- PTAB · Aug 11, 2023 · PGR2023-00013 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 on all asserted grounds; the Board found it more likely than not that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A post-grant review may be instituted only if “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons below, Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’286 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 9
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. “Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b), which is identical to 35 U.S.C. § 326(b)). Although rare circumstances may necessitate two petitions, “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. To help the Board determine whether multiple petitions are necessary, the Trial Practice Guide further instructs a petitioner filing multiple petitions challenging the same patent to explain “the differences between the petitions, why the issues addressed by the differences are material, and why identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the patent owner to “clearly proffer any necessary stipulations,” where the patent owner asserts that “the differences identified by the petitioner are directed to an issue that is not material or not in dispute.” Id. at 61. The patent owner may, for example, “seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.” Id. In light of the particular facts before us, we decline to exercise our discretion to deny the Petition pursuant to 35 U.S.C. § 324(a) on the basis of the filing of two parallel petitions. In particular, we recognize that the two petitions do not include duplicate attacks on the basis of unpatentability over prior art, but rather break the issues into two distinct parts—prior-art based unpatentability challenges, in PGR2023-00012, and 35 U.S.C. §§ 101 and 112 challenges here. The usual considerations of fairness, timing, and efficiency do not weigh in favor of exercising our discretion to deny institution. In particular, the petitions were filed concurrently, which means that Petitioner did not gain a timing advantage that might otherwise occur if the petitions were filed serially. Additionally, the proceedings can be coordinated, and a similar or common schedule can be adopted. To the extent that Patent Owner argues (see Prelim. Resp. 55–56) that Petitioner was attempting to avoid providing a single stipulation that (upon institution) Petitioner will pursue neither section 103 grounds on certain art, as per the stipulation offered in PGR2023-00012, nor section 101 and 112 grounds as per the stipulation here (see Pet. 49), discretionary denial of this Petition would not provide such a stipulation. Because we institute both here and in is equivalent to our best understanding of Patent Owner’s desired stipulation “tak[ing] into account” the two Petitions. Accordingly, based on the particular facts and circumstances before us, we decline to exercise our discretion to deny the instant Petition under § 324(a) on the basis of the Petitioner’s filing of multiple petitions.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Conclusion We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 23
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Enfish · Phillips · NautilusPatents in suitUS 11,328,286 - Cambridge Associates, LLC v. Capital DynamicsAll claims unpatentablePTAB · Aug 31, 2015 · CBM2014-00079 · APJ Donna M Praiss · CBM · Final written decision
Claims 1–17 are unpatentable under § 101 because they claim an abstract mathematical correlation implemented with generic computer functions.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that Digitech is instructive guidance concerning claims to “a process that employs mathematical algorithms to manipulate existing information to generate additional information.” Digitech, 758 F.3d at 1351 (citing Parker v. Flook, 437 U.S. at 595) (concluding such claims are ineligible subject matter). Like the ’196 patent claims, the process claim in Digitech did not recite expressly mathematical formulae or equations. It claimed, in prose, generating two data sets by taking existing information, such as measured chromatic stimuli, spatial stimuli, and device response characteristic functions, and organizing the information into a new form called a device profile. Digitech, 758 F.3d at 1350–51. The method claim was determined to be an abstract idea “because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine.” Id. at 1350. The absence of expressly recited mathematical formulae or equations in the claim carried no significance in determining whether the claims as a whole were directed to the abstract idea. See also Alice, 134 S. Ct. at 2356–57 (noting that no special significance was given to the fact that one of the claims in Bilski reduced hedging to a mathematical formula). In sum, because we agree with Petitioner that the challenged claims involve determining a mathematical correlation, like the claims in Digitech, we conclude that the first step in the Alice/Mayo test is met for claims 1–17.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The fact that a claim relies on a method that is implemented on a computer does not, by itself, demonstrate that the claim is patent eligible. Rather, a challenged claim, properly construed, must incorporate enough meaningful limitations to ensure that what is claimed is more than just an abstract idea, and is not a mere “drafting effort designed to monopolize [an abstract idea] itself.” Mayo, 132 S. Ct. at 1297. In order for a machine to impose a meaningful limitation on the scope of a method 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.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Claims that recite a method of doing business on a computer, and do no more than merely recite the use of the computer for its ordinary function of performing repetitive calculations, are not patent eligible. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278–79 (Fed. Cir. 2012) (finding computer used for its most basic function, the performance of repetitive calculation, does not impose a meaningful claim limitation). We are persuaded that Petitioner has shown by a preponderance of the evidence that the extent to which a computer aids the performance of the claimed invention is no more than the ordinary function of common computer software programs, such as the Microsoft Excel spreadsheet used by Patent Owner’s expert. Reply 7 (citing Ex. 1012, 153:15–154:21). Patent Owner’s argument that the computer technology required by the ’196 patent claims “is integral to meeting the requirements of accuracy, precision and timeliness” (PO Resp. 27 (citing Ex. 2004 ¶ 96)) focuses on a specific commercial application of the patent claims “[i]n the private equity world” (id. (citing Ex. 2004 ¶¶ 86–95)). We are not persuaded by Patent Owner’s arguments because they presume particular mathematical computation methods not required by the claims, and reinforce that the nature of the invention is a patent ineligible mathematical algorithm. For example, Patent Owner contends that when presented with a problem to solve at his deposition, Petitioner’s expert, Dr. Robinson, inaccurately computed a real rate of return on an investment because he used quarterly compounding rather than daily compounding. Ex. 2004 ¶ 87. According to Mr. Reyes, Patent Owner’s expert, “daily cashflow (as opposed to monthly or quarterly) has been recognized as a requisite compounding frequency as far back as the 1960s.” Id. at ¶ 91. Such mathematical computations, even if required by the claims, are not sufficient to transform the claims into patent eligible subject matter.” slip op. at 15
- ExcludeMotion to exclude, deniedDenied
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–17 of the ’196 patent are unpatentable under 35 U.S.C. § 101. Because our determination does not rely on the deposition testimony subject to Patent Owner’s Motion to Exclude, we dismiss the motion as moot.” slip op. at 2
- Expert testimonyOther
“We are persuaded that Petitioner has shown by a preponderance of the evidence that the extent to which a computer aids the performance of the claimed invention is no more than the ordinary function of common computer software programs, such as the Microsoft Excel spreadsheet used by Patent Owner’s expert. Reply 7 (citing Ex. 1012, 153:15–154:21). Patent Owner’s argument that the computer technology required by the ’196 patent claims “is integral to meeting the requirements of accuracy, precision and timeliness” (PO Resp. 27 (citing Ex. 2004 ¶ 96)) focuses on a specific commercial application of the patent claims “[i]n the private equity world” (id. (citing Ex. 2004 ¶¶ 86–95)). We are not persuaded by Patent Owner’s arguments because they presume particular mathematical computation methods not required by the claims, and reinforce that the nature of the invention is a patent ineligible mathematical algorithm. For example, Patent Owner contends that when presented with a problem to solve at his deposition, Petitioner’s expert, Dr. Robinson, inaccurately computed a real rate of return on an investment because he used quarterly compounding rather than daily compounding. Ex. 2004 ¶ 87. According to Mr. Reyes, Patent Owner’s expert, “daily cashflow (as opposed to monthly or quarterly) has been recognized as a requisite compounding frequency as far back as the 1960s.” Id. at ¶ 91. Such mathematical computations, even if required by the claims, are not sufficient to transform the claims into patent eligible subject matter.” slip op. at 16
Patent outcomesUS 7,698,196 unpatentable§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,698,196
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.