- Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00033 · APJ Matthew R Clements · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving claims 25, 26, 30, and 32 unpatentable under § 101 because the request did not show the Board misapprehended or overlooked a matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Other
“Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 11–13) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 15–29 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 38 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Epicor Software Corporation v. Protegrity CorporationAll claims unpatentablePTAB · Jun 2, 2016 · CBM2015-00030 · APJ Kevin F Turner · CBM · Final written decision
Claim 8 is unpatentable under § 101 because it is directed to an abstract idea and lacks an inventive concept.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“III. MOTION TO EXCLUDE Patent Owner moves to exclude Exhibit 1002, Declaration of Mr. Bruce Schneier, from the record. Mot. Exclude. This filing is largely identical to a similar filing in CBM2015-00002, with the exception that the instant Motion to Exclude also seeks to exclude Ex. 1014 as well, in addition to Ex. 1002, by the same affiant on the same basis. Compare CBM2015- 00030, Paper 30, with CBM2015-00002, Paper 37. We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declarations should be excluded for the same reasons provided previously. See ’02 FWD 35–36.” slip op. at 14
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“Similar to the CBM2015-00002 proceeding, we find that the cross- examination of Mr. Bruce Schneier occurred before Patent Owner filed its last substantive paper, making Patent Owner’s Motion for Observation improper. See ’02 FWD 36-38. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In addition, Patent Owner argues that the claim term in claim 8, “initially produc[ing] a calling,” should be read as “the database itself that produces the calling to the data element protection catalogue,” as compared to the operating system or the individual field producing the calling. Resp. 23 (citing Ex. 1001, 3:53–61; Ex. 2047 ¶ 22; Ex. 2046 ¶ 40). We do not agree. As discussed in ’02 FWD and incorporated above, we are persuaded that the application 40, control module 20, and program module 30 handle system calls in the ’201 Patent, and the calling need not be produced by the first database itself.” slip op. at 5
- BurdenUnpatentable
“Upon review of Petitioner’s analysis and supporting evidence and taking into account Patent Owner’s arguments, discussed below, we are persuaded by Petitioner that claim 8 does not recite additional elements that transform the claim into a patent-eligible application of an abstract idea. We are not persuaded by Patent Owner’s arguments that the claims require additional elements that transform that abstract idea into a patent-eligible application (Resp. 43–49) because they are based upon an overly narrow construction of the claimed elements, as discussed in section II(A)(i) above, i.e., the ability of the first database calling out to the data protection catalogue, and based on additional elements not recited or required by the claims, as discussed previously.” slip op. at 14
Patent outcomesUS 6,321,201 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 6,321,201 - Informatica Corporation v. Protegrity CorporationAll claims unpatentablePTAB · May 31, 2016 · CBM2015-00021 · APJ Kevin F Turner · CBM · Final written decision
Claims 1–8 and 18–53 are unpatentable under § 101; claims 1, 2, 8, 19–26, 29, 31–35, 37–44, and 47–53 are also unpatentable under § 103.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’201 Patent provides specific definitions of many terms (Ex. 1001, 2:64–3:43) but does not contain a definition of “database.” The claimed database for storing a plurality of data element values corresponds to the O-DB database disclosed in the ’201 Patent. The O-DB database is part of a larger “database management system” that includes multiple databases. Id. at 5:49–6:12, Fig. 3. Similar to the other databases, the O-DB database is described as containing data and, in particular, data to be protected. Id. at 5:53–58. Contrary to Patent Owner’s argument (Resp. 20), the ’201 Patent does not describe the O-DB database, or any other database, as performing any other data processing or managing functions. In particular, the ’201 Patent does not describe that the O-DB database produces the compelling calling to the data protection catalogue. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54– 61, 3:51–65, 4:16–22, 7:57–61 (describing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Claims 1 and 8 do not recite unencrypted data element values, and only recites “encrypted data element values.” Those claims do not specify that the “given data element value” should be encrypted or unencrypted. We are not persuaded by Patent Owner’s declarants (Ex. 2063 ¶ 33; Ex. 2064 ¶ 48) as their testimonies are conclusory and are unsupported by the Specification or claims of the ’201 Patent. Although the “given data element value” could be the unencrypted data element value, it need not be in the context of claim 1.” slip op. at 15
- ExcludeMotion to exclude, deniedDenied
