• Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentable
  PTAB · Aug 14, 2017 · CBM2016-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–24 are unpatentable under § 101; claims 1–3 and 5 are also anticipated by Riach, and specified claims are obvious over combinations of Riach, Graf, Gustin, and Anderson.

  RulingsFinal written decision

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

    “For these reasons, we determine that claim 20—its focus and its” slip op. at 37

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

    “For the foregoing reasons, we conclude that claim 20 is directed to an” slip op. at 52

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “encompasses Riach’s process that copies a portion (but not all) of the original check image data to produce the required modified check image data. Accordingly, we agree that the portion of Riach on which Petitioner relies discloses step (b) of claim 1 that requires, among other limitations, the modified check image data not include at least some visual feature data included in the check image data. Pet. 30 (relying on Ex. 1008, 5:16–30, Figs. 4, 7).” slip op. at 73

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

    “several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 89

  Patent outcomesUS 7,314,163 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Enfish · Electric Power · Phillips · Graham
  Patents in suitUS 7,314,163
• Ultratec, Inc. v. Captioncall, L.L.C.Institution denied
  PTAB · Feb 22, 2017 · PGR2016-00037 · APJ Barbara A Benoit · PGR · Institution

  The Board denied institution on all challenged claims because the petition did not show that any claim was more likely than not unpatentable under § 101 or § 103.

  RulingsInstitution decision

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

    “review of claims 1–23 of U.S. Patent No. 9,197,745 B1 (Ex. 1001, “the ’745 patent” or “the challenged patent”). Paper 1 (“Pet.”). Patent Owner, CaptionCall, L.L.C., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] 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). After considering the Petition and the Preliminary Response, we determine that the information presented in the Petition does not demonstrate it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable construction standard in inter partes review9). Consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for “message” recited in claims 2, 4–8, and 12 and for “module” recited in claims 2–6 and 8. Pet. 9–11. Patent Owner challenges Petitioner’s proposed claim constructions as overly narrow. Prelim. Resp. 8–9. We determine, however, that no claim terms need express construction for this decision.” slip op. at 9

