• Ironsource Ltd. v. Digital Turbine Inc.All claims unpatentable
  PTAB · Mar 12, 2024 · PGR2022-00053 · APJ Iftikhar Ahmed · PGR · Final written decision

  Claims 1–22 are unpatentable under collateral estoppel; revised substitute claims 23–37 are allowed because Petitioner did not prove them unpatentable.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “The party seeking to invoke collateral estoppel must show: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google, 54 F.4th at 1381 (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)). Collateral estoppel may also operate to bar re-litigation of common issues in actions involving different but related patents. Mycogen Plant Science, Inc. v. Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001) (citing Amgen, Inc. v. Genetics Inst., Inc., 98 F.3d 1328, 1329–32 (Fed. Cir. 1996); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1136 (Fed. Cir. 1985)). We are persuaded that each of the four Google requirements is satisfied and, accordingly, agree with Petitioner that the challenged claims of the ’256 patent are unpatentable in light of our Final Written Decision in PGR2021-00096.” slip op. at 13

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the focus of the claims” is captured by a single claim element (f3) not only ignores that that limitation recites performing two specific software tasks simultaneously—which we are not persuaded is an abstract idea—but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:12–41; Revised MTA 24–25. That is, under Step 2A of the Guidance, we are neither persuaded that limitation f3, which Petitioner points us to, recites an abstract idea (Prong 1), nor that the other limitations recited in the independent claims fail to integrate the alleged abstract idea into a practical application (Prong 2). Petitioner characterizes the claims as directed to multitasking, which Petitioner describes as an example applied to improve a user experience, i.e., as related to organizing human activity. Pet. 29. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See Guidance, 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity). The claimed invention may result in multitasking on the device, but the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps—invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large). Petitioner thus fails to establish sufficiently that the claims are directed patent ineligible subject matter under Step 2A of the Guidance.” slip op. at 52

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “When the application package 172 has been received by the client system 130, the App Manager 180 may extract or retrieve a set of requested permissions 174 from the application package 172, and present a request to the user for asking for approval to perform operations corresponding to the requested permissions, e.g., opening files, accessing contact information, accessing a camera on the client device 130, and so on. . . . In particular embodiments, when the requested permissions 174 have been requested, and a response specifying a set of accepted permissions 176 has been received from the user, the set of accepted permissions 176 may be compared to the set of requested permissions 174. If the sets are the same, then the installation process may continue, and the App Manager 180 may invoke an installer 182 to install the application package 172. Ex. 1003, 8:67–9:22 (emphasis added). That is, the set of permissions to be checked are obtained by the App Manager once the download of the application package to be installed is initiated. See id. at 8:59–61 (“when the download is initiated by a request sent from the client system 130 to the server 162, the server 162 may send the requested object, e.g., the download page 168 or the application package 172, back to the client system 130”). And these permissions relate to operations that the installed applications may perform, e.g., opening files, accessing contact information, accessing a camera on the client device. Id. at 9:6–7. These permissions may also indirectly determine whether the installation client can install that app. See id. at 9:33–38. There is no suggestion in Pasha, however, that these permissions have anything to do with the host application, i.e., the second software application. said second software application is eligible to use capabilities of the installation client.” RMTA 25; see also Ex. 1001, 15:11–14 (“The installation client, upon receiving an instant install link, checks the eligibility of the caller and if identified as eligible continues the process of downloading the app.”). Pasha does not teach or suggest checking eligibility of its host application in any way or at any point. Moreover, as Patent Owner points out, Pasha’s App Manager performs the eligibility check after it downloads the app package, further supporting that Pasha’s eligibility check has nothing to do with the host application.9 Dr. Almeroth testifies that “Pasha discloses the App Manager 180 confirming that it has obtained the required permissions, which, in [his] opinion, a [person of ordinary skill in the art] would understand may include inter alia that the ‘second software application’ (e.g., the host application invoking the app manager) is eligible to use its capabilities.” Ex. 1035 ¶ 68. Dr. Almeroth fails to cite any supporting evidence or provide any technical reasoning to support his statement. Id. Because we find no basis in the record for Dr. Almeroth’s conclusion, we give little weight to this testimony.” slip op. at 40

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Almeroth testifies that “Pasha discloses the App Manager 180 confirming that it has obtained the required permissions, which, in [his] opinion, a [person of ordinary skill in the art] would understand may include inter alia that the ‘second software application’ (e.g., the host application invoking the app manager) is eligible to use its capabilities.” Ex. 1035 ¶ 68. Dr. Almeroth fails to cite any supporting evidence or provide any technical reasoning to support his statement. Id. Because we find no basis in the record for Dr. Almeroth’s conclusion, we give little weight to this testimony. 9 During oral argument, Petitioner pointed us to disclosure in Pasha that teaches that the permission dialog may be displayed to the user at different points in the download process. Tr. 47:24–48:8 (citing Ex. 1003, 22:21–42). As Patent Owner pointed out, this disclosure was not relied up on by Petitioner in its papers and is new evidence. Id. at 51:19–22; Paper 46, 4. Petitioner’s argument based on this new evidence is therefore forfeited. But even if we were to consider the cited disclosure from Pasha, it still only suggests that permissions need to come from the server after the download process has been initiated, and are therefore, unrelated to the host application. See Ex. 1003, 22:46–49 (“the requested permissions may be downloaded prior to downloading the application or may be extracted from the application package”). 24, 2022) (precedential) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”) (quoting 37 C.F.R. § 42.65(a)). As the Board explained in Xerox, such expert testimony “is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art.” Id. (citing Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1361–62 (Fed. Cir. 2016)).” slip op. at 41

