• 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
• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00029 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1 and 9 are unpatentable under § 101 because they claim pre-authorized automatic auction payments using conventional computer components, without an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “4. Summary In summary, we determine that Petitioner has demonstrated by a preponderance of the evidence that all of the challenged claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 34

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

    “II. ANALYSIS A. Claim Construction In a covered business method patent review, we interpret claim terms in an unexpired patent according to the broadest reasonable interpretation in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes a construction for the claim term “web site.” Pet. 23. We, however, need not address the construction of any claim term to resolve the issues before us.” slip op. at 17

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

    “We agree with Petitioner that independent claim 1 is directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a payment account to automatically effect a pre-authorized financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7. The language of independent claim 1 supports the finding that it is directed to the abstract idea of using a payment account to automatically effect a pre-authorized financial transaction in an electronic auction. This claim recites a method for automatically effecting payment by a process that includes the steps of maintaining and storing funds in payment accounts for use in transactions in an electronic auction system; receiving authorization prior to an electronic auction to execute an automatic payment; and executing the automatic payment by deducting and transferring funds from a payment account. Ex. 1001, 18:20–53. This purchaser-seller arrangement is not meaningfully distinct from the financial arrangements found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”), and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a payment account to automatically effect a pre-authorized financial transaction is a fundamental economic practice.” slip op. at 22

  Patent outcomesUS 7,567,937 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski · Enfish · Electric Power
  Patents in suitUS 7,567,937
• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00026 · APJ Jameson Lee · CBM · Final written decision

  Claims 1, 6, and 7 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentable

    “Under the second step in the two-step Alice/Mayo analysis, a claim that recites an abstract idea must include “additional features” to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea. Alice, 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1297). We consider the claim elements “both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355. We determine whether the claims include an “‘inventive concept’” (i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself). Id. at 2357. The “additional features” must be more than “‘well-understood, routine, conventional activity.’” Ultramercial, 772 F.3d at 715. The Supreme Court in Alice cautioned that merely limiting the use of abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1297). “[M]ethod claims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention.” Id. at 2357. The Supreme Court in Bilski unequivocally stated that the prohibition against patenting abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Bilski, 561 U.S. at 610–11 (quoting Diamond, 450 U.S. at 191–92).” slip op. at 35

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

    “Petitioner provides two differently worded articulations of the alleged abstract idea to which the challenged claims are directed: (1) “pre- authorizing debits from a previously-funded electronic payment account to make payments in electronic auctions or electronic commerce” (Pet. 27), and (2) “pre-approving a transaction using a previously-funded account to effect an automatic payment” (id. at 29). These two articulations are essentially the same and Petitioner’s arguments are not different substantively based on one articulation as opposed to the other. Accordingly, we need to discuss only the first articulation (i.e., pre-authorizing debits from a previously-funded electronic payment account to make payments in electronic auctions or electronic commerce). The ’563 patent describes an electronic payment account as being similar to a bank account that stores funds which can be used to effect payment. Ex. 1001, 7:23–27. According to the challenged claims, the electronic payment account has funds pre-stored therein that can be used for effecting automatic payment. Dr. Neuman testifies that pre-funded accounts, such as bank accounts, are ubiquitous and are fundamental building blocks to commerce, and that bank accounts are almost universally kept electronically. Ex. 1005 ¶ 17. Dr. Neuman further testifies that, like the pre-funded account, pre-authorizing transfers is a well-known and conventional economic practice. Id. ¶ 18. Dr. Neuman notes that, for example, “financial institutions have, for decades, permitted customers to pre-authorize payments for recurring expenses such as monthly life insurance premiums, rent and mortgage payments, phone bills, or other utility bills,” and that “[m]any banks also allow customers to pre-authorize regular transfers of funds from a checking account to a savings account, thereby creating an automatic savings plan.” Id. We credit the above-noted testimony of Dr. Neuman as it is unrebutted. Claim 7 recites a step of setting up an electronic payment account, a step of automatically deducting funds stored within the electronic payment account due to at least one network-based transaction, and a step of automatically transferring at least a portion of the deducted funds to an account associated with an operator of the electronic commerce web site. These steps correspond fittingly to the alleged abstract idea of pre-authorizing debits from a previously-funded electronic payment account to make payments in electronic auctions or electronic commerce.” slip op. at 26

