• Adb Safegate Sweden AB / Adb Safegate BV et al. v. Honeywell International Inc.All claims unpatentable
  PTAB · Feb 12, 2025 · PGR2023-00053 · APJ James P Calve · PGR · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1, 6–10, and 13–20 are also unpatentable over Berkmo, and claims 1–20 over Berkmo and Richman.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan would have “held at least a degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 14. Having considered the record, we adopt Petitioner’s uncontested level of ordinary skill as articulated above. Petitioner’s description appears to be consistent with the prior art cited and the skill reflected in the Specification of the ’349 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8

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

    “We reject Patent Owner’s interpretation because it limits the claims to an exemplary embodiment that “can, for example, provide the remaining distance and the horizontal deviation with respect to the center line of a path” (Ex. 1001, 10:8–11), and it reads limitations of that embodiment into the claims. Absent a lexicographic definition or a disavowal, such claim interpretations are not permissible. See Phillips, 415 F.3d at 1312, 1316 (claims are given their ordinary, customary meaning in the context of the entire patent and the specification absent a lexicographic definition or a disclaimer or disavowal of claim scope by the inventor); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’”) (citation omitted). Patent Owner has not asserted a definition or a disclaimer to support its interpretation. PO Resp. 16–17. The parties agree that “directional guidance” includes “navigational instructions” and “maneuvering guidance information.” PO Resp. 16 (“the claims make clear that this guidance refers to the navigational instructions to be provided to the pilot guiding the airplane”), 17 (a skilled artisan “reading the challenged claims in light of the specification would understand that ‘directional guidance’ refers to navigational instructions including the horizontal deviation with respect to the center line of a path”); Reply 21 (Berkmo teaches providing “pilot maneuvering guidance information . . . for aiding a pilot of the approaching aircraft towards [a] parking position”); Pet. 54 (Berkmo provides maneuvering guidance information). We interpret “directional guidance” as navigational instructions and maneuvering guidance information. This interpretation is consistent with the claims, which do not recite features of “directional guidance,” much less a horizontal deviation with respect to a center line as Patent Owner asserts.” slip op. at 10

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

    “We agree with Petitioner that the merging recites mental processes because the algorithms described in the specification (Ex. 1001, 8:50–9:10) can be performed as mental processes. Pet. 20–22; Reply 9–11; Ex. 1044 ¶¶ 56–58; Elec. Power Grp., 830 F.3d at 1351–52, 1353–54 (receiving time stamped synchronized phasor measurements at different points of an electric power grid and analyzing and updating the measurements in real time using limits, sensitivities, and rates of change of dynamic stability metrics derived from voltages, power flows, phase angles, damping, and oscillation modes recite mental processes); id. at 1354 (analyzing data by mental steps or mathematical algorithms is an abstract mental process). Merging data by transforming and converting it from one format to another is an abstract idea. See AI Visualize, Inc. v Nuance Commc’ns, Inc., 97 F.4th 1371, 1379 (Fed. Cir. 2024) (“But ‘converting information from one format to another . . . is an abstract idea.’” (citation omitted); creating virtual views in real time by “creating the requested frames of the requested views from the volume visualization dataset” created a virtual view from the existing volume visualization dataset as “abstract data manipulation”); Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023) (the method receives, displays, converts, stores, and transmits digital video data using result-based functional language); FICEP Corp. v. Peddinghaus Corp., No. 2022-1590, 2023 WL 5346043, *3–4 (Fed. Cir. Aug. 21, 2023) (the focus of the advance is on automating the identification, extraction, and transfer of a 3D rendering of an object by a CAD design model including dimensions and intersection parameters without specifying how intersection parameter data was generated or used to create a design model and therefore encompasses a human deriving intersection parameters and adding this data to the design model for extraction); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“[A] process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”) (quoting Parker v Flook, 437 U.S. 584, 595 (1978) (“If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”)); MPEP § 2106.04(a)(2) (mathematical relationships include converting binary coded decimal numerals to pure binary numerals as did the claims in Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972)); see also Tr. 22:24–25:23.” slip op. at 20

