• Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentable
  PTAB · Mar 24, 2023 · IPR2021-01294 · APJ Sheila F Mcshane · IPR · Final written decision

  The Board held all challenged claims 1–25 unpatentable under the asserted obviousness grounds and denied Patent Owner’s contingent motions to amend.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Snap proposes that a person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Snap Pet. 3 (citing Snap IPR, Ex. 1002 ¶¶ 30–32); Snap IPR, Ex. 1022 ¶ 32. Snap further asserts that additional “education can supplement practical experience and vice versa.” Id. In the Decision on Institution, we determined that Snap’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’599 patent. Snap Inst. Dec. 6–7. For this proceeding, Patent Owner and Dr. Martin apply this level of skill in the art. Snap PO Resp. 11–12; Snap IPR, Ex. 2003 ¶¶ 48–50. Accordingly, for the reasons given in the Decision on Institution, we adopt Snap’s proposed level of ordinary skill in the art. Snap Inst. Dec. 6–7.” slip op. at 11

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

    “Dr. Martin also provides consistent testimony on this issue. Snap IPR, Ex. 2003 ¶¶ 81–82. Put simply, the Specification’s disclosure is that the set of rules for multiple content packages includes an expected response, and actions are then performed based on whether an expected response is or is not provided. Moreover, as Dr. Almeroth testifies, neither the claims nor the Specification use the term “unexpected response”—rather the Specification only identifies an “expected response.” Snap IPR, Ex. 1022 ¶ 42. Accordingly, the disclosures in Table 1 and the Specification support Dr. Almeroth’s testimony that a person of ordinary skill would have understood that “the claimed ‘determin[e/ing]’ limitation requires what it plainly recites: ‘determin[e/ing] whether the received response matches the expected response[]’. . . . [i]t does not require an unexpected response not known to the system.” Snap IPR, Ex. 1022 ¶ 51.” slip op. at 18

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

    “time,’ ‘type of location,’ and other contextual information to automatically determine whether users would like to undertake learning activities.” Twitter Pet. Reply 18 (citing Twitter IPR, Ex. 1005, 2 3, 5 (“A check . . . to see if the information from the database corresponds with the location sensor (i.e. a check on whether the learner is really keeping his/her schedule).”), Fig.1; Twitter IPR, Ex. 1025 ¶ 49; Twitter IPR, Ex. 1003 ¶¶ 85, 157–162, 238, 435, 451, 517; Twitter Pet. 20–21). Accordingly, the evidence of record support that Yau teaches that context triggers the display of a content piece, such as an exercise/test/quiz. Patent Owner also argues that Twitter asserts that PALLES’ content piece is “‘exercise[s],’ ‘test[s],’ and/or ‘MP Quiz[zes],’” but also contends that Yau’s “formal assessment” is the claimed content piece. Twitter PO Resp. 32. Patent Owner argues that “Twitter points back to its limitation 12.1 PALLAS evidence for the purported ‘content piece’” and also does not mention Yau for limitation 12.5 and 12.6 and “only conclusorily states that ‘PALLAS in view of Yau renders obvious triggering an exercise/test/quiz.’” Id. Patent Owner’s arguments overlook Twitter’s assertion, with Dr. Turnbull’s supporting testimony, that a person of ordinary skill in the art would have understood that Yau’s formal assessments are “tests with answers for comparing against learner’s responses to assess knowledge/performance/skill (contrasting with ‘un-assessed’ exercises whose responses are unchecked).” Twitter Pet. 43; Twitter IPR, Ex. 1003 ¶ 154. Further, Patent Owner overlooks Petitioner’s assertion that it is implementing PALLAS’s context-triggerbased content display using Yau’s teachings of displaying assessments/questions based on context. Twitter Pet. 43. Patent Owner also asserts that in the PALLAS-Yau combination, Twitter does not explain how a person of ordinary skill in the art would have combined the prior art in the manner Petitioner alleges. Twitter PO Resp. 42. Patent Owner argues that “PALLAS says nothing about forcing quizzes, tests, or exercises on its users without the users asking for such exercises,” and a person of skill would understand that the combined system still requires that a student select a learning activity and that PALLAS’s system should be unobtrusive because learners “may have small time slots to engage in learning.” Id. (citing Twitter IPR, Ex. 2013 ¶ 168; Twitter IPR, Ex. 1004, 54). Patent Owner further contends that “Twitter’s conclusory, hindsight-driven statements” do not suffice and PALLAS teaches away from the modifications suggested by Twitter. Id. at 42–43 (citing Twitter IPR, Ex. 2013 ¶ 144). Patent Owner argues that because a learner may not have time to complete a test, a person of ordinary skill in the art would not be motivated to change PALLAS to trigger exercises/tests/quizzes based on location or time. Id. at 43 (citing Twitter IPR, Ex. 2013 ¶¶ 142–144). The evidence of record does not support Patent Owner’s arguments.” slip op. at 115

