- Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · May 19, 2015 · CBM2014-00029 · APJ Hyun J Jung · CBM · Final written decision
Claims 1–18 are unpatentable under § 101 because they claim the abstract idea of protecting billing data with substitute billing data using only generic, routine computer activity.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Petitioner replies, and we agree, that the claims of the ’701 patent do not require that “substitute billing data” be tied to an actual financial account or be tested by an existing payment system. Also, we determine that the Specification does not describe how billing data becomes valid. The portion of Patent Owner’s expert declaration cited in Patent Owner’s Response does not refer to any portion of the Specification. PO Resp. 11; Martin Decl. ¶¶ 35–37. Thus, Patent Owner’s arguments regarding “valid billing data” do not persuade us that “substitute billing data” applies only to electronic transactions. Based on our conclusions from the Specification of the ’701 patent regarding “client” and the lack of any disclosure for validating billing data and the complete record before us, we are not persuaded that the broadest, reasonable interpretation of “substitute billing data” requires only electronic transactions. We determine that the broadest, reasonable interpretation of “substitute billing data” in view of the Specification is “valid billing data that is owned and/or controlled by a billing service, where billing data is temporarily or permanently distributed to clients to replace personal and/or private billing data of the client.” See Ex. 1001, 3:11–16. Also, Patent Owner’s arguments for “substitute billing data” do not persuade us to modify our interpretation of “a substitute for said personal billing data” and “substitutes for personal billing data.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification of the ’701 patent also states that, “[f]or the purposes of this description, the phrase ‘web site’ is intended to be a general reference to a network ‘presence’ maintained by a business as well [as] a logical presence maintained on behalf of a business.” Ex. 1001, 2:66–3:2. When this statement is considered together with Patent Owner’s asserted definition of “businesses”—that “each of the network locations to which a client may communicate provide[s] a ‘web site’ for engaging in commercial transactions”—the ’701 patent uses “businesses” or “business” to refer to the network locations, web sites, network presences or logical presences maintained by or on behalf of a business. Thus, we interpret “business” or “businesses” to mean the “network locations, web sites, network presences or logical presences maintained by or on behalf of a business.” In re Paulsen, 30 F.3d at 1480.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“C. Are the ’701 Patent Claims Directed to Abstract Ideas? Petitioner argues that “the claims are directed to the basic idea of protecting personal billing data from thieves and hackers by providing ‘substitute billing data’ to a consumer for making online purchasing transactions.” Pet. 21. Patent Owner responds that Petitioner’s proposed abstract idea “does not rise to the level of a ‘fundamental building block’ of technology, of economic behavior, or of human organization.” PO Resp. 24–25 (citing Pet. 21), 27–28 (citing Martin Decl. ¶ 76); Tr. 56:15–22. Patent Owner also argues that, even if online purchasing transactions were a “fundamental building block,” the claims are directed to “a very specific subset of transactions that use a specific subset of ‘substitute billing data.’” Id. at 28–29 (citing Martin Decl. ¶ 17). Petitioner replies that “there is no rule that an idea is abstract only if it falls within a particular category of abstract ideas.” Reply 8–9. We are persuaded by the Supreme Court’s opinion in Alice that Petitioner is correct, and that these enumerated categories were not intended as exclusive. Specifically, the Court wrote: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” 134 S. Ct. at 2357; accord Content Extraction, 776 F.3d at 1347. Furthermore, providing substitute billing data is similar in principle to using a purchasing agent. We, therefore, conclude that the first step in the Alice/Mayo test is met for claims 1–18 of the ’701 patent.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Three of the four steps of claim 1 recite an “electronic device facilitating . . .” and the last step recites the “electronic device obtaining” The plain and ordinary meaning of “electronic device” does not tie claim 1 “to any particular novel machine or apparatus, only a general purpose computer.” See Ultramercial, 772 F.3d at 716. In arguing that the “electronic device” is integral to the claim, Patent Owner cites its expert declaration, but the declaration relies on Patent Owner’s proposed interpretations of “substitute billing data” and “billing service,” which we did not adopt. See Martin Decl. ¶¶ 69–77. Also, the words of the claim do not specify how the electronic device facilitates or obtains the recited activities. Claim 1 generally recites the activities of requesting credit card numbers, obtaining credit card numbers as a substitute for personal billing data, and purchasing from businesses associated with the credit card numbers. We find no persuasive evidence in the record that claim 1 recites more than “well-understood, routine, conventional activity.” Mayo, 132 S. Ct. at 1298. Thus, based on the complete record before us, we conclude that method claim 1, which merely requires generic computer implementation, fails to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2357.” slip op. at 25
