• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13

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

    “Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30

  Patent outcomesUS 8,825,887 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips
  Patents in suitUS 8,825,887
• Google LLC v. Videoshare LLCInstitution denied
  PTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution

  The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.

  RulingsInstitution decision

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

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • BurdenDecided for patent owner

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

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

    “E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 10,362,341
• Emerson Electric Co. v. Sipco, LLCAll claims unpatentable
  PTAB · Jan 16, 2018 · CBM2016-00095 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1, 7, 9, 16, and 17 are unpatentable under § 101 and § 103(a) over Tymes; unpatentability under § 112, ¶ 1 was not shown.

  RulingsFinal written decision

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

    “Upon consideration of the parties’ contentions, we are not persuaded by Patent Owner’s arguments, as they conflate “power” with “transmission range”—the claim term recites “low-power,” not “low-transmission range.” We agree with Petitioner that Patent Owner’s proposed construction would import improperly a limitation into the claims, and we credit Mr. James T. Geier’s testimony (Ex. 1038 ¶¶ 34−39) as it consistent with the other evidence of record before us. We address below each of Patent Owner’s arguments in turn. First, Patent Owner argues that “the claim language itself indicates that the claimed low-power transceiver transmits low-power signals,” citing the language of claim 2, “wherein the low-power signal comprises a logical IP address.” PO Resp. 12 (citing Ex. 1001, 14:60–61). However, “the low-power signal” does not necessarily require a transceiver to transmit signals having a limited transmission range. Patent Owner does not explain meaningfully, or provide persuasive evidence to show, how a “low-power signal” is necessarily related to the transmission range of a transceiver. Consistent with the plain and ordinary meaning of the term, “a low-power transceiver” refers to a transceiver that consumes less power, e.g., by transmitting and receiving low power signals. Ex. 1038 ¶¶ 34−39.” slip op. at 23

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

    “However, Patent Owner’s arguments are not commensurate in scope with the claims. The purported problems that arose with the development of networks hosting wireless device—unlawful interruption of that data, interference, and contention—are addressed by using an extremely low-power transmitter. Ex. 1001, 5:65−6:11. As discussed above, the challenged claims recite a generic “low-power transceiver,” not an extremely low-power transmitter. Additionally, the alleged problem of transforming data to a different protocol is addressed by an unclaimed feature, as the ’842 patent itself recognizes that the invention is not necessarily limited to certain protocol or requires a protocol conversion. Id. at 13:55−14:5. Moreover, the challenged claims do not requires a protocol conversion or recite a device for converting data from one protocol to a different protocol. Rather, they recite generically a “network of addressable devices.” Patent Owner’s argument that the claims are “directed to an improvement in communication technology between remote devices that are accessible by wireless communication and a central location via a circuit interface” is unavailing. Significantly, the claims are not directed to a new type of transceiver, interface circuit, or controller to establish a communication link between a remote device and the central location. Instead, the claims are directed to transmitting data between locations using conventional or generic computer components. The challenged claims essentially recite a device for communicating information that comprises: (1) a low-power transceiver for transmitting or receiving data; (2) an interface circuit for communicating with a central 33 location; and (3) a controller for establishing a communication link. The Specification confirms that these features were known in the art. Ex. 1001, 5:23–25, 6:62–64 (“As is well known by those skilled in the art, a variety of transducers can perform this functionality adequately.”), 10:13–15 (“[T]he controller 256 may be a general purpose microprocessor or microcontroller.”), 10:21–23 (“The interface 258 within the transceiver 270 is designed to interface with this typical/standard telephone circuitry 263.”), 10:23–26 (“The specific implementation of the circuitry of [interface] 258 will be appreciated by persons skilled in the art and need not be described in detail herein.”). Indeed, the FCC Bulletin also confirms that low-power wireless transmitters were “used virtually everywhere,” noting that “[c]ordless phones, baby monitors, garage door openers, wireless home security systems, keyless automobile entry systems and hundreds of other types of common electronic equipment rely on such transmitters to function.” Ex. 2001, 1. Moreover, the ’842 patent itself recognizes that the communication link between the remote device and central location can be established by initiating a phone call over a telephone line that is part of the public-switched telephone network. Ex. 1001, 2:34−38. There is no dispute that such a communication link was known in the art. Id. at 10:21−26.” slip op. at 33

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

    “38 For the foregoing reasons, we are persuaded that Petitioner has demonstrated sufficiently that claims 1, 7, 9, 16, and 17 of the ’842 patent are directed to a patent-ineligible abstract idea. Whether the challenged claims lack a patent-eligible inventive concept Turning to the second step in the analysis, we look for additional elements that can “transform the nature of the claim” into a patent-eligible application of an abstract idea. That is, we determine whether the claims include an “inventive concept,” i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2357. The additional elements must be more than “well-understood, routine, conventional activity.” Mayo, 768 S. Ct. at 1297−98. Here, Petitioner argues that claims 1, 7, 9, 16, and 17 are unpatentable because they are “directed only to an abstract idea with nothing more added than generic computing components and ‘well-understood, routine, conventional activity’ previously performed in the field (both individually and as an ordered combination in the claims).” Pet. 23–24 (citing Mayo, 132 S. Ct. at 1294). According to Petitioner, the challenged claims “recite the concept of establishing a communication route between two points ‘as performed by a generic computer,’ without disclosing any ‘novel or unusual’ improvement to ‘the functioning of the computer itself’ or any ‘advance in computer technology that makes the performance of [routine] functions more effective.” Id. at 24 (citing Alice, 134 S. Ct. at 2358–60). 39” slip op. at 38

