preponderance of the evidence, that claim 39, as a whole, is directed to the processing of returned mail items, involving decoding information, obtaining an updated address, and electronically transmitting that updated address to a transferee. USPS has shown that the steps are directed to the abstract idea of relaying mailing address data, with the inclusion of an electrical transmission step. Regarding whether claim 39 includes limitations that amount to significantly more than the abstract idea of relaying mailing address data, per our claim construction, USPS has shown that the “decoding” step is “deciphering information into useable form,” but that does not necessarily bring it out of the realm of processes performed in the past by human beings. In fact, all of the claimed steps could be performed in the human mind, with the exception of the transmitting step. Additionally, USPS has shown that what the data might be deemed to represent to the human mind — e.g., “information indicating whether the sender wants a corrected address to be provided for the intended recipient” — does not substantially affect the underlying structure or function of the claim or any machine on which it is carried out. Consistent with USPS’s position, the ’548 Patent disclosure does not describe any particular hardware to perform the steps recited in claim 39, but refers merely in broad terms to generic computer hardware and software.” slip op. at 14

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

    “significantly more than the abstract idea of relaying mailing address data, per our claim construction, USPS has shown that the “decoding” step is “deciphering information into useable form,” but that does not necessarily bring it out of the realm of processes performed in the past by human beings. In fact, all of the claimed steps could be performed in the human mind, with the exception of the transmitting step. Additionally, USPS has shown that what the data might be deemed to represent to the human mind — e.g., “information indicating whether the sender wants a corrected address to be provided for the intended recipient” — does not substantially affect the underlying structure or function of the claim or any machine on which it is carried out. Consistent with USPS’s position, the ’548 Patent disclosure does not describe any particular hardware to perform the steps recited in claim 39, but refers merely in broad terms to generic computer hardware and software.” slip op. at 14

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

    “deciding between the proffered constructions of “[d]ecipher information into useable form” and “[c]onvert information into useable form,” the court concluded that “using the terms ‘decipher’ and ‘deciphered’ more closely follow the customary meaning of the terms and reflects the claim language. This is because decoding must operate on encoded data,” which is recognized in the term “decipher” but not in “convert.” Ex. 1011, 22–23. USPS contends that “the carrier converts into intelligible form the participant code and endorsement thereby performing the claimed ‘decoding.’” Pet. 45. However, we find no support within 1997 ACS that the carrier decodes or deciphers the participant code or endorsement because the carrier (a person) is merely reading those indicators. The indicator “ADRESS SERVICE REQUESTED” is merely read and there is no disclosure that the carrier decodes the participant code or the keyline. We disagree with Dr. Lubenow that the plain-English endorsements “meet the plain and ordinary meaning of the term ‘code.’” Ex. 1028 ¶ 18. As such, we are not persuaded that the carrier in 1997 ACS acts to decode encoded data on the returned mail items.” slip op. at 24

  Patent outcomesUS 6,826,548 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 6,826,548
• Riverbed Technology, Inc. v. Silver Peak Systems, Inc.Other
  PTAB · Jun 9, 2015 · IPR2014-00245 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–24 were canceled; substitute claims 25–48 were denied because Patent Owner did not show patentability over the prior art, and claims 39–45 and 48 also failed § 101.

  RulingsFinal written decision

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

    “establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c). Entry of proposed amendments is not automatic, but occurs only upon the patent owner having met the requirements of 37 C.F.R. § 42.121 and demonstrated, by a preponderance of the evidence, the patentability of the proposed substitute claims. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7–8 (PTAB June 11, 2013) (Paper 26, “Idle Free”) (informative); Toyota Motor Corp. v. American Vehicular Scis. LLC, Case IPR2013-00419, slip. op. at 4–5 (PTAB Mar. 7, 2014) (Paper 32, “Toyota”). For the reasons explained below, we conclude that Patent Owner has not met its burden with respect to claims 25–48.” slip op. at 10

  • ScopeDecided for patent owner

    “As discussed above, the claims do not require encrypting data before transmitting that data as part of the store instruction. Accordingly, we decline to import into the claims a limitation based on a specific embodiment in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). We decline to read the exemplary disclosure of encrypting the data before transmitting it with the store instruction into the broadest reasonable interpretation of “data.”” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “3. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 16

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

    “appliance to generate encrypted received data” and “store the encrypted received data in the second memory device,” recited in proposed substitute claim 25 and similarly recited in the other proposed substitute independent claims. See Reply 4–5. We agree with Patent Owner that McCanne does not disclose explicitly that its receiving TA is configured to “encrypt the original data received with the store instruction . . . to generate encrypted received data” and “store the encrypted received data in the second memory device.” See id. at 5. Thus, we are not persuaded that McCanne anticipates the proposed substitute claims, as asserted by Petitioner, because McCanne fails to describe each and every element as set forth in the proposed substitute claims, either expressly or inherently. See Opp. 8–12; Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 26

  § 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,392,684
• Facebook, Inc. v. Everymd LLCOther
  PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision

  The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.