Patent outcomesUS 7,664,701 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,664,701 - 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 AlicePatents in suitUS 8,499,047 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Apr 24, 2015 · CBM2014-00030 · APJ Thomas L Giannetti · CBM · Final written decision
Claims 1–23 are unpatentable under § 101 because they claim an abstract idea implemented with routine, conventional activity.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“are directed to the abstract idea of tailoring an information provider’s web page based on data about a particular user. Institution Dec. 12. Patent Owner responds that the claims do not fall within any of the “categories of abstract ideas enumerated by the Supreme Court.” PO Resp. 15. Citing Alice, Patent Owner asserts that the claims are not directed to “an idea itself, a mathematical formula or algorithm, a fundamental economic practice long prevalent in our system of commerce, or a method of organizing human activity.” Id. (internal quotation marks omitted). Therefore, Patent Owner asserts, the first step in the Alice/Mayo test is not met. Id. at 15–21. Petitioners respond that in Alice, the Supreme Court expressly declined to limit the categories of unpatentable abstract ideas as suggested by Patent Owner. Reply 3. We are persuaded by the Supreme Court’s opinion in Alice that Petitioners are correct, and that these enumerated categories were not intended as exclusive. Specifically, the Court wrote: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” 134 S. Ct. at 2357; accord Content Extraction, 776 F.3d at 1347. We are influenced also by the evidence from Patent Owner’s expert, who testified as follows: I’m trying to make clear that the patent is described at what may appear to be a fairly high abstract level, because it was generally known by persons of skill in the art that there are multiple ways to go about reducing the invention to practice depending upon the technologies that they have at hand. And it wasn’t the patent’s job to be that specific at the time. I shouldn’t say it wasn’t the patent’s job. The inventor did not choose to describe at that level of detail. Ex. 1037, 47:12–23 (emphasis added). We therefore conclude that the first step in the Alice/Mayo test is met for claims 1–23.” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are convinced by Petitioners’ argument that the ʼ382 patent claims do not contain an “inventive concept” sufficient to transform the claimed abstract idea into a patentable invention. Stated another way, we determine that the claims do not “significantly more than simply describe that abstract method.” Ultramercial, 772 F.3d at 715. Instead, “the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.” Id.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner’s expert does not rebut convincingly Dr. Myers’s claim- by-claim analysis. Instead, Patent Owner’s expert addresses the claims in two groups only. Ex. 2003, ¶¶ 26–28. We find this approach unconvincing, and therefore, credit Dr. Myers’s testimony as to specific claims over the testimony of Patent Owner’s expert. We are therefore persuaded, by a preponderance of the evidence, that, like the claims considered in Ultramercial, claims 1–23 of the ʼ382 patent simply instruct the practitioner to implement the abstract idea with routine, conventional activity. Ultramercial, 772 F.3d at 715. For the reasons stated above, none of the elements recited in the claims, including the “interactive interface” and the “plurality of data streams,” transforms the nature of the claims into patent-eligible subject matter. We credit the cited testimony of Patent Owner’s expert that the ʼ382 patent lacks implementation details because it is written at a “fairly high abstract level.” See supra. As a result of this choice by the patentee, the risk of preemption is great.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner contends that neither Petitioners nor the Board provides any evidence that “interactive” and “Internet” have the same meaning, “either in the ʼ382 patent or as understood by one of skill in the art.” PO Resp. 7. Patent Owner further contends that Board should adopt a construction requiring the interface to be a “selectively tailored medium.” Id. at 8–9. Petitioners respond that there are not any claim terms “that could reasonably be construed in a manner that would impact the 35 U.S.C. § 101 analysis.” Reply 11. Petitioners further contend that the Board’s construction was nevertheless correct because the patent specification and claims make it clear that it is the information that is “selectively tailored,” not the information medium. Id. at 11–12. We are not convinced of any error in our initial construction of “interactive interface” as an Internet interface. Institution Dec. 6. Petitioners’ reliance on the Myers Declaration and the ʼ382 patent’s interchangeable use of interactive and Internet to describe the interface are persuasive. Pet. 15, 17 (citing Myers Dec., Ex. 1004 ¶ 52), 18 (citing Ex. 1001, Title, Abstract). We, therefore, determine that the correct construction of “interactive interface” is “an Internet interface that provides a medium for information users to communicate with information providers.”” slip op. at 6