  • ScopeMotion to amend, grantedGranted

    “2. Enlarging Scope of Claims Patent Owner asserts that it proposes narrowing limitations in direct response to the grounds of unpatentability involved in this proceeding. See, e.g., Snap Mot. 3–4. Facebook argues Patent Owner is “improperly attempting to enlarge the scope of the original claims.” Facebook Pet. Opp. 1. Facebook asserts, “[i]f ‘an expected response’ means one or more expected responses, therefore, determining whether the received response ‘matches the expected response’ means that the received response must match [all of] the one or more previously-recited expected responses in the content package.” Id. at 3 (emphasis omitted). Facebook then argues “the term ‘predefined response’ is broader than ‘expected response,’” because “an ‘expected response’ does not include any conceivable or possible response; it is a response that is expected.” Id. at 4–5 (emphasis omitted). Twitter argues that “‘predefined response’ is broader than ‘expected response’ because a ‘predefined response’ can include any possible response as long as that response has been somehow defined in advance.” Twitter Pet. Opp. 2. We consider the amendments in view of the claim as a whole. Although the term “one predefined response” may be broader than “an expected response,” we also consider the amended portion “wherein the received response is expected if the received response matches one or more of the at least one predefined response,” and “the received response is unexpected if the received response does not match any of the at least one predefined response.” Unless the response had been predefined within the content package, any “received response” could not be considered “expected” under the claims, and the additional clause requires a match of the response with the predefined response to be deemed “expected.” This equates to an equivalent scope to the original claim. This is consistent with Dr. Martin’s testimony, which we credit, that he is not aware of a situation where the substitute but not original claims are infringed because “[t]he substitute claims would only be satisfied when a ‘predefined response’ in the substitute claims is an ‘expected response’ in the original claims.” Facebook IPR, Ex. 2023 ¶ 59.” slip op. at 136

  Patent outcomesUS 8,489,599 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 8,489,599
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision

  Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32

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

    “analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17

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

    “Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23

  Patent outcomesUS 8,671,057 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish
  Patents in suitUS 8,671,057
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 24, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Final written decision

  Claim 6 is unpatentable under § 103 over Higgins and Metcalfe and over Furukawa; the contingent motion to amend with substitute claim 30 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “implementation of communications systems and controlling these systems (or similar types of systems) through the use of computer technology.” Ex. 1001 ¶ 33. Patent Owner’s declarant, Dr. Samuel H. Russ (“Dr. Russ”) stated that, a person of ordinary skill in the art relevant to the ’956 patent would have had a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, and two to five years of post-degree experience in a similar field. Ex. 2018 ¶ 27. Thus, the parties’ assessments of the level of ordinary skill in the art are roughly equivalent. Based on our review of the ’956 patent, the types of problems and solutions described in the ’956 patent and cited prior art, and the testimony of Petitioner’s declarant and Patent Owner’s declarant, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 13

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

    “instructed that “claims should always be read in light of the specification and teachings in the underlying patent.” PO Resp. 12 (emphasis omitted) (quoting Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). Furthermore, the specification “is the single best guide to the meaning of a disputed term.” Translogic Tech., 504 F.3d at 1257 (quoting Phillips, 415 F.3d at 1315). Accordingly, we must construe the term “module” for claim 6 of the ’956 patent in light of the disclosure in the ’956 patent specification regarding “modules.” In accordance with the ’956 patent specification, there are various types of modules, such as program modules, object modules, and data modules; thus, the general term “module” cannot be construed to be limited to one of these types of modules. Patent Owner acknowledges that the ’956 patent specification discloses a “data module” as a type of “module.” PO Resp. 15 (citing Ex. 1003, 248:58–249:30). Patent Owner fails, however, to persuasively explain how the disclosed “data module” would meet its proposed definition of a “module” being “a discrete unit of a larger computer program . . . .” For example, it is unclear how a “data module” containing the “particular cost-of-a-trimmed-pork-belly-unit” (Ex. 1003, 189:4–9) constitutes a discrete unit of larger computer program. Patent Owner fails to cite any disclosure in the specification of the ’956 patent that restricts a “module” to be “a discrete unit of a larger computer program.” Although the specification of the ’956 patent does not limit modules to be a discrete unit of a larger computer program, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Ex. 1003, 186:10–17, 188:35–37, 188:59–61. For example, with respect to one embodiment of the data module, the ’956 patent specification discloses that “[e]xecuting the information of said intermediate generation set causes computer, 73, also to generate a particular associated data module.” Id. at 188:59–61. Similarly, with respect to one embodiment of the object module, the ’956 patent specification discloses that “computer, 73, compiles the information of said instance and places the resulting so-called ‘object module’ at particular memory.” Id. at 188:35–37. Likewise, with respect to one embodiment of the program module, the ’956 patent specification discloses that computer 73 compiles “formula-and-item-of-this-transmission information into a machine language program module; and . . . link[s] said module to other program modules.” Id. at 186:10–17. Accordingly, we are persuaded to modify our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Dec. to Inst. 8) to incorporate being executed by a computer to perform a specific function. Therefore, we construe the term “module,” in view of the specification of the ’956 patent, as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” We note that a discrete unit of digital data can be a set of commands or instructions that can be executed and/or processed to perform a specific function.” slip op. at 8