  Patent outcomesUS 11,157,256 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Berkheimer · Enfish · Phillips
  Patents in suitUS 11,157,256
• Ironsource Ltd. v. Digital Turbine Inc.Instituted
  PTAB · Mar 17, 2023 · PGR2022-00053 · APJ Iftikhar Ahmed · PGR · Institution

  The Board instituted PGR on claims 1–22 under § 101, § 102(a) over Pasha, and § 103 over Pasha, Pasha and Yamada, and Pasha and Molinet.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition demonstrates 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 on the grounds set forth in the Petition.” slip op. at 2

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

    “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither of those exceptions apply here, and for the reasons below, we find the plain and ordinary meaning of “invoke” or “invoking” to be to call or activate, as proposed by Petitioner. slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “to mean “to shift user interaction on the device,” and we disagree with Patent Owner that the claim term requires the shifting to take place without requiring a user interaction. We begin with the language of the independent claims. Claim 1 recites “redirect said device to an app store for downloading said first software application on said device.” Ex. 1001, 21:38–40. The claim language, therefore, does not recite any requirement relating to user interaction during the redirect.” slip op. at 15

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

    “3. Other Claim Terms We determine that we do not need to expressly construe any other terms in order to determine whether to institute. The parties are reminded claim terms will be based on the complete record developed during trial.” slip op. at 17

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · Phillips
  Patents in suitUS 11,157,256
• Ironsource Ltd. v. Digital Turbine Inc.All claims unpatentable
  PTAB · Jan 4, 2023 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Final written decision

  Claims 1–18 are unpatentable; the contingent motion to amend proposing claims 19–36 is denied, and the parties’ motions to exclude are denied in part and granted in part.

  RulingsFinal written decision

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

    “3. Analysis On the full record developed during trial, we are persuaded by Patent Owner’s argument. Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element (f3) not only ignores that that limitation recites performing two specific software tasks simultaneously—which we are not persuaded is an abstract idea—but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. That is, under Step 2A of the Guidance, we are neither persuaded that limitation f3, which Petitioner points us to, recites an abstract idea (Prong 1), nor that the other limitations recited in the independent claims fail to integrate the alleged abstract idea into a practical application (Prong 2). Petitioner characterizes the claims as directed to multitasking, which Petitioner describes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See Guidance, 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings . . . , and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances”). The claimed invention may result in multitasking on the device, but the claims are directed to downloading and installing an application in the background instead of directing the user to an application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps—invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large). Petitioner thus fails to establish sufficiently that the claims are directed patent ineligible subject matter under Step 2A of the Guidance. We also agree with Patent Owner that the challenged claims are somewhat similar to those that the Federal Circuit held patentable in DDR Holdings. The claims there were directed to a method of generating a composite webpage that combined visual elements of a host website with content from a third-party, e.g., by combining the logo, background color, and fonts of the host website with product information from a merchant. DDR Holdings, 773 F.3d at 1248. When a user clicked on a link on the host website, the system would construct the composite web page comprising a look and feel description from the host website along with content based on product information from the merchant’s product catalog. Id. at 1250. The court held those claims were not directed at an abstract idea because they addressed the problem of retaining website visitors that, absent the claimed invention, would be instantly transported away from a host’s website after clicking on an advertisement and activating a hyperlink. Id. at 1257.” slip op. at 29

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “1. Independent Claim 1 a) “A mobile device configured for running software applications, comprising:” Petitioner contends that Pasha discloses computer system 600, which” slip op. at 38

  • 112 supportMotion to amend, deniedDenied

    “4. Support in the Original Disclosure A motion to amend may not present substitute claims that introduce new subject matter. 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii) (“A motion to amend may be denied where . . . [t]he amendment seeks . . . introduce new subject matter.”). “Normally, a claim element without support in the original disclosure (i.e., the application as originally filed) merits a rejection under 35 U.S.C. § 112 for lack of written description support.” Lectrosonics, Paper 15, 7. Accordingly, a motion to amend must set forth written description support in the originally filed disclosure of the subject patent for each proposed substitute claim.” Id.” slip op. at 74