Patent outcomesUS 7,603,382 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,603,382 - Agilysys, Inc. / Expedia, Inc. et al. v. Ameranth, Inc.All claims unpatentablePTAB · Mar 20, 2015 · CBM2014-00016 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–10 are unpatentable under § 101 because they claim the abstract idea of generating a criteria-based menu and transmitting it using conventional computer elements.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patent of claims 1–15 of U.S. Patent No. 6,871,325 B1 (Ex. 1032, “the ’325 patent”). On March 26, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–10 of the ’325 patent on only one proposed ground of unpatentability, 35 U.S.C. § 101. Paper 19 (“Dec. to Inst.”). We did not institute as to claims 11–16 on any of the grounds proposed in the Petition. Ameranth, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 26, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Reply”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 30), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 33–35). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). We construe, below, the limitations that are relevant to the issues of patenteligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’325 patent uses typical hardware elements in the form of a computer workstation and that “[a] typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1032, col. 5, ll. 43–45; see also id. at col. 5, ll. 54–56 (“a CPU, e.g., Pentium® microprocessor”). Further the Specification discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 6, l. 33–col. 9, l. 3), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 31–37). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15
Patent outcomesUS 6,871,325 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 6,871,325 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00050 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–7 are unpatentable under § 101 as abstract ideas lacking meaningful limitations; the contingent motion to amend with substitute claim 8 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“corrected Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patents of claims 1–7 of U.S. Patent No. 7,980,457 B2 (Ex. 1001, “the ’457 patent”). Patent Owner, Chicago Board Options Exchange, Inc., filed a Preliminary Response (Paper 15, “Prelim. Resp.”). On March 4, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–7 on one ground of unpatentability, 35 U.S.C. § 101 (Paper 16, “Dec. to Inst.”).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 27; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’457 patent claims are directed to an abstract idea. See PO Resp. 45 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:15–19. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’457 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:50–62. Furthermore, the claims recite, for example, a server computer configured to perform the steps of “receiving orders and quotes,” “generating a trade,” “determining a risk level and an aggregate risk level associated with said trade,” “comparing said aggregate risk level” with a risk threshold, and “automatically modifying” one of the remaining quotes if the threshold is exceeded (claim 1). Accordingly, we analyze the ’457 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The claims contemplate using a generic computer to perform “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice Corp., 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294); see Mayo, 132 S.Ct. at 1300 (“simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable”). The ’457 patent explains that, in the known open outcry method of trading, market-makers had personal control over the types and number of contracts traded, and could “adjust their trading strategies” as their positions changed. Ex. 1001, 1:50–58. Thus, they managed their exposure, or risk, associated with their holdings by “adjusting their quotes” to favor trades that would tend to hedge away unwanted exposure. Id. at 1:58–62. The ’457 patent Specification also recognizes that software analysis tools were available in the prior art to evaluate the “risk associated with stock and option portfolios.” Id. at 2:13–18. That it was well known to manage trading risk is supported by the testimony of Dr. Maureen O’Hara, Petitioner’s witness. Ex. 1004 ¶ 44 (stating that the steps which the server computer in claim 1 is configured to perform amount to “exactly the same method of managing risk that market makers have been performing manually for years prior to the December 1999 filing date of the ’457 patent . . . selectively accounting for past trades and current holdings and/or evaluating greek values”). Also, the claimed “risk threshold” of claim 1 is recited at a high level of generality, and as Petitioner argues, emulates the personal tolerance level of a market-maker with respect to a type of risk. Pet. Reply 5, 7. Lastly, there is no dispute that the prior art included “automated and computer-based trading system[s].” Ex. 1001, 1:66–67. The claimed systems integrate an automated exchange trading system, already known in the art, with methods that mitigate the risks of a market- maker, also already known in the art. See id. at 2:46–48. In sum, the claims amount to nothing more than instructions to apply previously known methods of electronic trading and trade risk management using a generic computer to perform generic computer functions—calculating a risk and determining if that risk exceeds a threshold, and, if so, automatically modifying a quote. See Alice Corp., 134 S.Ct. at 2359.” slip op. at 16
