- Quantile Technologies Limited v. Trioptima ABAll claims unpatentablePTAB · Oct 1, 2021 · CBM2020-00012 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–46 are unpatentable under § 101 because they claim abstract financial and mathematical processes without integrating them into a practical application or adding an inventive concept.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On October 6, 2020, based on the record before us at the time, we instituted a covered business method patent review of all challenged claims on all grounds alleged. Paper 11 (“Institution Decision” or “Dec.”). The claims and ground in this proceeding are indicated in the table below.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.200(b) (2019). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary meaning as they would be understood by an ordinarily skilled artisan. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Patent Owner seeks construction of the terms “linking unit” and “combining unit” from claims 5 and 23, and “converting unit” from claim 6. Pet. 14–18. However, because we determine that even under Patent Owner’s constructions, the claims would be ineligible as discussed below, we discern no terms in need of express interpretation. Accordingly, we apply the legal standards set forth above when reading the claims. B. CBM PATENT REVIEW ELIGIBILITY” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Id. at 33:66–34:12 (emphasis added). The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed method accomplishes this through collecting information, grouping related information together, and then using mathematical techniques on the information, calculating a total value of the group, and selecting a certain group that meets certain criteria. This is all a mental process, an example of an abstract idea.” slip op. at 23
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Claims 4 and 5 use a generic processor to perform well-understood, routine, conventional activities previously known to the industry, such as receiving and analyzing data and performing mathematical calculations. See Bancorp Servs., L.L.C v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an otherwise patent-ineligible process for no more than its most basic function--making calculations or computations-- fails to circumvent the prohibition against patenting abstract ideas and mental processes.”). We do not discern any claimed element for accomplishing the claimed solution that is other than what was generically known for performing those conventional functions. See Credit Acceptance, 859 F.3d at 1057 (“[T]he claims do not provide details as to any non-conventional software for enhancing the financing process.”); see Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Our law demands more” than claim language that “provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it.”); Elec. Power, 830 F.3d at 1354 (explaining that claims are directed to an abstract idea where they do not recite “any particular assertedly inventive technology for performing [conventional] functions”). Despite Patent Owner’s assertions that the claim steps add enough to make the claims patentable, we find the recitation of the steps performed by a generic processor at a high level of generality is insufficient to supply an inventive concept.” slip op. at 40
Patent outcomesUS 8,010,441 unpatentableClaim construction§ 101 eligibilitycites Mayo · Bilski · Enfish · Electric Power · PhillipsPatents in suitUS 8,010,441 - Quantile Technologies Limited v. Trioptima ABAll claims unpatentablePTAB · Sep 17, 2021 · CBM2020-00011 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–22 are unpatentable under § 101; the contingent motion to amend proposing substitute claims 23–28 is denied because those claims are also ineligible.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Id. at 32:41–33:15 (emphasis added). The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed system accomplishes this through collecting information, linking related information together, and then using mathematical techniques on the information to generate a “proposal package” of transactions for “termination and assignment.” This is all a mental process, an example of an abstract idea.” slip op. at 24
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Claim 1 uses a generic processor to perform well-understood, routine, conventional activities previously known to the industry, such as receiving and analyzing data and performing mathematical calculations. See Bancorp Servs., L.L.C v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an otherwise patent-ineligible process for no more than its most basic function--making calculations or computations-- fails to circumvent the prohibition against patenting abstract ideas and mental processes.”). We do not discern any claimed element for accomplishing the claimed solution that is other than what was generically known for performing those conventional functions. See Credit Acceptance, 859 F.3d at 1057 (“[T]he claims do not provide details as to any non-conventional software for enhancing the financing process.”); see Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Our law demands more” than claim language that “provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it.”); Elec. Power, 830 F.3d at 1354 (explaining that claims are directed to an abstract idea where they do not recite “any particular assertedly inventive technology for performing [conventional] functions”). Despite Patent Owner’s assertions that the claim steps add enough to make the claims patentable, we find the bare recitation of the steps performed by a generic processor at a high level of generality is insufficient to supply an inventive concept.” slip op. at 39
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed system accomplishes this through collecting information, linking related information together, and then using mathematical techniques on the information to generate a “proposal package” of transactions for “termination and assignment.” This is all a mental process, an example of an abstract idea. Patent Owner’s efforts to mimic the claim language in McRO does not change the result here. To begin with, the Supreme Court has cautioned against patent eligibility turning on the claim drafter’s art. See Flook, 437 U.S. at 593 (stating that patent eligibility does not turn “on the draftsman’s art”). Thus, merely parroting some language of an eligible claim of a completely different invention does not make the claims for this invention any less abstract. More importantly, the fact that the language is similar does not change the fundamental differences between the claimed invention here and the invention that was claimed in McRO. Proposed substitute claims 26, 27, and 28 are similar to proposed substitute claim 25 and add similar limitations that do not take the claim outside the realm of abstract ideas for Step 1 of the Alice inquiry. Accordingly, Petitioner has shown that the proposed substitute claims” slip op. at 61