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

    “As Petitioner notes (Pet. 66−68; Ex. 1003 ¶¶ 353−366), Tymes discloses “an improved, low-cost, low-power, data communication network in which a number of remote terminal units are able to send packets of data to a central station, and . . . to receive acknowledge signals and data from the central station.” Ex. 1005, 2:36−56 (emphasis added). Tymes describes that the central station includes a number of base stations connected to a central computer. Id. at 3:21−25. As shown in Figure 1, the network includes base stations 12−14, each of which “is coupled by an RF link to a number of remote units.” Id. at 4:61−5:44. The RF link is used for sending “data packets from the remote terminals to the base stations and return.” Id. at 3:48−51 (emphasis added), 6:66–7:2. In fact, Tymes teaches that the “advantage of this type of RF data link is that a band may be used which does not require site licensing by the F.C.C.” Id. at 3:55−59. Contrary to Patent Owner’s assertion that “low-power” refers to only the remote terminals, Tymes describes a low-power network that includes base stations. As Petitioner also notes (Pet. 66–67, n.38), Tymes teaches an “indoor” limited range network and an RF data link “usable without site licensing under F.C.C. regulations, so that the expense and delays incident to such licensing are eliminated or minimized.” Ex. 1005, 2:36–56. Significantly, Tymes discloses that the optimum frequency is in the 902−928 MHz range 54 for the RF transceivers in the base stations. Id. at 6:66–7:2, 13:58–61, 18:1−3. The FCC limits the power for unlicensed transmitters, and the power limit under the FCC regulations is less than or equal to one watt for the disclosed 902–928 MHz range. Ex. 1010, 217; Ex. 1017, 7:9–11, 31–34. Mr. Geier testifies that an ordinarily skilled artisan “would have understood that an indoor communications network as taught by Tymes requires only a limited range (e.g., 1 mile or less (the length of a storage facility)), so that high-powered transceivers would be unnecessary and disfavored,” and that such an artisan “would have considered a transmission of 1 Watt to be a ‘low-power’ transmission, with a limited range of approximately 1 mile.” Ex. 1003 ¶¶ 358−359. Mr. Geier also testifies that such an artisan would have had a reason to use low-power transceivers in the base stations so that they are usable indoors without licensing under the FCC regulations. Id. We credit Mr. Geier’s testimony as it is consistent with Tymes’ teachings and other evidence. Ex. 1005, 2:36–56, 6:66–7:2, 13:58−61, 18:1−3, Figs. 1, 3, 10; Ex. 1010, 21; Ex. 1017, 7:9−11, 29−34 (explaining that “unlicensed systems using conventional modulation techniques attain ranges on the order of 500−1000 feet” (emphasis added)).” slip op. at 54

  Patent outcomesUS 8,908,842 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Phillips · KSR · Graham
  Patents in suitUS 8,908,842
• Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Aug 18, 2017 · CBM2016-00039 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–22 are unpatentable under § 101 and § 103 over Friesen, Jones, and Kirwin; Patent Owner’s motion to amend with substitute claims 23–44 is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ORDINARY SKILL IN THE ART Petitioner contends that one of ordinary skill in the art includes someone who, through education or practical experience, possesses the equivalent of a bachelor’s degree in computer science, information science, or a related field and has at least two years of work experience developing or implementing user interfaces for electronic trading systems. Pet. 13 (citing Ex. 1002, Declaration of Bernard S. Donefer (“Donefer Decl.”) ¶ 45). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in computer science or equivalent experience, and at least three years of experience in designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading. PO Resp. 13 (citing Ex. 2027, Declaration of Nazaar Molokhia in Support of Patent Owner Response (“Molokhia Resp. Decl.”) ¶¶ 14–15). Notwithstanding their one year difference in experience level, we find the parties’ assessments of the level of ordinary skill not to be materially different.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “At his level of professional responsibility Mr. Donefer works on system architecture to accommodate trader needs—he acknowledges that he does not code programs and in the college courses he teaches Mr. Donefer does not teach programming. Donefer Tr., 30:10–33:18, 36:19–22. Nevertheless, Mr. Donefer takes courses in programming languages, such as C++, R and Python, to keep up with languages that his students are using. Id. at 54:4–56:5. The college level courses Mr. Donefer teaches in IT in financial markets and financial information systems address order management systems, and Mr. Donefer occasionally invites order management vendors to demonstrate such systems to students. Id. at 35:10– 36:13. Mr. Donefer teaches prospective business analysts about business processes and business problems in order to design solutions, focusing on turning requirements into documentation a coder can use to implement a business process, rather than on coding itself. See id. at 38:10–41:8 There is no requirement imposed by the Federal Rules of Evidence that an expert’s qualifications perfectly match the field of the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The patent claims before us concern a method and an apparatus for providing an interactive graphical representation of a market. Independent method claim 1 recites displaying a graph and a trading dialog box on a display of a workstation. Dependent claims recite the elements of the displayed trading dialog box and user selection options. Independent apparatus claim 9 recites a processor programmed to cause a computer to display a graph and trading dialog box. In the independent and dependent apparatus claims, the programmed processor carries out steps similar to those recited in the method claims. None of the claims in this proceeding recites technical details that require an extensive knowledge of programming or computer design. Mr. Donefer’s background in electronic trading system architectures and supervising the development of graphical user interfaces, along with his many years of experience, are sufficient for him to render opinions as to the subject matter of the claims before us. In addition, the Board can has accord proper weight to the testimony of each party’s expert witness. Therefore, in the context of this covered business method patent review, we are persuaded that we can properly weigh Mr. Donefer’s testimony.” slip op. at 9