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner refers extensively to the declaration of its witness, Dr. Sandholm, in support of its position that the claimed systems require specialized and customized hardware and software. PO Resp. 58–63 (citing Ex. 2017 ¶¶ 25–28, 34, 38–39, 41). We do not find Dr. Sandholm’s testimony persuasive, however, because it generally relates to commercial embodiments and is not supported by the ’457 patent Specification. See, e.g., Ex. 2017 ¶ 26. For example, Dr. Sandholm states that systems for processing trades of securitized instruments “include extremely large server networks with extensive processing capabilities” (Ex. 2017 ¶ 25), but the claims do not require any particular network size or extent of processing capability. Further, the ’457 patent Specification explains otherwise. According to the Specification, the preferred embodiment of the invention “includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provide sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Ex. 1001, 3:28–35 (emphasis added), 3:35–45.” slip op. at 15
Patent outcomesUS 7,980,457 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 7,980,457 - PTAB · Dec 30, 2014 · IPR2013-00402 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–12 and granted the motion to amend for substitute claims 13 and 15, but denied it for claims 14 and 16–18 based on unmet amendment and eligibility requirements.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“In a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art and, thus, entitlement to the claims. Idle Free at 7. This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner: A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. Id. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the opportunity, in its opposition, to argue any deficiency in the patent owner’s motion and “come forward with specific evidence and reasoning, including citation and submission of any applicable prior art,” to rebut the patent owner’s position on patentability. Idle Free at 8.” slip op. at 16
- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 13 as a substitute for claim 4, claim 14 as a substitute for claim 3, claim 15 as a substitute for claim 8, claim 16 as a substitute for claim 7, claim 17 as a substitute for claim 12, and claim 18 as a substitute for claim 11. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’226 patent. See Mot. 8–9. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 11
- 112 supportGranted
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundDecided for patent owner
“Patent Owner argues that it would not have been obvious to incorporate the technique of Spring into a network data de-duplication system, as recited in the proposed substitute claims, because Spring “had very limited practical application in the network memory context.” Mot. 12. Patent Owner’s position is supported by the statement in McCanne ’376 that due to Spring’s small cache and first-in first-out replacement policy, “the efficacy of [Spring’s] approach is limited to detecting and exploiting communication redundancies that are fairly localized in time.” Ex. 1003 ¶ 20; see Mot. 12. The proposed substitute claims, which identify sync points from which forward and backward memory comparisons are performed, are not limited to only recently transmitted data. Patent Owner also asserts that the specific combination of “fine and coarse filtering of hash values” and “forward and backward memory comparison” limitations recited in the proposed substitute claims represents a practical solution to the “tradeoff” that exists with data de-duplication systems, and is not solved by any of the prior art of record. Mot. 12–13. Specifically, Patent Owner states that there is a “tradeoff” between the size of an index and the likelihood that an indexed segment will be matched. Id. Spring uses a small fixed-size cache and small packets, and, thus, works best for only recently transmitted data. Id. By contrast, according to Patent Owner, the proposed substitute claims provide a practical solution to the tradeoff by operating at the byte-level and using a combination of fine and coarse filters to identify sync points from which forward and backward memory comparisons are performed. Id. Patent Owner’s explanations regarding the prior art and why the proposed substitute claims allegedly would not have been obvious are supported by the record and are persuasive. We also note that although Petitioner addresses the “fine and coarse filtering of hash values” limitations in its Opposition (arguing that they are taught by Hsu), Petitioner does not argue that Hsu—or any other reference— teaches or suggests the “forward and backward memory comparison” limitations. Nor does Petitioner propose any specific combination of references that allegedly would have rendered obvious the proposed substitute claims as a whole. Thus, Patent Owner’s assertions regarding key aspects of the prior art, such as Spring, essentially are unrebutted.” slip op. at 23
§ 101 eligibility§ 103 obviousnessPatents in suitUS 8,312,226 - Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentablePTAB · Dec 22, 2014 · CBM2013-00030 · APJ Brian J Mcnamara · CBM · Final written decision
