• Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.All claims unpatentable
  PTAB · Feb 22, 2024 · PGR2022-00055 · APJ Sean P O’Hanlon · PGR · Final written decision

  Claims 1–4 and 10–13 are unpatentable under § 101; claims 1–4 and 11–13 are also unpatentable as obvious over Pirovolou, Panchal, and Budiman, and claim 10 over those references plus Downton.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (citations omitted). “The patent’s purpose can also be informative.” Id. (citation omitted).” slip op. at 9

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party presents arguments for the express construction of any term, instead interpreting the claim terms according to their ordinary and customary meaning. Pet. 18; PO Resp. 29. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. slip op. at 10

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

    “information (recitations 1.3, 1.8), using received information to generate a set of possible drilling paths (recitation 1.4), removing certain ones of the generated possible paths (recitations 1.5–1.6), selecting a desired one of the generated paths (recitation 1.7), and updating a plan to include the selected path (recitation 1.9). This collection and manipulation of data is similar to the data collection and management concepts that were held to be patent ineligible in previous cases. See Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610, 613 (Fed. Cir. 2016); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016). Although the claim enumerates the type of information (i.e., BHA location, target path, and possible convergence paths) that is acquired and analyzed, the Federal Circuit has explained that the mere selection and manipulation of particular information by itself does not make an abstract concept any less abstract. Elec. Power Grp., 830 F.3d at 1353; Dig. Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).” slip op. at 20

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

    “removing illogical options as the “pruning” step, rather than both of the “removing” steps as asserted by Patent Owner. See Ex. 1001, 6:21–34, 6:42–43, 6:50. The two “removing” steps noted by Patent Owner reduce the number of cost considerations that the computer must perform (by increasing the number of other comparisons (regarding illogical options and rule violations)), but do not change the way in which the computer performs the cost analyses. And, as explained above, neither the “removing” steps nor any other recitation alters the way in which drilling is performed. Moreover, as also noted above, the “removing” steps relied upon by Patent Owner are part of the abstract idea itself and, therefore, cannot evidence an inventive concept. See Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018). As noted above, the additional elements of the processor and memory are recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. The ’454 patent also describes the processor and memory as generic computer components. See Ex. 1001, 4:50–5:29. The claim includes the additional recitations of a memory and processor to send a control signal. A memory for storing data and a processor for processing data and sending signals are well‐understood, routine, and conventional computer components, which in this claim are recited at a high level of generality and perform generic computer functions (e.g., storing, processing, and transmitting information). See Ex. 1003 ¶¶ 104–105 (citing Ex. 1006 ¶ 22, Fig. 2, code (57)). Generic computer components performing generic computer functions, alone, do not amount to significantly more than the abstract idea, as the Supreme Court has explained that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Viewing the limitations in combination also fails to amount to significantly more than the abstract idea. The claimed system seeks to use a processor and memory to generate possible convergence paths, remove certain ones of the generated possible paths, select a desired one of the generated paths, update a plan to include the selected path, and send a signal, but these functions reflect ordinary usage typically performed by a generic computer, as would be recognized by those of ordinary skill in the field of mining. See, e.g., Ex. 1006 ¶ 22, code (57). The claim here does not invoke any of the considerations that courts have identified as providing significantly more than an exception; the combination of elements is no more than the sum of their parts. Additionally, as the Federal Circuit has explained, claims that do not include a requirement for performing “claimed functions of [data] gathering, analyzing, and [transmitting] by use of anything [other than] conventional, generic technology” fail to provide an inventive concept. Elec. Power Grp., 830 F.3d at 1356. Accordingly, on this record, Petitioner sufficiently shows that the claim as a whole does not amount to significantly more than the recited exception.” slip op. at 29

  Patent outcomesUS 11,170,454 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · KSR · Graham
  Patents in suitUS 11,170,454
• Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.Instituted
  PTAB · Mar 13, 2023 · PGR2022-00055 · APJ Sean P O’Hanlon · PGR · Institution

