• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2015-00017 · APJ Matthew R Clements · CBM · Final written decision

  Claims 1, 2, 15, and 31 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “We are persuaded that Exhibit 1202 is offered not for the truth of the matter asserted (i.e., the content of the ’598 patent), but as evidence of how Patent Owner has characterized the ’598 patent. Thus, Patent Owner has not persuaded us that Exhibit 1202 is evidence of the content of a writing or that it is cumulative to the ’598 patent. Furthermore, Patent Owner has not persuaded us that Exhibit 1202 is irrelevant, at least because its characterization of the ’598 patent in prior proceedings is relevant to the credibility of its characterization of the ’598 patent in this proceeding. Patent Owner contends that Exhibit 1202 does not contradict its characterization of the ’598 patent in this proceeding such that the credibility of Patent Owner’s characterization is an issue. Mot. 3. This argument misses the point because the credibility of Patent Owner’s characterization is for the Board to weigh after deciding the threshold issue of admissibility. As Petitioner notes (Opp. 2), Patent Owner’s characterization of the ’598 patent in prior proceedings is relevant to Patent Owner’s contention in this proceeding that the ’598 patent does not satisfy the “financial in nature” requirement for a covered business method patent review (Paper 18 (Preliminary Response), 5–10). Accordingly, we decline to exclude Exhibit 1202.” slip op. at 22

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Patent Owner has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether a petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 25

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

    “We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content (claims 1, 2, 15, and 31). For example, claim 1 recites “code for storing at least one content data item in the content data memory and at least one use rule in the use rule memory.” Claim 31 recites “evaluating the use status data using the one or more use rules to determine whether access to the content data item is permitted” and “enabling access to the content data item responsive to a determination that access to the content data item is permitted.”” slip op. at 7

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

    “The ’598 patent treats as well-known all potentially technical aspects of the challenged claims, which simply require generic computer components (e.g., interfaces, memory, program store, and processor). See Pet. Reply 5–8, 13–14 (citing Ex. 1201, 4:4–5, 16:46–50, 18:7–11). With respect to the “portable data carrier” recited in claim 1, for example, the Specification states it may be a generic device such as “a standard smart card.” Ex. 1201, 11:27–29; see also id. at 14:25–29 (“[l]ikewise data stores 136, 138 and 140 may comprise a single physical data store or may be distributed over a plurality of physical devices and may even be at physically remote locations from processors 128-134 and coupled to these processors via internet 142”), Fig. 6. Further, the claimed computer code performs generic computer functions, such as storing, retrieving, receiving, reading, evaluating, and enabling access to. See Pet. 32–33. The recitation of these generic computer functions is insufficient to confer specificity. See Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). Moreover, we are not persuaded that claims 1, 2, 15, and 31 “recite specific ways of using distinct memories, data types, and use rules that amount to significantly more than” paying for and/or controlling access to content. See PO Resp. 11–12. The challenged claims generically recite several memories, including “content data memory,” “use rule memory,” “a program store,” and “payment data memory,” and generically recite several data types, including “data,” “content data items,” “use rules,” “code,” “payment data,” and “use status data.” We are not persuaded that the recitation of these memories and data types, by itself, amounts to significantly more than the underlying abstract idea. Patent Owner does not point to any inventive concept in the ’598 patent related to the way these memories or data types are constructed or used. In fact, the ’598 patent simply discloses these memories and data types with no description of the underlying implementation or programming. See Content Extraction and Transmission LLC, 776 F.3d at 1347 (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). This recitation of generic computer memories and data types, being used in the conventional manner, is insufficient to confer the specificity required to elevate the nature of the claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294) (“We have described step two of this analysis as a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’”) (brackets in original).” slip op. at 10

  Patent outcomesUS 8,061,598 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,061,598
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2015-00119 · APJ Jeremy M Plenzler · CBM · Final written decision

  Claim 11 is unpatentable under § 101 because it claims the abstract idea of controlling access to content without an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Petitioner’s argument. Patent Owner proffered this particular testimony not for purposes of showing validity of the patent claims at issue, but for purposes of challenging the credibility of Petitioner’s expert. Although we were not persuaded by this evidence, we did consider it for the purpose of deciding the issue of credibility. We, therefore, decline to exclude this testimony under FRE 401, 402, or 611(b).” slip op. at 21