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

    “Trading Dialog Box We construed “trading dialog box” to mean “a display on a display terminal through which the user can view values for trading and selected information.” Id. at 13. Patent Owner proposes that we construe this term to mean “an interface that appears as an overlay and enables exchange of input and output between a user and a computer.” PO Resp. 24–29. Petitioner contends that Patent Owner’s construction does present a material dispute, noting that Patent Owner’s testifying expert, Mr. Molokhia states that a popup window, such as that Friesen is an example of an overlay. Pet. Reply 4 (citing Ex. 1024, Transcript of Deposition of Nazaar Molokhia (“Molokhia Tr.”) 54:19–24). Upon review, we agree with Patent Owner that the specification of the ’611 Patent refers to the trading dialog box as an overlay and that the dialog box is used for exchanging information with the computer. PO Resp. 27–28. For purposes of this Decision, we apply Patent Owner’s proposed construction and construe “trading dialog box” to mean “an interface that appears as overlay and enables exchange of input and output between a user and a computer.”” slip op. at 5

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

    “Workstation Neither party previously sought a construction of “workstation” and in our Decision to Institute, we accorded this term its ordinary meaning. Patent Owner now proposes that we construe “workstation” to mean “a display terminal.” PO Resp. 29–37. Our analysis of the construction of “trading dialog box” in our Decision to Institute we noted that claims 1 and 12 recite that the display is displayed on “the workstation,” a term for which there is no antecedent basis. Dec. to Inst. 13. Method claim 1 recites “displaying a trading dialog box on the display of the workstation.” Patent Owner’s proposed construction effectively amend the claim by substituting “display terminal,” which has an antecedent basis for the term “workstation,” which has no antecedent basis. However, the antecedent in the claim recites “a display terminal of an electronic trading system,” not a display terminal of a workstation. Nevertheless, according to Patent Owner the meaning of the claim would be understood by persons of ordinary skill and Petitioner did not argue that the claim was indefinite under 35 U.S.C. § 112. PO Resp. 31. Patent Owner correctly points out that indefiniteness under 35 U.S.C. § 112 was not presented as an issue in this proceeding and is not an issue we considered. Neither our Decision to Institute nor this Final Decision is based on indefiniteness. In view of Patent Owner’s positon that meaning of the claim would be understood by persons of ordinary skill, that Petitioner has not argued indefiniteness, and that none of our decisions in this covered business method patent review are based on indefiniteness, we need not further construe the term “workstation.”” slip op. at 6

  Patent outcomesUS 8,380,611 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Enfish · Electric Power · KSR · Graham
  Patents in suitUS 8,380,611
• Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Aug 18, 2017 · CBM2016-00038 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–42 are unpatentable under § 101 as patent-ineligible and under § 103 as obvious over Friesen, Jones, and Kirwin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the term “interactive graphical representation of a market” in the preamble is not limiting. Pet. Reply. 4–5. The organization of claims 1 and 9 is similar—claim 1 recites a method for providing an interactive graphical representation of a market and claim 9 recites an apparatus for providing an interactive graphical representation of a market. Thus, the argued term merely sets forth an intended use for the claimed method and apparatus, and it is the elements of the claim that define this term in the preamble. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.”).” slip op. at 6

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

    “serves as a trading interface. Although we consider the term in the preamble to be non-limiting, for purposes of clarity, we address its construction in this Decision. Having considered the above arguments, we determine that our initial construction was not the broadest reasonable interpretation. Both method claim 1 and apparatus claim 9 recite “providing an interactive graphical representation of a market.” Our initial construction reads into the preamble term “interactive” a feature that concerns allowing a user to place a trade. However the preamble term “interactive” does not require such a limited view of user interactions. An “interactive graphical representation of a market” encompasses a broader spectrum of user interactions with the graph of the market than making trades. The provided graphical representation is a graph of a market. The graph is interactive because it is presented to the user in a form that the user can interact with it. Other features recited in the claim, e.g., allowing a user to select a portion of the graph, define the scope of that interaction. Thus, we construe “an interactive graphical representation of a market” to mean a graph of a market presented to a user in such a form that the user can take actions using the graph.” slip op. at 6