  • ExcludeMotion to exclude, grantedGranted in part

    “CTPG at 73–74. Accordingly, Rule 42.23(b) prohibits filing of new evidence other than deposition transcripts of the cross-examination of any reply witness with a sur-reply. Patent Owner does not argue that the opinions presented in paragraphs 4–13 of Dr. Mao’s declaration are within the scope of §42.23(b). See generally PO MTE Opp. Nor do we find it in the interests of justice to allow this evidence in the case file. Accordingly, we grant in part Petitioner’s Motion to Exclude paragraphs 4–13 of Exhibit 2013 pursuant to 37 C.F.R. § 42.23(b).22” slip op. at 90

  Patent outcomesUS 10,782,951 unpatentable
  § 101 eligibility§ 102 anticipationcites Alice · Enfish · Phillips · KSR · Graham
  Patents in suitUS 10,782,951
• Ironsource Ltd. v. Digital Turbine Inc.Instituted
  PTAB · Jan 6, 2022 · PGR2021-00096 · APJ Iftikhar Ahmed · PGR · Institution

  Instituted PGR on claims 1–18 under § 101, claims 1, 3–12, and 14–18 under § 102(a) over Pasha, and the listed § 103 grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324(a), a post-grant review may not be instituted unless it is determined that it is more likely than not that at least one of the challenged claims is unpatentable. Based on the information presented in the Petition and the supporting evidence, we are persuaded that the Petition presents information demonstrating 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 on the grounds set forth in the Petition.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “For the purposes of this Decision, we agree with Petitioner. Figure 7 of the ’951 patent shows the Downloader & Installer Module as a module within the “installation client,” not as the installation client itself. Ex. 1001, 14:4–45 (discussing “installation client 700” and its various modules); Fig. 7 (showing Download & Installer 720 as part of Installation Client 700). The ’951 patent states: Installation client 700 is represented as several modules performing separate functions. The division of functionality demonstrated in FIG. 7 is illustrative, and not intended to be limiting. Other embodiments of an installation client may organize the various functions performed by the installation client 700 in a different manner. Id. at 14:6–12. Accordingly, the proper construction of the term “installation client” does not limit the number or arrangement of components” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “Petitioner’s analysis of the independent claims described above only loosely corresponds to the actual limitations recited in the claim. The Federal Circuit has “cautioned that courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). But “failing to account for the specific requirements of the claims” is what Petitioner’s analysis of the claim limitations appears to do. Petitioner’s argument that “the essence of all the claims” is captured by a single claim element not only ignores that that limitation recites installing software, which we are not persuaded is an abstract idea, but also asks us to disregard multiple technical aspects recited in the claims, such as identifying a link, determining whether an installation client is available on the device, invoking the installation client, and redirecting to the device an app store. See, e.g., Ex. 1001, 21:6–35. Nor are we persuaded by Petitioner’s characterization of the claims as directed to multitasking, which Petitioner characterizes as representing a basic task in organizing human activity. Pet. 30. Although the Guidance recognizes certain methods of organizing human activity, including certain activity between a person and a computer, as constituting a patent-ineligible abstract idea, we are not persuaded that the claims here fall within the scope of such activity. See 84 Fed. Reg. at 52 (listing fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships as organizing human activity); October 2019 Update at 5 (“this grouping is limited to activity that falls within the enumerated sub-groupings except in rare circumstances”). Although the claimed invention may result in multitasking on the device, the claims are directed to downloading and installing an application in the background instead of directing the user to an app store, thereby maintaining user experience with the foreground application, and do not recite an abstract idea. And although that process does result in improving user experience, the claims recite more than that mere result; they recite specific steps— invoking, without exiting the foreground software application, the installation client for downloading and installing applications on the device to run in the background—that accomplish the desired result. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018) (finding a method that employs a new kind of file in a computer security system directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding claims that address the problem of retaining website visitors after clicking on an advertisement hyperlink not directed to an abstract idea). Accordingly, based on the current record, we question whether Petitioner establishes sufficiently that the claims are directed to a judicial exception under Step 2A of the Guidance. Nevertheless, because Petitioner has shown that it is more likely than not that challenged claims are unpatentable under 35 U.S.C. §§ 102, 103 (see infra §§ III.F–I), we include this ground in the instituted post-grant review. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to embracing all challenges included in the petition”).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “As discussed above (supra Section II.C.1), at this preliminary stage, we do not construe “installation client” so narrowly as to limit the number or arrangement of components required to meet that claim element. Also, as discussed above (id.), the specification of the ’951 patent supports that multiple modules performing separate functions may comprise the installation client. Therefore, based on our review and consideration of the current record, we are not persuaded by Patent Owner’s argument that Pasha fails to disclose the claimed installation client. Petitioner’s arguments are inconsistent across the Petition. The Petition clearly alleges that “the App Manager 180 and Installer 182 disclose the claimed ‘installation client for downloading and installing applications on said device.’” Pet. 58. Petitioner’s description of Pasha’s App Manager is consistent with Pasha’s disclosure itself. For example, although Pasha discloses that “the host application 132 may use an App Manager component 180 and an Installer component 182,” it also states that “[t]he App Manager 180 may control portions of the application download and install process.” Ex. 1003, 17:22–26; Pet. 38. Pasha further discloses that “[t]he App Manager 180 [itself] may perform at least a portion of one or more of the steps 310–350 of FIG. 3,” i.e., including the step of “[i]nstalling the downloadable application on the computer system from the application package by executing program code having permission to install applications.” Ex. 1003, 17:35–36, Fig. 3. Patent Owner’s argument that Pasha’s “App Manager does not have the role of installing software applications,” is therefore contrary to Pasha’s disclosure. Also, Petitioner’s reasoning and evidentiary underpinnings here are based not so much on modifying Pasha, as Patent Owner suggests, as explaining how one of ordinary skill in the art would have understood Pasha’s disclosure. Between its App Manager and Installer, Pasha discloses the claimed functionality of the “installation client,” but, similar to the ’951 patent, Pasha teaches flexibility between the use of those components to implement the claimed functionality. For the purposes of institution, we are unpersuaded that Petitioner fails to meet its threshold burden of showing anticipation under Net MoneyIN. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (explaining that a reference need not always as it teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination). Based on our review of the current record, we therefore determine that the information presented supports sufficiently, for the purpose of institution, Petitioner’s assertion that Pasha discloses this limitation.” slip op. at 26