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

    “Under the second step in the two-step Alice/Mayo analysis, a claim that recites an abstract idea must include “additional features” to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea. Alice, 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1297). We consider the claim elements “both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355. We determine whether the claims include an “‘inventive concept’” (i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself). Id. at 2357. The “additional features” must be more than “‘well-understood, routine, conventional activity.’” Ultramercial, 772 F.3d at 715. The Supreme Court in Alice cautioned that merely limiting the use of abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1297). “[M]ethod claims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention.” Id. at 2357. The Supreme Court in Bilski unequivocally stated that the prohibition against patenting abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Bilski, 561 U.S. at 610–11 (quoting Diamond, 450 U.S. at 191–92).” slip op. at 35

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “To the extent that Patent Owner presents additional constitutional arguments regarding covered business method patent reviews separately, or arguments that the Oil States Court did not reach, we decline to consider those constitutional challenges. The “[a]djudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies.” Thunder Basin Coal Co. v. Reich, 510 U.S. 210, 215 (1994) (alteration in original) (quoting Johnson v. Robison, 415 U.S. 361, 368 (1974)). Although “[t]his rule is not mandatory” (id.), “a finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter” (Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995)). Considerations in determining whether an agency may decide a constitutional issue include whether “the constitutional issue . . . require[s] the agency to question its own statutory authority or to disregard any instructions Congress has given it,” and whether the defense would “disable the board from fulfilling its responsibility to decide the statutory claim presented to it.” Id. at 1569–70. Patent Owner challenges the constitutionality of congressional enactments, including the constitutionality of covered business method patent reviews as set forth in the AIA. Patent Owner’s constitutional arguments are not directed to a particular statutory provision—instead, they concern the entire statutory scheme of covered business method patent reviews, and often also include inter partes reviews. It is, however, our statutory duty to “conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32” (35 U.S.C. § 6(b)(4)), which include covered business method patent reviews (AIA § 18(a)(1)). Patent Owner, in generally arguing that those reviews are unconstitutional, would have us question our statutory authority and our ability to conduct those reviews— something we decline to do.” slip op. at 48

  Patent outcomesUS 7,512,563 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski · Enfish
  Patents in suitUS 7,512,563
• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00027 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1, 5, 6, 8, 34, 35, 45, and 48 are unpatentable under § 101 because they claim an abstract financial transaction implemented with generic computer technology.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “4. Summary In summary, we determine that Petitioner has demonstrated by a preponderance of the evidence that all of the challenged claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 35

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

    “We agree with Petitioner that independent claims 1, 35, and 45 are directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a previously-funded account to effectuate a financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7. The language of independent claims 1, 35, and 45 supports the finding that they are directed to the abstract idea of using a previously-funded account to effectuate a financial transaction in an electronic auction. These claims recite methods for effecting payment in the context of an electronic auction sale by a process that includes the steps of maintaining and storing funds in payment accounts; either debiting the purchaser’s funded payment account or withdrawing funds from a different account; and crediting the seller’s account. Ex. 1001, 16:31–64, 21:5–37, 23:47–24:11. This purchaser-seller arrangement is not meaningfully distinct from the financial arrangements found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”), and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a previously-funded account to effectuate a financial transaction is a fundamental economic practice.” slip op. at 21