  • Expert testimonyPetitioner expert creditedOther

    “We are not persuaded by Patent Owner’s arguments. Dr. Bloom has a Bachelor in Electrical Engineering, and a Masters and Ph.D. in Electrical and Computer Engineering. Ex. 1003 ¶¶ 15–17. He also has decades of experience in relevant technologies. Id. at ¶¶ 5–14. We are, therefore, not persuaded by Patent Owner’s argument that he has not provided sufficient proof that he is an expert. And as Petitioner correctly points out, an expert is not required to recite the “preponderance of the evidence” standard expressly in order for the expert testimony to be accorded weight, much less admissibility. Accordingly, we decline to exclude this testimony under FRE 702.” slip op. at 24

  • BurdenUnpatentable

    “2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues “[t]he claims of the ’458 patent . . . cover nothing more than the basic financial idea of enabling limited use of paid for and/or licensed content using ‘conventional’ computer systems and components.” Pet. Reply 11 (quoting Ex. 1003 ¶ 126). Petitioner persuades us that claim 11 of the ’458 patent does not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Petitioner’s rationale that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claim within § 101 patent eligibility. Pet. 23–29; Pet. Reply 11– 20.” slip op. at 9

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

    “We agree that the challenged claim is drawn to a patent-ineligible abstract idea. Specifically, the challenged claim is directed to conditioning and controlling access to content (which is analogous to the characterization of the abstract idea proposed by Petitioner). For example, claim 6 (from which claim 11 depends) recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted” and claim 11 recites “code to write partial use status data” and that “wherein said use rules permit partial use of a data item.”7 As discussed above, the ’458 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The ’458 patent proposes to solve this problem by restricting access to data on a device based upon satisfaction of use rules linked to payment data. Id. at 9:7–25. The ’458 patent makes clear that the claimed subject matter is directed to paying for data and providing access to data. See id. at 2:20–23 (“This invention is . . . particularly . . . relate[d] . . . to computer systems for providing access to data.”). Although the specification discusses data piracy on the Internet (see id. at 1:29–39), the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the ’458 patent specification, is controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611. We are, thus, persuaded, based on the ’458 patent specification and the language of the challenged claim, that claim 11 is directed to an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of” slip op. at 7

  Patent outcomesUS 8,033,458 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,033,458
• Travelers Lloyds Of Texas Insurance Co. / The Travelers Indemnity Co. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2014-00186 · APJ Hyun J Jung · CBM · Final written decision

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

  RulingsFinal written decision

  • BurdenDecided for petitioner

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

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

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

  • Adverse judgmentAdverse judgmentGranted

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

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

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

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

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

  Patent outcomesUS 8,033,458 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Nautilus
  Patents in suitUS 8,033,458
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Mar 29, 2016 · CBM2014-00194 · APJ Jennifer S Bisk · CBM · Final written decision

  Claim 32 was held unpatentable under § 101 because it claims the abstract economic practice of controlling content access based on payment, using only generic computer components and functions.

  RulingsFinal written decision

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

    “We are persuaded that claim 32 is drawn to a patent-ineligible abstract idea. Specifically, claim 32 is directed to performing the fundamental economic practice of conditioning and controlling access to content based on payment. For example, claim 32 recites “the at least one access rule specifying at least one condition for accessing the retrieved data written into the data carrier, the at least one condition being dependent upon the amount of payment associated with the payment data forwarded to the payment validation system.” Furthermore, as discussed above, the ’221 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The patent specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by internet users who may not even realize that it is pirated. Id. The ’221 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’221 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplierdefined access rules and validation of payment. Id. at 1:59–2:15. Although the specification refers to data piracy on the Internet, claim 32 is not limited to the Internet. Claim 32 recites code to “read payment data from the data carrier,” “forward the payment data to a payment validation system,” “receive payment validation data from the payment validation system,” “retrieve data from the data supplier,” and “write the retrieved data into the data carrier.” The underlying concept of claim 32, particularly when viewed in light of the ’221 patent specification, is conditioning and controlling access to content based upon payment. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611. We are, thus, persuaded, based on the ’221 patent specification and the language of claim 32 is directed to an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of intermediated settlement at issue in Alice was an abstract idea); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event”).” slip op. at 8