  • Skill levelOther

    “ORDINARY SKILL IN THE ART Petitioner contends that one of ordinary skill in the art includes someone who, through education or practical experience, possesses the equivalent of a bachelor’s degree in computer science, information science, or a related field and has at least two years of work experience developing or implementing user interfaces for electronic trading systems. Pet. 13 (citing Ex. 1002, Declaration of Bernard S. Donefer (“Donefer Decl.”) ¶ 45). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in computer science or equivalent experience, and at least three years of experience in designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading. PO Resp. 13 (citing Declaration of Nazaar Molokhia (“Molokhia Decl.”) ¶¶ 14–15). Notwithstanding their one year difference in experience level, we find the parties’ assessments of the level of ordinary skill not to be materially different.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony because he lacks requisite education and experience to satisfy either party’s definition of a person of ordinary skill. PO Resp. 14–22. Patent Owner acknowledges that Mr. Donefer “may well be experienced with the business considerations of traders and financial institution by virtue of his degrees in two fields of business and his work experience in the business departments of various financial institutions.” PO Resp. 20. Patent Owner argues, however, that Mr. Donefer’s business experience is not a substitute for the relevant technical experience needed to testify as to claim construction, the scope of the ’190 Patent claims, the state of the art, anticipation or obviousness. Id. at 21–22. In addition to the arguing that Mr. Donefer does not have the technical background that his testimony states is a baseline for one of ordinary skill, Patent Owner notes that Mr. Donefer has always held non-technical positions as a project manager and testified that he never used trading software allowing a trader to place a trade directly from a graph and that he does not know when products with such features were introduced to the market. Id. at 18–19. Petitioner contends that Mr. Donefer is more experienced than a typical end user of an electronic trading system and has been developing such systems for many years. Pet. Reply 3. Petitioner emphasizes that, in addition to his bachelor’s in economics and MBA in finance, Mr. Donefer also minored in information systems. Id. at 2. Petitioner further notes that, as a consultant and project manager, Mr. Donefer has extensive experience developing, designing, and implementing graphical user interfaces (GUIs) and that Mr. Donefer was recognized by Fidelity Investments for his work in developing an electronic trading system. Id. at 3. Although, that system did not represent market information in a graph, information it provided to other terminals, such as those used by Bloomberg, may have been presented as graphical information. Ex. 2026, Transcript of Deposition of Bernard S. Donefer (“Donefer Tr.”), 72:16–73:11. At his level of professional responsibility, Mr. Donefer works on system architecture to accommodate trader needs—he acknowledges that he does not code programs and does not teach programming in the college courses he teaches. Ex. 2026, Donefer Tr., 30:10–33:18, 36:19–22. Nevertheless, Mr. Donefer takes courses in programming languages, such as C++, R and Python, to keep up with languages that his students are using. Id. at 54:4–56:5. The college-level courses Mr. Donefer teaches—in IT in financial markets and financial information systems—address order management systems, and Mr. Donefer occasionally invites order management vendors to demonstrate such systems to students. Id. at 35:10– 36:13. Mr. Donefer teaches prospective business analysts about business processes and business problems in order to design solutions, focusing on turning requirements into documentation a coder can use to implement a business process, rather than on coding itself. See id. at 38:10–41:8. There is no requirement imposed by the Federal Rules of Evidence” slip op. at 9

  Patent outcomesUS 7,113,190 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power · KSR · Graham
  Patents in suitUS 7,113,190
• The Jewelry Channel, Inc. USA D/B/A Liquidation Channel v. America’S Collectibles Network, Inc.All claims unpatentable
  PTAB · Oct 16, 2015 · CBM2014-00119 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–39 are unpatentable under § 101, and the motion to amend proposing claims 40–42 is denied because those claims also recite patent-ineligible subject matter.

  RulingsFinal written decision

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

    “In the ’211 Patent, the producer tests a plurality of prices throughout the auction. Preliminary indicators, e.g., the number of customers who press “1” to place an order at a particular price, provide statistics about how customers reacted to the offers at various test prices. In the ’211 Patent, the producer adjusts the demand curve by reducing the quantity available based 2 OIP was decided on June 15, 2015, shortly after Patent Owner filed its Reply to Petitioner’s Opposition to the Motion to Amend (Paper 28, “Opp. to Mot. to Amend”), and a month before the oral hearing in this proceeding. At our request, the parties filed post-hearing briefs on October 1, 2015, to address the implications of OIP. Paper 37 (“Petitioner’s Suppl. Brief”) and Paper 39 (“PO Suppl. Brief”). on customers’ reactions to the various price offers, and selects new prices based on the estimated outcome, i.e., expectations that additional customers will purchase units as the price is lowered. The ’211 Patent claims recite that these steps occur before the actual sale of an item being auctioned.” slip op. at 9