“As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013- 00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Petitioner to exclude Exhibits 2064, 2089, and 2093 and Petitioner’s Motion to Exclude is denied. Additionally, we are also not persuaded that Dr. Direen is unqualified to testify as an expert. As Petitioner points out, Dr. Direen has knowledge, skill, experience, and training beyond degrees and is the holder of several patents. Opp. to Mot. Exclude 3–8; See Ex. 1002 ¶¶ 1–7 (discussing additional credentials and qualifications). Given this, we are persuaded that Dr. Direen is qualified to testify as an expert as to what a person of ordinary skill in the art would know or understand during the relevant time frame.” slip op. at 52
- Strike new argumentNew argument disregardedGranted
“The scheduling order states “[a] motion for observation on cross- examination provides the parties with a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply” and refers to the Office Patent Trial Practice Guide. Paper 15, 4–5. The Trial Practice Guide states: In the event that cross-examination occurs after a party has filed its last substantive paper on an issue, such cross-examination may result in testimony that should be called to the Board’s attention, but the party does not believe a motion to exclude the testimony is warranted. The Board may authorize the filing of observations to identify such testimony and responses to observations, as defined below. 77 Fed. Reg. at 48,767–68 (emphasis added).” slip op. at 53
Patent outcomesUS 6,321,201 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Bilski · GrahamPatents in suitUS 6,321,201 - Square, Inc. v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00014 · APJ Kevin F Turner · CBM · Rehearing
The Board denied Patent Owner’s request for rehearing, leaving institution intact on the § 101 and § 103 grounds for the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“In the Decision, we discussed the proper construction of the claim term “data element type,” as well as data processing rules related to encryption. Decision 14–17. As such, the Decision evidences that the challenged claims recite both encryption and data element types. Thus, we agree that our statement that “claim 1 does not require data element types or encryption elements” is incorrect. The statement was made in the context of determining whether claim 1 solves a technical problem using a technical solution, where we remain persuaded that it does not. We remain persuaded, as discussed above, that at least claim 1 of the ’201 Patent does not recite a novel or unobvious technological feature and does not solve a technological problem with a technological solution, notwithstanding the errant statement.” slip op. at 10
- PTAB / AIA Trials › Discretionary denialDecided for petitioner
“Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (informative). “[P]arties are not permitted to request, and panels do not authorize, panel expansion.” Id. The Chief Judge was informed of Patent Owner’s request, and the Chief Judge declined to expand the panel.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for petitioner
“eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response. Decision 20–21 (citing Prelim. Resp. 31–36). In the Preliminary Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 34 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the data element level.”); see also Req. 11. However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” Decision 20–21. See also Pet. 24. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 11
Claim construction§ 101 eligibility§ 103 obviousnessDiscretionary denialPatents in suitUS 6,321,201 - Square, Inc. v. Protegrity CorporationAll claims unpatentablePTAB · Mar 2, 2016 · CBM2014-00182 · APJ Meredith C Petravick · CBM · Final written decision
Claims 33–60 are unpatentable under § 101; the motion to add substitute claims 61–68 is denied because it broadens claims and lacks written-description support.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’281 patent does not contain a definition of “database.” The claimed database for storing a plurality of data portions corresponds to the O-DB database disclosed in the ’281 patent. The O-DB database is part of a larger “database management system” that includes multiple databases. Id. at 5:53–6:22; Fig. 3. Similar to the other databases, the O-DB database is described as containing data and, in particular, data to be protected. Id. at 6:62–67. Contrary to Patent Owner’s argument (PO Resp. 17–18), the ’281 patent does not describe the O-DB database, or any other database, as performing any other data processing or managing functions. In particular, the ’281 patent does not describe that the O-DB database produces the compelling calling to the data protection catalogue. See Ex. 1001, 10:48–60 (“is first collected by the system”); see id. at Abstract, 2:65–3:5, 3:59–4:2, 4:26–31, 7:63–67, 8:53–61 (describing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database).” slip op. at 10