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

    “more than the basic financial idea of enabling limited use of paid for and/or licensed content using ‘conventional’ computer systems and components.” Paper 31, (“Reply 11”) (quoting Ex. 1003 ¶ 126). Petitioner persuades us that claim 32 of the ’221 patent does not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Petitioner’s rationale that the additional elements of claim 32 are generic features of a computer that do not bring claim 32 within § 101 patent eligibility. Pet. 24–29; Reply 11–21.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Samsung’s argument. Patent Owner proffered this particular testimony not for purposes of showing validity of the patent claim at issue, but for purposes of challenging the credibility of Samsung’s expert. Although we were not persuaded by this evidence, we did consider it for the purpose of deciding an issue of credibility. We, therefore, decline to exclude this testimony under FRE 401, 402, or 611(b).” slip op. at 23

  • Adverse judgmentOther

    “00102, we issued a Final Written Decision determining claims 1, 2, and 11– 14 unpatentable under 35 U.S.C. § 103. Apple Inc. v. Smartflash LLC, Case CBM2014-00102, (PTAB Sept. 25, 2015) (Paper 52). On March 18, 2016, however, Patent Owner filed an authorized motion to terminate this proceeding as to claims 2 and 11 stating that “[o]n March 4, 2016, pursuant to Fed. R. App. P. 42(b), the United States Court of Appeals for the Federal Circuit dismissed [Patent Owner’s] appeal of [the final written decision in CBM2014-00102 determining] that claims 2 and 11 of the ’221 Patent are unpatentable.” Paper 50, 2. 4 We are persuaded that the particular facts of this proceeding now counsel termination of our consideration of claims 2 and 11. 37 C.F.R. § 42.72. Claims 2 and 11 of the ’221 patent have been finally cancelled and any decision we might reach in this proceeding regarding the patentability of these claims would be moot and purely advisory. We do not see how the just, speedy, and inexpensive resolution of every proceeding (37 C.F.R. § 42.1(b)) would be secured by rendering a final written decision regarding these claims. Accordingly, we terminate this review as to claims 2 and 11 and consider below only the remaining challenged claim—claim 32.” slip op. at 3

  Patent outcomesUS 8,118,221 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,118,221
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 24, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Final written decision

  Claim 6 is unpatentable under § 103 over Higgins and Metcalfe and over Furukawa; the contingent motion to amend with substitute claim 30 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “implementation of communications systems and controlling these systems (or similar types of systems) through the use of computer technology.” Ex. 1001 ¶ 33. Patent Owner’s declarant, Dr. Samuel H. Russ (“Dr. Russ”) stated that, a person of ordinary skill in the art relevant to the ’956 patent would have had a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, and two to five years of post-degree experience in a similar field. Ex. 2018 ¶ 27. Thus, the parties’ assessments of the level of ordinary skill in the art are roughly equivalent. Based on our review of the ’956 patent, the types of problems and solutions described in the ’956 patent and cited prior art, and the testimony of Petitioner’s declarant and Patent Owner’s declarant, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “instructed that “claims should always be read in light of the specification and teachings in the underlying patent.” PO Resp. 12 (emphasis omitted) (quoting Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). Furthermore, the specification “is the single best guide to the meaning of a disputed term.” Translogic Tech., 504 F.3d at 1257 (quoting Phillips, 415 F.3d at 1315). Accordingly, we must construe the term “module” for claim 6 of the ’956 patent in light of the disclosure in the ’956 patent specification regarding “modules.” In accordance with the ’956 patent specification, there are various types of modules, such as program modules, object modules, and data modules; thus, the general term “module” cannot be construed to be limited to one of these types of modules. Patent Owner acknowledges that the ’956 patent specification discloses a “data module” as a type of “module.” PO Resp. 15 (citing Ex. 1003, 248:58–249:30). Patent Owner fails, however, to persuasively explain how the disclosed “data module” would meet its proposed definition of a “module” being “a discrete unit of a larger computer program . . . .” For example, it is unclear how a “data module” containing the “particular cost-of-a-trimmed-pork-belly-unit” (Ex. 1003, 189:4–9) constitutes a discrete unit of larger computer program. Patent Owner fails to cite any disclosure in the specification of the ’956 patent that restricts a “module” to be “a discrete unit of a larger computer program.” Although the specification of the ’956 patent does not limit modules to be a discrete unit of a larger computer program, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Ex. 1003, 186:10–17, 188:35–37, 188:59–61. For example, with respect to one embodiment of the data module, the ’956 patent specification discloses that “[e]xecuting the information of said intermediate generation set causes computer, 73, also to generate a particular associated data module.” Id. at 188:59–61. Similarly, with respect to one embodiment of the object module, the ’956 patent specification discloses that “computer, 73, compiles the information of said instance and places the resulting so-called ‘object module’ at particular memory.” Id. at 188:35–37. Likewise, with respect to one embodiment of the program module, the ’956 patent specification discloses that computer 73 compiles “formula-and-item-of-this-transmission information into a machine language program module; and . . . link[s] said module to other program modules.” Id. at 186:10–17. Accordingly, we are persuaded to modify our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Dec. to Inst. 8) to incorporate being executed by a computer to perform a specific function. Therefore, we construe the term “module,” in view of the specification of the ’956 patent, as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” We note that a discrete unit of digital data can be a set of commands or instructions that can be executed and/or processed to perform a specific function.” slip op. at 8