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

    “gathering steps, stating “[a]t best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.” Id. Thus, considered individually or as an ordered combination, the claim elements in OIP did not transform the claimed abstract idea into a patent eligible process. Id. Similarly, in the ’211 Patent, the remaining claim elements involve a conventional system interface, e.g., providing a website or a call-in telephone number and placing callers into a queue, routine data gathering, e.g., recording the time an inquiry enters the queue and storing the preliminary quantity of units in a database, and routine calculations, e.g., subtracting from the stored preliminary quantity of available units based on the number of customers who indicate they are prepared to make a purchase.” slip op. at 11

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

    “ideas and purported inventive subject matter in our discussion of claims 1– 39. Additional elements such as a computer and ancillary conventional apparatus such as various databases storing information accessed by the computer, a call monitoring component that places a call into a queue and assigns the call to operator, an electronic call record that records the time the call was made, and an automated message, do not impose meaningful limits on the abstract idea of reducing the available quantity and the price during the auction based on the indicators that provide the auction producer confidence the customer will complete a purchase at that price (or a more favorable price) at the close of the auction. “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 Techs., Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010) (determining that a GPS receiver was a meaningful limit on the scope of the claims because, without the recited GPS receiver, it would be impossible to generate pseudo ranges that estimate the distance from a GPS receiver to a plurality of GPS satellites). In contrast, the limitations in the proposed amended claims recite elements of a general purpose computer that facilitate conducting a reverse auction more efficiently. Even limited to the context of an MSIRA, these added features do not limit the scope of the claim in a meaningful way because the reservation of units does not require a specific machine.” slip op. at 16

  Patent outcomesUS 8,370,211 unpatentable
  § 101 eligibilitycites Alice · Bilski
  Patents in suitUS 8,370,211
• SAP America, Inc. v. Lakshmi ArunachalamRehearing denied
  PTAB · May 22, 2015 · CBM2014-00018 · APJ Brian J Mcnamara · CBM · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 4–6 and 9–10 unpatentable based on the prior final written decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “§ 42.6(a)(3). We consider only those arguments advanced in Patent Owner’s Request for Rehearing concerning subject matter Patent Owner contends we overlooked or misapprehended in our Final Written Decision. 37 C.F.R. § 42.71(d). We are not persuaded by Patent Owner’s argument that we misapprehended or overlooked that the subject matter of the ’158 Patent is drawn to a technical solution to a technical problem because Patent Owner coined terms such as POSvc application, VAN service, object routing, service network, and VAN switch. Req. Rh’g. 3–4. We addressed these issues extensively in our Final Written Decision, noting that claim 1, from which claim 4 depends, is directed to a method of performing a transaction that includes providing a webpage for display, providing an application the user can select to access checking and savings accounts, accepting signals from an input device, and transferring funds. Final Dec. 14. We also addressed the terminology used in the claims and determined that none of these features changes the non-technological nature of the claim. Id. at 13–15. Patent Owner has not identified any matter that we overlooked or failed to apprehend on this issue.” slip op. at 5

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

    “In a conclusory fashion, Patent Owner states that we have erroneously applied the Supreme Court’s Decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Req. Rh’g. 15. However Patent Owner does not otherwise address our conclusion that claims 9 and 10 are unpatentable subject matter under 35 U.S.C. § 101 and does not explain how we misapplied the Court’s decision in Alice.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Patent Owner takes a similar approach to our analysis of the prior art, stating that SFCU and Computerworld did not conduct real-time transactions and that Lawlor operates over phone lines. Id. at 15. However, the Request for Rehearing does not address our combinations of the art, i.e., Lawlor and Computerworld, Final Dec. 20–23, and EB and SFCU, id. at 23–26, along with CORBA 1 and CORBA 2, id. at 26–36. Patent Owner does not address the further combination with respect to claims 5 and 6 with SNMP.” slip op. at 7