  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Alice · Enfish · Phillips
  Patents in suitUS 10,782,951
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.All claims unpatentable
  PTAB · Jul 25, 2018 · CBM2017-00032 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–4, 6–7, 16–19, 23–24, 26–28, 32–36, and 41 are unpatentable under § 101; the petitioner did not show claims 17, 18, 23, 24, and 28 unpatentable under § 112.

  RulingsFinal written decision

  • BurdenOther

    “Considering each claim limitation, as well as each explicit citation to the specification expressly set forth in the Petition, we are persuaded that Petitioner has met its burden of showing, via analysis and evidence explicitly set forth on pages 6–7 of the Petition, that independent claim 1, as a whole, does not recite a technological feature that is novel or unobvious.” slip op. at 22

  • Adverse judgmentOther

    “Response (Paper 24, “PO Resp.”) and disclaimed claims 5, 25, 39, and 43 (Ex. 2006). Petitioner filed a Reply to the Patent Owner’s Response (Paper 38, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 40, “PO Sur”), and Petitioner filed a Response to the Sur-Reply (Paper 41, “Pet. Sur”).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “II. ANALYSIS A. Claim Construction Petitioner and Patent Owner dispute the construction of certain claim terms. Pet. 23–28; PO Resp. 34–46. We apply the constructions of those terms set forth in Paper 49 in this decision.” slip op. at 7

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

    “We agree. The preambles of independent claims 1, 19, and 33 expressly state as much. In particular, the preamble of claims 1 and 33 provide: “A system for providing targeted advertising to a multimedia content end user” (claim 1) or “a plurality of multimedia content end users” (claim 33). Ex. 1003, 46:13–14, 49:59–60. Likewise, claim 19’s preamble refers to “[a] device for providing targeted advertising to an end user.” Id. at 48:20–21. Taking claim 1 as a representative example, the remainder of the claim recites certain tangible components, namely a “storage device” and specifically, an “addressable and reserved storage space”; a “processor”; and “software implemented by” the processor. Id. at 46:13–28. The claim further requires the following functionalities: the processor “reserv[ing]” the storage space; the processor “select[ing] particular advertising data suitable for targeting to at least one end user based upon predefined criteria data”; the storage space “storing digital advertising data” and specifically, the “particular advertising data”; and the “particular advertising data” being “accessible to” the user. Id. Thus, we are persuaded that claim 1, taken as a whole, is focused on the concept of providing targeted advertising to a user. Further, the claims merely invoke computers as a tool to implement the concept of targeted advertising, and are not directed to any improvement in computer functionality. See Pet. 34; Ex. 1008 ¶¶ 944–945. The claims recite generic components and functionality. For example, in claim 1, the required components, outlined above—a storage device and specifically, a storage space, a processor, and software— are conventional. The recited functionalities—reserving the storage space for advertising data, selecting advertising data targeted to a user, storing that data, and making that data accessible to the user—are likewise basic and routine. As Petitioner points out, the specification expressly acknowledges that some of the tangible components of the recited system were known. See Pet. 7–8, 33–34, 40–75; Ex. 1008 ¶ 949. For instance, the specification refers to storage device 14 as “any medium known in the art for storing electronic data” and similarly, “any storage device for audio/video information known in the art.” Ex. 1003, 13:22–28, 15:1–5, 24:66–25:7; see id. at [57], 5:3–6, 21:42–22:2. The testimony of Petitioner’s declarant, Dr. Negus, also persuade us that each recited component and functionality was generic, conventional, and known. Ex. 1008 ¶¶ 945, 949–954; see id. ¶¶ 955–987.” slip op. at 26