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

    “Considering the claim elements as an ordered combination, each claimed method, as a whole, is simply indicative of the abstract idea of using a previously-funded account to effectuate a financial transaction in an electronic auction, applied using a website and a generic processor. See Alice, 134 S. Ct. at 2359–60 (explaining that the application of an abstract idea using some unspecified, generic computer is not enough to transform an abstract idea into a patent-eligible invention). There is no indication on the record developed during trial that these claims improve the functioning of a computer, or result in an improvement in any other technology or technical field. See id. at 2359. On the contrary, Dr. Neuman’s unrebutted testimony explains that the computer components recited in the claims add nothing that is not already present when the steps are considered separately, and viewed as a whole, the claims simply recite the well-known, conventional process of debiting and crediting a funded account. Ex. 1005 ¶ 46. Furthermore, there is no evidence of record that independent claims 1, 35, and 45 are like those of BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC (i.e., a “non-conventional and non-generic arrangement of known, conventional pieces”). 827 F.3d 1341, 1350 (Fed. Cir. 2016). BASCOM explains that where claims “merely recite the abstract idea . . . along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components[, s]uch claims would not contain an inventive concept.” Id. At most, the ’856 patent makes a known payment process, in which a buyer transfers payment to a seller for an item in an electronic auction, faster and more efficient through a computer system that allows for payment in real-time. See Ex. 1001, 3:63–4:4. That computer system, however, includes a set of generic computer components functioning in a generic way. See id. Fig. 1; Ex. 1005 ¶ 19. Meanwhile, the real-time payment replaces previously-known manual processes––namely, the need for a winning bidder to “draft a check, obtain a money order, or some other payment document, and mail it to the seller” (Ex. 1001, 2:63–65), “to type and transfer credit card information” (id. at 3:29), or for the website operator and seller to exchange e-mails to authorize a commission payment (id. at 3:18–20). “But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.” Credit Acceptance Corp., 859 F.3d at 1056 (alteration in original). Accordingly, we agree with Petitioner that for independent claims 1,” slip op. at 29

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “arguments regarding covered business method patent reviews separately, or arguments that the Oil States Court did not reach, we decline to consider those constitutional challenges. The “[a]djudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies.” Thunder Basin Coal Co. v. Reich, 510 U.S. 200, 215 (1994) (alteration in original) (quoting Johnson v. Robison, 415 U.S. 361, 368 (1974)). Although “[t]his rule is not mandatory” (id.), “a finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter” (Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995)). Considerations in determining whether an agency may decide a constitutional issue include whether “the constitutional issue . . . require[s] the agency to question its own statutory authority or to disregard any instructions Congress has given it,” and whether the defense would “disable the board from fulfilling its responsibility to decide the statutory claim presented to it.” Id. at 1569–70. Patent Owner challenges the constitutionality of congressional enactments, including the constitutionality of covered business method patent reviews as set forth in the AIA. Patent Owner’s constitutional arguments are not directed to a particular statutory provision—instead, they concern the entire statutory scheme of covered business method patent reviews, and often also include inter partes reviews. It is, however, our statutory duty to “conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32” (35 U.S.C. § 6(b)(4)), which include covered business method patent reviews (AIA § 18(a)(1)). Patent Owner, in generally arguing that those reviews are unconstitutional, would have us question our statutory authority and our ability to conduct those reviews— something we decline to do. III. CONCLUSION We determine that Petitioner has proven by a preponderance of the” slip op. at 39

  Patent outcomesUS 7,483,856 unpatentable
  § 101 eligibilitycites Alice · Bilski · Enfish · Electric Power
  Patents in suitUS 7,483,856
• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00025 · APJ Kevin F Turner · CBM · Final written decision

  Claims 13–15 are unpatentable under § 101 because they claim the abstract idea of using a loan to effect a financial transaction without an inventive concept.

  RulingsFinal written decision

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

    “We preliminarily determined that the information presented in the Petition established that the ’528 Patent qualifies as a covered business method patent that is eligible for review, and that it was more likely than not that the challenged claims are unpatentable under 35 U.S.C. § 101. Paper 8. Pursuant to 35 U.S.C. § 324 and § 18(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 329–31 (2011), we instituted a covered business method patent review as to all of the challenged claims. Id.” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “Considering the claim elements as an ordered combination, each claimed method, as a whole, is simply indicative of the abstract idea of using a loan to effect a financial transaction when a buyer has insufficient funds in his or her payment account. See Alice, 134 S. Ct. at 2359–60 (explaining that the application of an abstract idea using some unspecified, generic computer is not enough to transform an abstract idea into a patent-eligible invention). There is no indication on the record developed during trial that these claims improve the functioning of a computer, or result in an improvement in any other technology or technical field. See id. at 2359. On the contrary, Dr. Neuman’s unrebutted testimony explains that the computer components recited in the claims add nothing that is not already present when the steps are considered separately, and viewed as a whole, the claims simply recite the well-known, conventional process of debiting and crediting a funded account. Ex. 1005 ¶ 36. Furthermore, there is no evidence of record that independent claim 13 is like those of BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC (i.e., a “non-conventional and non-generic arrangement of known, conventional pieces”). 827 F.3d 1341, 1350 (Fed. Cir. 2016). BASCOM explains that where claims “merely recite the abstract idea . . . along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components[, s]uch claims would not contain an inventive concept.” Id. Rather, the ’528 Patent seems to indicate that the existing payment process is simply made faster and more efficient in that an immediate, real-time payment is made without the winning bidder having to access a payment page, through the use of a conventional computing network. See Ex. 1001, 4:30–34, Fig. 1; Ex. 1005 ¶¶ 20–24. Meanwhile, the method of independent claim 13 may offer an improvement to the previously-known manual processes identified in the ’528 Patent––the need for a winning bidder “to draft checks, obtain money orders, etc. and mail them to the various sellers” (Ex. 1001, 3:3–4), or to “enter his credit card information” (id. at 3:15), or for the website operator and seller to exchange e-mails to authorize a commission payment (id. at 3:26–34). “But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.” Credit Acceptance Corp., 859 F.3d at 1056 (alteration in original). Accordingly, we agree with Petitioner that the claim elements recited” slip op. at 29