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

    “We agree with Patent Owner (Prelim. Resp. 12) that claim 1, as a whole, is directed to an apparatus that facilitates voice communication and captioned text communication using a relay for hearing-impaired users over one or more communications networks and, under specified circumstances— when captioning has been enabled by the hearing-impaired user and the system determines that an attempted connection has failed—automatically reconnects to a captioning communication service. In other words, the claim is directed to a communication device that automatically reconnects to a captioning communication service following an unwanted interruption to the 12 captioning communication service in certain circumstances. See Ex. 1001, 1:13–16 (describing the field of the disclosure as relating to a communication device that automatically reconnects to the captioning communication service “following an unwanted interruption to the captioning communication session”). We determine that claim 1 as a whole is not directed to redialing a telephone as “callers have performed for as long as there have been telephones.” See Pet. 20. Moreover, the claim is directed to an apparatus having communication elements and a processor, and requires two connections and captioning, which, taken as a whole, distinguish claim 1 from a conventional telephone and further supports our determination that the claim merely involves, but is not directed to, the concept of reconnection or redialing. Moreover, looking at the elements individually, claim 1 requires communication elements coupled with a processor configured to able to connect a communication device and connect with a captioning session over two connections. Claim 1 recites a function—“automatically connect with the captioning communication service through a second connection to establish a captioning communication session during the voice communication session responsive to a determination that an attempted connection to the captioning communication service failed during a time in which a caption select option has been enabled by the hearing-impaired user, wherein the attempted automatic connection through the second connection is not made during a time in which the caption select option has been 13 disabled by the hearing-impaired user”—which requires more than “redialing” a telephone. See Prelim. Resp. 11–12. Specifically, the claimed apparatus only performs the “automatically connect” function if three conditions are met: (i) responsive to a determination that an attempted connection to the captioning communication service failed (ii) during a time in which a caption select option has been enabled by the hearing-impaired user, and (iii) “the attempted automatic connection through the second connection is not made during a time in which the caption select option has been disabled by the hearing-impaired user.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “excerpts from Parker as purportedly describing aspects of the automatically reconnect limitation. Id. at 40–42. Petitioner does not assert that either the Ultratec User Guide or Parker alone would have conveyed to one of ordinary skill in the art the automatically connect function with the three conditional limitations (id.), nor is such an assertion required under 35 U.S.C. § 103. Petitioner is required under 35 U.S.C. § 103, however, to explain how the combination of the references would have conveyed to one of ordinary skill 25 in the art the recited automatically connect function with its three conditional limitations. Petitioner has not provided such an explanation, much less adequate analysis by Mr. Zatkovich or factual support as to how one of ordinary skill in the art would understand the separate disclosures of the references to teach the automatically connect limitations. Specifically absent from the Petition is any discussion as to how Petitioner’s combination of references would have conveyed to one of ordinary skill in the art the limitations of automatically connecting under the required conditions—the failed attempt limitation, the when-enabled limitation, and the when-not-disabled limitation. Petitioner’s combination relies on Parker’s reconnection function to establish a lost persistent connection, but Parker’s reconnection function does not do so conditionally, much less under the specific conditions required by claim 1. Petitioner does not explain how the combination of Parker’s unconditional reconnection function would be understood by one of ordinary skill in the art to retry conditionally based on whether the Ultratec User Guide’s caption button was enabling captioning and had not been disabled by the caption telephone user. Furthermore, Petitioner contends that “adding an auto-retry and/or auto-reconnect feature as in Parker to a captioned telephone device as disclosed in [the Ultratec User Guide and Engelke] would amount to simply adding a known technique to a known system, wherein the technique operates in the same way as it was already known to operate and dos not have any unpredictable result.” Pet. 34. As such, Petitioner’s combination 26 expressly relies on Parker’s auto-retry and/or auto-reconnect feature “as in Parker,” which is an unconditional retry in the event of a lost connection. In sum, neither reference by itself describes the automatically reconnect limitation and Petitioner fails to articulate how one of ordinary skill in the art would have understood the claimed automatic reconnect in view of the cited disparate disclosures from the references. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner asserts in a conclusory manner that the combination of a teaching of a button to enable or disable captioning with a teaching of automatic reconnection unrelated to whether captioning is enabled or disabled would have conveyed to one of ordinary skill in the art the automatic reconnection limitation. Petitioner fails to provide adequate explanation or factual support. This flaw of the Petition is particularly problematic when the threshold for institution is “more likely than not,” as here, rather than the threshold of “a reasonable likelihood” required to institute an inter partes review. Compare 35 U.S.C. § 324(a), with 35 U.S.C. § 314(a).” slip op. at 25

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR
  Patents in suitUS 9,197,745
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

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

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

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

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• Intermix Media, LLC v. Bally Gaming, Inc.Institution denied
  PTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution

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

  RulingsInstitution decision

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

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

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

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

  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 5,816,918
• The United States Postal Service (Usps) / The United States Of America, As Represented By The Postmaster General v. Return Mail, Inc.All claims unpatentable
  PTAB · Oct 15, 2015 · CBM2014-00116 · APJ Kevin F Turner · CBM · Final written decision

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

  RulingsFinal written decision

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

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

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

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

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

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

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

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

  Patent outcomesUS 6,826,548 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo
  Patents in suitUS 6,826,548
• Fidelity National Information Services, Inc. v. Datatreasury Corp.All claims unpatentable
  PTAB · Apr 29, 2015 · CBM2014-00021 · APJ Michael P Tierney · CBM · Final written decision

  Claims 1–123 are unpatentable under § 101; claims 1–41 and 51–69 are also unpatentable for lack of written description under § 112.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the evidence of record, we credit the testimony of Dr. Alexander and agree with Petitioner that: (1) the specification fails to describe encrypting the DAT_TERMINAL_ID; (2) generic “identification information” does not constitute the claimed subsystem identification information; and (3) subsystem identification information is not included in the “paper transaction data” of the disclosed receipt. Reply 12–13. We find that Petitioner has demonstrated that claims 1–41 and 51–69 are unpatentable for lack of sufficient written description for encrypting subsystem identification information.” slip op. at 22

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.300(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Trial Practice Guide”); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms are given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 7