  Patent outcomesUS 9,053,494 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Mayo · Enfish
  Patents in suitUS 9,053,494
• Care N’ Care Insurance Co., Inc. / Trizetto Corp. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · CBM2015-00063 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 6, 8, 9, 12, 13, 15, 20, 21, 24, and 25 are unpatentable under § 101; claims 1, 6, 9, 15, and 20 are anticipated by Lech; and claims 6, 8, 12, 13, …

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioners have shown by a preponderance of the evidence that claims 1, 6, 8, 9, 12, 13, 15, 20, 21, 24, and 25 are unpatentable.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Patent Owner proposes construing “field” as “computer software field.” Prelim. Resp. 24–33. We see no reason to interpret “fields” as “computer software fields.” We agree with Petitioners that Patent Owner’s proposed construction is circular insofar as the construction includes the entire term being construed. See Pet. Reply 6. Further, as discussed below, even if “fields” were interpreted as “computer software fields,” the complete record persuades us that Petitioners have shown unpatentability of the challenged claims by a preponderance of the evidence. Petitioners propose that the broadest reasonable interpretation of “digital attachment” recited by claim 9 is “information that can be digitized.” Pet. 5 (citing Ex. 1001 ¶¶ 32, 33, 36; Ex. 1003, 11:18–19, 20– 35). For the purposes of this Decision, we need not construe this or any other term expressly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPrior construction adoptedDecided for patent owner

    “In the Decision on Institution, we interpreted “unitary data stream” as “transmitted set of information.” Dec. on Inst. 12. Patent Owner states that it “agrees that such definition is the broadest reasonable construction.” PO Resp. 24; see also Pet. Reply 4 (stating “Patent Owner does not dispute that the correct construction of ‘unitary data stream’ for this proceeding is ‘transmitted set of information.’”). Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from this interpretation.” slip op. at 7

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

    “device operatively coupled to a computer network receiving and transferring or transmitting contents of fields of a unitary data stream. Based on the full record before us, we determine that the subject matter of the challenged claims, when considered as a whole, is directed to the abstract idea of transmitting or copying information from a source to a destination. In particular, the complete record persuades us that the idea of transmitting or copying information from a source to a destination represents a disembodied, well-known concept, i.e., a basic building block of human ingenuity and that does not rise beyond the level of an abstract idea. See Content Extraction, 776 F.3d at 1347 (“Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patent are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”); see also Alice, 134 S. Ct. at 2354 (“[I]n applying the § 101 exception, we must distinguish between patents that claim the ‘“buildin[g] block[s]”’ of human ingenuity and those that integrate the building blocks into something more”) (quoting Mayo, 132 S. Ct. at 1303). We also agree with Petitioners that the” slip op. at 28

  Patent outcomesUS 7,178,020 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Bilski
  Patents in suitUS 7,178,020
• Care N’ Care Insurance Co. / Trizetto Corp. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · CBM2015-00062 · APJ Hyun J Jung · CBM · Final written decision

  Claims 27, 30, 36, 42–45, and 49–52 are unpatentable under § 101; claims 27, 42–45, and 49–52 under § 102; and claims 30, 36, and 42 under § 103.

  RulingsFinal written decision

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

    “In the Decision on Institution, we interpreted “unitary data stream” as “transmitted set of information.” Dec. on Inst. 12. Patent Owner states that it “agree[s] that such definition is the broadest reasonable construction.” PO Resp. 24; see also Pet. Reply 5 (stating “Patent Owner does not dispute that the correct construction of ‘unitary data stream’ for this proceeding is ‘transmitted set of information’”). Based on our review of the complete record, we do not perceive any reason or evidence that now compels any deviation from this interpretation. Patent Owner further proposes interpreting “fields” as “computer software fields.” PO Resp. 24–33. Petitioners dispute the proposed interpretation of “fields.” Reply 4–7. We see no reason to interpret “fields” as “computer software fields.” We agree with Petitioners that Patent Owner’s proposed construction is circular insofar as the construction includes the entire term being construed. See Pet. Reply 5. Further, as discussed below, even if “fields” were interpreted as “computer software fields,” the complete record persuades us that Petitioners have shown unpatentability of the challenged claims by a preponderance of the evidence. Petitioners also propose interpreting “identities” recited by claims 42– 45 and 50–52 as “labels” (Pet. 4), and Patent Owner states that it “does not dispute that such definition is the broadest reasonable construction” (PO Resp. 24). For the purposes of this Decision, we need not expressly construe this or other claim terms further. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”). III.” slip op. at 8

