• Square, Inc. v. Electronic Receipts Delivery Systems, LLCAll claims unpatentable
  PTAB · Nov 29, 2021 · CBM2020-00015 · APJ Miriam L Quinn · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101 and the asserted Moran-based anticipation and obviousness grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “been “charged with infringement,” Pet. 10, but that statement does not foreclose reading that allegation as a charge of infringement against Petitioner. Under 37 C.F.R. § 42.302(a), “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” “[W]here a patent holder accuses customers of direct infringement based on the sale or use of a supplier’s equipment, the supplier has standing to commence a declaratory judgment action if,” for instance, “there is a controversy between the patentee and the supplier as to the supplier’s liability for induced or contributory infringement based on acts of direct infringement by its customers.” Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011); see also ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345 (Fed. Cir. 2011) (holding federal court had subject matter jurisdiction over claim for declaratory judgment of noninfringement where the plaintiff “had an interest in determining whether it would be liable for indemnification, which turned on whether [its contractor] would be liable for infringement”). Further, an allegation of direct infringement of a U.S. patent against the manufacturer’s customers may amount to an implicit allegation of indirect infringement against the manufacturer. Arris Group, 638 F.3d at 1375–76. Petitioner has shown persuasively that it sought to intervene in the district court litigation against its customers to “seek a declaratory judgement that [the] Square Register and Square’s other products and services do not infringe any valid claim of the ’551 [p]atent.” Ex. 1034, 3; Reply 1011. Patent Owner, the plaintiff in that suit, consented to the motion. Ex. 1034, 7; Reply 11. The district court granted Petitioner’s motion to intervene and Petitioner filed its Complaint in Intervention in district court, deeming Petitioner the “true defendant” in the dispute. See Reply 6; Ex. 1018. There is no question that the underlying district court litigation in which Petitioner seeks to assert non-infringement of the ’551 patent stems from Patent Owner’s allegations that Petitioner’s products directly or indirectly infringe the ’551 patent. These facts prove that Petitioner’s involvement in the district court litigation as an intervenor, together with Patent Owner’s accusation of infringement in its Answer and Affirmative Defenses, show a real and substantial controversy between Patent Owner and Petitioner. And the record shows that a federal court indeed has exercised jurisdiction over Patent Owner’s claim of infringement against Petitioner as intervenor, with Petitioner actually defending such a claim. This is sufficient to conclude that at the time of the filing of the Petition, Petitioner had been charged with infringement, and, therefore, had standing to file the Petition in this proceeding.” slip op. at 12

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

    “The parties do not identify claim constructions necessary for the Board to resolve the issues in this proceeding. Pet. 12; see generally Prelim. Resp.; PO Resp. We determine that it is unnecessary to expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms in controversy must be construed and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Skill levelOther

    “Petitioner proffers that [a] person of ordinary skill in the art . . . would have a Bachelor’s degree in Computer Science, Computer Engineering, Data Science or Electrical Engineering or any undergraduate degree plus three to five years of professional experience in software development, computer programming, or network engineering or equivalent additional formal education such as graduate studies, or work experience to replace formal education. Pet. 13 (citing Hochman Decl. ¶¶ 16–22). There is no dispute as to whether Petitioner’s proffered level of ordinary skill in the art is appropriate in this case. We do not find it necessary to define the level of skill with specificity save to note that the level of ordinary skill is evidenced by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating that the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown).” slip op. at 23

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

    “components “implemented in a generic computer environment” for performing that abstract idea. Pet. 68. Petitioner further annotates claim 1 to provide identifiers for each limitation. Id. For this part of the analysis, we address specifically limitation [vi], which recites “automatically transmitting a digital receipt for the transaction to the destination associated with the first customer without input from the first customer.” Limitation [vi] recites transmission of a credit card receipt according to instructions previously provided by the credit card user, which constitutes a fundamental economic practice, one of the certain methods of organizing human activity identified in the Guidance as a judicial exception. See Pet. 74 (arguing that issuing receipts for a purchase transaction is “nothing more than the organization of a fundamental and economic activity”). The claim’s recitation of an “automatic[]” transmission does not alter the fundamental business transaction recited in the claim: providing a customer a receipt for a credit card charge. The limitation provides no technological detail of how to automate the transmission of such a receipt or how to effectuate the delivery to a “destination.” See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.”). The recitation of a “digital” receipt does not alter our analysis either. The modifier adds only that the receipt is in electronic form. The claim language, however, is silent as to how such a receipt is generated or otherwise prepared for transmission to the credit card user. There is no technological detail that would place the “digital” receipt outside of an abstract idea of a fundamental economic practice of providing a credit card receipt to a customer. The other recited limitations also support our determination that the claims are directed to an abstract idea of a fundamental economic practice. For instance, in its simplest form the claimed process includes three basic steps: registering a customer e-mail address for receiving credit card digital receipts (steps [i]—[ii]), initiating a credit card transaction for a sales transaction of the customer (steps [iii]—[v]), and transmitting the digital receipt in accordance with the information received and stored in steps [i] and [ii]. Thus, the claim explains the basic concept of providing a credit card receipt to a customer. These recited steps place no meaningful limit on the claim scope, as the claim lacks specificity as to how any computer or database is specially programmed to perform the claimed steps. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.”). Each of claims 11 and 16 also recites the automatic transmission of a digital receipt for a credit card transaction to a user. Petitioner provides an explanation accounting for those claims, see id. at 93–94, and our analysis of claim 1 concerning the determination of an abstract idea equally applies to those claims. We determine that Petitioner has shown that claims 1, 11, and 16 recite a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Guidance as a judicially excepted abstract idea.” slip op. at 30