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We credit Dr. Alexander’s testimony and determine that the ’988 patent simply arranges old well-known elements with each performing the same function it had been known to perform. E.g., Ex. 1003 ¶¶ 26–28, 31, 85. Based on the record presented, we do not see how the limitations in claim 46 are significant meaningful limitations that transform the abstract 4 Petitioner contends that the challenged claims do not recite a “three-tiered” architecture. Reply 8. For purposes of this decision, we assume the Patent Owner is correct in stating that its claims require such architecture. idea into patent-eligible applications of these abstractions. Patent Owner’s contentions focused on the alleged meaningful limitations appearing in claim 46 or the challenged claims in general. We have reviewed the remaining challenged claims and likewise are persuaded, based on the evidence presented, that the remaining claims also lack limitations that meaningfully limit the abstract idea and avoid unacceptable preemption. Reply, 1. We hold that the challenged claims recite nothing more than conventional equipment and steps, specified at a high level of generality on top of the underlying abstract concept. Mayo, 132 S. Ct. at 1300.” slip op. at 18

  Patent outcomesUS 5,910,988 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Bilski
  Patents in suitUS 5,910,988
• American Express Company / American Express Travel Related Services Company, Inc. et al. v. Metasearch Systems, LLCAll claims unpatentable
  PTAB · Mar 13, 2015 · CBM2014-00001 · APJ Howard B Blankenship · CBM · Final written decision

  Claims 2, 6, and 8 are unpatentable under §§ 101 and 103(a); Patent Owner’s motion to amend is denied.

  RulingsFinal written decision

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

    “In this case, representative claim 2 recites eight steps for a search that is “associated with at least one travel related item,” and which include receiving the search results, communicating the results along with an advertisement, receiving an order for the item, and processing the order. See Ex. 1001, col. 145, ll. 33–61. Although the claimed process requires computer hardware and software (e.g., step (a) of claim 2, “receiving a Hypertext Transfer Protocol request from a client device”), we agree with Petitioner that the claim embraces 5 The Court’s decision is sometimes referenced as Ultramercial III. The Federal Circuit heard the second appeal from the U.S. District Court after the Supreme Court vacated the Federal Circuit’s first decision. 772 F.3d at 711–12. the abstract idea of marketing an item on a metasearch Web site with keyword ads and providing a way to order the item.” slip op. at 13

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

    “Next, or in step two of the analysis, we search for an “inventive concept”— i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Alice, 134 S. Ct. at 2355. In this case, the claims recite, for the most part, an ordered combination of steps that contain Internet operations that were conventional at the time of invention. For example, the claims recite communicating with a client device using a Hypertext Transfer Protocol [HTTP]. Momma.com demonstrates that browsers on Internet client devices used such a protocol at the time of invention. See Ex. 1005, 10 (for “Microsoft Internet Explorer,” go to the address “http://www.mamma.com”). The claims further recite a “metasearch engine,” which also was conventional at the time of invention. See id. at 5 (“Mamma is a meta search engine”); see also Prelim. Resp. 3 (Patent Owner did not claim that “metasearching” was novel at the time of invention). Patent Owner argues that designing more than a “rudimentary” metasearch engine in the late 1990’s was not a trivial task. PO Resp. 44. The argument is premised on the assumption that the claims require more than “rudimentary” metasearching. The claims recite, however, as in claim 2, a “metasearch engine to send at least one search query to a plurality of unique hosts”—e.g., a metasearch engine capable of sending a single search query to a plurality (e.g., two) different hosts. The claims are drawn to implementing the abstract idea of marketing an item on a metasearch Web site with keyword ads and some way to order the item with routine, conventional activity. Such an implementation does not transform the abstract idea into patent eligible subject matter.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “5. Combining Knowledge Broker and Mamma.com Patent Owner argues that a person of ordinary skill in the art would not have been motivated to combine the “disparate technologies” of Mamma.com and Knowledge Broker and would not have known how to do so “without complex, lengthy, and uncertain experimentation.” PO Resp. 62. According to Patent Owner, the “two technologies” of “metasearch engines and structured e-commerce comparison shopping services providing product purchase functionality and associated advertisements—were vastly different technologies during the late 1990s and in particular in 1999-2000.” Id. at 59. A person of ordinary skill in the art would “not have been motivated to combine metasearch engines with structured e-commerce comparison shopping sites due to numerous other technical challenges present at the time.” Id. at 63. We agree with Petitioner, however, that the claims do not require addressing the “technical challenges” submitted by Patent Owner. Pet. Reply 11–12. Adding advertisements to Knowledge Broker would not require combining a metasearch engine with other “technologies” such as “structured ecommerce comparison shopping sites.” For example, the advertisements could be supplied from the hosts. Patent Owner acknowledges there is no limitation as to where the advertisement comes from. Tr. 61:20–25.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersNot shown unpatentableDecided for petitioner