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

    “The ordered combination of elements recites no more than when the elements are considered individually and thus does not provide an inventive concept. We disagree with Patent Owner’s argument that “[w]hen considered individually or in combination with the other claimed elements, the reliance on this merged data from a camera and LIDAR/RADAR sensor is itself an inventive concept because it was not conventional and improves the technology of aircraft tracking and guidance.” PO Resp. 49–50. Merging data from two different sensors is part of the abstract idea and therefore cannot provide an inventive concept that makes that abstract idea patent eligible. See, e.g., BSG, 899 F.3d at 1291–92; Guidance at 56. “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG, 899 F.3d at 1290–91. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” Id. at 1290. Even if merging camera and LIDAR/RADAR sensor data is treated as an additional element, the description of the point cloud process and iterated point cloud algorithm indicates Patent Owner did not invent or improve the merging process. Ex. 1001, 8:64–9:40; MPEP § 2106.05(d)I.2. (a generic description indicates that elements are conventional enough that no further description is needed to satisfy § 112(a)); see AI Visualize, 97 F.4th at 1379 (converting data from one format to another is an abstract idea); Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020) (encoding and decoding image data and converting data formats are abstract ideas). Dr. Campbell and Mr. Wilson testify that merging data is known for detecting and tracking objects and navigation. Ex. 1044 ¶¶ 41–51, 56–59; Ex. 1003 ¶¶ 54–65, 81–87; Ex. 1045, 20:6–23:18. A “data fusion process” is not claimed, much less one of any particular features. See PO Resp. 50. Nor do the claims recite a non-conventional arrangement of sensors. See Ex. 1003 ¶¶ 42–67, 83; iLife, 839 F. App’x at 538 (because sensors for measuring static and dynamic acceleration were known, and claim 1 did not recite unconventional means for processing that data, sensing and processing the static and dynamic acceleration information using generic components did not transform the nature of claim 1 into patent eligible subject matter).” slip op. at 39

  Patent outcomesUS 11,538,349 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Phillips · KSR · Graham
  Patents in suitUS 11,538,349
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Jul 18, 2024 · IPR2023-00539 · APJ James P Calve · IPR · Final written decision

  The Board held original claims 1–18 and 20–22 unpatentable over the asserted obviousness grounds, denied the revised motion to amend, and held substitute claims 23–43 ineligible and unpatentable.

  RulingsFinal written decision

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

    “f. Conclusion We determine that Petitioner has established by a preponderance of” slip op. at 27

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

    “2. Motivation to combine a. Petitioner’s contentions Petitioner contends that a skilled artisan would have combined the teachings of LeFebvre and Barone to monitor the condition of railcar wheels and bearings using sensors connected over a wireless mesh network and to analyze collected data to determine if a wheel bearing failure is imminent and issue an alert to the locomotive or central station. Pet. 42–43 (citing Ex. 1007, code (57), Abstr., ¶¶ 45, 86, 201–220; Ex. 1003 ¶¶ 157–162). b. Patent Owner’s arguments Patent Owner does not contest these assertions regarding a motivation to combine LeFebvre and Barone. See generally PO Resp.; Sur-reply. c. Conclusion We determine a skilled artisan would have combined the teachings of” slip op. at 51

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “(4) Conclusion We determine that Patent Owner has demonstrated that the inventors” slip op. at 59

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

    “(4) Conclusion We determine that the above-described lack of clarity in the meaning” slip op. at 72

  Patent outcomesUS 9,981,673 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Enfish · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 9,981,673
• Adb Safegate Sweden AB / Adb Safegate BV et al. v. Honeywell International Inc.Instituted
  PTAB · Mar 11, 2024 · PGR2023-00053 · APJ James P Calve · PGR · Institution

  The Board instituted PGR on claims 1–20 on all asserted grounds because the petition showed it was more likely than not that at least one challenged claim was unpatentable.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(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.”).” slip op. at 2

  • BurdenInstituted

    “review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that 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.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(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.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’349 patent and the prior art of record, and we adopt it for consideration of the issues presently before us.” slip op. at 8

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

    “Petitioner asserts that “[n]o terms require construction to determine that claims 1–20 are invalid under §§ 101, 102, 103.” Pet. 9. At this stage, Patent Owner does not address the construction of any term or phrase. On the present record, we determine that we do not need to construe any claim terms to reach our decision. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 9

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · KSR · Graham
  Patents in suitUS 11,538,349
• Entain Corporate Services Ltd. / MGM Resorts International et al. v. Gan (UK) LimitedAll claims unpatentable
  PTAB · Feb 29, 2024 · IPR2023-00027 · APJ James P Calve · IPR · Final written decision

  Original claims 11–18, 21, and 22 and proposed substitute claims 23–39 were held unpatentable; the revised motion to amend was granted in part and otherwise denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “For reasons discussed below, we grant in-part Patent Owner’s RMTA and cancel original claims 1 and 3–10. We otherwise deny Patent Owner’s RMTA to enter revised substitute claims 23–31, which non-contingently amend original claims 1 and 3–10, and we deny Patent Owner’s RMTA to enter revised substitute claims 32–39, which contingently amend original claims 12–14, 16–18, 21, and 22.” slip op. at 3