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

    “subscriber specific action in respect to said problem or interest.” Petitioner argues that the “recommending” limitation not be assigned patentable weight as printed matter. Pet. 6 (citing In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) and MPEP § 2111.05). In Kao, the Federal Circuit determined that the printed matter doctrine applied because there was “no functional relationship” between the disputed limitations (Kao, 630 F.3d 1073), but here the “recommending” step in claim 6 requires outputting the “subscriber specific action” in “video, audio, or print.” Therefore, we are not persuaded by Petitioner that the printed matter doctrine is applicable to the “recommending” step in claim 6. Patent Owner argues, regarding this “recommending” step, the term “recommend” should be construed to mean “to suggest a choice or a course of action.” PO Resp. 19.4 In support of its proposal, Patent Owner cites two dictionary definitions of the term “recommend.” PO Resp. 20 (citing Exs. 2006, 2007). The first definition, from Cambridge Dictionaries, defines “recommend” as “to suggest that someone or something would be good or suitable for a particular job or purpose, or to suggest that a particular action should be done.” Ex. 2006, 1. The second definition, from the American College Dictionary, defines “recommend” as “to advise a person, etc. to do something.” Ex. 2007, 3. The specification of the ’956 patent uses the term “recommended” to describe a proposed planting plan for minimum cost and maximum revenue: When accessed, the instructions of said module cause a microcomputer, 205, to analyze any given crop planting plan and generate information of a recommended planting plan and growing method that minimizes the expense of insect and other crop pest damage given maximum revenue. Ex. 1003, 275:11–16. We determine the dictionary definitions of “recommend” comport with the use of that term in the specification ’956 patent and with the ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech, 504 F.3d at 1257. Therefore, we are persuaded by Patent Owner’s proposed definition. Accordingly, we construe the claim 6 limitation of “recommending in outputted video, audio, or print subscriber specific action in respect to said problem or interest” to mean “suggesting a 4 We note that claim 6 does not include the term “recommend” but recites “recommending.” choice or a course of action in outputted video, audio, or print subscriber specific action in respect to said problem or interest.”” slip op. at 10

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

    “teach the claim 6 step of “generating at least a portion of a module including said selected generally applicable information.” PO Resp. 33. Specifically, Patent Owner argues that the proposed combination fails to teach generating a module that is a “discrete unit of a larger computer program that is executed and/or processed to perform a specific function,” in accordance with Patent Owner’s proposed construction of “module.” Id. As discussed above, we do not adopt Patent Owner’s construction of “module” but construe “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” Petitioner proposes that the generation of an Ethernet packet according to Metcalfe would result in a “module including said selected generally applicable information” to communicate the trade information disclosed in Higgins from a branch computer to a work station. Pet. 28–29 (citing Ex. 1001 ¶¶ 75–78, 89, 95– 96; Ex. 1007, 3:1–3; Ex. 1009, 395). Petitioner argues that this packet is generated at the branch computer before it is transmitted to the work stations. Ex. 1001 ¶¶ 94, 96. In view of Higgins’s disclosure of regarding the processing of the trade information, including the stock symbol, prices of the stock, and volume traded (Ex. 1007, 4:45–49, 2:24–47), to generate a price limit alert to be displayed on the work station CRT in Higgins (Ex. 1007, Fig. 2), we determine that Higgins in view of Metcalfe teaches or suggests “generating at least a portion of a module including said selected generally applicable information,” wherein a “module” is construed to mean “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 21