  Patent outcomesUS 8,534,551 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,534,551
• Marketdial, Inc. v. Applied Predictive Technologies, Inc.Institution denied
  PTAB · Mar 3, 2021 · CBM2020-00025 · APJ Justin T Arbes · CBM · Institution

  The Board denied institution of CBM review of claims 1–35 under Fintiv because the district court had already held the same claims invalid under § 101.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “institution decision.” Prelim. Resp. 6–7 (citing Snap, Paper 8). We agree. There will be no trial as to patent infringement because the district court already concluded that all claims of the ’916 patent are invalid under § 101. Patent Owner indicates that it will appeal that decision once the remainder of the district court case concludes. Id. at 3. The statutory deadline for a final written decision in this proceeding would be one year from institution. Under the particular factual circumstances of this case, we find that this factor strongly weighs in favor of exercising our discretion to deny the Petition.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached

    “3 Because we exercise our discretion to deny the Petition under 35 U.S.C. § 324(a), we need not decide other issues presented by the Petition, such as whether the ’916 patent is eligible for covered business method patent review.” slip op. at 8

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 8,571,916
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

  Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14

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

    “above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• NRT Technology Corp. / NRT Technologies, Inc. v. Everi Payments, Inc.Institution denied
  PTAB · Jan 22, 2016 · CBM2015-00167 · APJ Michael J Fitzpatrick · CBM · Institution

  The Board denied institution because Petitioner did not show any challenged claim was more likely than not unpatentable under § 101, Akel, or grounds relying on Reeder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We may not institute a CBM patent review “unless the Director[2] determines that the information presented in the petition . . . 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).3 Based on our review of the record, we conclude that Petitioner is less likely than not to prevail with respect to all of the challenged claims. Accordingly, we deny the Petition to institute a CBM patent review, as set forth below.” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “As Patent Owner points out, Petitioner has oversimplified the challenged claims. Prelim. Resp. 31. The challenged claims are not directed simply to the idea of providing money to an account holder or using trial-and-error until success is achieved. Rather, the claims are directed to particular methods of providing money to an account holder using an ATM via a POS transaction after an ATM transaction has failed. See Alice, 134 S. Ct. at 2354 (“Applications of such concepts to a new and useful end . . . remain eligible for patent protection.”) (internal quotation marks and brackets omitted). Further, Petitioner’s analysis omits any consideration of the elements of the claims as ordered combinations to determine whether the additional elements transform the nature of the claims into a patent-eligible application. It was Petitioner’s burden to do so. Petitioner has not shown that the claims are more likely than not patent-ineligible. Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “It is a petitioner’s burden to explain how a challenged claim should be construed and how, being so construed, it is unpatentable. 37 C.F.R. § 42.204(b)(3)–(4). Petitioner does not propose an express construction for “personal identification number” and does not show that its plain and ordinary meaning would include a password. Further, claim 1 requires entering a PIN into the terminal. In the context of the specification and surrounding claim language, this step is part of the claimed “method of providing money or an item of value to an account-holder.” The teaching on which Petitioner relies, however, relates to a system operator’s back-end access of the Akel system. See Ex. 1006, 6:58–62 (“Each system operator requires a password to access the system . . . .”) (emphasis added). Elsewhere, Akel describes a “customer” (distinct from a system operator) as using a kiosk to obtain cash. Id. at 2:56–3:11. But, Akel does not describe entering a password into a terminal, let alone a PIN, as part of that process. Thus, even if Akel’s password fell within the scope of the recited PIN, the Petition would still fail to show how its use by an operator “to access the system” (see Ex. 1006, 258–60) meets the recited “entering a personal identification number into the terminal” as part of the claimed “method of providing money or an item of value to an account-holder.” Petitioner has not shown that Akel teaches “entering a personal identification number into the terminal.” Accordingly, Petitioner has not shown that claim 1, or dependent claims 2–8, are more likely than not anticipated by Akel.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “The invention date of the ’792 patent is no later than its filing date, which is January 5, 1998. Although the Reeder application was filed, and thus privately known to Mr. Reeder, before the ’792 filing date, such private knowledge is not within the scope of § 102(a). See, e.g., Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986) (“The statutory language, ‘known or used by others in this country’ (35 U.S.C. § 102(a)), means knowledge or use which is accessible to the public.”). Reeder was 8 The AIA took effect on March 18, 2013. Because the application from which the ’792 patent issued was filed before that date, our citations to 35 U.S.C. § 102 are to its pre-AIA version. eventually patented of course but not until after the filing date of the ’792 patent. For these reasons, Reeder is not prior art under 35 U.S.C. § 102(a), which is the only provision under which the Petition asserted Reeder. Reeder presumptively is prior art to the ’792 patent under a different subsection of the statute, namely § 102(e). However, a reference that is prior art under only § 102(e) may not be asserted in a CBM patent review. Under the AIA, a Petition for a CBM patent review may challenge novelty or non-obviousness of a claim only on the basis of: (i) prior art that is described by section 102(a) . . . ; or (ii) prior art that— (I) discloses the invention more than 1 year before the date of the application for patent in the United States; and (II) would be described by section 102(a) . . . if the disclosure had been made by another before the invention thereof by the applicant for patent. AIA § 18(a)(1)(C). Because Petitioner has not shown that Reeder is prior art that may be asserted in a Petition for a CBM patent review, all of the grounds that rely on Reeder are denied.” slip op. at 15