  The Board instituted PGR on claims 1–4 and 10–13, finding the petition showed a reasonable likelihood of prevailing on § 101 and § 103 grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a). Institution of postgrant review is authorized by statute only when “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). “When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.208(a)). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated that it is more likely than not that it will prevail with respect to at least one challenged claim. Accordingly, we institute post-grant review of the challenged claims of the ’454 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s definition or offer a definition of its own. See generally Prelim. Resp. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and, for purposes of this Decision, adopt it as our own.” slip op. at 10

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party presents arguments for the express construction of any term, instead interpreting the claim terms according to their ordinary and customary meaning. Pet. 18; Prelim. Resp. 15. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. slip op. at 11

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

    “Claim 1 recites a system that performs the steps of receiving information (recitations 1.3, 1.8), using received information to generate a set of possible drilling paths (recitation 1.4), removing certain ones of the generated possible paths (recitations 1.5–1.6), selecting a desired one of the generated paths (recitation 1.7), and updating a plan to include the selected path (recitation 1.9). This collection and manipulation of data is similar to the data collection and management concepts that were held to be patent ineligible in previous cases. See Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610, 613 (Fed. Cir. 2016); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016). Although the claim enumerates the type of information (i.e., BHA location, target path, and possible convergence paths) that is acquired and analyzed, the Federal Circuit has explained that the mere selection and manipulation of particular information by itself does not make an abstract concept any less abstract. Elec. Power Grp., 830 F.3d at 1353; Dig. Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Accordingly, on this record, Petitioner sufficiently shows that the claim recites an abstract idea that falls within the grouping of mental processes. See Elec. Power Grp., 830 F.3d at 1355.” slip op. at 19

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · KSR · Graham
  Patents in suitUS 11,170,454
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

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

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

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

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution denied
  PTAB · Dec 6, 2022 · PGR2022-00035 · APJ Ken B Barrett · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–17 was unpatentable on the asserted grounds.

  RulingsInstitution decision

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

    “A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that, if unrebutted, it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’580 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have a Bachelor of Science in Electrical Engineering, Computer Science, or another degree related to electromechanical systems, as well as at least 3 years of academic or industry experience in electronic payment systems.” Pet. 25–26 (citing Ex. 1003 ¶ 22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7

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

    “Petitioner states that, “[u]nless otherwise noted, Petitioners submit that the claim terms should be given their plain and ordinary meaning since the claim terminology appears to be the same as that used in the [Multi-Drop Bus] protocol.” Pet. 28. Patent Owner does not propose any constructions, asserting that “the Board need not reach any claim constructions in order to deny this petition.” Prelim. Resp. 12. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8

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

    “in Anderson of a mobile device making, or the receipt from a mobile device of, a request to access peripheral device-generated signals. See Prelim. Resp. 17–24; see, e.g., id. at 17 (“Petitioners point to no evidence that any external device in Anderson ever requests access to the signals generated by the peripheral.”). We find this argument persuasive. Petitioner, in the section for “receiving” limitation 1.5(f), cites paragraph 44 of Anderson several times. See Pet. 36–39. That paragraph concludes with the statement: The IC 125 may also include a modem (not shown) to display content on external devices such as cellular phones via cellular network or any other network know[n] in the art. Thus, in one implementation, a user may receive nutritional information or balance information on his cell phone. Ex. 1005 ¶ 44. That is a disclosure of data flowing to the cell phone in the form of content to display, and it is ambiguous as to what component could be said to have requested that data flow. Limitation 1.5(f) recites data flow in the opposite direction, from the mobile device, and pertains to a specific message—“a request to access signals generated by the first peripheral device.” Ex. 1001, 53:22–24. Petitioner does not explain adequately how the disclosure in Anderson’s paragraph 44 could support a finding that there was received, from the cell phone, a request to access signals generated by a peripheral device. See, e.g., Pet. 36–37 (quoting Anderson’s paragraph 44).” slip op. at 13