  • ExcludeMotion to exclude, deniedOther

    “V. PETITIONER’S MOTION TO STRIKE Because our findings and determinations do not rely on the paragraphs of Dr. Shamos’ declaration that Petitioner’s Motion to Strike seeks to strike, we dismiss Petitioner’s Motion to Strike as moot.” slip op. at 104

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

    “Having reviewed the arguments and evidence, we determine Petitioner has shown, by a preponderance of the evidence, that original claims 11–18, 21, and 22 of the challenged claims of the ’296 patent are unpatentable.” slip op. at 3

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'IneligibleStep1 directed to exceptionUnpatentable

    “We determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are unpatentable. Specifically, we determine that Petitioner has shown, by a preponderance of the evidence, that revised substitute claims 23–39 are not eligible for patenting under 35 U.S.C. §§ 101, and claims 23–39 are unpatentable under prior art asserted under 35 U.S.C. § 103 as discussed below. See Opp. RMTA 4–6, 8–28.” slip op. at 3

  Patent outcomesUS 8,821,296 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · Electric Power
  Patents in suitUS 8,821,296
• E-Loan, Inc. v. Imx, Inc.All claims unpatentable
  PTAB · Feb 16, 2016 · CBM2015-00012 · APJ James P Calve · CBM · Final written decision

  Claims 7, 8, 26, and 27 are unpatentable under § 101 because they claim the abstract idea of loan processing implemented with generic computers.

  RulingsFinal written decision

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

    “I. BACKGROUND Petitioner E-Loan, Inc. (“E-Loan”) filed a Petition (Paper 1, “Pet.”) seeking a covered business method patent review of claims 7, 8, 26, and 27 of U.S. Patent No. 5,995,947 (Ex. 1001, “the ’947 patent”). Patent Owner IMX, Inc. (“IMX”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324. Based on these submissions, we instituted trial as to claims 7, 8, 26, and 27 of the ’947 patent. Paper 7 (“Dec. to Inst.”). IMX filed a Response. Paper 11 (“PO Resp.”). E-Loan then filed a Reply. Paper 12 (“Pet. Reply”).” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “unconstitutional. PO Resp. 14–16. IMX argues that issued patents are no longer under the jurisdiction of the U.S. Patent and Trademark Office (“USPTO”) and may be set aside, annulled, or corrected only by the courts of the United States, not by the USPTO or PTAB. Id. at 14–15. IMX argues that post-grant proceedings to invalidate patents deprive patent owners of due process and invade the province of Article III courts. Id. at 16. IMX’s arguments are not persuasive in view of the recent decision of the United States Court of Appeals for the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091, 2015 WL 7755665 (Fed. Cir. Dec. 2, 2015), which held that Congress can grant authority to the USPTO to correct or cancel issued patents. MCM Portfolio, 2015 WL 7755665, at *5. Congress has done so by creating inter partes reexamination proceedings, ex parte reexamination proceedings, inter partes review, post-grant review, and covered business method patent review. Id. (citations omitted). As stated with regard to the inter partes review provisions at issue in MCM Portfolio, “Supreme Court precedent demonstrates that these statutes, and particularly the inter partes review provisions, do not violate Article III.” Id.” slip op. at 9

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

    “We interpret “can bid on loan applications” in claim 7 and “capable of submitting bids on loan applications” in claim 26 as “can offer to make loans on loan applications that are pending in the database.” This interpretation is consistent with the claims. Claim 1 recites a method for processing loan applications including “maintaining a database of pending loan applications and their statuses at a database server.” Dependent claim 7 recites “said lender can search the database for particular desired types of loans, and can bid on loan applications.” Ex. 1001, 15:26–27 (emphasis added).” slip op. at 10

