• American Express Company / American Express Travel Related Services Company, Inc. et al. v. Metasearch Systems, LLCAll claims unpatentable
  PTAB · Mar 13, 2015 · CBM2014-00001 · APJ Howard B Blankenship · CBM · Final written decision

  Claims 2, 6, and 8 are unpatentable under §§ 101 and 103(a); Patent Owner’s motion to amend is denied.

  RulingsFinal written decision

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

    “In this case, representative claim 2 recites eight steps for a search that is “associated with at least one travel related item,” and which include receiving the search results, communicating the results along with an advertisement, receiving an order for the item, and processing the order. See Ex. 1001, col. 145, ll. 33–61. Although the claimed process requires computer hardware and software (e.g., step (a) of claim 2, “receiving a Hypertext Transfer Protocol request from a client device”), we agree with Petitioner that the claim embraces 5 The Court’s decision is sometimes referenced as Ultramercial III. The Federal Circuit heard the second appeal from the U.S. District Court after the Supreme Court vacated the Federal Circuit’s first decision. 772 F.3d at 711–12. the abstract idea of marketing an item on a metasearch Web site with keyword ads and providing a way to order the item.” slip op. at 13

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

    “Next, or in step two of the analysis, we search for an “inventive concept”— i.e., 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. Alice, 134 S. Ct. at 2355. In this case, the claims recite, for the most part, an ordered combination of steps that contain Internet operations that were conventional at the time of invention. For example, the claims recite communicating with a client device using a Hypertext Transfer Protocol [HTTP]. Momma.com demonstrates that browsers on Internet client devices used such a protocol at the time of invention. See Ex. 1005, 10 (for “Microsoft Internet Explorer,” go to the address “http://www.mamma.com”). The claims further recite a “metasearch engine,” which also was conventional at the time of invention. See id. at 5 (“Mamma is a meta search engine”); see also Prelim. Resp. 3 (Patent Owner did not claim that “metasearching” was novel at the time of invention). Patent Owner argues that designing more than a “rudimentary” metasearch engine in the late 1990’s was not a trivial task. PO Resp. 44. The argument is premised on the assumption that the claims require more than “rudimentary” metasearching. The claims recite, however, as in claim 2, a “metasearch engine to send at least one search query to a plurality of unique hosts”—e.g., a metasearch engine capable of sending a single search query to a plurality (e.g., two) different hosts. The claims are drawn to implementing the abstract idea of marketing an item on a metasearch Web site with keyword ads and some way to order the item with routine, conventional activity. Such an implementation does not transform the abstract idea into patent eligible subject matter.” slip op. at 14

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

    “5. Combining Knowledge Broker and Mamma.com Patent Owner argues that a person of ordinary skill in the art would not have been motivated to combine the “disparate technologies” of Mamma.com and Knowledge Broker and would not have known how to do so “without complex, lengthy, and uncertain experimentation.” PO Resp. 62. According to Patent Owner, the “two technologies” of “metasearch engines and structured e-commerce comparison shopping services providing product purchase functionality and associated advertisements—were vastly different technologies during the late 1990s and in particular in 1999-2000.” Id. at 59. A person of ordinary skill in the art would “not have been motivated to combine metasearch engines with structured e-commerce comparison shopping sites due to numerous other technical challenges present at the time.” Id. at 63. We agree with Petitioner, however, that the claims do not require addressing the “technical challenges” submitted by Patent Owner. Pet. Reply 11–12. Adding advertisements to Knowledge Broker would not require combining a metasearch engine with other “technologies” such as “structured ecommerce comparison shopping sites.” For example, the advertisements could be supplied from the hosts. Patent Owner acknowledges there is no limitation as to where the advertisement comes from. Tr. 61:20–25.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersNot shown unpatentableDecided for petitioner

    “The Declaration does not point to any evidence in the record in support of the allegations. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Moreover, Dr. Carbonell does not allege, let alone show, that others tried and failed to solve the problem allegedly solved by the ’924 patent. See Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.”); In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (declarations that failed to show a long-felt need and failure of others to meet that need, and which offered only opinion evidence that has little value without sufficient support, were insufficient to establish nonobviousness). Further, on this record, the “desirability of combined search and shopping functionality” (Ex. 2006 ¶ 40) was not unmet at the time of invention. Patent Owner acknowledges that e-commerce services that allowed a user to query structured databases predated the invention. E.g., PO Reply 8–9, 12, 62 (discussing “SoftBot” and “ShopBot” e-commerce services). For the foregoing reasons, we find that Patent Owner’s evidence in support of a long-felt but unmet need is entitled to little weight in support of nonobviousness.” slip op. at 29

  Patent outcomesUS 8,326,924 unpatentable
  § 101 eligibility§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 8,326,924

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.