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

    “simply ask whether the claims involve a patent-ineligible concept” and that “some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like.” Enfish, 882 F.3d at 1335. Therefore, the Federal Circuit “f[ou]nd it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea” and that the “first step in the Alice inquiry . . . asks whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–1336. Here, claim 27 recites “a digital device,” “first and second networked components,” and a method that includes receiving and parsing a data stream with N fields and routing portions of the N fields to networked components. Claim 42 recites a “server” that receives a file with identifiable fields and copies a subset of the fields to correlated fields of a second file. Claim 50 does not expressly require any computers and recites a method that includes receiving a file with identifiable fields and copying a subset of the fields to correlated fields of a second file. The claims do not recite an improvement in computer-related technology, “such as a chip architecture, an LED display, and the like.” See Enfish, 882 F.3d at 1335. Patent Owner’s asserted improvement is “an improvement to data processing performed by a mainframe computer system or similar systems, allowing processing text data with associated digital attachments” (PO Resp. 48), but the focus of the challenged claims is not on “processing text data with associated digital attachments.” The claims instead require receiving data with fields and routing or copying a portion or subset of the fields. The asserted improvement is not an improvement in “computer functionality” or capabilities, but instead, as Patent Owner concedes, “an improvement to data processing performed by a mainframe computer system or similar system.” See PO Resp. 48. As discussed further below, the challenged claims invoke computers merely as a tool. See Enfish, 822 F.3d at 1338 (stating “patent-ineligible claims at issue in other cases . . . recited generalized steps to be performed on a computer using conventional computer activity”); see also Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL 3514158, at *5 (Fed. Cir. June 27, 2016) (stating that the “Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities”).” slip op. at 30

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

    “Based on our factual findings from the specification of the ’020 patent described above and the full record before us, we determine that the recited “digital device operatively coupled to first and second networked components” can be at least one of a personal computer, legacy computer, network server, or buffer computer. The complete record does not persuade us that the “digital device operatively coupled to first and second networked components” requires more than generic computer components. See Alice, 134 S. Ct. at 2357–58 (explaining computer implementation not enough when “the process could be ‘carried out in existing computers long in use’” or when “the computer implementation was purely conventional”). Considering the full record before us, for the reasons explained above, we determine that claim 27 recites well-known, routine, conventional activities previously known to the industry and generic computer components. Alice, 134 S. Ct. at 2359 (“Taking the claim elements separately, the function performed by the computer at each step of the process is ‘[p]urely conventional.’”). When considered as an ordered combination, we determine that claim 27 adds nothing that is not already present when its elements are considered individually. See Alice, 134 S. Ct. at 2359 (“Considered ‘as an ordered combination,’ the computer components of petitioner’s method ‘ad[d] nothing . . . that is not already present when the steps are considered separately.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2014) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”); Bancorp, 687 F.3d at 1278 (explaining that a computer “employed only for its most basic function ... does not impose meaningful limits on the scope of those claims”); cf. DDR Holdings, 773 F.3d at 1258–59 (finding a computerimplemented method patent eligible where the claims recite a specific manipulation of a general-purpose computer such that the claims do not rely on a “computer network operating in its normal, expected manner”). Claim 27 “merely recite[s] the abstract idea . . . with the requirement . . . to perform it on a set of generic computer components”; does not “recite a specific, discrete implementation of the abstract idea”; and cannot “be read to ‘improve[] an existing technological process.’” See Bascom, 2016 WL 3514158, at *7. As discussed above, claim 27 recites well-known, routine, conventional activities that are arranged conventionally and generically. See id. at *6 (stating that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces”).” slip op. at 40

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “receiving a unitary data stream including N fields of data,” Petitioners cite column 5, line 59 to column 6, line 16 and Figure 2 of Lech, not just column 6, lines 11–16. Pet. 59–60. In the cited portion, we find that Lech discloses that “scanner 210 stores all of the information extracted off of hard copy document 100 in the scanner memory 220” and that the “extracted information is stored in two forms . . . as image information [and] textual information recognized on the hard copy document 100 by, for example, employing standard character recognition software.” Ex. 1009, 5:66–6:7. We find that the portion of Lech cited by Petitioners supports their contention that the “exemplary hard copy document 100 of Fig. 2 is preferably scanned in and fields of information on it are recognized using standard optical character recognition software.” Pet. 59–60 (citing Ex. 1001 ¶ 64; Ex. 1009, 5:66–6:8). We also agree with Petitioners that the stored information is sent to computer 230. The portion of Lech cited by Petitioners discusses first and second operational modes and explicitly states that, in the second mode of operation, the information is displayed on computer 230. Ex. 1009, 6:13–16. The first and second operational modes appear to differ by how much of the document is scanned, not where the scanned information is sent. See id. at 6:63–67 (describing that “[t]hese second modes of operation are efficient for small businesses . . . since the user does not necessarily have to store all of the information that appears on the hard copy document”). Moreover, we find that Lech expressly discloses that the “information from scanner memory 220 or main memory 250 is transmitted to computer 230.” Ex. 1009, 5:1–2. Petitioners provide an asserted understanding of Lech by one of ordinary skill in the art in an “Overview of Lech,” and Petitioners cite this same portion of Lech to assert that the “document image, the extracted textual information, or both are then sent to a computer.” Pet. 56–57 (citing Ex. 1001 ¶ 52). We, thus, find that Lech discloses that the output from the scanner is sent to the computer 230 and that the output includes information in fields, as shown in Figure 2 of Lech, and therefore, discloses “receiving a unitary data stream including N fields of data,” as required by claim 27. slip op. at 55

