- Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 24, 2023 · IPR2021-01294 · APJ Sheila F Mcshane · IPR · Final written decision
The Board held all challenged claims 1–25 unpatentable under the asserted obviousness grounds and denied Patent Owner’s contingent motions to amend.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Snap proposes that a person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Snap Pet. 3 (citing Snap IPR, Ex. 1002 ¶¶ 30–32); Snap IPR, Ex. 1022 ¶ 32. Snap further asserts that additional “education can supplement practical experience and vice versa.” Id. In the Decision on Institution, we determined that Snap’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’599 patent. Snap Inst. Dec. 6–7. For this proceeding, Patent Owner and Dr. Martin apply this level of skill in the art. Snap PO Resp. 11–12; Snap IPR, Ex. 2003 ¶¶ 48–50. Accordingly, for the reasons given in the Decision on Institution, we adopt Snap’s proposed level of ordinary skill in the art. Snap Inst. Dec. 6–7.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Dr. Martin also provides consistent testimony on this issue. Snap IPR, Ex. 2003 ¶¶ 81–82. Put simply, the Specification’s disclosure is that the set of rules for multiple content packages includes an expected response, and actions are then performed based on whether an expected response is or is not provided. Moreover, as Dr. Almeroth testifies, neither the claims nor the Specification use the term “unexpected response”—rather the Specification only identifies an “expected response.” Snap IPR, Ex. 1022 ¶ 42. Accordingly, the disclosures in Table 1 and the Specification support Dr. Almeroth’s testimony that a person of ordinary skill would have understood that “the claimed ‘determin[e/ing]’ limitation requires what it plainly recites: ‘determin[e/ing] whether the received response matches the expected response[]’. . . . [i]t does not require an unexpected response not known to the system.” Snap IPR, Ex. 1022 ¶ 51.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“time,’ ‘type of location,’ and other contextual information to automatically determine whether users would like to undertake learning activities.” Twitter Pet. Reply 18 (citing Twitter IPR, Ex. 1005, 2 3, 5 (“A check . . . to see if the information from the database corresponds with the location sensor (i.e. a check on whether the learner is really keeping his/her schedule).”), Fig.1; Twitter IPR, Ex. 1025 ¶ 49; Twitter IPR, Ex. 1003 ¶¶ 85, 157–162, 238, 435, 451, 517; Twitter Pet. 20–21). Accordingly, the evidence of record support that Yau teaches that context triggers the display of a content piece, such as an exercise/test/quiz. Patent Owner also argues that Twitter asserts that PALLES’ content piece is “‘exercise[s],’ ‘test[s],’ and/or ‘MP Quiz[zes],’” but also contends that Yau’s “formal assessment” is the claimed content piece. Twitter PO Resp. 32. Patent Owner argues that “Twitter points back to its limitation 12.1 PALLAS evidence for the purported ‘content piece’” and also does not mention Yau for limitation 12.5 and 12.6 and “only conclusorily states that ‘PALLAS in view of Yau renders obvious triggering an exercise/test/quiz.’” Id. Patent Owner’s arguments overlook Twitter’s assertion, with Dr. Turnbull’s supporting testimony, that a person of ordinary skill in the art would have understood that Yau’s formal assessments are “tests with answers for comparing against learner’s responses to assess knowledge/performance/skill (contrasting with ‘un-assessed’ exercises whose responses are unchecked).” Twitter Pet. 43; Twitter IPR, Ex. 1003 ¶ 154. Further, Patent Owner overlooks Petitioner’s assertion that it is implementing PALLAS’s context-triggerbased content display using Yau’s teachings of displaying assessments/questions based on context. Twitter Pet. 43. Patent Owner also asserts that in the PALLAS-Yau combination, Twitter does not explain how a person of ordinary skill in the art would have combined the prior art in the manner Petitioner alleges. Twitter PO Resp. 42. Patent Owner argues that “PALLAS says nothing about forcing quizzes, tests, or exercises on its users without the users asking for such exercises,” and a person of skill would understand that the combined system still requires that a student select a learning activity and that PALLAS’s system should be unobtrusive because learners “may have small time slots to engage in learning.” Id. (citing Twitter IPR, Ex. 2013 ¶ 168; Twitter IPR, Ex. 1004, 54). Patent Owner further contends that “Twitter’s conclusory, hindsight-driven statements” do not suffice and PALLAS teaches away from the modifications suggested by Twitter. Id. at 42–43 (citing Twitter IPR, Ex. 2013 ¶ 144). Patent Owner argues that because a learner may not have time to complete a test, a person of ordinary skill in the art would not be motivated to change PALLAS to trigger exercises/tests/quizzes based on location or time. Id. at 43 (citing Twitter IPR, Ex. 2013 ¶¶ 142–144). The evidence of record does not support Patent Owner’s arguments.” slip op. at 115
- ScopeMotion to amend, grantedGranted