Claims 1–21 are unpatentable under § 101 because they claim an abstract payment-intermediation concept implemented with generic computer functions.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“BACKGROUND On December 23, 2013, we entered a Decision to Institute a covered business method patent review, Paper 16 (“Dec. to Inst.”), of U.S. Patent No. 7,853,524 B2 (“the ’524 Patent”) on the grounds that claims 1–21 do not recite patent-eligible subject matter under 35 U.S.C. § 101.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“terms “electronic bill” and “EBP” do not even appear in the specification, Petitioner argues that Patent Owner is attempting to recast abstract ideas recited in the ’524 Patent claims in a manner that requires machines or transformations. Pet. Reply 2, 6. We agree with Petitioner that Patent Owner’s construction arguments attempt to read into the claims features that are not recited in them. For example, although there is no EBP system mentioned in the claims, citing the testimony of its expert, Dr. John Kelly, Patent Owner argues that a payment request is captured through an automated interaction with a user over a telephone or is conveyed by transferring data to the EBP system over a data network from a computer. PO Resp. 21–22. As discussed below, we decline to alter any of the constructions we applied in our Decision to Institute.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Merchant credit limit associated with a payee Patent Owner contends that our construction of the “merchant credit limit associated with a payee” as the maximum amount of credit a merchant extends to a payer is contrary to the plain language of the claims because the limit is associated with the payee. PO Resp. 51. Our construction is consistent with the limit being associated with the payee, i.e., the party to whom the payment is made. Patent Owner’s proposed construction, “a value reflecting the credit limit used by the EBP system which is associated with a particular payee,” PO Resp. 52, reads into the claim an extrinsic EBP system not discussed in the specification. In addition, the value reflecting the credit limit is the amount of credit a payee, i.e., a merchant, extends to a payer. Claims 1, 11, and 21 each recite comparing a payment amount associated with the received request, i.e., the request received on behalf of the payer, to a merchant credit limit associated with the payee. The only credit limits described in the specification are limits on the amount of credit extended to a payer. Although the specification describes a merchant credit limit, it does not describe specifically such a limit associated with the payee. The specification describes comparing the payment amount to a merchant credit limit, and making the payment as an electronic payment or a service provider check, if the payment amount is under a specified amount. Ex. 1001, col. 5, l. 65–col. 6, l. 5. Any amount within the merchant’s (i.e., the payee’s) credit limit is added to the consumer’s (i.e., payer’s) monthly ACH balance, and any transaction can be compared to the consumer’s credit limit parameters stored in a database. Id. at col. 6, ll. 5–10. The specification also describes releasing the payment as a draft written on the consumer’s account, rather than the service provider’s account, if the payment amount exceeds the consumer’s, i.e., the payer’s, credit limit. Id. at col. 6, ll. 10– 16. Because the consumer’s credit limit described in the specification protects the service provider, id. at col. 5, ll. 35–37, 65–66, it is a limit associated with the service provider rather than the payee. Claims 1, 11, and 21, however, recite the merchant credit limit associated with the payee. Because each merchant may extend a different amount of credit to each customer, the merchant credit limit associated with the payee limitation appears to require the service provider computer to select a payment means based on comparing the requested payment amount to the amount of credit the merchant, i.e., the payee, extends to the payer. That is, the amount of the payment is compared to the payer’s credit limit with the payee. In any case, as discussed below, this limitation is not material to our determination of the issues under 35 U.S.C. § 101.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“and 21 of the ’524 Patent recites a method or apparatus in which a service provider receives a request to pay a payee, selects a form of crediting the payee based on comparing the payer’s account number to the payee’s merchant account scheme and the payment amount to a merchant credit limit associated with the payee, and directs the payment to the payee in the selected form. Thus, each of the independent claims is drawn to a computer-implemented process or apparatus in which a third party intermediary, i.e., the payment service provider, receives a request to make payment, applies certain criteria to determine what form of payment to use, and then directs the payment to the payee in that form. In Alice, the Supreme Court considered claims that, on their face, were drawn to the fundamental economic concept of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk. The Court, concluded that, like the hedging in Bilski, the claims were drawn to an “abstract idea” beyond the scope of § 101. Alice Corp., 134 S. Ct. at 2355–57.1 In the ’524 Patent, the service provider intermediates payment between the payer and the payee, acting much like the third party intermediary in Alice. The payment service provider mitigates settlement risk by crediting the payee or issuing