- 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 ’281 patent, of “data portion” is “a part or share of the database.” The ’281 patent contains no lexicographic definition of “data portion” and, therefore, “data portion” is given its plain and ordinary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Petitioner’s construction is consistent with the plain and ordinary meaning of “portion,” which is an individual’s part or share of something. See Ex. 3001 (MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 908 (10TH ED. 1998)). Petitioner’s proposed construction is also consistent with the words of independent claims 33 and 47, which require that the data portions are part of a database. E.g., see Ex. 1001, 11:18–19 (claim 1 recites “maintaining a database comprising a plurality of data portions”). Petitioner’s proposed construction is further consistent with dependent claims 37, 38, 51, and 52, which further define the claimed data portions to be “a column of data in the database” or “a field of data in the database.” Patent Owner’s proposed construction is overly narrow and improperly attempts to import the limitations from the specification of the ’281 patent into the claim. Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily) (internal quotations and citation omitted). Although the ’281 patent describes the invention as working on the cell or data element level (see Ex. 1001, 3:52–59), we see nothing in the claims, themselves, that require the data portions to be data element values. Dependent claims 37 and 51 are inconsistent with Patent Owner’s proposed construction, because they define the data portion as a column of data, which is a larger portion of data than a data element value.” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’281 patent. As discussed above, the ’281 patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:52–6:22. The ’281 patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:62–67, 6:23–56. The ’281 patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:48–60 (“is first collected by the system”); see id. at Abstract, 2:65–3:5, 3:59–4:2, 4:26–31; 7:63–67; 8:53–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’281 patent. E.g., see Ex. 2045 ¶¶ 12–16, 22, 29; Ex. 2046 ¶ 19; Ex. 2078 ¶¶ 11–12; Ex. 2079 ¶¶ 7–8. Extraneous features should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer and Co-founder (Ex. 2019, 2) and has an interest in the outcome of this proceeding. Contrary to Mr. Mattsson’s and Dr. Direen’s testimony, Petitioner’s declarant Dr. Shamos testifies that one of ordinary skill in the art would know, based upon the ’281 patent, that the compelling calling is produced not by the O-DB, but by control module 20, Ex. 1014 ¶¶ 15–21. Dr. Shamos’ testimony is persuasive because it is consistent with the written description of the ’281 patent, discussed above. Patent Owner argues that we should give no weight to Dr. Shamos’ testimony. PO Resp. 61–64. According to Patent Owner, Dr. Shamos is not a person of ordinary skill in the art because Dr. Shamos lacks knowledge and expertise in database administration and security. Id. at 63. Patent Owner’s argument is unpersuasive because Dr. Shamos is testifying as an expert whose knowledge and experience qualify him to opine on what a hypothetical person of ordinary skill in the art would have understood at the time of the invention. See Ex. 1014 ¶¶ 1–2 (testimony concerning his knowledge of encryption and database technology); Ex. 1003 (Resume of Dr. Shamos). We are not persuaded by Patent Owner that Dr. Shamos is not qualified to opine as to the knowledge of person of ordinary skill at the time of the filing. We, thus, are not persuaded by Patent Owner that we should give no weight to Dr. Shamos’ testimony.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Independent claim 33 recites a data processing method that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion is satisfied. Ex. 1001, 13:38–54. Claim 33 requires a database that comprises the data portions and requires a separate data protection table comprising data processing rules that must be satisfied before the data portion can be accessed. Id. The data processing rules are associated with the data category. Id. Independent claim 47 recites a corresponding computer system. Id. at 14:47–63. Independent claims 33 and 47, thus, recite a method or system that grants access to a requested data portion if the rules associated with a data category that is associated with the requested data portion are satisfied. Ex. 1001, 13:38–54. Given the above, we are persuaded by Petitioner that the claims are directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. We are not persuaded by Patent Owner that the claims are not directed to an abstract idea, because Patent Owner’s argument is based upon elements not required by the claims. See PO Resp. 21–28, 35–38. Given our construction of “data portion” and “database” in section II (A) above, the claims do not require protection on the data element level based on rules stored in a separate database, where the first database calls out to the second database. Patent Owner’s argument is not commensurate with the scope of the claims.” slip op. at 30
Patent outcomesUS 8,402,281 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · MayoPatents in suitUS 8,402,281 - Westlake Services, LLC v. Credit Acceptance Corp.All claims unpatentablePTAB · Jan 25, 2016 · CBM2014-00176 · APJ David C Mckone · CBM · Final written decision