  Patent outcomesUS 7,178,020 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Bilski
  Patents in suitUS 7,178,020
• Care N’ Care Insurance Company, Inc. / Trizetto Corporation v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jun 21, 2016 · CBM2015-00064 · APJ Timothy J Goodson · CBM · Final written decision

  Claims 81 and 83–88 are unpatentable under § 101 because they are directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Considering the full record before us, we agree with, and adopt as our own, Petitioners’ explanation of why the challenged claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display into a patent-eligible application of that idea. Pet. 34–43. Stated simply, the challenged claims require no more than generic computer components performing generic computer functions and conventional activities. See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”); TLI, 2016 WL 2865693 at *6 (“These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.”). For example, claim 81 recites receiving data in fields, storing data in memory, determining which data to enter for display using a generic “logic process,” and displaying data. “[A]ll of these computer functions are ‘wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). The parallels that Petitioner draws between the claims challenged here and those addressed in Content Extraction are compelling. See Pet. 35–36. Patent Owner’s reliance on the use of fields in the challenged claims to satisfy the second step of the Mayo/Alice analysis and to distinguish Content Extraction is unpersuasive in view of Petitioners’ argument and evidence that computer software fields are a generic, well-known concept in data processing, and that using fields to transfer information from a field in one form to a correlated field in another form was routine and conventional. Reply 12; Ex. 1001 ¶¶ 36–37.” slip op. at 24

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

    “We agree with Petitioners. We see no reason why the resolution of the issues before us requires an express construction of this term. Even if we were to construe “field” as a “computer software field,” it would not impact our analysis of claims 81 and 83‒88 under 35 U.S.C. § 101. Accordingly, we do not provide an express construction of “field.” See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 14

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

    “We agree with Petitioners that the challenged claims are directed to a process of receiving information, storing it, and determining which of its parts to enter into a display. Pet. 29. Claims directed to such a process are analogous to the data processing claims that the Federal Circuit held were directed to an abstract idea in Content Extraction and Cyberfone. In particular, as Petitioners argue, the step in claim 81 “of determining which parts of the information to enter into a graphical display is analogous to the step in [Content Extraction] of ‘recognizing certain data within the collected data set.’” Pet. 33. Further, the steps in claim 81 of receiving information and storing it are similar to the steps in Content Extraction of collecting data and storing the recognized data in a memory. Id. With respect to Cyberfone, we agree with Petitioners that the challenged claims can be “described as directed to methods of ‘obtaining data . . . separating it into component parts, and sending those parts to different destinations’ that the Federal Circuit in Cyberfone held embodied an abstract idea.” Id. at 34 (quoting Cyberfone, 558 F. App’x at 990). We have considered Patent Owner’s arguments that the challenged claims are not directed to an abstract idea, but those arguments are not persuasive for the reasons that follow.” slip op. at 17

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

    “Considering the full record before us, we agree with, and adopt as our own, Petitioners’ explanation of why the challenged claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of receiving information, storing it, and determining which of its parts to enter into a display into a patent-eligible application of that idea. Pet. 34–43. Stated simply, the challenged claims require no more than generic computer components performing generic computer functions and conventional activities. See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer”); TLI, 2016 WL 2865693 at *6 (“These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.”). For example, claim 81 recites receiving data in fields, storing data in memory, determining which data to enter for display using a generic “logic process,” and displaying data. “[A]ll of these computer functions are ‘wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294). The parallels that Petitioner draws between the claims challenged here and those addressed in Content Extraction are compelling. See Pet. 35–36. Patent Owner’s reliance on the use of fields in the challenged claims to satisfy the second step of the Mayo/Alice analysis and to distinguish Content Extraction is unpersuasive in view of Petitioners’ argument and evidence that computer software fields are a generic, well-known concept in data processing, and that using fields to transfer information from a field in one form to a correlated field in another form was routine and conventional. Reply 12; Ex. 1001 ¶¶ 36–37. We also agree with Petitioners that the challenged claims fail the machine-or-transformation test because the claims “are not tied to any particular novel machine or apparatus, only a general purpose computer,” and “adding a computer to otherwise conventional steps does not make an invention patent-eligible.” Ultramercial, 772 F.3d at 716–17. We discern nothing in the challenged claims requiring a novel machine or apparatus. Indeed, as noted above, Patent Owner concedes that “the hardware components recited by the Challenged Claims were known at the time the application leading to the ’609 Patent was filed.” Prelim. Resp. 19; PO Resp. 20. Turning to the transformation prong of the test, “[a]ny transformation from the use of computers or the transfer of content between computers is merely what computers do and does not change the analysis.” Ultramercial, 772 F.3d at 717. Moreover, as the Federal Circuit explained in CyberSource, the “mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test.” 654 F.3d at 1370. Here, claim 81 recites receiving an electronic communication that includes digital data in fields, some of which include insurance transaction data and at least one of which includes attachment data, storing the electronic communication, and processing the electronic communication by determining which of the received data to display and displaying the selected data and the attachment on a GUI. Ex. 1003, 50:20–43. We agree with Petitioners that the claimed method merely collects and organizes data, which is insufficient to meet the transformation prong of the machine-or-transformation test. Dependent claims 83–88 also do not recite more than the mere collection and organization of data.” slip op. at 24