  Patent outcomesUS 7,864,956 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 7,864,956
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 22, 2016 · IPR2014-01534 · APJ Georgianna W Braden · IPR · Final written decision

  Claim 9 is unpatentable as obvious over either Monat or Calo; the motion to amend with substitute claim 22 is denied because Patent Owner did not establish its patentability under § 101.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Based on our review of the ’587 patent, the types of problems and solutions described in the ’587 patent and cited prior art, the testimony of Petitioner’s declarant, and the testimony of Patent Owner’s declarant, we find that a person of skill in the art relevant to the ’587 patent would have had a Bachelor of Science in Electrical Engineering or a closely related field and at least two to five years of post-degree experience in a similar field. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 23

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

    “explicitly the term “incomplete processor instructions,” and the embodiments in Examples Nos. 93 and 10, as discussed by Patent Owner, do not use or recite the term “incomplete processor instructions.” See Ex. 1002, 183:1–220:21. In fact, the term is not used in the specification except in claims 9 and 10. Although, the embodiments in Examples Nos. 9 and 10 as cited by Patent Owner are instructive, we are unpersuaded by Patent Owner’s argument that claim construction should only be guided by those examples and not by the specification in its entirety, especially in light of the patent applicant’s statements during the prosecution the ’587 patent discussed above. Rather, the disclosure in the ’587 patent teaches embodiments that use the word “incomplete” to refer to commands, signals or other instructions that are not yet in the form in which they will be transmitted to a subscriber station. See id. at 28:34–49. Specifically, the specification discloses that “[i]n a system that communicates information only in words that are multiples of eight, a signal whose information is represented in twenty-one” slip op. at 17

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

    “claimed invention and any commercial success or industry praise. Patent Owner also failed to demonstrate a long-felt but unmet need for the claimed invention. We, thus, find that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over Monat. f. Conclusion of Analysis Regarding Monat For the foregoing reasons, and weighing the evidence as a whole, Petitioner has proven by a preponderance of the evidence that Monat teaches all elements of challenged claim 9 of the ’587 patent. We determine the record supports Petitioner’s contentions as summarized above and adopt the supported contentions as our own. Furthermore, we conclude that understanding Monat’s teachings as it applies to claim 9 would have been within the level of ordinary skill in the art, as evidenced by the prior art of record. We, therefore, determine that claim 9 would have been obvious at the time of the invention, and thus, is unpatentable under 35 U.S.C. § 103.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “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. 50–51 (citing Ex. 2008). 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. 2008 ¶¶ 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). Additionally, Mr. Holtzman’s testimony lists patent family licenses and revenue, but does not discuss the merits of any of the challenged claims as they relate to any particular license for the ’587 patent in the portfolio of licenses. See PO Resp. 50 (citing Ex. 2008). We, therefore, find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’587 patent and the taking of the noted licenses. Although, Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2008 ¶ 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 135, 140 (Fed. Cir. 1996) (“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 ’587 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 41

  Patent outcomesUS 7,827,587 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Markman · KSR · Graham
  Patents in suitUS 7,827,587
• Viglink, Inc. / Skimlinks, Inc. et al. v. Linkgine, Inc.All claims unpatentable
  PTAB · Mar 16, 2016 · CBM2014-00184 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–6 are unpatentable under § 101 and § 102(a) over Landau; claim 7 is unpatentable under § 101 but not shown anticipated by Landau.

  RulingsFinal written decision

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

    “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.”” 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. 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

  Patent outcomesUS 7,818,214 unpatentable
  Claim construction§ 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 · CBM2015-00087 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–8 are unpatentable: claims 1–7 are anticipated by Landau, and claims 1–8 are anticipated by Priest.

  RulingsFinal written decision

  • Skill levelOther
  • ExcludeMotion to exclude, deniedDenied

    “which Patent Owner responded (Paper 34) and on which Petitioner filed a Reply (Paper 35). 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 33

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

    “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 8

  • 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 outcomesUS 8,027,883 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 8,027,883
• 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

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.