  RulingsFinal written decision

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

    “Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10

  • 112 supportDenied

    “its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12

  • ScopeDecided for patent owner

    “2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11

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

    “In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice
  Patents in suitUS 8,499,047
• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Apr 6, 2015 · CBM2014-00004 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 21 and 22 are unpatentable under § 101 because they claim an abstract idea implemented using generic, conventional technology.

  RulingsFinal written decision

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

    “term “SRC.” The ’151 patent does, however, give some context from which to discern the meaning of the term. For example, the ’151 patent states that “[t]he term ‘SRC technology,’ as used herein, may include any short-range radio communications technology now existing or yet to be developed, including, for example, radio frequency identification (‘RFID’), IEEE 802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at 2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-enabled mobile terminals” as including RFID, Bluetooth, and WiFi related devices). Moreover, the ’151 patent describes several embodiments of the invention. The first embodiment involves an RFID system. Id. at 3:7–8. The second embodiment is described as a “hybrid system” using “Bluetooth, WiFi, WiMAX, or any other wireless protocol” to connect with an RFID reader. Id. at 4:19–34. Based on this disclosure, it is clear that “SRC,” as used in the ’151 patent, encompasses communications at a range used by the technologies named in the specification—RFID, Bluetooth, and WiFi—and other short-range radio communication technologies. The question is whether the” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “extrinsic evidence, including testimony from Dr. Georgios B. Giannakis. Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood meaning in the art of “a nominal range of 100 meters or less, such as used by practical systems performing typical applications of RFID, Bluetooth, and Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all three examples of SRC technologies listed by the ’151 patent have “a practical upper range in a typical deployment that is nominally 100 meters or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts upon which it is based. Dr. Giannakis points to no factual support for his specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore, give very little weight to Dr. Giannakis’s testimony concluding that the term SRC, as used in the ’151 patent, includes a specific upper bound of 100 meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”).” slip op. at 8

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

    “Although a term may be relative, it is not necessarily indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“That some claim language may not be precise, however, does not automatically render a claim invalid.”). We are persuaded a person of ordinary skill in the art would understand that short-range communication covers a communication range “shorter” than the range covered by mobile networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term “short-range communication protocol,” which was construed to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices” where short-range communications similarly included Bluetooth and WiFi technologies, but did not include a numeric upper bound on range), cert. granted in-part on other grounds, 135 S.Ct. 752 (U.S. Dec. 5, 2014) (No. 13-896). The ’151 patent expressly describes mobile networks as including “cellular networks such as Global System for Mobile Communications (‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’) networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes interoperability between the various systems, contrasting them by size. For example, in describing the problems encountered when locating mobile terminals, the Specification describes “cell sizes [that] have grown to cover up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to this problem is employing “at least one SRC device.” Id. at 2:9–11. The ’151 patent also describes employing the “at least one SRC device . . . within a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the specification makes reasonably clear to the person of ordinary skill the range of SRC in comparison to the range of mobile networks—and in turn the scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite where the specification makes reasonably clear that the term means “very close to or at the edge of”).” slip op. at 12

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

    “We agree with Petitioner that the claimed invention is directed to an abstract idea, specifically, the abstract idea of receiving information and providing services or advertisements based on that information. The preambles and all claim limitations of both claims support this abstract idea, and the ’151 patent repeatedly discloses that the invention is directed to providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27. Patent Owner has not identified any portion of the ’151 patent inconsistent with this abstract idea, and we are persuaded that the identified abstract idea is a fundamental building block of economics, similar in nature to the abstract idea of hedging claimed in Bilski and intermediated settlement claimed in Alice. Patent Owner does not direct us to any authority for its assertion that an idea is not abstract if it includes specific recitation regarding the type of information transmitted, how that information is acquired, and whether it is used for authentication. Here, the claims are generally directed to a method of (i) receiving information over a network, (ii) authenticating that information, and (iii) providing a service to a mobile terminal or receiving an advertisement over the network, all of which inform the aforementioned abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the claimed abstract idea as “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” despite claim’s recitation of specific limitations, like scanner). This combination of steps recites an abstraction because it has “no particular concrete or tangible form” and is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The details emphasized by Patent Owner do not remove the claimed methods from the realm of the abstract. These details are characteristic of the invention’s implementation, rather than its general idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing the claim’s abstract idea without including the claim’s “computer network” limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed limitations may “add a degree of particularity,” but do not convert the concept embodied by the majority of the limitations into something concrete).” slip op. at 16

  Patent outcomesUS 7,463,151 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Nautilus
  Patents in suitUS 7,463,151

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.