  § 101 eligibility§ 103 obviousnesscites Alice
  Patents in suitUS 8,037,158
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Mar 6, 2015 · CBM2014-00018 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 4–6 are unpatentable under § 103, and claims 9–10 are unpatentable under § 101 as directed to patent-ineligible subject matter.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Web application We addressed the construction of this term in our Final Written Decision in IPR2013-00194. See SAP Am., Inc. v. Arunachalam, Case IPR2013-00194, slip op. at 11–14 (PTAB Sep. 18, 2014) (Paper 67). We apply the same construction in this proceeding. For the reasons discussed in IPR2013-00194, we construe “Web application” to mean a computer program to perform a certain type of work using the Web. Point-of-service (POSvc) application We addressed the construction of this term in our Final Written Decision in related case IPR2013-00194. See SAP Am., Inc. v. Arunachalam, Case IPR2013-00194, slip op. at 14-16 (PTAB Sep. 18, 2014) (Paper 67). We apply the same construction in this proceeding. Thus, we construe POSvc application to mean a software program that facilitates execution of transactions requested by a user. Service network running atop the World Wide Web We addressed the construction of “service network (running on top of a facilities network)” in our Final Written Decision in related case IPR2013- 00194. See SAP Am., Inc. v. Arunachalam, Case IPR2014-00194, slip op. at 16–18 (PTAB Sep. 18, 2014) (Paper 67). In that proceeding, we construed “service network” to mean a network on which services, other than underlying network communication services, are provided. We apply a similar construction to this similar term in this proceeding. We construe “service network running atop the World Wide Web” to mean a network on which services other than underlying network communications services are provided over the Web. Utilizing a routed transactional data structure that is both complete and non-deferred In our Decision to Institute, we construed this term to mean “using a data structure that facilitates switching a user who selects a transactional application to a service provider program that provides immediate processing.” Dec. to Institute 11–12. In our Final Written Decision in CBM2013-00013, we reconsidered our construction of this term and concluded that “utilizing a routed transaction data structure” encompasses using a data structure that facilitates switching the processing of information associated with a user selected transactional application that provides immediate processing. We apply this broadest reasonable construction for purposes of our analysis under 35 U.S.C. §§ 101 and 103 in this proceeding.11 11 In CBM2013-00013, we also concluded that this term is indefinite under 35 U.S.C. § 112, second paragraph. That challenge is not before us in this proceeding, although we determined that claims 4–6 are unpatentable over Object routing In related proceeding CBM2013-00013, we construed “object routing” in claim 4 to mean the use of individual network objects to route a user from a selected transactional application to the processing provided by the service provider. We apply the same construction in this proceeding. Virtual Information Store In our Decision to Institute, we construed “virtual information store” to mean an information store in which information entries and attributes are associated with a networked object identity. We apply that construction in this final written decision.” slip op. at 10

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

    “under 35 U.S.C. §101, applying the most recent guidance from the Supreme Court in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), which was decided after the Patent Owner Response was filed. To determine whether a claim recites patent-ineligible subject matter, the first step is to determine whether the subject claim is drawn to a law of nature, a natural phenomenon, or an abstract idea. Id. at 134 S. Ct. 2356 (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–97 (2012)). If the claim is directed to patent-ineligible subject matter, the second step is to consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Id. This second step of the analysis searches for 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.” Id. (internal quotations omitted). Applying the broadest reasonable construction, claim 1 recites a method of carrying out a transaction from a Web application (a computer program to perform a certain type of work on the Web) in which a user selects a POSvc application (a software program that facilitates execution of transactions requested by a user). Thus, claim 1 recites an abstract method, i.e., performing a real-time Web transaction by displaying and providing at least one application a user selects to access checking and savings accounts, and transferring funds (i.e., debiting or crediting) in response to user signals from an input device. Patent Owner contends that our Decision to Institute ignores concrete limitations of claim 1, e.g., the routed transactional data” slip op. at 16

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

    “of routing a data structure as a whole, does not compare a routed data structure to standard I/O, and recites only that the point of service application provides access to the checking and savings account. Although claim 1 recites that transferring funds from checking to savings utilizes a routed transactional data structure that is specific to the POSvc application, claim 1 does not recite specifically what steps are taken to transfer funds in this manner. This recitation does not impose a meaningful limitation on the scope of claim1 because it does not play a significant part in permitting the claimed method to be performed.12 See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). The Specification does not describe clearly how a data structure is transactional, as opposed to non-transactional, or routed, as opposed to non-routed. To the extent that “utilizing a routed transactional data structure that is both complete and nondeferred,” can be construed, we have interpreted it to mean using a data structure that facilitates switching the processing of information associated 12 Claim 1 does not recite what, if any, role is played by the claimed “routed transactional data structure.” with a user- selected transactional application that provides immediate processing. Switching the processing of information from one resource to another, such as from one data base or program, e.g., the claimed point-of service application, to another, is a well-known abstract concept that is not limited to any particular technical approach. The remaining limitations in claim 1 do not contribute any patent- eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent-eligible subject matter. Claims 9 and 10 do not add limitations that contribute to patent eligibility. Thus, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 9 and 10 do not recite patentable subject matter under 35 U.S.C. § 101.” slip op. at 18

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

    “We agree with Petitioner that a person of ordinary skill in the art would have considered it obvious to include accessing banking services over the Internet using a browser (as taught in Computerworld) in the system of Lawlor. Pet. 54–56. Lawlor discloses “a new central/communications system performing new functions” and an ATM network linking to a digital packet switched network, such as the Internet, of which the World Wide Web is a part. Ex. 1006, col. 7, ll. 40–50. Petitioner notes that the combination of Lawlor and Computerworld is nothing more than combining the remote banking services of Lawlor with the World Wide Web banking Web sites described in Computerworld without any significant modification and that, like the ’158 Patent, both Lawlor and Computerworld address providing real-time transactional capabilities. Pet. 54. Petitioner points out that both references discuss home banking systems, i.e., the disclosed Computerworld systems operate on the World Wide Web, while Lawlor operates over standard phone networks. Id. at 55. Citing the Declaration of Dr. Sirbu (Ex. 1003) (“Sirbu 1 Decl.”), Petitioner persuasively argues that one of ordinary skill in the art would have found it obvious to adapt the Lawlor system to the World Wide Web, as Computerworld discusses banks that were performing money transfers over the World Wide Web. Id. In view of the above, we conclude that the combination of Lawlor and Computerworld discloses all of the limitations of claim 1, from which claims 4–6 directly or indirectly depend.” slip op. at 23

  Patent outcomesUS 8,037,158 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,037,158
• Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00030 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 because they claim an abstract payment-intermediation concept implemented with generic computer functions.