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

    “E-Loan has established, by a preponderance of evidence, that each of the challenged claims is directed to a fundamental economic or longstanding commercial practice of loan processing. The ’947 patent describes the conventional loan processes as involving large amounts of information that must be collected, compared, evaluated, and disseminated among parties to a transaction so lenders can offer loans at competitive rates. Ex. 1001, 1:9–17. Parties include lenders, borrowers, mortgage brokers, appraisers, regulatory agencies, and mortgage insurance companies. Id. at 1:17–21. Conventional processes required parties to collect nearly all loan application information by hand, transmit it on paper applications, and compare loan information by hand, according to each party’s role of loan evaluation, property appraisal, financial market evaluation, and setting lending rates with rate sheets. Id. at 1:22–27. Thus, parties to a conventional loan transaction monitor loan status and search and modify information in loan applications and loan processes. Claim 1 automates this known method and system of processing loan applications by maintaining a database of pending loan applications and their statuses at a database server where each party to a loan can search and modify that database consistent with their role in the transaction by requests to the server from client devices. Claim 19 recites a system for processing loan applications with a database of pending loan applications including status information and a transaction server for responding to requests of parties to the loan applications to search and modify the database consistent with their roles in the transaction. Whereas conventional loan processing required human beings to collect, compare, evaluate, and disseminate loan applications and loan information by hand, claims 1 and 19 recite the use of a database and transaction server to maintain loan applications so parties can search and modify the loan applications using those computer components instead of using pen and paper to perform these processes.” slip op. at 16

  Patent outcomesUS 5,995,947 unpatentable
  Claim construction§ 101 eligibilitycites Alice
  Patents in suitUS 5,995,947
• Ebay, Inc. v. Paid, Inc.All claims unpatentable
  PTAB · Sep 16, 2015 · CBM2014-00128 · APJ Kristina M Kalan · CBM · Final written decision

  Claims 1–25 are unpatentable under § 101 as directed to an abstract idea and under § 103 over the asserted prior-art combinations.

  RulingsFinal written decision

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

    “We are not persuaded that Patent Owner’s proposed construction is correct. Under the broadest reasonable interpretation standard, the “claims should always be read in light of the specification and teachings in the underlying patent.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015) (citation and internal quotation marks omitted). Instead, we interpret the term “shipping rate” to mean “the overall or total cost of sending an auction item to a buyer.” This interpretation is consistent with the ’150 patent specification’s disclosure of shipping calculator system 1000 and its rate engine 1024 for calculating shipping rates based on various inputs, as illustrated in Figure 10, reproduced below. Ex. 1001, col. 6, ll. 38–42.” slip op. at 9

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

    “Despite Patent Owner’s arguments to the contrary, we see little difference between determining shipping rates and tax rates for auctioned items and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.3 As established by the record, both 2 Bilski v. Kappos, 561 U.S. 593 (2010). 3 In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. at 2356. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski, the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Id. (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp., and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 134 S. Ct. at 2357. conventional auctions and shipping rate calculations existed long before the Internet. See, e.g., Rotman Decl. ¶¶ 4–8; Greenspun Decl. ¶¶ 31–37; Hearing Tr. 56:17–21. We conclude, therefore, that Petitioner has demonstrated that the ʼ150 patent claims, like the claims in Bilski and Alice, are directed to an abstract idea, namely, determining shipping rates for an online auction item.” slip op. at 17

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

    “We are not persuaded by Patent Owner’s argument for patentability under § 101. First, the claims of the ʼ150 patent do not reflect the asserted “inventive concept” identified by Patent Owner, namely, the ability to calculate shipping rates and tax rates in real time. Patent Owner asserts that the reference in the claims to an “online auction” accomplishes this. Hearing Tr. 62:18–20. But as Petitioner points out, the claims do not recite any form of real-time calculations. The claims simply recite steps that were routinely done manually before the filing date of the patent. Hearing Tr. 7:16–22; Rotman Dep. 127:19–128:5. More fundamentally, however, simply adding a computer limitation to claims covering an abstract concept, without more, is insufficient to render the claim patentable under § 101, even if the use of a computer enables faster operation. Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Likewise, “the use of the Internet is not sufficient to save an otherwise abstract claims from ineligibility under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). For these reasons, Patent Owner’s argument based on meeting the asserted need for speed and other requirements of online auctions fails.” slip op. at 19

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

    “We are persuaded by Petitioner’s arguments that it would have been obvious to combine Van Zandt and Illinois Sales Tax. Pet. 52–54. We are convinced by Petitioner’s arguments, supported by the testimony of Dr. Greenspun,5 that one of ordinary skill in the would have “readily appreciated the combinability of the sales tax calculation flow chart in Illinois Sales Tax to perform accurate tax calculations for the state of Illinois or another jurisdiction,” including the tax and duty calculations set forth in Van Zandt. Pet. 53 (citing Greenspun Decl. ¶¶ 42, 43, 63). We do not credit Patent Owner’s argument limiting Van Zandt’s teachings to international shipping. Van Zandt provides a comprehensive logistics services system and method, including providing landed cost 5 Dr. Greenspun holds a Ph.D. in Electrical Engineering and Computer Science from MIT. He has authored five computer science textbooks. He has taught at MIT and has over 20 years of experience in computer software engineering. Greenspun Decl. ¶¶ 3–16. We determine him to be an expert in the field relevant to this patent and credit his testimony. quoting (62), to integrate logistics vendors “across any industry, at any time, no matter what vendor carrier . . . or mode of transportation is to be used and no matter what country the shipment is being handled in or delivered to.” Ex. 1011, Abstract (emphasis added). More specifically, Van Zandt states that its system can calculate “any shipment duties and taxes.” Id. at 22:18 (emphasis added); see also id. at 32:11–17. Nothing in Van Zandt discredits or disallows the calculation of domestic taxes as a component of its calculation of “any shipment duties and taxes.” We credit Dr. Greenspun’s interpretation of the Van Zandt system as” slip op. at 26

