- Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentablePTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision
Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner
“During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17
- Skill levelSkill level board ownDecided for petitioner
“Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23
Patent outcomesUS 8,606,658 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 8,606,658 - Allscripts Healthcare Solutions, Inc. v. Mymedicalrecords, Inc.All claims unpatentablePTAB · Aug 26, 2015 · CBM2015-00022 · APJ Barbara A Parvis · CBM · Final written decision
Claims 8–12 are unpatentable under § 101 as directed to nonstatutory subject matter; the Board did not reach the anticipation or obviousness grounds.
RulingsFinal written decision- BurdenUnpatentable
“Second, we consider the challenged claims as an ordered combination. Id. at 2359. On this record, when viewed as a whole, the challenged claims 8–12 simply recite the concept of user management performed by a generic computer. The challenged claims, for example, do not purport to improve the functioning of the computer itself. Nor do they improve another technology or technical field. Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims. Challenged dependent claims 9–12 add nothing that alters the above analysis under § 101. Claims 9, 10, 11, and 12 recite additional limitations, such as wherein the access information comprises a password, receiving files from a second provider, wherein the files comprise image format files including wills and powers of attorney, respectively. Based on the present record, these comprise either generic limitations, such as using a password for access or sending a file in a known image format, or they relate to organizing human activities, such as user management of legal and financial documents, in addition to health records. Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to non-statutory subject matter.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Petitioner asserts that claims 8–12 of the ’466 Patent are unpatentable under 35 U.S.C. § 101, because they are directed to the abstract concept of allowing individuals to manage and access their health records and other medical or legal files privately. Pet. 19. We agree with Petitioner that the claimed invention is directed to an abstract idea: privately managing files by the user. The preamble and all claim limitations of the challenged claims support this view of the claims, and the ’466 Patent consistently describes the invention as allowing an individual to control access to their medical records. See, e.g., Ex. 1001, 5:21–23. Management or control by the user or patient rather than by the health care provider is a method of organizing a human activity. On this record, the concept is an abstract idea, just like the basic hedging concept at issue in Bilski and the abstract idea of intermediated settlement in Alice.3” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We conclude that receiving and sending data is a routine and conventional computer function. As explained in Alice, “use of a computer to obtain data . . . and issue automated instructions . . . are ‘well-understood, routine, conventional actitiv[ies]’ previously known to the industry.” Alice, 134 S. Ct. 2359; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). Restricting access by password also is routine and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712–13, 717 (Fed. Cir. 2014) (determining that representative claim 1 is patent ineligible although it recites “a fourth step of restricting general public access.”). Similarly, providing a user interface is an insignificant activity. See Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1342–43 (Fed. Cir. 2013) (determining that claim 1 is patent ineligible although it recites a “claim folder,” which “manages claim information . . . by providing a structured and easy to use interface.”). Claim 8 includes additional recitations relating to how data is stored and managed on the server. We determine that these limitations recite generic functions performed by a generic server and computing device. Storing files is a basic computer function. See Alice, 134 S. Ct. at 2359 (“Using a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of the most basic functions of a computer.”). Additionally, regarding the recitation in challenged claim 8 of “wherein the files are maintained on the server independently from any files maintained by the health care provider” (Ex. 1001, 17:18–19 (emphasis added)), we note the representative claim in Alice had a similar recitation. See Alice, 134 S. Ct. at 2352. In particular, in Alice, the representative claim included the following:” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner additionally relies on the Declaration of Dr. Bysinger (Pet. 20–28), who testifies that the recited elements including “server,” “storing files . . . in a computer readable storage medium,” and “user interface on a computing device” were well-known conventional concepts in 2005. Ex. 1008 ¶¶ 30–32. Dr. Bysinger additionally states “the abstract idea of privately accessing and managing patient medical records . . . [has] existed since at least the promulgation of HIPAA.” Id. ¶ 33. We credit Dr. Bysinger’s statements because they are consistent with the challenged claims.” slip op. at 11
Patent outcomesUS 8,301,466 unpatentableClaim construction§ 101 eligibilitycites Alice · BilskiPatents in suitUS 8,301,466
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.