a check to the payee drawn on the service provider’s funds, or in other circumstances, issuing a draft drawn on the payer’s funds, i.e., determining the form of payments based on the comparisons recited in the claims. Ex. 1001, col. 5, l. 25–col. 6, l. 15. The computer implementation associated with comparing the account number and 1 In Bilski v. Kappos, 561 U.S. 593 (2010) the Court found upatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counterrisk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. the credit limit are incidental to the fundamental economic concept of having a third party intermediate a settlement either by crediting the payee from the third party’s funds (as in a credit transaction) or from the payer’s funds (as when the amounts exceed the payer’s credit limit with the service provider). Thus, we conclude that each of independent claims 1, 11, and 21 is directed to an abstract concept.” slip op. at 12
Patent outcomesUS 7,853,524 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,853,524 - CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc.All claims unpatentablePTAB · Jan 21, 2014 · CBM2012-00005 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 3, 6, 7, 16, 24, and 33 are unpatentable under § 101 because they claim abstract substitute fulfillment using generic computing technology without meaningful limitations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“the act of conveying or supplying for use making information available For each of the claim terms discussed above, we conclude that either definition would result in the same § 101 analysis. In other words, each of the challenged claims is unpatentable under § 101 whether or not we adopt CRS’s proposed claim constructions. Therefore, we conclude that each of the claim terms is given its ordinary and customary meaning and the issue of claim construction will not be addressed further.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We conclude that claims 3, 16, 24, and 33 are directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment. The claims are directed to concepts for taking the preexisting process of substitute fulfillment and implementing it in a networked computing environment. We do not agree with Frontline’s argument that the computer technology is integral to the claimed subject matter. As we explained in the Decision to Institute, the “one or more computers,” “Internet communication link,” and “website” recited in claim 3 are not analogous to the GPS receiver in SiRF. Decision to Institute 10-11. Frontline has not directed us to anything in the record at trial to cause us to change our position. Frontline asserts that because the claimed limitations “generating and posting by one or more computers a list of one or more positions of one or more absent workers that need to be filed by one or more substitute workers on a website” and “receiving via at least one communication link absentee information” are required for the claimed process to work as intended, they, like the GPS receiver in SiRF, are integral to the claimed subject matter. PO Resp. 25-26. We, however, disagree. We find these additions of generic computer technology to be more akin to the addition of “computer-aided” to the claims of Dealertrack, and the additions of “transaction database” and “transmitting information” to the claims of Accenture. Accenture, 728 F.3d at 1339; Dealertrack, 674 F. 3d at 1333. Like the terms “computer-aided” in Dealertrack, and “transaction database” in Accenture, the terms “one or more computers,” “website,” and “communication link” at issue in this case do not impose meaningful limits on the challenged claims’ scope. This particular technology is employed only for the purposes of creating more efficient communication and data storage—basic functions of those components. Ex. 1001, col. 4, ll. 46-58 (stating that the advantages of the present invention are “to provide a reliable, efficient system . . . . that has low overhead and requires little . . . oversight. . . . includ[ing] an interface to the Internet . . . .[and] a central database”); see also col. 3, ll. 36-64 (describing the prior art automated systems). In other words, the claims here, even with the recitation of computing technology, are not part of a “technological advance” of any sort. See Bancorp, 687 F.3d at 1279.” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Like the terms “computer-aided” in Dealertrack, and “transaction database” in Accenture, the terms “one or more computers,” “website,” and “communication link” at issue in this case do not impose meaningful limits on the challenged claims’ scope. This particular technology is employed only for the purposes of creating more efficient communication and data storage—basic functions of those components. Ex. 1001, col. 4, ll. 46-58 (stating that the advantages of the present invention are “to provide a reliable, efficient system . . . . that has low overhead and requires little . . . oversight. . . . includ[ing] an interface to the Internet . . . .[and] a central database”); see also col. 3, ll. 36-64 (describing the prior art automated systems). In other words, the claims here, even with the recitation of computing technology, are not part of a “technological advance” of any sort. See Bancorp, 687 F.3d at 1279.” slip op. at 14
Patent outcomesUS 6,675,151 unpatentableClaim construction§ 101 eligibilityPatents in suitUS 6,675,151
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.