  Patent outcomesUS 8,635,150 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR
  Patents in suitUS 8,635,150
• Ebay, Inc. v. Paid, Inc.All claims unpatentable
  PTAB · Sep 16, 2015 · CBM2014-00126 · APJ Thomas L Giannetti · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 as directed to an abstract idea without an inventive concept, and under § 103 over the asserted combinations.

  RulingsFinal written decision

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

    “Despite Patent Owner’s arguments to the contrary, we see little difference between determining shipping rates and tax rates for auctioned items and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.3 As established by the record, both 2 Bilski v. Kappos, 561 U.S. 593 (2010). 3 In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. at 2356. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski, the concept of conventional auctions and shipping rate calculations existed long before the Internet. See, e.g., Rotman Decl. ¶¶ 4–8; Greenspun Decl. ¶¶ 31–37; Hearing Tr. 56:17–21. We conclude, therefore, that Petitioner has demonstrated that the ʼ642 patent claims, like the claims in Bilski and Alice, are directed to an abstract idea, namely, determining shipping rates for online sales.” slip op. at 17

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

    “We are not persuaded by Patent Owner’s argument for patentability under § 101. First, the claims of the ʼ642 patent do not reflect the asserted “inventive concept” identified by Patent Owner, namely, the ability to calculate shipping rates and tax rates in real time. Patent Owner asserts that the reference in the claims to an “online auction” accomplishes this. Hearing Tr. 62:18–20. But as Petitioner points out, the claims do not recite any form of real-time calculations. The claims simply recite steps that were routinely done manually before the filing date of the patent. Hearing Tr. 7:16–22; Rotman Dep. 127:19–128:5. The claims, moreover, do not even refer specifically to online auctions. More fundamentally, however, simply adding a computer limitation to claims covering an abstract concept, without more, is insufficient to render the claim patentable under § 101, even if the use of a computer enables faster operation. Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Likewise, “the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). For these reasons, Patent Owner’s argument based on meeting the asserted need for speed and other requirements of online auctions fails.” slip op. at 20

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

    “correct. Under the broadest reasonable interpretation standard, the “claims should always be read in light of the specification and teachings in the underlying patent.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015) (citation and internal quotation marks omitted). Instead, we interpret the term “shipping rate” to mean “the overall or total cost of sending an auction item to a buyer.” This interpretation is consistent with the patent specification’s disclosure of shipping calculator system 1000 and its rate engine 1024 for calculating shipping rates based on various inputs, as illustrated in Figure 10, reproduced below. Ex. 1001, col. 6, ll. 38–42. Figure 10 shows a computer-based system with a shipping calculator. The ’642 patent discloses that rate engine 1024 may include modules for calculating factors that contribute to the overall shipping rate to include shipping rate engine 1028, tax rate engine 1030, insurance rate engine 1032, packaging algorithm engine 1033, and fee-based rate engine 1034. Id. at col. 7, ll. 45–50. Shipping rate engine 1028 calculates a basic shipping rate for an item based on the distance between seller and buyer locations, the weight of the item, the weight of any packaging, and method of shipment. Id. at col. 8, ll. 34–42. Tax rate engine 1030 determines what taxes may apply. Id. at col. 8, ll. 43–44. Insurance rate engine 1032 calculates a cost of insurance to be added to the overall shipping rate based on buyer and seller preferences. Id. at col. 8, ll. 51–55. Packaging is an important factor in shipping cost, so packaging algorithm engine 1033 determines appropriate packaging based on seller preferences and the size, weight, or shape of the item and applies a factor to the shipping rate. Id. at col. 8, ll. 6–14. Fee-based engine 1034 calculates rates based on seller inputs such as rates charged for shipping and handling above the rates from common carriers and may include a flat rate for shipping, or a flat rate per item shipped. Id. at col. 8, ll. 15–29. Rate engine 1024 integrates inputs from the calculations of these other modules and engines, and applies whatever discounts or other factors are required if the components are not simply added, “to obtain a shipping rate based on the various inputs.” Id. at col. 8, ll. 56–60 (emphasis added). The ’642 patent also discloses that the shipping rate may be a flat rate from feebased engine 1034, a rate calculated from the other engines, or a rate from a combination of different types of calculations. Id. at col. 8, ll. 60–63. Thus, the patent discloses that rate engine 1000 calculates a “shipping rate” that includes not only a basic transportation cost but also many other costs that contribute to the total cost to send an item to a buyer.” slip op. at 9