    “The Declaration does not point to any evidence in the record in support of the allegations. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Moreover, Dr. Carbonell does not allege, let alone show, that others tried and failed to solve the problem allegedly solved by the ’924 patent. See Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.”); In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (declarations that failed to show a long-felt need and failure of others to meet that need, and which offered only opinion evidence that has little value without sufficient support, were insufficient to establish nonobviousness). Further, on this record, the “desirability of combined search and shopping functionality” (Ex. 2006 ¶ 40) was not unmet at the time of invention. Patent Owner acknowledges that e-commerce services that allowed a user to query structured databases predated the invention. E.g., PO Reply 8–9, 12, 62 (discussing “SoftBot” and “ShopBot” e-commerce services). For the foregoing reasons, we find that Patent Owner’s evidence in support of a long-felt but unmet need is entitled to little weight in support of nonobviousness.” slip op. at 29

  Patent outcomesUS 8,326,924 unpatentable
  § 101 eligibility§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 8,326,924
• Linkedin Corp. v. Avmarkets Inc.All claims unpatentable
  PTAB · Nov 10, 2014 · CBM2013-00025 · APJ Michael P Tierney · CBM · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable under § 101 because they claim an abstract product catalog using routine computer technology.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “While a Motion to Exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a Sur-Reply, and also is not a mechanism to argue that a Reply contains new arguments or relies on evidence that should have been included in the prima facie case. Here, AvMarkets’ Motion to Exclude contains such improper arguments, and is in the nature of a Sur-Reply. Moreover, as discussed below, AvMarkets’ arguments also are without merit.” slip op. at 5

  • Skill levelSkill level board ownDecided for patent owner

    “We also hold that both Mr. Pollastro and Dr. Freedman are qualified to testify as to the level and knowledge of one of ordinary skill in the art as of 2007, the time of the invention. Specifically, one of ordinary skill in the art would have at least a bachelor’s degree in computer science or equivalent experience in the art of software and hardware development, including the development of Web applications. Ex. 1012 ¶ 3; Ex. 2001 ¶ 4. Mr. Pollastro is qualified to testify as, at the time of the invention, he was a Microsoft Certified Professional who had years of experience building and managing servers for an in-house network. Ex 2001 ¶¶ 2–3. Dr. Freedman is qualified to testify as, at the time of the invention, he possessed a Bachelor’s degree and Master’s degree from the Massachusetts Institute of Technology in Computer Science and Engineering, and a Ph.D. in Computer Science from New York University. Ex. 1012 ¶ 3.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find that the claimed invention merely requires the use of a general-purpose computer. This finding is based on the teachings of the ’430 patent Specification and Dr. Freedman’s testimony. We credit the testimony of Dr. Freedman over that of Mr. Pollastro, as Dr. Freedman’s testimony is consistent with the teachings of the ’430 Specification and provides a thorough, well-reasoned analysis as to why the ’430 claims require nothing more than a general-purpose computer.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “See Dec. on Inst. 4–6. The parties do not dispute these interpretations in their Patent Owner Response and Reply. We adopt the above claim constructions based on our previous analysis, and see no reason to deviate from those constructions for purposes of this decision.” slip op. at 8