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

    “in an unexpired patent according to the broadest reasonable interpretation in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes a construction for the claim term “web site.” Pet. 20. We, however, need not address the construction of any claim term to resolve the issues before us.” slip op. at 16

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

    “We agree with Petitioner that independent claim 13 is directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a loan to effectuate a financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7–8. The language of independent claim 13 supports the finding that it is directed to the abstract idea of using a loan to effect a financial transaction when a buyer has insufficient funds in his or her payment account. This independent claim recites methods for effecting payment by a process that includes the steps of providing the user with the option to enable the loaning of funds, through receipt of a user’s authorization, and loaning funds to effect the payment if insufficient funds are determined for a payment source. Ex. 1001, 20:13–37. This purchaser-seller arrangement is not meaningfully distinct from the activity relating to commercial practices found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”) and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a loan to effect a financial transaction when a buyer has insufficient funds in his or her payment account is a fundamental economic practice.” slip op. at 21

  Patent outcomesUS 7,627,528 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 7,627,528
• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00024 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1, 2, 15, 19, 20, 34, 40, 47, 48, 52, and 53 are unpatentable under § 101 as directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “6. Summary In summary, we determine that Petitioner has demonstrated by a preponderance of the evidence that all of the challenged claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 41

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

    “We agree with Petitioner that independent claim 1 is directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a previously-funded account or loan to effectuate a financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7–8. The language of independent claim 1 supports the finding that it is directed to the abstract idea of using a previously-funded account or loan to effectuate a financial transaction in an electronic auction. This independent claim recites methods for effecting payment by a process that includes the steps of creating payment accounts and storing funds therein for use in transactions in an electronic auction system; interacting with the winning bidder to effect payment to the seller through an authorization; and deducting funds from the payment account, whereby there is no requirement of interaction between the bidder and the seller. Ex. 1001, 19:50–20:39. This purchaser-seller arrangement is not meaningfully distinct from the activity relating to commercial practices found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”), and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a previously-funded account to effectuate a financial transaction is a fundamental economic practice.” slip op. at 22