- 101 substituteMotion to amend, deniedDenied
“The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed system accomplishes this through collecting information, linking related information together, and then using mathematical techniques on the information to generate a “proposal package” of transactions for “termination and assignment.” This is all a mental process, an example of an abstract idea. Patent Owner’s efforts to mimic the claim language in McRO does not change the result here. To begin with, the Supreme Court has cautioned against patent eligibility turning on the claim drafter’s art. See Flook, 437 U.S. at 593 (stating that patent eligibility does not turn “on the draftsman’s art”). Thus, merely parroting some language of an eligible claim of a completely different invention does not make the claims for this invention any less abstract. More importantly, the fact that the language is similar does not change the fundamental differences between the claimed invention here and the invention that was claimed in McRO. Proposed substitute claims 26, 27, and 28 are similar to proposed substitute claim 25 and add similar limitations that do not take the claim outside the realm of abstract ideas for Step 1 of the Alice inquiry. Accordingly, Petitioner has shown that the proposed substitute claims” slip op. at 61
Patent outcomesUS 7,613,649 unpatentable§ 101 eligibilitycites Mayo · Bilski · Enfish · Electric Power · PhillipsPatents in suitUS 7,613,649 - E-Loan, Inc. v. Imx, Inc.All claims unpatentablePTAB · Feb 16, 2016 · CBM2015-00012 · APJ James P Calve · CBM · Final written decision
Claims 7, 8, 26, and 27 are unpatentable under § 101 because they claim the abstract idea of loan processing implemented with generic computers.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. BACKGROUND Petitioner E-Loan, Inc. (“E-Loan”) filed a Petition (Paper 1, “Pet.”) seeking a covered business method patent review of claims 7, 8, 26, and 27 of U.S. Patent No. 5,995,947 (Ex. 1001, “the ’947 patent”). Patent Owner IMX, Inc. (“IMX”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324. Based on these submissions, we instituted trial as to claims 7, 8, 26, and 27 of the ’947 patent. Paper 7 (“Dec. to Inst.”). IMX filed a Response. Paper 11 (“PO Resp.”). E-Loan then filed a Reply. Paper 12 (“Pet. Reply”).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“unconstitutional. PO Resp. 14–16. IMX argues that issued patents are no longer under the jurisdiction of the U.S. Patent and Trademark Office (“USPTO”) and may be set aside, annulled, or corrected only by the courts of the United States, not by the USPTO or PTAB. Id. at 14–15. IMX argues that post-grant proceedings to invalidate patents deprive patent owners of due process and invade the province of Article III courts. Id. at 16. IMX’s arguments are not persuasive in view of the recent decision of the United States Court of Appeals for the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091, 2015 WL 7755665 (Fed. Cir. Dec. 2, 2015), which held that Congress can grant authority to the USPTO to correct or cancel issued patents. MCM Portfolio, 2015 WL 7755665, at *5. Congress has done so by creating inter partes reexamination proceedings, ex parte reexamination proceedings, inter partes review, post-grant review, and covered business method patent review. Id. (citations omitted). As stated with regard to the inter partes review provisions at issue in MCM Portfolio, “Supreme Court precedent demonstrates that these statutes, and particularly the inter partes review provisions, do not violate Article III.” Id.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We interpret “can bid on loan applications” in claim 7 and “capable of submitting bids on loan applications” in claim 26 as “can offer to make loans on loan applications that are pending in the database.” This interpretation is consistent with the claims. Claim 1 recites a method for processing loan applications including “maintaining a database of pending loan applications and their statuses at a database server.” Dependent claim 7 recites “said lender can search the database for particular desired types of loans, and can bid on loan applications.” Ex. 1001, 15:26–27 (emphasis added).” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“E-Loan has established, by a preponderance of evidence, that each of the challenged claims is directed to a fundamental economic or longstanding commercial practice of loan processing. The ’947 patent describes the conventional loan processes as involving large amounts of information that must be collected, compared, evaluated, and disseminated among parties to a transaction so lenders can offer loans at competitive rates. Ex. 1001, 1:9–17. Parties include lenders, borrowers, mortgage brokers, appraisers, regulatory agencies, and mortgage insurance companies. Id. at 1:17–21. Conventional processes required parties to collect nearly all loan application information by hand, transmit it on paper applications, and compare loan information by hand, according to each party’s role of loan evaluation, property appraisal, financial market evaluation, and setting lending rates with rate sheets. Id. at 1:22–27. Thus, parties to a conventional loan transaction monitor loan status and search and modify information in loan applications and loan processes. Claim 1 automates this known method and system of processing loan applications by maintaining a database of pending loan applications and their statuses at a database server where each party to a loan can search and modify that database consistent with their role in the transaction by requests to the server from client devices. Claim 19 recites a system for processing loan applications with a database of pending loan applications including status information and a transaction server for responding to requests of parties to the loan applications to search and modify the database consistent with their roles in the transaction. Whereas conventional loan processing required human beings to collect, compare, evaluate, and disseminate loan applications and loan information by hand, claims 1 and 19 recite the use of a database and transaction server to maintain loan applications so parties can search and modify the loan applications using those computer components instead of using pen and paper to perform these processes.” slip op. at 16
Patent outcomesUS 5,995,947 unpatentableClaim construction§ 101 eligibilitycites AlicePatents in suitUS 5,995,947
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.