- Meta Platforms, Inc. v. Sitnet, LLCAll claims unpatentablePTAB · Sep 8, 2025 · IPR2024-00530 · APJ Thu A Dang · IPR · Final written decision
Claims 1–16 are unpatentable as obvious; the Board denied the contingent motion to amend proposing substitute claims 17–32.
RulingsFinal written decision- Expert testimonyOther
“iv. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Gage teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Gage. v. Independent claim 8 Independent claim 8 recites a method of “providing situation related information to a situation authority via a situational network,” wherein the method comprises “receiving, by a participant device, a roll call query soliciting a reply related to a status of a participant based on the participant being determined, by the situation authority, to be geographically proximate to the situation,” “receiving, by the participant device, a selection of a status response from the participant,” and “sending the status response to the central authority, wherein the status response is included in a roll call list.” Ex. 1001, 34:46–57. Petitioner generally refers to its contentions with respect to claim 1. Pet. 34–36. In particular, Petitioner contends that Gage teaches a subscriber device that communicates a status indicator to the disaster response system through a subscriber status reporting system that implements a “situational network” configured for use during disasters. Id. at 34 (citing Ex. 1005 ¶¶ 19, 25). Petitioner additionally contends that Gage’s “disaster response system” is a “situation authority” because the disaster response system detects an occurrence of a disaster affecting a region, receives and aggregates information related to the disaster, and then provides the information to various participants in the network. Id. (citing Ex. 1005 ¶¶ 8–9, 21, 36, 45; Ex. 1003 ¶ 104). With respect to the “situational network” limitation, Patent Owner” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “situational network” (claims 1, 8, 13) Patent Owner points out that the district court has already construed” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“viii. Ground 1 Conclusion In light of the above analysis, we determine that Petitioner’s evidence” slip op. at 46
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“c. Conclusion on Petitioner’s Patentability Challenges based on Obviousness for Proposed Substitute Claims For the above reasons, we determine that Petitioner has shown by a preponderance of evidence that the subject matter of proposed substitute claims 17–32 would have been unpatentable. IV. CONCLUSION9 For the foregoing reasons, we conclude that Petitioner has shown by a” slip op. at 82
Patent outcomesUS 9,877,345 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · GrahamPatents in suitUS 9,877,345 - Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution
Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . 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). Upon consideration of the arguments and evidence, we determine 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 ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,272,034 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision
Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30
Patent outcomesUS 8,825,887 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · PhillipsPatents in suitUS 8,825,887 - Google LLC v. Videoshare LLCInstitution deniedPTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution
The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- BurdenDecided for patent owner
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11
§ 101 eligibilityDiscretionary denialPatents in suitUS 10,362,341 - Yahoo! Inc. v. Almondnet, Inc.Rehearing deniedPTAB · Feb 5, 2018 · CBM2017-00047 · APJ Michael W Kim · CBM · Rehearing
The Board denied Yahoo!’s rehearing request, leaving in place the denial of institution on the § 101 challenge to claims 1, 2-4, 11-13, 16-17, and 20-22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“matter, resolution of this issue in Petitioner’s favor is not dispositive, as Petitioner still failed to account sufficiently for the terms “offsite” and “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“matter, resolution of this issue in Petitioner’s favor is not dispositive, as Petitioner still failed to account sufficiently for the terms “offsite” and “targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect.” slip op. at 6
§ 101 eligibilityPatents in suitUS 8,244,586 - Yahoo! Inc. v. Almondnet, Inc.Rehearing deniedPTAB · Feb 5, 2018 · CBM2017-00046 · APJ Michael W Kim · CBM · Rehearing
The Board denied Yahoo!’s rehearing request, leaving in place the denial of institution on the § 101 challenge to claims 1–8, 10, 13–16, 24, 27–29, 31, 32, 36, 37, 39, and 41–47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable
“targeted” (to say nothing of “first Internet site,” “second Internet site,” and directing off-site advertisements to visitors of the second Internet site as a consequence of determining visits to the first Internet site “using the tags and the records,” as also recited in claim 1). See Decision 11–14. Moreover, Petitioner’s assertion is incorrect, as while certainly at times, an omission of “Internet” from an identification of what a claim is directed to is proper, our review of the case law cited by Petitioner does not support a blanket assertion that the term “Internet” should never be considered in this manner, under any circumstances. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed. Cir. 2014) (under Alice step one, the court held that “[a]lthough the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet”). We are unpersuaded that we could have misapprehended or overlooked that which is incorrect. slip op. at 6
§ 101 eligibilityPatents in suitUS 7,822,639 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · Jun 23, 2017 · CBM2016-00025 · APJ Hyun J Jung · CBM · Final written decision
Claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under § 101 as patent-ineligible subject matter.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“II. ANALYSIS A. Claim Construction Although Petitioner presents constructions for several claim terms (Pet. 39), we determine that no terms require express construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
- BurdenFwd all claims unpatentableUnpatentable
“Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Unpatentable
“Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23
Patent outcomesUS 6,996,538 unpatentableClaim construction§ 101 eligibilityPatents in suitUS 6,996,538 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · Jun 28, 2016 · CBM2015-00037 · APJ Jacqueline Wright Bonilla · CBM · Final written decision
Claims 52, 62, 67, 70–76, 81, 83–85, and 96 are unpatentable under § 101 because they claim the abstract idea of inventory management using generic computer components.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“degrees in inventory management or similar fields such as supply chain control or logistics” per se, and has “not studied, for a profession, the history of inventory management.” Id. at 34–35 (citing Ex. 2005, 16:14–21, 41:22– 42:3). According to Patent Owner, “Dr. Siegel admits he has no expertise in information management history and only attempted to educate himself in order to prepare his declaration.” Id. at 35. It is clear from Dr. Siegel’s testimony, however, that he has extensive experience in “the use of information technology with business strategy and operations,” has handled professionally “issues related to the integration of information” using computer and software systems, and holds advanced degrees in engineering and computer science. Ex. 1006 ¶¶ 3–11. We are satisfied that Dr. Siegel possesses sufficient qualifications to testify on matters that are relevant to our analysis here, including matters that do not concern the alleged “ancient” history of inventory management. PO Resp. 35. For example, Dr. Siegel testifies that relevant aspects of automated inventory management and VMI were well known before the priority date of the ’538 patent. Ex. 1006 ¶¶ 25–28 (citing Ex. 1018); Ex. 1027 ¶¶ 5–22 (citing Exs. 1020-1022, 1024, 1025). Dr. Siegel also testifies that the ’538 patent specification describes hardware and software that “require only generic computer implementation—not specialized hardware or software.” Ex. 1006 ¶¶ 43–54, 78–79, 89. In addition, Dr. Siegel discusses general concepts of inventory management using a computer and whether certain limitations of the challenged claims can be performed mentally, using pen and paper, or manually, without use of a computer. Id. at ¶¶ 40, 58–66, 80, 90.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Both Petitioner and Patent Owner present constructions for several claim terms. Pet. 19–24; PO Resp. 12–23. For example, Patent Owner asserts that Petitioner misconstrues the term “customer” by defining it as “a buyer (person or organization) that uses the claimed inventory management.” PO Resp. 15; Pet. 19–20. Consistent with the specification of the ’538 patent, we adopt Patent Owner’s construction of “customer” as referring to a “buyer of products via the present invention” (Ex. 1001, 5:52– 56), i.e., a buyer of products using the inventory management system recited in the respective claims.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner also presents constructions in relation to other claim terms such as “inventory restocking parameters provided by said customer,” “tracks” or “tracking,” “access” to information according to “assigned permissions or roles,” and “detecting.” PO Resp. 18–23. For many of the reasons stated in Petitioner’s reply to those constructions, we decline Patent Owner’s invitation to import inappropriately “computerized” aspects into those general terms, notwithstanding the fact that the challenged claims elsewhere recite computer components, such as a “computer,” “databases,” and “software.” Reply 23–25; see also Ex. 1001, 3:3–10 (stating that Customer Inventory System 130 allows manual inventory tracking). For purposes of this Decision otherwise, however, we need not expressly construe claim terms further. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Based on the complete record before us, we determine that claim 67 is directed to the abstract idea of managing inventory in view of information. We are persuaded that managing inventory in view of collected and analyzed customer inventory, cost information, restocking information provided by a customer, as recited in claim 67, describes the basic concept of inventory management, i.e., a “fundamental economic practice.” Alice, 134 S. Ct. at 2356. The method of claim 67 is sufficiently similar in this regard to the method of hedging against financial risk at issue in Bilski, 130 S.Ct. 3218 (2010), and the idea of intermediated settlement at issue in Alice, 134 S. Ct. at 2356–57 (discussing Bilski). See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” (citation omitted)).” slip op. at 22
Patent outcomesUS 6,996,538 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 6,996,538 - Ebay, Inc. v. Paid, Inc.All claims unpatentablePTAB · Sep 16, 2015 · CBM2014-00128 · APJ Kristina M Kalan · CBM · Final written decision
Claims 1–25 are unpatentable under § 101 as directed to an abstract idea and under § 103 over the asserted prior-art combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We are not persuaded that Patent Owner’s proposed construction is correct. Under the broadest reasonable interpretation standard, the “claims should always be read in light of the specification and teachings in the underlying patent.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015) (citation and internal quotation marks omitted). Instead, we interpret the term “shipping rate” to mean “the overall or total cost of sending an auction item to a buyer.” This interpretation is consistent with the ’150 patent specification’s disclosure of shipping calculator system 1000 and its rate engine 1024 for calculating shipping rates based on various inputs, as illustrated in Figure 10, reproduced below. Ex. 1001, col. 6, ll. 38–42.” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Despite Patent Owner’s arguments to the contrary, we see little difference between determining shipping rates and tax rates for auctioned items and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.3 As established by the record, both 2 Bilski v. Kappos, 561 U.S. 593 (2010). 3 In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. at 2356. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski, the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Id. (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp., and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 134 S. Ct. at 2357. conventional auctions and shipping rate calculations existed long before the Internet. See, e.g., Rotman Decl. ¶¶ 4–8; Greenspun Decl. ¶¶ 31–37; Hearing Tr. 56:17–21. We conclude, therefore, that Petitioner has demonstrated that the ʼ150 patent claims, like the claims in Bilski and Alice, are directed to an abstract idea, namely, determining shipping rates for an online auction item.” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are not persuaded by Patent Owner’s argument for patentability under § 101. First, the claims of the ʼ150 patent do not reflect the asserted “inventive concept” identified by Patent Owner, namely, the ability to calculate shipping rates and tax rates in real time. Patent Owner asserts that the reference in the claims to an “online auction” accomplishes this. Hearing Tr. 62:18–20. But as Petitioner points out, the claims do not recite any form of real-time calculations. The claims simply recite steps that were routinely done manually before the filing date of the patent. Hearing Tr. 7:16–22; Rotman Dep. 127:19–128:5. More fundamentally, however, simply adding a computer limitation to claims covering an abstract concept, without more, is insufficient to render the claim patentable under § 101, even if the use of a computer enables faster operation. Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). In order for the addition of a machine to impose a meaningful limit on the scope of a 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, i.e., through the utilization of a computer for performing calculations. SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Likewise, “the use of the Internet is not sufficient to save an otherwise abstract claims from ineligibility under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). For these reasons, Patent Owner’s argument based on meeting the asserted need for speed and other requirements of online auctions fails.