• Care N’ Care Insurance Co., Inc. / Trizetto Corp. v. Integrated Claims Systems, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · CBM2015-00063 · APJ Hyun J Jung · CBM · Final written decision

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

  RulingsFinal written decision

  • BurdenDecided for petitioner

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

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

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

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

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

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

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

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

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

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

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

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

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

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

  • Prior constructionPrior construction adoptedDecided for petitioner

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

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

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

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

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

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

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

  RulingsFinal written decision

  • BurdenDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 7,346,768 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,346,768
• Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,606,658
• Allscripts Healthcare Solutions, Inc. v. Mymedicalrecords, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski
  Patents 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.