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

    “the combinability of the sales tax calculation flow chart in Illinois Sales Tax to perform accurate tax calculations for the state of Illinois or another jurisdiction,” including the tax and duty calculations set forth in Van Zandt. Pet. 55 (citing Greenspun Decl. ¶ 56). We do not credit Patent Owner’s argument limiting Van Zandt’s teachings to international shipping. Van Zandt provides a comprehensive logistics services system and method, including providing landed cost quoting (62), to integrate logistics vendors “across any industry, at any time, no matter what vendor carrier [] or mode of transportation is to be used and no matter what country the shipment is being handled in or delivered to.” Ex. 1011, Abstract (emphasis added). More specifically, Van Zandt states that its system can calculate “any shipment duties and taxes.” Id. at 22:18 (emphasis added); see also id. at 32:11–17. Nothing in Van Zandt discredits or disallows the calculation of domestic taxes as a component of its calculation of “any shipment duties and taxes.” We credit Dr. Greenspun’s interpretation of the Van Zandt system as being “capable of handling the simpler task of calculating domestic taxes.” Greenspun Decl. ¶ 54. We further credit Dr. Greenspun’s testimony that one of ordinary skill in the art would have been motivated to combine Van Zandt with other references “whenever international shipping was potentially required,” and that references such as Illinois Sales Tax would allow one of ordinary skill in the art to figure sales tax on domestic sales. Id. at ¶ 56. The motivation to combine references can come from many sources, engineering. Greenspun Decl. ¶¶ 3–16. We determine him to be an expert in the field relevant to this patent and credit his testimony. including the nature of the problem to be solved. ABT Sys., LLC v. Emerson Elec. Co., Nos. 2014-1618, 2014-1700, 2015 WL 4924160, at *9 (Fed. Cir. Aug. 19, 2015) (citing Ruiz v. A.B. Chance, 357 F.3d 1270, 1276 (Fed. Cir. 2004). We determine, therefore, that Petitioner has presented sufficiently articulated and persuasive reasoning for combining the teachings of Van Zandt and Illinois Sales Tax that is supported by rational underpinnings. KSR, 550 U.S. at 418.” slip op. at 27

  Patent outcomesUS 8,521,642 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · Graham
  Patents in suitUS 8,521,642
• Ebay, Inc. v. Paid, Inc.All claims unpatentable
  PTAB · Sep 16, 2015 · CBM2014-00125 · APJ Thomas L Giannetti · CBM · Final written decision

  Claims 1–24 are unpatentable under §§ 101 and 103(a), as directed to an abstract idea without an inventive concept and obvious over the asserted prior-art combinations.

  RulingsFinal written decision

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

    “patent does not claim an abstract idea simply because it is directed to online auctions. PO Resp. 22; Hearing Tr. 56:10–12. As the Federal Circuit recently reminded us, “[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment such as the Internet.” Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1366 (Fed. Cir. 2015) (citations omitted). We are, therefore, not convinced by Patent Owner’s argument that the claims are not abstract because they are limited to a specific application.” slip op. at 16

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

    “under § 101. First, the claims of the ʼ357 patent do not reflect the asserted “inventive concept” identified by Patent Owner, namely, the ability to calculate shipping rates and tax rates in real time. Patent Owner asserts that the reference in the claims to an “online auction” accomplishes this. Hearing Tr. 62:18–20. But as Petitioner points out, the claims do not recite any form of real-time calculations. The claims simply recite steps that were routinely done manually before the filing date of the patent. Hearing Tr. 7:16–22; Rotman Dep. 127:19–128:5. More fundamentally, however, simply adding a computer limitation to claims covering an abstract concept, without more, is insufficient to render the claim patentable under § 101, even if the use of a computer enables faster operation. Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations. SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Likewise, “the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). For these reasons, Patent Owner’s argument based on meeting the asserted need for speed and other requirements of online auctions fails.” slip op. at 19