  RulingsFinal written decision

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

    “BACKGROUND On December 23, 2013, we entered a Decision to Institute a covered business method patent review, Paper 16 (“Dec. to Inst.”), of U.S. Patent No. 7,853,524 B2 (“the ’524 Patent”) on the grounds that claims 1–21 do not recite patent-eligible subject matter under 35 U.S.C. § 101.” slip op. at 2

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

    “terms “electronic bill” and “EBP” do not even appear in the specification, Petitioner argues that Patent Owner is attempting to recast abstract ideas recited in the ’524 Patent claims in a manner that requires machines or transformations. Pet. Reply 2, 6. We agree with Petitioner that Patent Owner’s construction arguments attempt to read into the claims features that are not recited in them. For example, although there is no EBP system mentioned in the claims, citing the testimony of its expert, Dr. John Kelly, Patent Owner argues that a payment request is captured through an automated interaction with a user over a telephone or is conveyed by transferring data to the EBP system over a data network from a computer. PO Resp. 21–22. As discussed below, we decline to alter any of the constructions we applied in our Decision to Institute.” slip op. at 4

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

    “Merchant credit limit associated with a payee Patent Owner contends that our construction of the “merchant credit limit associated with a payee” as the maximum amount of credit a merchant extends to a payer is contrary to the plain language of the claims because the limit is associated with the payee. PO Resp. 51. Our construction is consistent with the limit being associated with the payee, i.e., the party to whom the payment is made. Patent Owner’s proposed construction, “a value reflecting the credit limit used by the EBP system which is associated with a particular payee,” PO Resp. 52, reads into the claim an extrinsic EBP system not discussed in the specification. In addition, the value reflecting the credit limit is the amount of credit a payee, i.e., a merchant, extends to a payer. Claims 1, 11, and 21 each recite comparing a payment amount associated with the received request, i.e., the request received on behalf of the payer, to a merchant credit limit associated with the payee. The only credit limits described in the specification are limits on the amount of credit extended to a payer. Although the specification describes a merchant credit limit, it does not describe specifically such a limit associated with the payee. The specification describes comparing the payment amount to a merchant credit limit, and making the payment as an electronic payment or a service provider check, if the payment amount is under a specified amount. Ex. 1001, col. 5, l. 65–col. 6, l. 5. Any amount within the merchant’s (i.e., the payee’s) credit limit is added to the consumer’s (i.e., payer’s) monthly ACH balance, and any transaction can be compared to the consumer’s credit limit parameters stored in a database. Id. at col. 6, ll. 5–10. The specification also describes releasing the payment as a draft written on the consumer’s account, rather than the service provider’s account, if the payment amount exceeds the consumer’s, i.e., the payer’s, credit limit. Id. at col. 6, ll. 10– 16. Because the consumer’s credit limit described in the specification protects the service provider, id. at col. 5, ll. 35–37, 65–66, it is a limit associated with the service provider rather than the payee. Claims 1, 11, and 21, however, recite the merchant credit limit associated with the payee. Because each merchant may extend a different amount of credit to each customer, the merchant credit limit associated with the payee limitation appears to require the service provider computer to select a payment means based on comparing the requested payment amount to the amount of credit the merchant, i.e., the payee, extends to the payer. That is, the amount of the payment is compared to the payer’s credit limit with the payee. In any case, as discussed below, this limitation is not material to our determination of the issues under 35 U.S.C. § 101.” slip op. at 8

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

    “and 21 of the ’524 Patent recites a method or apparatus in which a service provider receives a request to pay a payee, selects a form of crediting the payee based on comparing the payer’s account number to the payee’s merchant account scheme and the payment amount to a merchant credit limit associated with the payee, and directs the payment to the payee in the selected form. Thus, each of the independent claims is drawn to a computer-implemented process or apparatus in which a third party intermediary, i.e., the payment service provider, receives a request to make payment, applies certain criteria to determine what form of payment to use, and then directs the payment to the payee in that form. In Alice, the Supreme Court considered claims that, on their face, were drawn to the fundamental economic concept of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk. The Court, concluded that, like the hedging in Bilski, the claims were drawn to an “abstract idea” beyond the scope of § 101. Alice Corp., 134 S. Ct. at 2355–57.1 In the ’524 Patent, the service provider intermediates payment between the payer and the payee, acting much like the third party intermediary in Alice. The payment service provider mitigates settlement risk by crediting the payee or issuing a check to the payee drawn on the service provider’s funds, or in other circumstances, issuing a draft drawn on the payer’s funds, i.e., determining the form of payments based on the comparisons recited in the claims. Ex. 1001, col. 5, l. 25–col. 6, l. 15. The computer implementation associated with comparing the account number and 1 In Bilski v. Kappos, 561 U.S. 593 (2010) the Court found upatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counterrisk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. the credit limit are incidental to the fundamental economic concept of having a third party intermediate a settlement either by crediting the payee from the third party’s funds (as in a credit transaction) or from the payer’s funds (as when the amounts exceed the payer’s credit limit with the service provider). Thus, we conclude that each of independent claims 1, 11, and 21 is directed to an abstract concept.” slip op. at 12

