- PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00049 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–28 are unpatentable under § 101 as abstract ideas lacking meaningful limitations; the contingent motion to amend with substitute claims 29 and 30 is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Trial and Appeal Board (“Board”) interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the challenged patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.300(b); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). There is a “‘heavy presumption’ that a claim term carries its 2 Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat. 284 (2011) (“AIA”). ordinary and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (internal citation omitted). In our Decision to Institute, we determined that our analysis did not require an express interpretation of any term. Dec. to Inst. 7. The parties do not contest that determination. See, e.g., Tr. 61:6–17, 102:12–103:18. We likewise determine that, for purposes of this Final Written Decision, our analysis does not require us to provide an express interpretation for any claim term. Nevertheless, to the extent any claim construction is applicable, that construction is consistent with the constructions presented in the contemporaneously issued Decisions in related inter partes reviews IPR2014-00097 and IPR2014-00098. Those constructions are as follows.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“The challenged claims do not require any specialized hardware. As Petitioner contends, the challenged independent claims do not recite any computer-related limitations, such as a computer, processing unit, etc., and the term “automated exchange trading system” only appears in the preambles as the environment where the claimed method is performed. Pet. Reply 2. “[A] preamble does not limit claim scope if it ‘merely states the purpose or intended use of an invention.’” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351(Fed. Cir. 2014) (affirming a finding that the recitation of “in a digital image reproduction system” in the preamble of the claims did not limit the claims and that the claims were directed to a patent ineligible abstract idea) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)). Here, the recitation “in an automated exchange trading system” in the preamble of claims 1 and 8 merely states the intended use of the claimed invention and does not provide any antecedent basis for limitations in the body of the claim. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention”) (quotation omitted). Therefore, we determine that the recitation of “automated exchange trading system” in the preambles of claims 1 and 8 does not meaningfully limit the claims.” slip op. at 13
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner refers extensively to the declaration of its witness, Dr. Sandholm, in support of its position that the claimed methods require specialized and customized hardware and software. PO Resp. 55–64 (citing Ex. 2017 ¶¶ 25–36, 38–39, 41, 44). We do not find Dr. Sandholm’s testimony persuasive, however, because it generally relates to commercial embodiments and is not supported by the ’498 patent Specification. See, e.g., Ex. 2017 ¶ 26. For example, Dr. Sandholm states that “[a]utomated exchange trading systems include extremely large server networks with extensive processing capabilities” (Ex. 2017 ¶ 25), but the claims do not require any particular network size or extent of processing capability. Further, the ’498 patent Specification explains otherwise. According to the Specification, the preferred embodiment of the invention “includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provide sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Ex. 1001, 3:20–28 (emphasis added), 3:28–37.” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“determine whether the claims at issue are directed to” an abstract idea. Alice Corp., 134 S.Ct. at 2355. The patents at issue in Alice claimed “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (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.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 26; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’498 patent claims are directed to an abstract idea. See PO Resp. 41 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:8–12. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’498 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:42–55. Furthermore, the claims recite, for example, “receiving orders and quotes,” “generating a trade,” “determining a risk level and an aggregate risk level associated with said trade,” “comparing said aggregate risk level” with a risk threshold, and “automatically modifying” one of the remaining quotes if the threshold is exceeded (claim 1). Accordingly, we analyze the ’498 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297. slip op. at 10
Patent outcomesUS 7,356,498 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 7,356,498 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00050 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–7 are unpatentable under § 101 as abstract ideas lacking meaningful limitations; the contingent motion to amend with substitute claim 8 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“corrected Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patents of claims 1–7 of U.S. Patent No. 7,980,457 B2 (Ex. 1001, “the ’457 patent”). Patent Owner, Chicago Board Options Exchange, Inc., filed a Preliminary Response (Paper 15, “Prelim. Resp.”). On March 4, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–7 on one ground of unpatentability, 35 U.S.C. § 101 (Paper 16, “Dec. to Inst.”).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (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.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 27; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’457 patent claims are directed to an abstract idea. See PO Resp. 45 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:15–19. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’457 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:50–62. Furthermore, the claims recite, for example, a server computer configured to perform the steps of “receiving orders and quotes,” “generating a trade,” “determining a risk level and an aggregate risk level associated with said trade,” “comparing said aggregate risk level” with a risk threshold, and “automatically modifying” one of the remaining quotes if the threshold is exceeded (claim 1). Accordingly, we analyze the ’457 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The claims contemplate using a generic computer to perform “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice Corp., 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294); see Mayo, 132 S.Ct. at 1300 (“simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable”). The ’457 patent explains that, in the known open outcry method of trading, market-makers had personal control over the types and number of contracts traded, and could “adjust their trading strategies” as their positions changed. Ex. 1001, 1:50–58. Thus, they managed their exposure, or risk, associated with their holdings by “adjusting their quotes” to favor trades that would tend to hedge away unwanted exposure. Id. at 1:58–62. The ’457 patent Specification also recognizes that software analysis tools were available in the prior art to evaluate the “risk associated with stock and option portfolios.” Id. at 2:13–18. That it was well known to manage trading risk is supported by the testimony of Dr. Maureen O’Hara, Petitioner’s witness. Ex. 1004 ¶ 44 (stating that the steps which the server computer in claim 1 is configured to perform amount to “exactly the same method of managing risk that market makers have been performing manually for years prior to the December 1999 filing date of the ’457 patent . . . selectively accounting for past trades and current holdings and/or evaluating greek values”). Also, the claimed “risk threshold” of claim 1 is recited at a high level of generality, and as Petitioner argues, emulates the personal tolerance level of a market-maker with respect to a type of risk. Pet. Reply 5, 7. Lastly, there is no dispute that the prior art included “automated and computer-based trading system[s].” Ex. 1001, 1:66–67. The claimed systems integrate an automated exchange trading system, already known in the art, with methods that mitigate the risks of a market- maker, also already known in the art. See id. at 2:46–48. In sum, the claims amount to nothing more than instructions to apply previously known methods of electronic trading and trade risk management using a generic computer to perform generic computer functions—calculating a risk and determining if that risk exceeds a threshold, and, if so, automatically modifying a quote. See Alice Corp., 134 S.Ct. at 2359.” slip op. at 16
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner refers extensively to the declaration of its witness, Dr. Sandholm, in support of its position that the claimed systems require specialized and customized hardware and software. PO Resp. 58–63 (citing Ex. 2017 ¶¶ 25–28, 34, 38–39, 41). We do not find Dr. Sandholm’s testimony persuasive, however, because it generally relates to commercial embodiments and is not supported by the ’457 patent Specification. See, e.g., Ex. 2017 ¶ 26. For example, Dr. Sandholm states that systems for processing trades of securitized instruments “include extremely large server networks with extensive processing capabilities” (Ex. 2017 ¶ 25), but the claims do not require any particular network size or extent of processing capability. Further, the ’457 patent Specification explains otherwise. According to the Specification, the preferred embodiment of the invention “includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provide sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Ex. 1001, 3:28–35 (emphasis added), 3:35–45.” slip op. at 15
Patent outcomesUS 7,980,457 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 7,980,457 - International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.All claims unpatentablePTAB · Mar 2, 2015 · CBM2013-00051 · APJ Rama G Elluru · CBM · Final written decision
Claims 1–3 are unpatentable under § 101 as abstract ideas without sufficient meaningful limitations; the contingent motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“determine whether the claims at issue are directed to” an abstract idea. Alice Corp., 134 S.Ct. at 2355. The patents at issue in Alice claimed “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Id. at 2356. Like the method of hedging risk in Bilski, 130 S.Ct. at 3240—which the Court deemed “a method of organizing human activity”—Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 134 S.Ct. at 2356 (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.” Id. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of “managing trading risk expressed in the claims as automatically modifying pending quotes so that market makers do not accumulate unacceptable amounts of risk,” similar to the “hedging risk” claims in Bilski. Pet. 24; Pet. Reply 1, 3–4. Patent Owner does not dispute that the ’044 patent claims are directed to an abstract idea. See PO Resp. 46 (“Patent Owner respectfully submits that the claims are not merely to an abstract idea, but rather provide a specific application of risk management with many specific, meaningful limitations.” (emphasis added)); Ex. 1001, 1:18–22. Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we conclude that the concept of managing trading risk (“risk management”) is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas. As the ’044 patent itself explains, in the prior art “open outcry” exchanges, market-makers adjusted their trading strategies in order to manage their exposure, or risk, associated with their holdings by adjusting their quotes to favor trades that would tend to hedge away unwanted exposure. Ex. 1001, 1:53–65. Furthermore, the claims recite, for example, a server computer configured to perform the steps of “receiving orders and quotes,” “generating a trade,” “determining a number of contracts that have been bought or sold within said quote group, including the generated trade,” “comparing said number of contracts that have been bought or sold within said quote group with said predefined number of bought or sold contracts relating to said quote group,” and “automatically modifying” one of the remaining quotes if the predefined number of bought or sold contracts is exceeded (claim 1). Accordingly, we analyze the ’044 patent claims to determine whether they incorporate sufficient meaningful limitations to ensure that the claims are more than just an abstract idea. Mayo, 132 S.Ct. at 1297. slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The challenged claims do not require any specialized hardware. As Petitioner contends, the challenged independent claims recite only common computer elements, e.g., “server computer” comprising a “memory” and “processor,” recognized as generic computer technology by the Supreme Court in Alice Corp. Pet. Reply 2; see Alice Corp., 134 S. Ct. at 2357; Ultramercial, 772 F.3d at 713, 722–23. The ’044 patent Specification affirms that the claimed systems can be a general purpose computer with a generic programming and processing environment. For example, the ’044 patent Specification states: “In accordance with a first aspect of the invention, an apparatus is implemented using at least one computer, having memory, a processor, and a communication port.” Ex. 1001, 2:51–54. The Specification also makes clear that “[v]arious types of general purpose or specialized computer apparatus or computing device may be used with or perform operations in accordance with the teachings described herein.” Id. at 17:18–20 (emphasis added). The ’044 patent Specification likewise explains that “system 100 . . . includes a plurality of computers, which may be one or more work-stations, servers, mainframes, or other computer hardware platforms that provides sufficient resources to meet the desired trading volume and desired transaction-processing rate.” Id. at 3:31–38 (emphasis added). Thus, the Specification indicates that the claimed systems for processing trades of securitized instruments can be built using a general purpose computer and that the complexity of the system depends only on the volume and rate of trading desired. Furthermore, the Specification explains that the claimed systems can be implemented using known off-the-shelf computer hardware. For example, the Specification states that preferable servers are off-the-shelf “SUN EnterpriseTM” or “StarfireTM” servers. Id. at 3:41–47; Tr. 37:15–17. Our review of the patent does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer[] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”) (citations and internal quotation marks omitted).” slip op. at 14
- 101 substituteMotion to amend, deniedDenied
“and compliance with 37 C.F.R. § 42.221. Patent Owner contends that the proposed substitute claim is supported by the disclosure in the ’534 application (Ex. 2023), a parent application of the ’289 application, that issued as the ’044 patent. Mot. 2–7. Patent Owner states that the proposed substitute claims address the sole ground upon which trial was instituted, patent subject matter eligibility under § 101. Id. In support of its argument, Patent Owner essentially makes the same arguments it made with respect to the original claims of the ’044 patent. Id. at 7–9; PO Reply 1–4. For example, Patent Owner argues that proposed system claim 4 is “directed to a specific computer system instead [of] a general purpose computer” (PO Reply 1), “limited to a specific application of performing risk management” (id. at 3), and “directed to an inventive concept of exchange side risk analysis” (id.). Patent Owner characterizes proposed independent claim 4 as reciting “a system for processing trades that includes at least one server computer comprising a memory, a processor, and executable code maintained on the memory.” Mot. 8. Thus, Patent Owner maintains that the proposed claim “does not merely use a generic computer to perform or accelerate a mental process.” Id. at 9. Petitioner opposes the Motion to Amend arguing that the claims do not recite patent eligible subject matter for essentially the same reasons raised with respect to the original claims. Opp. 1–12. We agree and determine that Patent Owner has not satisfied its burden of demonstrating that the proposed substitute claims are patentable under § 101. As explained above, the addition of a limitation regarding generic computer devices does not limit the claims sufficiently or add concrete ties to make the claims less abstract. See Alice, 134 S.Ct. at 2358–59; Accenture Global Servs., 728 F.3d at 1344–45. The limitations requiring “executable code maintained on said memory executable by said processor,” so that the server computer is configured to perform the steps of receiving orders and quotes “from one or more client servers over a communication network” are generic and conventional for the same reasons discussed above with respect to the original claims. In sum, Patent Owner’s proposed amendments are not specific and do not tie the claim to a concrete apparatus or method; rather, the added limitations are generic and insufficient to confer patent eligibility, similar to the claims at issue in Alice (which recited a “data storage unit” and “computer,” for example), CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1289 (Fed. Cir. 2013), and those at issue in Accenture Global Servs. (which recited a “database,” “client component,” “server component,” and “automated method,” for example), 728 F.3d at 1344–45. Thus, Patent Owner has not shown patentability under 35 U.S.C. § 101. Given that Patent Owner has not established patent eligibility of the claimed subject matter, we do not address whether the proposed substitute claim is patentable over the prior art. See Mot. 9–15. For the foregoing reasons, Patent Owner has not met its burden of showing the patent eligibility of proposed substitute claim 4. Accordingly, the contingent Motion to Amend is denied.” slip op. at 26
Patent outcomesUS 8,266,044 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · GrahamPatents in suitUS 8,266,044
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.