Claims 10–12 and 14–33 are unpatentable under § 101 because they claim an abstract financing process using generic computer components.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“As explained in the 008-FWD, the Specification describes an advance amount as the amount of money a lender agrees to pay to the dealer. Ex. 1001, 8:45–46. “[T]he advance amount is determined by the party extending financing based on the customer’s credit score, the dealership’s past collection history, the particular vehicle being considered and other factors.” Id. at 9:21–24. Although the advance amount could be less than the sales price minus the down payment, the Specification does not require that it be so. In any case, Patent Owner has since accepted our construction of “advance amount” and has chosen not to contest it in this proceeding. Tr. 28:1–12. We maintain that construction on the full record of this proceeding. The parties do not argue in this proceeding for different constructions of “front-end profit” and “database.” We maintain these constructions on the full record of this proceeding. Additionally, in the 008-FWD, we determined that the following terms, also relevant to claims at issue in this proceeding, required no express construction: “receiving information related to a database,” “receiving information from the customer,” “calculating,” “determining,” “presenting . . . to the dealer,” “automatically recalculated,” “transmitted,” “generating,” and “selectable criteria.” 008-FWD, 10–18. In the Petition, Petitioner addressed several of these terms, contending, inter alia, that “receiving information related to a database of a dealer’s inventory,” “receiving information from the customer,” “calculating a credit score for the customer based at least in part on the information gathered from the customer,” and terms including “determining” are indefinite under 35 U.S.C. § 112, second paragraph. Pet. 32–33, 39, 41. We declined to institute on that ground, concluding that the Petition’s showing was unpersuasive. Dec. 27. The parties propose no other constructions for these terms. On the complete record of this proceeding, we maintain our decision not to construe these terms expressly. 3. Additional Terms Construed in the Decision to Institute In the Decision to Institute, we preliminarily construed “calculation unit” to mean “a computer component configured to calculate” and “financing package generating unit” to mean “a computer component that generates financing packages and contains a database and a calculation unit.” Dec. 7. In the Petition, Petitioner contends that these terms are indefinite. Pet. 36. As stated above, we declined to institute on the asserted ground of indefiniteness. Dec. 27. The parties do not dispute further these” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“costs, for items in a dealer’s inventory; receiving down payment information from a customer wishing to buy a product from the dealer; calculating a credit score for the customer; determining how much a lender will advance to the dealer (advance amount) for each product in the inventory (which need only include two products); calculating profits for the inventory items2 (using arithmetic based on the advance amount, dealer cost, and down payment); and presenting a financing package (with unspecified information) to the dealer for each product in the inventory. The underlying concept of claim 1, when viewed as a whole, simply is to receive information from a customer’s credit application, process that information, 1 Claim 10, at issue in this case, depends from claim 1. Thus, our analysis of claim 10 starts with claim 1. 2 Claim 1 does not recite using such profit information. Claim 12 later recites sorting the financing packages based on selectable criteria, which could be profit. dealer. Rephrased, this is the abstract idea of “processing an application for financing a purchase.” Claim 10 depends from claim 1 and adds providing generic computer structure for performing the steps of claim 1 (a “user terminal” for entering customer information; and a “server” connected to the user terminal “via a network,” for receiving information, accessing the database, performing claim 1’s arithmetic to generate financing packages, and transmitting the financing packages to the user terminal). Thus, claim 10 recites the same abstract concept as recited in claim 1, performed with generic computer components.” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“applying the steps of claim 1 (which we determined in CBM-008 to be abstract) using generic, conventional computer components, recited in purely functional language. Pet. 22–23. We agree, and conclude that the generic computer components recited in claim 10 do not transform the nature of the claim such that claim 10, as a whole, recites an inventive concept. Claim 1, from which claim 10 depends, recites a database, which stores information about a dealer’s inventory. Claim 10 adds to claim 1 a server for performing calculations, a user terminal for entering the information to be calculated, and a network for moving the information back and forth. As Petitioner argues, claim 10 provides no details as to the components are recited generically, using purely functional language. In essence, claim 10 recites applying the abstract idea of claim 1 using generic computer components. Put differently, claim 10 simply limits the method of claim 1 to a particular technological environment. This is analogous to the claims at issue in Alice, which generically recited a “data storage unit” and “computer,” for example (detailed more fully in the Federal Circuit’s opinion in CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1285–90 (Fed. Cir. 2013)), and those at issue in Accenture, 728 F.3d at 1344–45, which recited a “database,” “client component,” “server component,” and “automated method,” for example. In the words of the Alice Court, claim 10 essentially “[s]tat[es] an abstract idea while adding the words ‘apply it with a computer.’” 