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,074,580
• Square, Inc. v. Electronic Receipts Delivery Systems, LLCAll claims unpatentable
  PTAB · Nov 29, 2021 · CBM2020-00015 · APJ Miriam L Quinn · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 and the asserted Moran-based anticipation and obviousness grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “been “charged with infringement,” Pet. 10, but that statement does not foreclose reading that allegation as a charge of infringement against Petitioner. Under 37 C.F.R. § 42.302(a), “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” “[W]here a patent holder accuses customers of direct infringement based on the sale or use of a supplier’s equipment, the supplier has standing to commence a declaratory judgment action if,” for instance, “there is a controversy between the patentee and the supplier as to the supplier’s liability for induced or contributory infringement based on acts of direct infringement by its customers.” Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011); see also ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345 (Fed. Cir. 2011) (holding federal court had subject matter jurisdiction over claim for declaratory judgment of noninfringement where the plaintiff “had an interest in determining whether it would be liable for indemnification, which turned on whether [its contractor] would be liable for infringement”). Further, an allegation of direct infringement of a U.S. patent against the manufacturer’s customers may amount to an implicit allegation of indirect infringement against the manufacturer. Arris Group, 638 F.3d at 1375–76. Petitioner has shown persuasively that it sought to intervene in the district court litigation against its customers to “seek a declaratory judgement that [the] Square Register and Square’s other products and services do not infringe any valid claim of the ’551 [p]atent.” Ex. 1034, 3; Reply 1011. Patent Owner, the plaintiff in that suit, consented to the motion. Ex. 1034, 7; Reply 11. The district court granted Petitioner’s motion to intervene and Petitioner filed its Complaint in Intervention in district court, deeming Petitioner the “true defendant” in the dispute. See Reply 6; Ex. 1018. There is no question that the underlying district court litigation in which Petitioner seeks to assert non-infringement of the ’551 patent stems from Patent Owner’s allegations that Petitioner’s products directly or indirectly infringe the ’551 patent. These facts prove that Petitioner’s involvement in the district court litigation as an intervenor, together with Patent Owner’s accusation of infringement in its Answer and Affirmative Defenses, show a real and substantial controversy between Patent Owner and Petitioner. And the record shows that a federal court indeed has exercised jurisdiction over Patent Owner’s claim of infringement against Petitioner as intervenor, with Petitioner actually defending such a claim. This is sufficient to conclude that at the time of the filing of the Petition, Petitioner had been charged with infringement, and, therefore, had standing to file the Petition in this proceeding.” slip op. at 12

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

    “The parties do not identify claim constructions necessary for the Board to resolve the issues in this proceeding. Pet. 12; see generally Prelim. Resp.; PO Resp. We determine that it is unnecessary to expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms in controversy must be construed and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Skill levelOther

    “Petitioner proffers that [a] person of ordinary skill in the art . . . would have a Bachelor’s degree in Computer Science, Computer Engineering, Data Science or Electrical Engineering or any undergraduate degree plus three to five years of professional experience in software development, computer programming, or network engineering or equivalent additional formal education such as graduate studies, or work experience to replace formal education. Pet. 13 (citing Hochman Decl. ¶¶ 16–22). There is no dispute as to whether Petitioner’s proffered level of ordinary skill in the art is appropriate in this case. We do not find it necessary to define the level of skill with specificity save to note that the level of ordinary skill is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 23