  Patent outcomesUS 7,856,430 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Phillips
  Patents in suitUS 7,856,430
• Interthinx, Inc. v. Corelogic Solutions, LLCAll claims unpatentable
  PTAB · Jan 30, 2014 · CBM2012-00007 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1, 6, 9, and 10 are unpatentable under § 101 and anticipated by or obvious over Jensen-1; the Board did not reach the remaining prior-art challenges.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “determinations are pure questions of law, not subject to the clear and convincing evidence standard, is not supported by the Federal Circuit. “[T]he analysis under [35 U.S.C.] § 101, while ultimately a legal determination, is rife with underlying factual issues.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (citing, e.g., CLS Bank Int'l v. Alice Corp., 717 F.3d 1269, 1304–05 (Fed. Cir. 2013) (en banc)) (Chief Judge Rader, and Judges Linn, Moore, and O'Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.)). In denying Petitioner’s motion for judgment as a matter of law under 35 U.S.C. § 101, the District Court stated only that Petitioner failed to show that claims 1 and 10 of the ’201 Patent do not cover a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Ex. 2039, 2. The District Court’s decision applied the clear and convincing evidence standard to the facts underlying its determination of law when denying Petitioner’s motion for summary judgment and motion for judgment as a matter of law that the claims of the ’201 Patent do not recite eligible subject matter. In contrast, the Board reviews the patentability of a claim, rather than its validity, and applies a preponderance of the evidence standard to the underlying factual determinations, e.g., whether the claims contain limitations that narrow or tie them to specific applications of an otherwise abstract concept. 35 U.S.C. § 326(e); Ultramercial, 722 F.3d at 1339. Because the Board applies to the underlying facts an evidentiary standard that is different from the standard applied by the courts, the issue decided by the Board is not identical to the one decided or litigated in the first action and could not have been essential to the final judgment in the first action. See In re Freeman, 30 F.3d, 1459, 1465 (Fed. Cir. 1994). Petitioner did not have an opportunity to litigate the issue in the first action. Id. Therefore, we conclude that Petitioner’s challenge under 35 U.S.C. § 101 is not barred by res judicata or collateral estoppel.” slip op. at 5

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

    “abstract idea, the claim instead is drawn to the abstract idea itself. Ultramercial, 722 F.3d at 1343. Inventor, Dr. Jost considers his invention to be the process for predicting the selling price of a home (a point estimate) using statistical analysis to develop the point estimate, and a co-inventor’s error model, which was also developed using statistical analysis. Ex. 1022, 72-73, 81-82. Dr. Jost’s testimony is consistent with claims 1 and 10, which recite appraising real estate by developing and storing a predictive model and generating a signal indicative of the appraised (predicted) value, and developing and storing an error model and generating a signal indicative of the error range for the appraised (predicted) value. Patent Owner’s expert Dr. Lipscomb characterizes the invention as “a way to determine the sales price of a property that may not have a recent sales transaction” and that predictive models “have been around a long time.” Ex. 1024, 42-43. Determining a price has been found to be abstract as a method of calculating. See, SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012- 00001, 2013 WL 3167735, at *16 (PTAB, June 11 2013). Dr. Jost testified that it was common in statistics to provide a confidence interval around estimates. Ex. 1022, 102. The testimony of Dr. Jost and Dr. Lipscomb indicates that determining an error can be accomplished using the same well known techniques as those applied to the predictive model and that bounding a price estimate by an error range is an abstract concept. Therefore, we find the claimed development of a model to predict a value and an error model to assess the error range around the predicted value, as recited in claims 1 and 10, is an abstract concept. Similarly, claims 6 and 9 recite limitations that bound the geographic area from which data is obtained to develop the model. The limitations in claims 6 and 9 recite the abstract and well known concept of examining the geographic area around the subject property so that relevant samples can be obtained to predict the price of the property.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “54-55. Patent Owner’s argument is similar to its underlying theme that CAMA prior art does not apply to the claimed AVM system. As discussed above, we do not find this argument persuasive because the ultimate objective of each system is to determine a value for each individual parcel. The same sentence in Jensen-1 that refers to a model estimating the sales price of all the properties also refers to adjustments necessary to correct the actual sales prices of selected recent comparable sales for the property characteristic differences between the subject property being valued and each comparable sale, in order to ascertain what each comparable property would have sold for had it been identical to the subject property in a physical descriptive sense on the valuation date. Ex. 1014, p. 194. (Emphasis added). Thus, as recited in claims 1, 6, 9 and 10, Jensen-1 obtains individual property data and recognizes a relationship between individual property data and the training data. Jensen-1 also discloses using the training data to predict the individual property value, as recited in claims 1, 6, 9 and 10. Jensen-1 discusses a model in which the value of a property is based on the land value qualified by a set of adjustments. Ex. 1014, p. 198. The adjustments reflect specific property characteristics. For example, up to a point, the value of a property can be expected to increase with increasing frontage. Id. Thus, specific properties with different frontage are valued differently. Jensen-1 discloses other modeling approaches that determine various per unit rates within a market model using regression analysis, Longini and Carbone’s adaptive estimation, and Carlson’s iterative correlative estimation procedure. Id. at 200. Jensen-1’s discussion of interactive correlative estimation specifically states that, within each iteration, “the model estimate and then the residual error (the actual sale price minus the model estimate) are computed on a per parcel basis.” Ex. 1014, p. 220. Thus, Jensen-1 discloses generating an appraised value responsive to the application of individual property data to the predictive error model. Jensen-1 specifically states that “[o]nce meaningful market models have been developed from the available sales, they can be used to estimate the fair market values of all of the parcels in the jurisdiction whether recently sold or not.” Ex. 2014, p. 224. As discussed above, the reference to all parcels in the jurisdiction does not imply that all the parcels are evaluated the same. Jensen discloses that the market models take into account the various characteristics of each parcel and determine a value for each parcel. Jensen-1 notes that the model estimate, i.e., the fair market value of each parcel as determined by the market models, is an abstract number and its reliability as an approximation of true market value depends on the quality of the individual estimates. Ex. 1014, p. 224. Jensen-1 specifically notes that when an actual sale price falls below the value estimate, it may or may not indicate a problem with the appraisal. Id. Thus, Jensen-1 applies to individual appraisals and attempts to assess an error in the appraisal of each parcel.” slip op. at 13