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

    “those components. See, e.g., Ex. 1001, 7:9–13 (“The computerized electronic auction payment system 110 includes a database of electronic auction payment accounts 114 and a web server computer 116 having a processor 118 capable of executing a set of programmable instructions stored within a memory 119.”). Performing steps with a generic computer processor or on a website over the Internet does not add an inventive concept. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (claims reciting a generic computer element––a processor––do not contain an inventive concept); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“The claims’ invocation of the Internet also adds no inventive concept. As we have held, the use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under § 101.”). Again, Dr. Neuman’s unrebutted testimony supports this finding. Ex. 1005 ¶¶ 16–19. Lastly, limiting independent claim 1 to the particular technological environment of electronic auctions is not enough to impart patent eligibility. See Alice, 134 S. Ct. at 2358. Considering the claim elements as an ordered combination, each claimed method, as a whole, is simply indicative of the abstract idea of using a previously-funded account to effectuate a financial transaction in an electronic auction, applied using a website and a generic processor. See Alice, 134 S. Ct. at 2359–60 (explaining that the application of an abstract idea using some unspecified, generic computer is not enough to transform an abstract idea into a patent-eligible invention). There is no indication on the record developed during trial that these claims improve the functioning of a computer, or result in an improvement in any other technology or technical field. See id. at 2359. On the contrary, Dr. Neuman’s unrebutted testimony explains that the computer components recited in the claims add nothing that is not already present when the steps are considered separately, and viewed as a whole, the claims simply recite the well-known, conventional process of debiting and crediting a funded account. Ex. 1005 ¶ 102. Furthermore, there is no evidence of record that independent claim 1 is like those of BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC (i.e., a “non-conventional and non-generic arrangement of known, conventional pieces”). 827 F.3d 1341, 1350 (Fed. Cir. 2016). BASCOM explains that where claims “merely recite the abstract idea . . . along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components[, s]uch claims would not contain an inventive concept.” Id. At most, the ’244 Patent makes a known payment process, in which a buyer transfers payment to a seller for an item in an electronic auction, faster and more efficient through a computer system that allows for payment in real-time. See Ex. 1001, 3:55–65. That computer system, however, includes a set of generic computer components functioning in a generic way. See id. Fig. 1; Ex. 1005 ¶ 21. Meanwhile, the method of independent claim 1 may offer an improvement to the previously-known manual processes identified in the ’244 Patent––the need for a winning bidder to “draft a check, obtain a money order, or some other payment document, and mail it to the seller” (Ex. 1001, 3:9–11), or “to type and transfer credit card information” (id. at 3:39–43), or for the website operator and seller to exchange e-mails to authorize a commission payment (id. at 3:28–36). “But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the” slip op. at 30

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “To the extent that Patent Owner presents additional constitutional arguments regarding covered business method patent reviews separately, or arguments that the Oil States Court did not reach, we decline to consider those constitutional challenges. The “[a]djudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies.” Thunder Basin Coal Co. v. Reich, 510 U.S. 200, 215 (1994) (alteration in original) (quoting Johnson v. Robison, 415 U.S. 361, 368 (1974)). Although “[t]his rule is not mandatory” (id.), “[a] finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter” (Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995)). Considerations in determining whether an agency may decide a constitutional issue include whether “the constitutional issue . . . require[s] the agency to question its own statutory authority or to disregard any instructions Congress has given it,” and whether the defense would “disable the board from fulfilling its responsibility to decide the statutory claim presented to it.” Id. at 1569–70. Patent Owner challenges the constitutionality of congressional enactments, including the constitutionality of covered business method patent reviews as set forth in the AIA. Patent Owner’s constitutional arguments are not directed to a particular statutory provision—instead, they concern the entire statutory scheme of covered business method patent reviews, and often also include inter partes reviews. It is, however, our statutory duty to “conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32” (35 U.S.C. § 6(b)(4)), which include covered business patent reviews (AIA § 18(a)(1)). Patent Owner, in generally arguing that those reviews are unconstitutional, would have us question our statutory authority and our ability to conduct those reviews— something we decline to do.” slip op. at 43

  Patent outcomesUS 7,610,244 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 7,610,244
• CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00048 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional graphical interface features.

  RulingsFinal written decision

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 21, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 49. Patent Owner argues that “the claimed solution of the ’435 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the claimed implementation is neither conventional nor generic.” Id. at 50. Patent Owner contends that its claims are unlike Electric Power Group because “the ’435 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id. at 51–52. Instead, Patent Owner asserts that the challenged claims are “directed to an inventive device or technique for trading with a particular layout of elements and particular techniques, including alterable and selectable features, i.e., a specialized [graphical user interface] tool.” Id. at” slip op. at 28

  • 101 substituteMotion to amend, deniedDenied

    “of a limitation for pre-populating the price field, and an explicit limitation requiring that the adjustment of the price field occur using the up and down arrows. As we discussed above, allowing pre-population of data fields and modification of data fields using up and down arrows was known and does not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, the original claims already recited the up and down arrows to modify the price and size fields and this limitation only slightly narrows the claim to using those arrows, which were already present in the claim. As we discussed above, those up and down price arrows did not later our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” Merely, reciting that the already present arrows are used, does not limit the claim in any meaningful way. The explicit use of the arrows and pre-populating a data field are simply specifying how and in what order certain data are to be displayed, which without more, is still collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Amaranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42