“2. Enlarging Scope of Claims Patent Owner asserts that it proposes narrowing limitations in direct response to the grounds of unpatentability involved in this proceeding. See, e.g., Snap Mot. 3–4. Facebook argues Patent Owner is “improperly attempting to enlarge the scope of the original claims.” Facebook Pet. Opp. 1. Facebook asserts, “[i]f ‘an expected response’ means one or more expected responses, therefore, determining whether the received response ‘matches the expected response’ means that the received response must match [all of] the one or more previously-recited expected responses in the content package.” Id. at 3 (emphasis omitted). Facebook then argues “the term ‘predefined response’ is broader than ‘expected response,’” because “an ‘expected response’ does not include any conceivable or possible response; it is a response that is expected.” Id. at 4–5 (emphasis omitted). Twitter argues that “‘predefined response’ is broader than ‘expected response’ because a ‘predefined response’ can include any possible response as long as that response has been somehow defined in advance.” Twitter Pet. Opp. 2. We consider the amendments in view of the claim as a whole. Although the term “one predefined response” may be broader than “an expected response,” we also consider the amended portion “wherein the received response is expected if the received response matches one or more of the at least one predefined response,” and “the received response is unexpected if the received response does not match any of the at least one predefined response.” Unless the response had been predefined within the content package, any “received response” could not be considered “expected” under the claims, and the additional clause requires a match of the response with the predefined response to be deemed “expected.” This equates to an equivalent scope to the original claim. This is consistent with Dr. Martin’s testimony, which we credit, that he is not aware of a situation where the substitute but not original claims are infringed because “[t]he substitute claims would only be satisfied when a ‘predefined response’ in the substitute claims is an ‘expected response’ in the original claims.” Facebook IPR, Ex. 2023 ¶ 59.” slip op. at 136
Patent outcomesUS 8,489,599 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · GrahamPatents in suitUS 8,489,599 - 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 - Westlake Services, LLC v. Credit Acceptance Corp.All claims unpatentablePTAB · Jan 25, 2016 · CBM2014-00176 · APJ David C Mckone · CBM · Final written decision
Claims 10–12 and 14–33 are unpatentable under § 101 because they claim an abstract financing process using generic computer components.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“As explained in the 008-FWD, the Specification describes an advance amount as the amount of money a lender agrees to pay to the dealer. Ex. 1001, 8:45–46. “[T]he advance amount is determined by the party extending financing based on the customer’s credit score, the dealership’s past collection history, the particular vehicle being considered and other factors.” Id. at 9:21–24. Although the advance amount could be less than the sales price minus the down payment, the Specification does not require that it be so. In any case, Patent Owner has since accepted our construction of “advance amount” and has chosen not to contest it in this proceeding. Tr. 28:1–12. We maintain that construction on the full record of this proceeding. The parties do not argue in this proceeding for different constructions of “front-end profit” and “database.” We maintain these constructions on the full record of this proceeding. Additionally, in the 008-FWD, we determined that the following terms, also relevant to claims at issue in this proceeding, required no express construction: “receiving information related to a database,” “receiving information from the customer,” “calculating,” “determining,” “presenting . . . to the dealer,” “automatically recalculated,” “transmitted,” “generating,” and “selectable criteria.” 008-FWD, 10–18. In the Petition, Petitioner addressed several of these terms, contending, inter alia, that “receiving information related to a database of a dealer’s inventory,” “receiving information from the customer,” “calculating a credit score for the customer based at least in part on the information gathered from the customer,” and terms including “determining” are indefinite under 35 U.S.C. § 112, second paragraph. Pet. 32–33, 39, 41. We declined to institute on that ground, concluding that the Petition’s showing was unpersuasive. Dec. 27. The parties propose no other constructions for these terms. On the complete record of this proceeding, we maintain our decision not to construe these terms expressly. 