  Patent outcomesUS 5,361,201 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo
  Patents in suitUS 5,361,201
• SAP America, Inc. v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Jun 11, 2013 · CBM2012-00001 · APJ Michael P Tierney · CBM · Final written decision

  Claims 17 and 26–29 are unpatentable under § 101 because they claim abstract pricing and hierarchy concepts without meaningful limitations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “SAP, as petitioner, bears the ultimate burden of proof that Versata’s claims are unpatentable under § 101. To place SAP’s and Versata’s contentions in context, we begin our analysis by first discussing our construction of the challenged claims. Bancorp Serv., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[I]t will ordinarily be desirable—and often necessary— to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “The parties’ experts disagree as to whether the appended steps are merely routine, conventional steps or reflect meaningful limitations. Dr. Siegel, SAP’s expert, testifies that besides the abstract ideas, the claims merely recite routine, conventional activities. Ex. 1005, ¶ 49.19 In contrast, Dr. Liebich, Versata’s expert, testifies that the SAP R/3 pricing technology available at the time of the invention did not practice the combination of steps (storing, retrieving, sorting, eliminating, and determining) recited in the claims. Ex. 2091, ¶ 62. Dr. Liebich further testifies that he was not aware of any pricing technology in the marketplace at that time that performed the combination of steps. Id. Patent eligibility is distinct from the question of whether or not the claims recite subject matter that was not in the marketplace at the time of the invention. Flook, 437 U.S. at 593 (“[Section 101] does not involve the familiar issues of novelty and obviousness that routinely arise under §§ 102 and 103.”).20 We agree with SAP that Versata and Dr. Liebich fail to establish that the additional “specific” steps that are appended to the abstract idea provide meaningful limitations. The contention that the combination of the abstract idea and the specific steps represents an improvement in marketplace technology does not demonstrate that the additional steps are anything other than conventional, routine steps that are a consequence of implementing the abstract idea. Specifically, the Court in Flook held that a claim for an “improved” method is” slip op. at 31

  • Skill levelOther

    “after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

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

    “We agree with SAP that claim 17 does not itself impose a temporal limitation on when the pricing information is sorted. As SAP contends, Versata’s arguments and expert testimony as to what is “generally” the case do not demonstrate that Versata sought to limit claim 17 in the way that claim 1 expressly was limited. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1314 (Fed. Cir. 2003) (holding that similar language did not require separate and consecutive performance of various steps). Versata contends that the specification demonstrates that sorting must occur after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

  Patent outcomesUS 6,553,350 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Phillips
  Patents in suitUS 6,553,350

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.