134 S. Ct. at 2358. Nor does claim 10 purport to improve the functioning of the computer itself. See buySAFE, 765 F.3d at 1354; compare with DDR Holdings, 773 F.3d at 1258 (“In short, the claimed solution amounts to an inventive concept for resolving this particular Internet-centric problem, rendering the claims patent-eligible.”).” slip op. at 23
Patent outcomesUS 6,950,807 unpatentableClaim construction§ 101 eligibilitycites BilskiPatents in suitUS 6,950,807 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Aug 6, 2015 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving institution and denial of the identified claims and grounds unchanged after finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“LLC. See Decision 9–10. As we stated in our Decision, a party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a); see Securebuy, LLC, CBM2014-00035, (PTAB Apr. 25, 2014) (Paper 12, precedential) (explaining that 35 U.S.C. § 325(a)(1) applies to covered business method patent review proceedings). In this case, however, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21).); “The dismissal of an action without prejudice leaves the parties as though the action had never been brought. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). In SecureBuy, LLC, the Board determined the 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy, LLC, CBM2014-00035 (PTAB April 25, 2014)( Paper 12).” slip op. at 4
- BurdenDecided for patent owner
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. Petitioner alternatively argues that Denning’s objects at the top of the columns of the access matrix model are associated with a data category, when “data category” is given the broadest reasonable construction adopted in the Decision. Pet. Req. 3, 9. Petitioner states: “[f]or example, M1 refers to a division of data that shares a common attribute of being stored in memory segment M1.” Id. Petitioner, however, does not identify where this argument was raised in the first instance in the Petition, and we can find no such argument in the Petition. We could not have overlooked or misapprehended an argument that was not raised in the Petition. We, thus, are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 15, 31, 33, and 47 on the ground of obviousness over Denning. slip op. at 14
§ 101 eligibility§ 102 anticipationDiscretionary denialPatents in suitUS 8,402,281 - Westlake Services, LLC D/B/A Westlake Financial Services, LLC v. Credit Acceptance Corp.All claims unpatentablePTAB · Mar 24, 2015 · CBM2014-00008 · APJ Gregg I Anderson · CBM · Final written decision
Claims 1–9, 13, and 34–42 are unpatentable under § 101 because they claim an abstract financing process implemented with routine computer use.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Claim 1 recites in pertinent part “calculating a front-end profit to be realized by the dealer for each individual product in the dealer inventory based on the dealer cost associated with each individual product, the advance amount determined for each individual product, and the down payment amount” (emphases added). The actual claim language as to calculation of the “front-end profit” is repeated in the Specification. Ex. 1001, 3:63–66. “Put simply, the front-end profit, is equal to the down payment amount plus the advance amount minus the dealer’s costs.” Id. at 8:60–63. “Advance amount” is construed immediately hereafter. Thus, we construe “front-end profit” to mean “the down payment amount plus the advance amount minus the dealer cost.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningNo construction neededOther
“Patent Owner’s cites to the Specification are not directly supportive of its proposed construction. PO Resp. 40–42. Patent Owner cites to the Nerenberg Declaration, as it did previously, for the proposition that automation of financing options through a computer is quicker than doing so manually. Id. at 41 (citing Ex. 2008 ¶ 53). The speed with which a computer may perform calculations is not a part of the construction of the term at issue. Further, we see no reason why the claims should be construed to require communication over a “network,” when the term is not recited in any of the challenged claims (but is recited in others, such as claim 14, for example). We determine that the term “receiving information from the customer” is plain on its face and requires no express construction.