3. Additional Terms Construed in the Decision to Institute In the Decision to Institute, we preliminarily construed “calculation unit” to mean “a computer component configured to calculate” and “financing package generating unit” to mean “a computer component that generates financing packages and contains a database and a calculation unit.” Dec. 7. In the Petition, Petitioner contends that these terms are indefinite. Pet. 36. As stated above, we declined to institute on the asserted ground of indefiniteness. Dec. 27. The parties do not dispute further these” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“costs, for items in a dealer’s inventory; receiving down payment information from a customer wishing to buy a product from the dealer; calculating a credit score for the customer; determining how much a lender will advance to the dealer (advance amount) for each product in the inventory (which need only include two products); calculating profits for the inventory items2 (using arithmetic based on the advance amount, dealer cost, and down payment); and presenting a financing package (with unspecified information) to the dealer for each product in the inventory. The underlying concept of claim 1, when viewed as a whole, simply is to receive information from a customer’s credit application, process that information, 1 Claim 10, at issue in this case, depends from claim 1. Thus, our analysis of claim 10 starts with claim 1. 2 Claim 1 does not recite using such profit information. Claim 12 later recites sorting the financing packages based on selectable criteria, which could be profit. dealer. Rephrased, this is the abstract idea of “processing an application for financing a purchase.” Claim 10 depends from claim 1 and adds providing generic computer structure for performing the steps of claim 1 (a “user terminal” for entering customer information; and a “server” connected to the user terminal “via a network,” for receiving information, accessing the database, performing claim 1’s arithmetic to generate financing packages, and transmitting the financing packages to the user terminal). Thus, claim 10 recites the same abstract concept as recited in claim 1, performed with generic computer components.” slip op. at 15
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“applying the steps of claim 1 (which we determined in CBM-008 to be abstract) using generic, conventional computer components, recited in purely functional language. Pet. 22–23. We agree, and conclude that the generic computer components recited in claim 10 do not transform the nature of the claim such that claim 10, as a whole, recites an inventive concept. Claim 1, from which claim 10 depends, recites a database, which stores information about a dealer’s inventory. Claim 10 adds to claim 1 a server for performing calculations, a user terminal for entering the information to be calculated, and a network for moving the information back and forth. As Petitioner argues, claim 10 provides no details as to the components are recited generically, using purely functional language. In essence, claim 10 recites applying the abstract idea of claim 1 using generic computer components. Put differently, claim 10 simply limits the method of claim 1 to a particular technological environment. This is analogous to the claims at issue in Alice, which generically recited a “data storage unit” and “computer,” for example (detailed more fully in the Federal Circuit’s opinion in CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1285–90 (Fed. Cir. 2013)), and those at issue in Accenture, 728 F.3d at 1344–45, which recited a “database,” “client component,” “server component,” and “automated method,” for example. In the words of the Alice Court, claim 10 essentially “[s]tat[es] an abstract idea while adding the words ‘apply it with a computer.’” 134 S. Ct. at 2358. Nor does claim 10 purport to improve the functioning of the computer itself. See buySAFE, 765 F.3d at 1354; compare with DDR Holdings, 773 F.3d at 1258 (“In short, the claimed solution amounts to an inventive concept for resolving this particular Internet-centric problem, rendering the claims patent-eligible.”).” slip op. at 23
Patent outcomesUS 6,950,807 unpatentableClaim construction§ 101 eligibilitycites BilskiPatents in suitUS 6,950,807 - The Jewelry Channel, Inc. USA D/B/A Liquidation Channel v. America’S Collectibles Network, Inc.All claims unpatentablePTAB · Oct 16, 2015 · CBM2014-00119 · APJ Brian J Mcnamara · CBM · Final written decision
Claims 1–39 are unpatentable under § 101, and the motion to amend proposing claims 40–42 is denied because those claims also recite patent-ineligible subject matter.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“In the ’211 Patent, the producer tests a plurality of prices throughout the auction. Preliminary indicators, e.g., the number of customers who press “1” to place an order at a particular price, provide statistics about how customers reacted to the offers at various test prices. In the ’211 Patent, the producer adjusts the demand curve by reducing the quantity available based 2 OIP was decided on June 15, 2015, shortly after Patent Owner filed its Reply to Petitioner’s Opposition to the Motion to Amend (Paper 28, “Opp. to Mot. to Amend”), and a month before the oral hearing in this proceeding. At our request, the parties filed post-hearing briefs on October 1, 2015, to address the implications of OIP. Paper 37 (“Petitioner’s Suppl. Brief”) and Paper 39 (“PO Suppl. Brief”). on customers’ reactions to the various price offers, and selects new prices based on the estimated outcome, i.e., expectations that additional customers will purchase units as the price is lowered. The ’211 Patent claims recite that these steps occur before the actual sale of an item being auctioned.” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“gathering steps, stating “[a]t best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.” Id. Thus, considered individually or as an ordered combination, the claim elements in OIP did not transform the claimed abstract idea into a patent eligible process. Id. Similarly, in the ’211 Patent, the remaining claim elements involve a conventional system interface, e.g., providing a website or a call-in telephone number and placing callers into a queue, routine data gathering, e.g., recording the time an inquiry enters the queue and storing the preliminary quantity of units in a database, and routine calculations, e.g., subtracting from the stored preliminary quantity of available units based on the number of customers who indicate they are prepared to make a purchase.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“ideas and purported inventive subject matter in our discussion of claims 1– 39. Additional elements such as a computer and ancillary conventional apparatus such as various databases storing information accessed by the computer, a call monitoring component that places a call into a queue and assigns the call to operator, an electronic call record that records the time the call was made, and an automated message, do not impose meaningful limits on the abstract idea of reducing the available quantity and the price during the auction based on the indicators that provide the auction producer confidence the customer will complete a purchase at that price (or a more favorable price) at the close of the auction. “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 Techs., Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010) (determining that a GPS receiver was a meaningful limit on the scope of the claims because, without the recited GPS receiver, it would be impossible to generate pseudo ranges that estimate the distance from a GPS receiver to a plurality of GPS satellites). In contrast, the limitations in the proposed amended claims recite elements of a general purpose computer that facilitate conducting a reverse auction more efficiently. Even limited to the context of an MSIRA, these added features do not limit the scope of the claim in a meaningful way because the reservation of units does not require a specific machine.” slip op. at 16
Patent outcomesUS 8,370,211 unpatentable§ 101 eligibilitycites Alice · BilskiPatents in suitUS 8,370,211 - Westlake Services, LLC D/B/A Westlake Financial Services, LLC v. Credit Acceptance Corp.All claims unpatentablePTAB · Mar 24, 2015 · CBM2014-00008 · APJ Gregg I Anderson · CBM · Final written decision
Claims 1–9, 13, and 34–42 are unpatentable under § 101 because they claim an abstract financing process implemented with routine computer use.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Claim 1 recites in pertinent part “calculating a front-end profit to be realized by the dealer for each individual product in the dealer inventory based on the dealer cost associated with each individual product, the advance amount determined for each individual product, and the down payment amount” (emphases added). The actual claim language as to calculation of the “front-end profit” is repeated in the Specification. Ex. 1001, 3:63–66. “Put simply, the front-end profit, is equal to the down payment amount plus the advance amount minus the dealer’s costs.” Id. at 8:60–63. “Advance amount” is construed immediately hereafter. Thus, we construe “front-end profit” to mean “the down payment amount plus the advance amount minus the dealer cost.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningNo construction neededOther
“Patent Owner’s cites to the Specification are not directly supportive of its proposed construction. PO Resp. 40–42. Patent Owner cites to the Nerenberg Declaration, as it did previously, for the proposition that automation of financing options through a computer is quicker than doing so manually. Id. at 41 (citing Ex. 2008 ¶ 53). The speed with which a computer may perform calculations is not a part of the construction of the term at issue. Further, we see no reason why the claims should be construed to require communication over a “network,” when the term is not recited in any of the challenged claims (but is recited in others, such as claim 14, for example). We determine that the term “receiving information from the customer” is plain on its face and requires no express construction.