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

    “We are persuaded by Petitioner’s arguments that it would have been obvious to combine Van Zandt and Illinois Sales Tax. Pet. 58–59. We are convinced by Petitioner’s arguments, supported by the testimony of Dr. Greenspun,5 that one of ordinary skill in the would have “readily appreciated the combinability of the sales tax calculation flow chart in Illinois Sales Tax to perform accurate tax calculations for the state of Illinois or another jurisdiction,” including the tax and duty calculations set forth in Van Zandt. Pet. 58 (citing Greenspun Decl. ¶ 56). We do not credit Patent Owner’s argument limiting Van Zandt’s teachings to international shipping. Van Zandt provides a comprehensive logistics services system and method, including providing landed cost quoting (62), to integrate logistics vendors “across any industry, at any time, 5 Dr. Greenspun holds a Ph.D. in Electrical Engineering and Computer Science from MIT. He has authored five computer science textbooks. He has taught at MIT and has over 20 years of experience in computer software engineering. Greenspun Decl. ¶¶ 3–16. We determine him to be an expert in the field relevant to this patent and credit his testimony. no matter what vendor carrier [] or mode of transportation is to be used and no matter what country the shipment is being handled in or delivered to.” Ex. 1011, Abstract (emphasis added). More specifically, Van Zandt states that its system can calculate “any shipment duties and taxes.” Id. at 22:18 (emphasis added); see also id. at 32:11–17. Nothing in Van Zandt discredits or disallows the calculation of domestic taxes as a component of its calculation of “any shipment duties and taxes.” We credit Dr. Greenspun’s interpretation of the Van Zandt system as” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “reason to combine the references because they “teach away.” Hearing Tr. 94:13–14. But in response to questioning by the panel, Patent Owner’s counsel agreed that Hosey does not disparage the type of calculation being done in PriceGrabber.com, taking instead the position that the two are not “necessarily compatible.” Hearing Tr. 94:19–95:14. We are not persuaded by Patent Owner’s teaching away argument. Nowhere does Patent Owner demonstrate that Hosey criticizes, discredits, or otherwise discourages the use of its listing or Details page with a shipping interface. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art’s disclosure did not criticize, discredit, or otherwise discourage the claimed solution and therefore did not teach away). We do not agree, either, that the references are not “compatible.” See supra.” slip op. at 33

  Patent outcomesUS 8,352,357 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · Graham
  Patents in suitUS 8,352,357
• Ebay, Inc. v. Paid, Inc.All claims unpatentable
  PTAB · Sep 16, 2015 · CBM2014-00127 · APJ James P Calve · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 as directed to an abstract idea without an inventive concept, and under the asserted § 103 grounds.

  RulingsFinal written decision

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

    “Under the broadest reasonable interpretation standard, the “claims should always be read in light of the specification and the teachings of the underlying patent.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015). We interpret the term “shipping rate” to mean “the overall or total cost of sending an auction item to a buyer.” This interpretation is consistent with the ’237 patent specification’s disclosure of shipping calculator system 1000 and its rate engine 1024 for calculating shipping rates as shown in Figure 10, reproduced below. Ex. 1001, 6:29–33. Figure 10 shows a computer-based system with a shipping calculator. The ’237 patent discloses that rate engine 1024 includes modules that calculate factors contributing to the “overall shipping rate” like shipping rate engine 1028, tax rate engine 1030, insurance rate engine 1032, packaging algorithm engine 1033, and fee-based rate engine 1034. Id. at 7:36–41. Shipping rate engine 1028 calculates a basic shipping rate for an item based on the distance between seller and buyer locations, the weight of the item, the weight of any packaging, and method of shipment. Id. at 8:25–33. Tax rate engine 1030 determines applicable taxes. Id. at 8:34–35. Insurance rate engine 1032 calculates a cost of insurance that is added to the shipping rate based on buyer and seller preferences. Id. at 8:42–46. Because packaging is an important factor in shipping cost, packaging algorithm engine 1033 determines the packaging based on seller preferences and the size, weight, or shape of the item and applies a factor to the shipping rate. Id. at 7:55–8:5. Fee-based engine 1034 calculates rates based on seller inputs such as rates charged for shipping and handling above the rates from common carriers and may include a flat rate for shipping, or per item shipped. Id. at 8:6–20. Rate engine 1024 integrates inputs from the calculations of these other modules and engines, and applies whatever discounts or other factors are required if the components are not simply added, “to obtain a shipping rate based on the various inputs.” Id. at 8:47–51 (emphasis added). The ’237 patent also discloses that the shipping rate may be a flat rate from fee-based engine 1034, a rate calculated from the other engines, or a rate from a combination of different types of calculations. Id. at 8:51–54. Thus, the ’237 patent discloses rate engine 1000 calculating a “shipping rate” that includes not only a basic transportation cost but also many other costs that contribute to the total cost to send an item to a buyer.” slip op. at 9