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded by Petitioner’s arguments that it would have been obvious to combine Van Zandt and Illinois Sales Tax. Pet. 52–54. We are convinced by Petitioner’s arguments, supported by the testimony of Dr. Greenspun,5 that one of ordinary skill in the would have “readily appreciated the combinability of the sales tax calculation flow chart in Illinois Sales Tax to perform accurate tax calculations for the state of Illinois or another jurisdiction,” including the tax and duty calculations set forth in Van Zandt. Pet. 53 (citing Greenspun Decl. ¶¶ 42, 43, 63). We do not credit Patent Owner’s argument limiting Van Zandt’s teachings to international shipping. Van Zandt provides a comprehensive logistics services system and method, including providing landed cost 5 Dr. Greenspun holds a Ph.D. in Electrical Engineering and Computer Science from MIT. He has authored five computer science textbooks. He has taught at MIT and has over 20 years of experience in computer software engineering. Greenspun Decl. ¶¶ 3–16. We determine him to be an expert in the field relevant to this patent and credit his testimony. quoting (62), to integrate logistics vendors “across any industry, at any time, no matter what vendor carrier . . . or mode of transportation is to be used and no matter what country the shipment is being handled in or delivered to.” Ex. 1011, Abstract (emphasis added). More specifically, Van Zandt states that its system can calculate “any shipment duties and taxes.” Id. at 22:18 (emphasis added); see also id. at 32:11–17. Nothing in Van Zandt discredits or disallows the calculation of domestic taxes as a component of its calculation of “any shipment duties and taxes.” We credit Dr. Greenspun’s interpretation of the Van Zandt system as” slip op. at 26
Patent outcomesUS 8,635,150 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSRPatents in suitUS 8,635,150 - Ebay, Inc. v. Paid, Inc.All claims unpatentablePTAB · Sep 16, 2015 · CBM2014-00126 · APJ Thomas L Giannetti · CBM · Final written decision
Claims 1–21 are unpatentable under § 101 as directed to an abstract idea without an inventive concept, and under § 103 over the asserted combinations.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Despite Patent Owner’s arguments to the contrary, we see little difference between determining shipping rates and tax rates for auctioned items and the type of fundamental economic practices considered to be abstract ideas in Alice Corp. and Bilski.3 As established by the record, both 2 Bilski v. Kappos, 561 U.S. 593 (2010). 3 In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. at 2356. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski, the concept of conventional auctions and shipping rate calculations existed long before the Internet. See, e.g., Rotman Decl. ¶¶ 4–8; Greenspun Decl. ¶¶ 31–37; Hearing Tr. 56:17–21. We conclude, therefore, that Petitioner has demonstrated that the ʼ642 patent claims, like the claims in Bilski and Alice, are directed to an abstract idea, namely, determining shipping rates for online sales.” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are not persuaded by Patent Owner’s argument for patentability under § 101. First, the claims of the ʼ642 patent do not reflect the asserted “inventive concept” identified by Patent Owner, namely, the ability to calculate shipping rates and tax rates in real time. Patent Owner asserts that the reference in the claims to an “online auction” accomplishes this. Hearing Tr. 62:18–20. But as Petitioner points out, the claims do not recite any form of real-time calculations. The claims simply recite steps that were routinely done manually before the filing date of the patent. Hearing Tr. 7:16–22; Rotman Dep. 127:19–128:5. The claims, moreover, do not even refer specifically to online auctions. More fundamentally, however, simply adding a computer limitation to claims covering an abstract concept, without more, is insufficient to render the claim patentable under § 101, even if the use of a computer enables faster operation. Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). In order for the addition of a machine to impose a meaningful limit on the scope of a 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, i.e., through the utilization of a computer for performing calculations. SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Likewise, “the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). For these reasons, Patent Owner’s argument based on meeting the asserted need for speed and other requirements of online auctions fails.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“correct. Under the broadest reasonable interpretation standard, the “claims should always be read in light of the specification and teachings in the underlying patent.