  Patent outcomesUS 8,676,609 unpatentable
  Claim construction§ 101 eligibilitycites Mayo
  Patents in suitUS 8,676,609
• Travelers Lloyds Of Texas Insurance Co. / The Travelers Indemnity Co. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2014-00187 · APJ Hyun J Jung · CBM · Final written decision

  Claims 27, 30, 36, 42, 43, 45, and 50–52 are unpatentable under § 101; claim 27 is also anticipated by Toy under § 102. The motion to amend is granted.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Supreme Court clarified the process for analyzing claims to determine whether claims are directed to patent-ineligible subject matter. In Alice, the Supreme Court applied the framework set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If they are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297, 1298). In other words, the second step is to “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.’” Id. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post solution activity.”’ Bilski v. Kappos, 561 U.S. 593, 610– 11 (2010) (quoting Diamond v. Diehr, 450 U.S.175, 191–92 (1981)).” slip op. at 22

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Board will interpret claims according to their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.300(b). In our Decision to Institute, we construed “unitary data stream” to mean a “transmitted set of information.” Dec. on Inst. 13. The parties do not present arguments for another interpretation (see Reply 6), and based on the complete record, we do not perceive any reason or evidence that now compels any deviation from this interpretation.” slip op. at 20

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

    “We agree with Petitioner that Patent Owner’s proposed construction reads a particular embodiment in the Abstract into claim 27, which only requires “a unitary data stream including N fields of data.” See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). “Parsing” does not seem to appear in the specification of the ’020 patent. We thus decline to accept Patent Owner’s proposed construction and give “parsing the unitary data stream” its ordinary and customary meaning.” slip op. at 21

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

    “Patent Owner also proposes that the broadest reasonable interpretation of “field” in view of the specification is a “computer software field” with citations to the specification. PO Resp. 15–24 (citing Ex. 1001, 8:32–37, 9:59–10:12, 10:19–35, 11:53–63, 13:40–14:20, 14:29–38, 15:26–47, 16:26– 32, 17:3–11, 18:5–18, 18:50–19:3, 19:61–20:6, 24:19–31, 24:38–43). Petitioner argues that the plain meaning should be applied. Reply 8. We do not see that the dispute impacts the analysis set forth in the Decision, so we need not decide between the two competing proposals. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 21

  Patent outcomesUS 7,178,020 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipationcites Alice · Mayo · Bilski
  Patents in suitUS 7,178,020
• Travelers Lloyds Of Texas Insurance Co. / The Travelers Indemnity Co. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Mar 30, 2016 · CBM2014-00186 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 6, 10-17, and 28-31 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 6, 10–17, and 28–31 of the ’768 patent are unpatentable. We also grant the motion to amend and deny the motion to dismiss.” slip op. at 2

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

    “MOTION TO AMEND In its Motion to Amend, Patent Owner moves to amend the ’768 patent by canceling claims 11 and 30. Paper 15, 1; see 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). The Motion to Amend does not indicate that Patent Owner’s request to cancel claims 11 and 30 is contingent on the claims being determined to be unpatentable. We, therefore, grant the request.” slip op. at 42

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

    “construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.300(b). In our Institution Decision, we did not need to construe any term expressly. Patent Owner proposes that the broadest reasonable interpretation of “field” in view of the specification is a “computer software field” with citations to the specification and claim 1. PO Resp. 14–15 (citing Ex. 1001, 10:6–10, 12:66–13:38, 15:57–64, 17:62–66, 28:5–21). Petitioner argues that the plain meaning should be applied. Reply 6 (citing Ex. 1007, 8). We do not see that the dispute impacts the analysis set forth in the Decision, so we need not decide between the two competing proposals. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 21

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

    “Claim 1 requires accepting data, generating a first subset of that data, generating a second subset of that data, and transmitting the first and second subsets of data. Ex. 1001, 45:27–46. We determine that the subject matter of the challenged claims, when considered as a whole, is directed to an abstract idea, namely, examining information to extract relevant portions of that information. In particular, the complete record persuades us that the idea of examining information and extracting relevant portions of that information represents a disembodied, well-known concept, a basic building block of human ingenuity and rises to the level of an abstract idea. See Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“Applying Mayo/Alice step one, we agree with the district court that the claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”); see also Alice, 134 S. Ct. at 2354 (“in applying the § 101 exception, we must distinguish between patents that claim the ‘“building[g] block[s]”’ of human ingenuity and those that integrate the building blocks into something more”) (quoting Mayo, 132 S. Ct. at 1303).” slip op. at 24

  Patent outcomesUS 7,346,768 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,346,768

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.