- The Kroger Company / Brookshire Grocery Company v. Nexuscard, Inc.All claims unpatentablePTAB · Mar 27, 2017 · CBM2015-00183 · APJ Minn Chung · CBM · Final written decision
Claims 1–11 are unpatentable under § 101 because they claim the abstract idea of collecting, storing, and processing membership discount information without an inventive concept.
RulingsFinal written decision- Burden
“Upon considering all of the evidence of record, we are persuaded Petitioner has demonstrated by a preponderance of evidence that claims 1 and 11 fail to recite any elements that individually or as an ordered combination transform the claimed abstract idea into a patent-eligible application.” slip op. at 34
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“communication means” Claimed Function: “providing real time (1, 8, 11) 2, 3 communication between [a point of purchase] member merchant’s computer terminal and [a centralized] provider’s computer” Corresponding Structure: a cash register with a communication capability, a credit card verification machine, a terminal, or a scanner, and equivalents “memory storage means” Claimed Function: “containing at least . . . (1, 11) consumer identification code” Corresponding Structure: a magnetic stripe on a card, and equivalents slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“real time “communication without intentional delay, communication” (1, 7, 11) given the processing limitations of the system and the time required to effect the communication” See Dec. on Inst. 8–11. The parties do not dispute these interpretations in their Patent Owner Response and Reply. For this Final Written Decision, after considering the complete record, we see no reason to deviate from those constructions and, therefore, maintain our constructions as set forth above. slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Under the approach described in Alice and further explained in Enfish, Internet Patents, and Electric Power Group, we are persuaded by Petitioner’s argument and evidence that claims 1 and 11 are directed to an abstract idea. As discussed above, Petitioner has shown that the claims recite a process to “collect, store, and process information about consumer memberships, merchants, manufacturers, and sales transactions” (Pet. 34), a process that qualifies as an “abstract idea” (id. at 71) of “conventional information processing” in the retail industry (id. at 72), for which conventional components, such as a magnetic stripe scanner, computers, and databases, are merely invoked as tools used in their ordinary and conventional manner (Pet. Reply 8–11). In Electric Power Group, the Federal Circuit explained that the “the realm of abstract ideas” includes “collecting information, including when limited to particular content.” Elec. Power Grp., 830 F.3d at 1353. The court determined, therefore, that the claims at issue were directed to an abstract idea because “the focus of the asserted claims” is “on collecting information, analyzing it, and displaying certain results of the collection and analysis.” Id. We are persuaded that claims 1 and 11 in this case are similarly directed to an abstract idea because Petitioner’s argument and evidence shows that the focus of the claims, the claims’ “character as a whole,” is on conventional information processing in the context of membership discount programs that use generic computers and conventional devices as tools to provide discounts without coupons.” slip op. at 18
Patent outcomesUS 5,924,080 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric PowerPatents in suitUS 5,924,080 - Google Inc. v. Better Food Choices LLCAll claims unpatentablePTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision
Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.
RulingsFinal written decision- BurdenOther
“As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask 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. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22
Patent outcomesUS 5,841,115 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · NautilusPatents in suitUS 5,841,115
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.