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“We conclude that claim 1 is directed to an abstract idea and, at most, merely recites implementing it with a computer. See Bilski, 130 S. Ct. at 3231. The abstract idea of processing an application for financing a purchase claimed is a known concept described in the ’807 patent. Ex. 1001, 1:33–2:50. Specifically, the ’807 patent describes processing a financing application as: a customer completing a credit application; obtaining financing from a financing institution; the customer providing a down payment and signing a promissory note to the dealer; and the financing institution paying the dealer the balance for the purchase after applying the down payment. Id. at 1:33–2:14. If the financing is not completed, the process is repeated. Id. at 2:15–50; see Tr. 34:6–35:10. Patent Owner’s arguments that the claims are directed to a specific method are relevant, if at all, to the second step of the Alice framework, not the first, and are therefore unpersuasive. We disagree that claim 1 taken “as a whole” is any more than an abstract idea relating to the general method of processing an application for financing a purchase. Claim 1 simply describes receiving information, including sale prices and dealer costs, for items in a dealer’s inventory; receiving down payment information from a customer wishing to buy a product from the dealer; calculating a credit score for the customer; determining how much a financer will advance to the dealer (advance amount) for each product in the inventory; calculating profits for the inventory items (using basic arithmetic based on the advance amount, dealer cost, and down payment); and presenting financing packages (with unspecified information) to the dealer. Ex. 1001, 12:56–13:14. The arguments and evidence presented by Petitioner are persuasive that claim 1 is directed to no more than this abstract idea, not tied to any specific machine, of processing an application for financing a purchase. Pet. 37 (citing Ex. 1006 ¶¶ 280, 285). Patent Owner’s evidence and arguments in this case do not persuade us otherwise. For purposes of the first step of Alice, Patent Owner has not distinguished any of the other independent or dependent claims from claim 1. Thus, we determine that Petitioner has proven that claims 1–9, 13, and 34–42 are directed to an abstract idea.” slip op. at 26
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for petitioner
“We are not persuaded that the claims include something beyond the abstract idea that transforms the claimed abstract idea into patent eligible subject matter. Merely using a computer to speed the steps of generating a financing package for each item of inventory is not such a transformation. See Bancorp Services, 687 F.3d at 1278 (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Likewise, the ability to create an “immediate offer” does nothing more than speed up that which can be done by a human. Although we agree that the claimed steps require a computer, there is insufficient evidence for us to conclude that the computer is being utilized for anything beyond routine or conventional use. We have reviewed the Nerenberg Declaration, including specifically paragraphs 130–153, and find it to be conclusory and lacking sufficient underlying facts or data. As such, we give the declaration minimal weight in our determination. See 37 C.F.R. § 42.65(a). As noted above, routine use of a computer is not enough to meet the inventive concept step of Alice. Ultramercial III, 772 F.3d at 716; see Alice, 134 S. Ct. at 2358 (“Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of additional featur[e] that provides any practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”) (citations and quotation marks omitted); Accenture, 728 F.3d at 1344–45 (claims reciting a “database,” “client component,” “server component,” and “automated method,” for example); CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1289 (Fed. Cir. 2013) (claims reciting a “data storage unit” and “computer,” for example). Even assuming some of the claimed steps were not previously known in the art is not alone enough to confer patent eligibility. Id. Moreover, the ’807 patent itself describes the steps in a financing process as they existed before the ’807 patent. Ex. 1001, 1:33–2:50. Thus, the record supports our conclusion that the steps of the method were known previously. Further, Patent Owner acknowledges the steps individually are known but argues the steps as a whole transform the claim into patentable subject matter. Tr. 31:21–32:1. This argument is not supported sufficiently by any evidence beyond attorney argument to persuade us of patent eligibility. Patent Owner argues that there are many ways of providing financing that do not require calculating either a “front-end profit” or an “advance amount.” PO Resp. 10 (citing Ex. 2008 ¶ 120). Mr. Nerenberg testifies that examples where the two terms are not required for financing are mortgages and student education loans. Ex. 2008 ¶ 120. Nevertheless, calculating an amount a lender will advance or an amount by which a dealer will profit from a transaction are routine, conventional activities for financial transactions. See, e.g., Ex. 1001, 1:34–2:10. Furthermore, our construction of the terms “front-end profit” and “advance amount” supports that they are conventional. Regardless, neither term, alone or in combination, “transform[s] the nature of the claim” into patent eligible subject matter. Mayo, 132 S. Ct. at 1294, 1297.” slip op. at 29
Patent outcomesUS 6,950,807 unpatentableClaim construction§ 101 eligibilitycites Alice · BilskiPatents in suitUS 6,950,807
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.