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015) (citation and internal quotation marks omitted). Instead, we interpret the term “shipping rate” to mean “the overall or total cost of sending an auction item to a buyer.” This interpretation is consistent with the patent specification’s disclosure of shipping calculator system 1000 and its rate engine 1024 for calculating shipping rates based on various inputs, as illustrated in Figure 10, reproduced below. Ex. 1001, col. 6, ll. 38–42. Figure 10 shows a computer-based system with a shipping calculator. The ’642 patent discloses that rate engine 1024 may include modules for calculating factors that contribute to the overall shipping rate to include shipping rate engine 1028, tax rate engine 1030, insurance rate engine 1032, packaging algorithm engine 1033, and fee-based rate engine 1034. Id. at col. 7, ll. 45–50. Shipping rate engine 1028 calculates a basic shipping rate for an item based on the distance between seller and buyer locations, the weight of the item, the weight of any packaging, and method of shipment. Id. at col. 8, ll. 34–42. Tax rate engine 1030 determines what taxes may apply. Id. at col. 8, ll. 43–44. Insurance rate engine 1032 calculates a cost of insurance to be added to the overall shipping rate based on buyer and seller preferences. Id. at col. 8, ll. 51–55. Packaging is an important factor in shipping cost, so packaging algorithm engine 1033 determines appropriate packaging based on seller preferences and the size, weight, or shape of the item and applies a factor to the shipping rate. Id. at col. 8, ll. 6–14. Fee-based engine 1034 calculates rates based on seller inputs such as rates charged for shipping and handling above the rates from common carriers and may include a flat rate for shipping, or a flat rate per item shipped. Id. at col. 8, ll. 15–29. Rate engine 1024 integrates inputs from the calculations of these other modules and engines, and applies whatever discounts or other factors are required if the components are not simply added, “to obtain a shipping rate based on the various inputs.” Id. at col. 8, ll. 56–60 (emphasis added). The ’642 patent also discloses that the shipping rate may be a flat rate from feebased engine 1034, a rate calculated from the other engines, or a rate from a combination of different types of calculations. Id. at col. 8, ll. 60–63. Thus, the patent discloses that rate engine 1000 calculates a “shipping rate” that includes not only a basic transportation cost but also many other costs that contribute to the total cost to send an item to a buyer.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the combinability of the sales tax calculation flow chart in Illinois Sales Tax to perform accurate tax calculations for the state of Illinois or another jurisdiction,” including the tax and duty calculations set forth in Van Zandt. Pet. 55 (citing Greenspun Decl. ¶ 56). We do not credit Patent Owner’s argument limiting Van Zandt’s teachings to international shipping. Van Zandt provides a comprehensive logistics services system and method, including providing landed cost quoting (62), to integrate logistics vendors “across any industry, at any time, no matter what vendor carrier [] or mode of transportation is to be used and no matter what country the shipment is being handled in or delivered to.” Ex. 1011, Abstract (emphasis added). More specifically, Van Zandt states that its system can calculate “any shipment duties and taxes.” Id. at 22:18 (emphasis added); see also id. at 32:11–17. Nothing in Van Zandt discredits or disallows the calculation of domestic taxes as a component of its calculation of “any shipment duties and taxes.” We credit Dr. Greenspun’s interpretation of the Van Zandt system as being “capable of handling the simpler task of calculating domestic taxes.” Greenspun Decl. ¶ 54. We further credit Dr. Greenspun’s testimony that one of ordinary skill in the art would have been motivated to combine Van Zandt with other references “whenever international shipping was potentially required,” and that references such as Illinois Sales Tax would allow one of ordinary skill in the art to figure sales tax on domestic sales. Id. at ¶ 56. The motivation to combine references can come from many sources, engineering. Greenspun Decl. ¶¶ 3–16. We determine him to be an expert in the field relevant to this patent and credit his testimony. including the nature of the problem to be solved. ABT Sys., LLC v. Emerson Elec. Co., Nos. 2014-1618, 2014-1700, 2015 WL 4924160, at *9 (Fed. Cir. Aug. 19, 2015) (citing Ruiz v. A.B. Chance, 357 F.3d 1270, 1276 (Fed. Cir. 2004). We determine, therefore, that Petitioner has presented sufficiently articulated and persuasive reasoning for combining the teachings of Van Zandt and Illinois Sales Tax that is supported by rational underpinnings. KSR, 550 U.S. at 418.” slip op. at 27
Patent outcomesUS 8,521,642 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · KSR · GrahamPatents in suitUS 8,521,642
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.