  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice
  Patents in suitUS 6,081,792
• American Express Co. / American Express Travel Co. et al. v. Harvey LunenfeldAll claims unpatentable
  PTAB · May 22, 2015 · CBM2014-00050 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1, 5, 15, 21, 31, and 35 are unpatentable under §§ 101 and 103; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Patent Owner disagrees with Petitioner’s definition of PHOSITA” slip op. at 10

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

    “Accordingly, utilizing this framework, we analyze claims 1, 5, 15, 21, 31,” slip op. at 28

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

    “Accordingly, based on the evidence of record, we determine that the” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “1. Knowledge Broker is not a Metasearch Engine As discussed previously, we do not agree with Patent Owner’s assertion” slip op. at 57

  Patent outcomesUS 8,239,451 unpatentable
  § 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · Graham
  Patents in suitUS 8,239,451
• Regions Financial Corporation / Advance America, Cash Advance Centers, Inc. et al. v. Retirement Capital Access Management Company LLCAll claims unpatentable
  PTAB · Mar 23, 2015 · CBM2014-00012 · APJ Trenton A Ward · CBM · Final written decision

  Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim the abstract idea of advancing funds based on future retirement payments without meaningful additional limitations.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting “means for causing said . . . payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.5 As noted by Patent Owner (PO Resp. 34–35), the corresponding structure within the specification supporting the means-plus-function limitation is described as follows: “[b]enefits source 12 of system 10 5 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’582 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of § 112. disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” PO Resp. 34–35 (quoting Ex. 1003, col. 5, ll. 18–22). Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to require “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “For method claims 1 and 18, however, we are not persuaded by Patent Owner’s argument that the term “deposited” should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 35–39. More particularly, claims 1 and 18 do not contain means-plus-function limitations, like claims 13 and 30, that must be construed according to the corresponding structure within the specification. Furthermore, Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (citations omitted). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as noted above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer.” The specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 9

  • BurdenDecided for petitioner

    “We agree with Petitioner and determine that it has made a sufficient showing to support its §101 challenge. Neither the claims nor the specification of the ʼ582 patent describes particularly complex technological implementations or modifications of these technologies requiring the explanation of an expert. 35 U.S.C. § 6(a). In fact, the ’582 patent itself states that it describes implementing electronic funds transfer and direct deposit by “utiliz[ing] existing computer capabilities” and “utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, l. 2; col. 5, ll. 21–22 (emphasis added). Furthermore, the “without encumbering” limitation discussed above expresses an easily understood concept and recites no specific technological mechanism for achieving its result.” slip op. at 21

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

    “In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355. In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice, 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice, 134 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not dispute this. In the related case, CBM2013-00014, Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what they claim is the abstract concept” with respect to the challenged claims of the ’582 patent. CBM2013-00014, Paper 32 (Oral Hearing Transcript), 40; see CBM2013-00014 Final Decision, 13. Similar to the concept of intermediated settlement in Alice and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 14

  Patent outcomesUS 6,625,582 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 6,625,582
• U.S. Bancorp v. Retirement Capital Access Management CompanyAll claims unpatentable
  PTAB · Aug 22, 2014 · CBM2013-00014 · APJ Trenton A Ward · CBM · Final written decision

  Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim an abstract economic concept without meaningful additional limitations.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting a “means for causing said future retirement payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.3 As noted by Patent Owner (PO Resp. 29), the corresponding structure within the specification supporting the means-plus-function limitation states the following: “[b]enefits source 12 of system 10 disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, ll. 18–22. Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to mean “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Unlike the means-plus function claims, we are not persuaded by Patent Owner’s argument that the term “deposited” in method claims 1 and 18 should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 30–33. Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as cited above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer,” but the specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 8

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

    “In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp., 132 S.Ct. at 2355. In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 132 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 132 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not disagree. Tr. 40 (Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what [Petitioner] claim[s] is the abstract concept.”). Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 12

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

  Patent outcomesUS 6,625,582 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 6,625,582

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.