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

    “We are not persuaded by Patent Owner’s argument that the ʼ237 patent does not claim an abstract idea merely because it is directed to online auctions. PO Resp. 23; Hearing Tr. 56:10–12. As the Federal Circuit recently reminded us, “[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment such as the Internet.” Intellectual Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1366 (Fed. Cir. 2015) (citations omitted). We are, therefore, not convinced by Patent Owner’s argument that the claims are not abstract because they are limited to a specific application. Patent Owner further contends that, unlike the claims in Bilski3 and Alice, the ʼ237 patent’s claims “had never before been achieved.” PO Resp. 23–24. As evidence of this, Patent Owner points to the fact that Petitioner’s prior art challenge relies on obviousness and not anticipation. Id. at 24, n.2 (“eBay has not been able to find or assert against the claims a single anticipatory reference.”). This argument is unavailing. As the Supreme Court observed in Diamond v. Diehr, 450 U.S. 175, 190 (1981), “[t]he 3 Bilski v. Kappos, 561 U.S. 593 (2010). question therefore of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter.” Despite Patent Owner’s arguments to the contrary, we see little difference between determining shipping rates and tax rates for auctioned items and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.4 As established by the record, both conventional auctions and shipping rate calculations existed long before the Internet. See, e.g., Rotman Decl. ¶¶ 4–8; Greenspun Decl. ¶¶ 31–40; Hearing Tr. 56:17–21. We conclude, therefore, that Petitioner has demonstrated that the ʼ237 patent claims, like the claims in Bilski and Alice, are directed to an abstract idea, namely, determining shipping rates for online auction sales.” slip op. at 16

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

    “We are not persuaded by Patent Owner’s argument for patentability under § 101. First, the claims of the ʼ237 patent do not reflect the asserted “inventive concept” identified by Patent Owner, namely, the ability to calculate shipping rates and tax rates in real time. Patent Owner asserts that the reference in the claims to an “online auction” accomplishes this. Hearing Tr. 62:18–20. But, as Petitioner points out, the claims do not recite any form of real-time calculations. The claims simply recite steps that were done manually before the filing date of the patent. Hearing Tr. 7:16–22; Rotman Dep. 127:19–128:5; Rotman Decl. ¶¶ 21–25, 46. The claims of the ʼ237 patent specify that a shipping rate be calculated “at any time.” Patent Owner relies on this as evidence that the claims embody the asserted inventive concept of providing speedy shipping rate calculations. Hearing Tr. 69:9–22. We are not convinced by this argument. As Patent Owner’s counsel agreed, the language does not indicate how long the calculation takes, only when it may occur. Id. at 70:20–71:5. More fundamentally, however, simply adding a computer limitation to claims covering an abstract concept, without more, is insufficient to render the claim patentable under § 101, even if the use of a computer enables faster operation. Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” slip op. at 19

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

    “First, we are persuaded by Petitioner’s arguments, as supported by Dr. Greenspun’s6 testimony, that it would have been obvious to modify Van Zandt according to techniques of iShip.com because both references address the provision of a shipping rate calculator for online auctions so buyers can obtain a shipping estimate at any point during an online auction. Pet. 29–31. We are persuaded by Petitioner’s arguments and Dr. Greenspun’s testimony that a skilled artisan would have been motivated to embed a link to shipping 6 Dr. Greenspun holds a Ph.D. in Electrical Engineering and Computer Science from MIT. He has authored five computer science textbooks. He has taught at MIT and has over 20 years of experience in computer software engineering. Greenspun Decl. ¶¶ 3–16. We determine that Dr. Greenspun is an expert in the field relevant to this patent and credit his testimony. information in Van Zandt’s interfaces, as taught by iShip.com’s unique URL that a seller pastes into item descriptions, to increase Van Zandt’s flexibility and provide multiple shipping options. Pet. 29–31; Pet. Reply 5; Greenspun Decl. ¶ 56 (iShip.com allows seller to add a form to another’s web site); Ex. 1020 ¶ 10c (user interfaces are freely borrowed from different websites).” slip op. at 25

  Patent outcomesUS 7,930,237 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Bilski · KSR · Graham
  Patents in suitUS 7,930,237

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.