  • ExcludeMotion to exclude, deniedMixed

    “paragraphs 59–97 of Mr. Molokhia’s Declaration (Exhibit 2027). Mot. Exclude 1. With respect to Exhibit 2026, Petitioner argues that the exhibit is not relevant under Federal Rules of Evidence 401 and 402, would lead to undue prejudice under Federal Rule of Evidence 403, and is inadmissible hearsay under Federal Rule of Evidence 802. Mot. Exclude 2–3. Patent Owner argues that the testimony is relevant, not prejudicial, and not hearsay. Opp. Exclude 3–8. We did not rely on Exhibit 2026, so we dismiss the motion to exclude as moot insofar as it applies to Exhibit 2026. With respect to paragraphs 59–97 of Exhibit 2027, Petitioner argues that they should be excluded under Fed. R. Evid. 702 and as “inadmissible conclusions of law.” Mot. Exclude 3. Petitioner argues that Mr. Molokhia fails to provide any underlying facts or data for his conclusions that the amended claims are not obvious. Id. at 5. Petitioner contends that “[w]ithout sufficient facts or data to support Mr. Molokhia’s opinion, such testimony stands as conclusory and unreliable, and thus inadmissible under F.R.E. 702 in view of the Supreme Court’s holdings in Daubert and Kumho.” Id. at 6. We disagree with Petitioner’s argument that Mr. Molokhia’s testimony should be excluded. We have reviewed Mr. Molokhia’s testimony and find that although phrased at times as the ultimate legal issue of obviousness, the bulk of his testimony goes to the underlying factual issues of obviousness. To the extent that the reasoning provided by Mr. Molokhia is insufficient, Petitioner’s arguments go more to the weight that should be given the testimony than its admissibility. See Microfinancial, Inc. v. Premier Holidays Int’l, Inc., 385 F.3d 72, 81 (1st Cir. matter affecting the weight and credibility of the testimony—a question to be resolved by the [factfinder].”). Thus, we deny Petitioner’s motion to exclude paragraphs 59–97 of Exhibit 2027.” slip op. at 45

  Patent outcomesUS 8,060,435 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,060,435
• CQG, Inc. / CQG, LLC et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00047 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–56 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer components; the motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “in all of the independent claims, should be construed as “a visual-based environment that enables an exchange of input and output between a user and a computer.” PO Resp. 15. Patent Owner bases its construction on a set of dictionary definitions for the terms “interface,” “graphical user interface,” and “interactive.” See Ex. 2012 (“interface”); Ex. 2013 (“interactive”); Ex. 2014 (“graphical user interface”); Ex. 2021 (“interactive”). Petitioner contends that Patent Owner is improperly importing limitations into this term. Pet. Reply 1–2. Petitioner argues that the term should be construed as a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the claims recite the second interface receiving input from the user, there is no discussion in the independent claims of displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the specification’s description of the graphical interface that the parties agree is what is attempted to be claimed as the “second interface.” The specification describes the “second interface” as follows: invention, a trader may enter the command using a command-line interface, click on a component of a bid and offer in a market cell, enter the command using a graphical interface, or may click on a piece of data in a data window. After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:8–23. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 9

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying trading commands (and for some claims also price information) and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 25, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “The use of a graphical user interface, a known way for a user to interact with the computer, does not change the generic nature of the computer. Merely reciting a generic computer and generic computer functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice.” slip op. at 27

  • 101 substituteMotion to amend, deniedDenied

    “limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42

  Patent outcomesUS 8,041,626 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,041,626
• CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00046 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–78 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer interfaces; the motion to amend is denied.

  RulingsFinal written decision

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 24, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 52. Patent Owner argues that “the claimed solution of the ’416 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the implementation is neither conventional nor generic.” Id. at 53. Patent Owner contends that its claims are unlike Electric Power Group because “the ’416 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id.” slip op. at 27

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the terms Patent Owner relies upon for its dictionary definitions is actually recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the independent claims recite the “second interface” receiving input from the user, there is no discussion of the second interface displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the claimed as the “second interface.” The specification describes a second interface as follows: After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:12–24. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 10

  • 101 substituteMotion to amend, deniedDenied

    “The only substantive amendments made to the claims are the addition of an explicit limitation requiring a “pointer device” as providing the input recited in the claims, an explanation that what is selected is the bid price or the bid price and offer price are pre-populated in the second interface. As we discussed above, these limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 40

  Patent outcomesUS 7,890,416 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 7,890,416

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