• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 28, 2016 · CBM2015-00037 · APJ Jacqueline Wright Bonilla · CBM · Final written decision

  Claims 52, 62, 67, 70–76, 81, 83–85, and 96 are unpatentable under § 101 because they claim the abstract idea of inventory management using generic computer components.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “degrees in inventory management or similar fields such as supply chain control or logistics” per se, and has “not studied, for a profession, the history of inventory management.” Id. at 34–35 (citing Ex. 2005, 16:14–21, 41:22– 42:3). According to Patent Owner, “Dr. Siegel admits he has no expertise in information management history and only attempted to educate himself in order to prepare his declaration.” Id. at 35. It is clear from Dr. Siegel’s testimony, however, that he has extensive experience in “the use of information technology with business strategy and operations,” has handled professionally “issues related to the integration of information” using computer and software systems, and holds advanced degrees in engineering and computer science. Ex. 1006 ¶¶ 3–11. We are satisfied that Dr. Siegel possesses sufficient qualifications to testify on matters that are relevant to our analysis here, including matters that do not concern the alleged “ancient” history of inventory management. PO Resp. 35. For example, Dr. Siegel testifies that relevant aspects of automated inventory management and VMI were well known before the priority date of the ’538 patent. Ex. 1006 ¶¶ 25–28 (citing Ex. 1018); Ex. 1027 ¶¶ 5–22 (citing Exs. 1020-1022, 1024, 1025). Dr. Siegel also testifies that the ’538 patent specification describes hardware and software that “require only generic computer implementation—not specialized hardware or software.” Ex. 1006 ¶¶ 43–54, 78–79, 89. In addition, Dr. Siegel discusses general concepts of inventory management using a computer and whether certain limitations of the challenged claims can be performed mentally, using pen and paper, or manually, without use of a computer. Id. at ¶¶ 40, 58–66, 80, 90.” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Both Petitioner and Patent Owner present constructions for several claim terms. Pet. 19–24; PO Resp. 12–23. For example, Patent Owner asserts that Petitioner misconstrues the term “customer” by defining it as “a buyer (person or organization) that uses the claimed inventory management.” PO Resp. 15; Pet. 19–20. Consistent with the specification of the ’538 patent, we adopt Patent Owner’s construction of “customer” as referring to a “buyer of products via the present invention” (Ex. 1001, 5:52– 56), i.e., a buyer of products using the inventory management system recited in the respective claims.” slip op. at 7

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

    “Patent Owner also presents constructions in relation to other claim terms such as “inventory restocking parameters provided by said customer,” “tracks” or “tracking,” “access” to information according to “assigned permissions or roles,” and “detecting.” PO Resp. 18–23. For many of the reasons stated in Petitioner’s reply to those constructions, we decline Patent Owner’s invitation to import inappropriately “computerized” aspects into those general terms, notwithstanding the fact that the challenged claims elsewhere recite computer components, such as a “computer,” “databases,” and “software.” Reply 23–25; see also Ex. 1001, 3:3–10 (stating that Customer Inventory System 130 allows manual inventory tracking). For purposes of this Decision otherwise, however, we need not expressly construe claim terms further. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “Based on the complete record before us, we determine that claim 67 is directed to the abstract idea of managing inventory in view of information. We are persuaded that managing inventory in view of collected and analyzed customer inventory, cost information, restocking information provided by a customer, as recited in claim 67, describes the basic concept of inventory management, i.e., a “fundamental economic practice.” Alice, 134 S. Ct. at 2356. The method of claim 67 is sufficiently similar in this regard to the method of hedging against financial risk at issue in Bilski, 130 S.Ct. 3218 (2010), and the idea of intermediated settlement at issue in Alice, 134 S. Ct. at 2356–57 (discussing Bilski). See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” (citation omitted)).” slip op. at 22

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 6,996,538

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.