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“We conclude that claim 1 is directed to an abstract idea and, at most, merely recites implementing it with a computer. See Bilski, 130 S. Ct. at 3231. The abstract idea of processing an application for financing a purchase claimed is a known concept described in the ’807 patent. Ex. 1001, 1:33–2:50. Specifically, the ’807 patent describes processing a financing application as: a customer completing a credit application; obtaining financing from a financing institution; the customer providing a down payment and signing a promissory note to the dealer; and the financing institution paying the dealer the balance for the purchase after applying the down payment. Id. at 1:33–2:14. If the financing is not completed, the process is repeated. Id. at 2:15–50; see Tr. 34:6–35:10. Patent Owner’s arguments that the claims are directed to a specific method are relevant, if at all, to the second step of the Alice framework, not the first, and are therefore unpersuasive. We disagree that claim 1 taken “as a whole” is any more than an abstract idea relating to the general method of processing an application for financing a purchase. Claim 1 simply describes receiving information, including sale prices and dealer costs, for items in a dealer’s inventory; receiving down payment information from a customer wishing to buy a product from the dealer; calculating a credit score for the customer; determining how much a financer will advance to the dealer (advance amount) for each product in the inventory; calculating profits for the inventory items (using basic arithmetic based on the advance amount, dealer cost, and down payment); and presenting financing packages (with unspecified information) to the dealer. Ex. 1001, 12:56–13:14. The arguments and evidence presented by Petitioner are persuasive that claim 1 is directed to no more than this abstract idea, not tied to any specific machine, of processing an application for financing a purchase. Pet. 37 (citing Ex. 1006 ¶¶ 280, 285). Patent Owner’s evidence and arguments in this case do not persuade us otherwise. For purposes of the first step of Alice, Patent Owner has not distinguished any of the other independent or dependent claims from claim 1. Thus, we determine that Petitioner has proven that claims 1–9, 13, and 34–42 are directed to an abstract idea.” slip op. at 26
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner
“We are not persuaded that the claims include something beyond the abstract idea that transforms the claimed abstract idea into patent eligible subject matter. Merely using a computer to speed the steps of generating a financing package for each item of inventory is not such a transformation. See Bancorp Services, 687 F.3d at 1278 (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Likewise, the ability to create an “immediate offer” does nothing more than speed up that which can be done by a human. Although we agree that the claimed steps require a computer, there is insufficient evidence for us to conclude that the computer is being utilized for anything beyond routine or conventional use. We have reviewed the Nerenberg Declaration, including specifically paragraphs 130–153, and find it to be conclusory and lacking sufficient underlying facts or data. As such, we give the declaration minimal weight in our determination. See 37 C.F.R. § 42.65(a). As noted above, routine use of a computer is not enough to meet the inventive concept step of Alice. Ultramercial III, 772 F.3d at 716; see Alice, 134 S. Ct. at 2358 (“Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of additional featur[e] that provides any practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”) (citations and quotation marks omitted); Accenture, 728 F.3d at 1344–45 (claims reciting a “database,” “client component,” “server component,” and “automated method,” for example); CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1289 (Fed. Cir. 2013) (claims reciting a “data storage unit” and “computer,” for example). Even assuming some of the claimed steps were not previously known in the art is not alone enough to confer patent eligibility. Id. Moreover, the ’807 patent itself describes the steps in a financing process as they existed before the ’807 patent. Ex. 1001, 1:33–2:50. Thus, the record supports our conclusion that the steps of the method were known previously. Further, Patent Owner acknowledges the steps individually are known but argues the steps as a whole transform the claim into patentable subject matter. Tr. 31:21–32:1. This argument is not supported sufficiently by any evidence beyond attorney argument to persuade us of patent eligibility. Patent Owner argues that there are many ways of providing financing that do not require calculating either a “front-end profit” or an “advance amount.” PO Resp. 10 (citing Ex. 2008 ¶ 120). Mr. Nerenberg testifies that examples where the two terms are not required for financing are mortgages and student education loans. Ex. 2008 ¶ 120. Nevertheless, calculating an amount a lender will advance or an amount by which a dealer will profit from a transaction are routine, conventional activities for financial transactions. See, e.g., Ex. 1001, 1:34–2:10. Furthermore, our construction of the terms “front-end profit” and “advance amount” supports that they are conventional. Regardless, neither term, alone or in combination, “transform[s] the nature of the claim” into patent eligible subject matter. Mayo, 132 S. Ct. at 1294, 1297.” slip op. at 29
Patent outcomesUS 6,950,807 unpatentableClaim construction§ 101 eligibilitycites Alice · BilskiPatents in suitUS 6,950,807
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.