  Patent outcomesUS 7,853,524 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,853,524
• Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00031 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 because they claim the abstract concept of modifying account numbers to match a payee’s format using generic computer implementation.

  RulingsFinal written decision

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

    “Claims 1 and 15 of the ’311 Patent are drawn to executing instructions on a computer. In response to receiving an account number in a format not expected by a payee, the instructions act to retrieve from a database a rule that causes the received account number to be altered into the expected format before transmitting the account number to the payee. Thus, claims 1 and 15 are directed to the abstract concept of comparing a received account number to a payee’s format, applying a rule, and modifying the account number in accordance with that rule to the expected format before transmitting it to the payee. As evidence that the computer is not a meaningful limitation and that the claims are drawn to an abstract concept, Petitioner cites testimony of inventor David Garrison demonstrating that the steps of the claimed invention could be performed manually. Pet. 12–16. (citing Ex. 1008, 175:25–180:14, 185:11– 189:25; Ex. 1009; Ex. 1010. Patent Owner’s argument that the claimed automatically performed method precludes the need for human intervention, PO Resp. 68, essentially concedes that the process could be performed manually. We conclude that the recitation of a computer in the method or system claims is not a meaningful limitation and does not change the abstract nature of the claimed subject matter. The limitations recited in claims 2–14, which depend from claim 1, and claims 16–20, which depend from claim 15, relate to the abstract concept recited in claims 1 and 15 and are not meaningful limitations that provide patent-eligible subject matter. See, e.g., claims 2 and 16, which recite receiving the consumer account number in association with the payment request. Thus, the method and system claims of the ’311 Patent are drawn to the abstract concept of establishing compatibility between account numbers by applying appropriate rules to modify an account number.” slip op. at 7

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

    “We also agree with Petitioner that, by transforming a consumer account number into a modified account number, the claims of the ’311 Patent do not cause a physical transformation of a data structure, as argued by Patent Owner. PO Resp. 48–49. As previously discussed, the claims of the ’311 Patent do not recite data structures that are physically transformed. In addition, Petitioner points out that Patent Owner’s expert, Mr. McEntee, testified that the claims of the ’311 Patent do not require any physical transformation. Pet. Reply 11 (citing Ex. 2028, 472:19– 428:2). We further note that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an inventive concept. DDR Holdings, LLC, 2014 WL 6845152, at *9. We conclude that altering an account number to be compatible with the requirements of a payee’s system, as recited in the claims of the ’311 Patent, is not the type of transformation that rises to the level of patent-eligible subject matter. Patent Owner contends that in our Decision to Institute we did not evaluate the claims as a whole to determine whether they contain additional substantive limitations that narrow, confine, or otherwise tie down the claims so that, in practical terms, they do not cover the full abstract idea itself. PO Resp. 61. According to Patent Owner, the claims include several concrete and tangible limitations that limit the use of the “putative abstract idea” to a specific application within an electronic bill payment system. Id.  As discussed above, relying on intrinsic and extrinsic evidence, Patent Owner attempts to read into the claims structures that they do not recite. Independent claims 1 and 15 recite only executing instructions to receive an account number, applying a rule to alter the account number to an expected form, and transmitting the altered account number. The specification notes that the claimed steps can be implemented using a general purpose computer, or other processing device capable of executing programmed instructions. Ex. 1001, col. 3. ll. 58–65. Thus, the limitations recited in claims concerning the payment processor and the payment processor computer are generic computer limitations. Generic computer limitations do not make an otherwise ineligible claim patent-eligible. DDR Holdings, 2014 WL 6845152, at *9.” slip op. at 12

  • ExcludeMotion to exclude, deniedOther

    “of the rebuttal testimony of Petitioner’s expert Michael Shamos, Ex. 1021 (“Shamos Decl.”), as beyond the scope of the testimony of Patent Owner’s experts. Paper 40 (“Mot. to Exclude”). Petitioner identifies subject matter the challenged paragraphs of the Shamos Declaration rebut. Paper 41 (“Opp. to Mot. to Exclude”). In reaching our decisions in this proceeding, we do not cite or rely on the portions of the testimony in the Shamos Declaration that Patent Owner moves to exclude. Therefore, Patent Owner’s Motion to Exclude is dismissed.” slip op. at 16

  Patent outcomesUS 7,996,311 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,996,311

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.