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

    “components “implemented in a generic computer environment” for performing that abstract idea. Pet. 68. Petitioner further annotates claim 1 to provide identifiers for each limitation. Id. For this part of the analysis, we address specifically limitation [vi], which recites “automatically transmitting a digital receipt for the transaction to the destination associated with the first customer without input from the first customer.” Limitation [vi] recites transmission of a credit card receipt according to instructions previously provided by the credit card user, which constitutes a fundamental economic practice, one of the certain methods of organizing human activity identified in the Guidance as a judicial exception. See Pet. 74 (arguing that issuing receipts for a purchase transaction is “nothing more than the organization of a fundamental and economic activity”). The claim’s recitation of an “automatic[]” transmission does not alter the fundamental business transaction recited in the claim: providing a customer a receipt for a credit card charge. The limitation provides no technological detail of how to automate the transmission of such a receipt or how to effectuate the delivery to a “destination.” See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.”). The recitation of a “digital” receipt does not alter our analysis either. The modifier adds only that the receipt is in electronic form. The claim language, however, is silent as to how such a receipt is generated or otherwise prepared for transmission to the credit card user. There is no technological detail that would place the “digital” receipt outside of an abstract idea of a fundamental economic practice of providing a credit card receipt to a customer. The other recited limitations also support our determination that the claims are directed to an abstract idea of a fundamental economic practice. For instance, in its simplest form the claimed process includes three basic steps: registering a customer e-mail address for receiving credit card digital receipts (steps [i]—[ii]), initiating a credit card transaction for a sales transaction of the customer (steps [iii]—[v]), and transmitting the digital receipt in accordance with the information received and stored in steps [i] and [ii]. Thus, the claim explains the basic concept of providing a credit card receipt to a customer. These recited steps place no meaningful limit on the claim scope, as the claim lacks specificity as to how any computer or database is specially programmed to perform the claimed steps. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”). Each of claims 11 and 16 also recites the automatic transmission of a digital receipt for a credit card transaction to a user. Petitioner provides an explanation accounting for those claims, see id. at 93–94, and our analysis of claim 1 concerning the determination of an abstract idea equally applies to those claims. We determine that Petitioner has shown that claims 1, 11, and 16 recite a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Guidance as a judicially excepted abstract idea.” slip op. at 30

  Patent outcomesUS 8,534,551 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,534,551
• Marketdial, Inc. v. Applied Predictive Technologies, Inc.Institution denied
  PTAB · Mar 3, 2021 · CBM2020-00025 · APJ Justin T Arbes · CBM · Institution

  The Board denied institution of CBM review of claims 1–35 under Fintiv because the district court had already held the same claims invalid under § 101.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “institution decision.” Prelim. Resp. 6–7 (citing Snap, Paper 8). We agree. There will be no trial as to patent infringement because the district court already concluded that all claims of the ’916 patent are invalid under § 101. Patent Owner indicates that it will appeal that decision once the remainder of the district court case concludes. Id. at 3. The statutory deadline for a final written decision in this proceeding would be one year from institution. Under the particular factual circumstances of this case, we find that this factor strongly weighs in favor of exercising our discretion to deny the Petition.” slip op. at 10

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

    “3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8

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

    “3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 8,571,916
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

  Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14

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

    “above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• NRT Technology Corp. / NRT Technologies, Inc. v. Everi Payments, Inc.Institution denied
  PTAB · Jan 22, 2016 · CBM2015-00167 · APJ Michael J Fitzpatrick · CBM · Institution

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

  RulingsInstitution decision

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

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

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

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

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

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

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

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

  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice
  Patents in suitUS 6,081,792
• American Express Co. / American Express Travel Co. et al. v. Harvey LunenfeldAll claims unpatentable
  PTAB · May 22, 2015 · CBM2014-00050 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1, 5, 15, 21, 31, and 35 are unpatentable under §§ 101 and 103; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Patent Owner disagrees with Petitioner’s definition of PHOSITA” slip op. at 10

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

    “Accordingly, utilizing this framework, we analyze claims 1, 5, 15, 21, 31,” slip op. at 28

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

    “Accordingly, based on the evidence of record, we determine that the” slip op. at 35

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

    “1. Knowledge Broker is not a Metasearch Engine As discussed previously, we do not agree with Patent Owner’s assertion” slip op. at 57

  Patent outcomesUS 8,239,451 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · Graham
  Patents in suitUS 8,239,451

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.