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

    “subscriber specific action in respect to said problem or interest.” Petitioner argues that the “recommending” limitation not be assigned patentable weight as printed matter. Pet. 6 (citing In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) and MPEP § 2111.05). In Kao, the Federal Circuit determined that the printed matter doctrine applied because there was “no functional relationship” between the disputed limitations (Kao, 630 F.3d 1073), but here the “recommending” step in claim 6 requires outputting the “subscriber specific action” in “video, audio, or print.” Therefore, we are not persuaded by Petitioner that the printed matter doctrine is applicable to the “recommending” step in claim 6. Patent Owner argues, regarding this “recommending” step, the term “recommend” should be construed to mean “to suggest a choice or a course of action.” PO Resp. 19.4 In support of its proposal, Patent Owner cites two dictionary definitions of the term “recommend.” PO Resp. 20 (citing Exs. 2006, 2007). The first definition, from Cambridge Dictionaries, defines “recommend” as “to suggest that someone or something would be good or suitable for a particular job or purpose, or to suggest that a particular action should be done.” Ex. 2006, 1. The second definition, from the American College Dictionary, defines “recommend” as “to advise a person, etc. to do something.” Ex. 2007, 3. The specification of the ’956 patent uses the term “recommended” to describe a proposed planting plan for minimum cost and maximum revenue: When accessed, the instructions of said module cause a microcomputer, 205, to analyze any given crop planting plan and generate information of a recommended planting plan and growing method that minimizes the expense of insect and other crop pest damage given maximum revenue. Ex. 1003, 275:11–16. We determine the dictionary definitions of “recommend” comport with the use of that term in the specification ’956 patent and with the ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech, 504 F.3d at 1257. Therefore, we are persuaded by Patent Owner’s proposed definition. Accordingly, we construe the claim 6 limitation of “recommending in outputted video, audio, or print subscriber specific action in respect to said problem or interest” to mean “suggesting a 4 We note that claim 6 does not include the term “recommend” but recites “recommending.” choice or a course of action in outputted video, audio, or print subscriber specific action in respect to said problem or interest.”” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “teach the claim 6 step of “generating at least a portion of a module including said selected generally applicable information.” PO Resp. 33. Specifically, Patent Owner argues that the proposed combination fails to teach generating a module that is a “discrete unit of a larger computer program that is executed and/or processed to perform a specific function,” in accordance with Patent Owner’s proposed construction of “module.” Id. As discussed above, we do not adopt Patent Owner’s construction of “module” but construe “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.” Petitioner proposes that the generation of an Ethernet packet according to Metcalfe would result in a “module including said selected generally applicable information” to communicate the trade information disclosed in Higgins from a branch computer to a work station. Pet. 28–29 (citing Ex. 1001 ¶¶ 75–78, 89, 95– 96; Ex. 1007, 3:1–3; Ex. 1009, 395). Petitioner argues that this packet is generated at the branch computer before it is transmitted to the work stations. Ex. 1001 ¶¶ 94, 96. In view of Higgins’s disclosure of regarding the processing of the trade information, including the stock symbol, prices of the stock, and volume traded (Ex. 1007, 4:45–49, 2:24–47), to generate a price limit alert to be displayed on the work station CRT in Higgins (Ex. 1007, Fig. 2), we determine that Higgins in view of Metcalfe teaches or suggests “generating at least a portion of a module including said selected generally applicable information,” wherein a “module” is construed to mean “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 21

  Patent outcomesUS 7,864,956 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 7,864,956
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 22, 2016 · IPR2014-01534 · APJ Georgianna W Braden · IPR · Final written decision

  Claim 9 is unpatentable as obvious over either Monat or Calo; the motion to amend with substitute claim 22 is denied because Patent Owner did not establish its patentability under § 101.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Based on our review of the ’587 patent, the types of problems and solutions described in the ’587 patent and cited prior art, the testimony of Petitioner’s declarant, and the testimony of Patent Owner’s declarant, we find that a person of skill in the art relevant to the ’587 patent would have had a Bachelor of Science in Electrical Engineering or a closely related field and at least two to five years of post-degree experience in a similar field. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 23

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

    “explicitly the term “incomplete processor instructions,” and the embodiments in Examples Nos. 93 and 10, as discussed by Patent Owner, do not use or recite the term “incomplete processor instructions.” See Ex. 1002, 183:1–220:21. In fact, the term is not used in the specification except in claims 9 and 10. Although, the embodiments in Examples Nos. 9 and 10 as cited by Patent Owner are instructive, we are unpersuaded by Patent Owner’s argument that claim construction should only be guided by those examples and not by the specification in its entirety, especially in light of the patent applicant’s statements during the prosecution the ’587 patent discussed above. Rather, the disclosure in the ’587 patent teaches embodiments that use the word “incomplete” to refer to commands, signals or other instructions that are not yet in the form in which they will be transmitted to a subscriber station. See id. at 28:34–49. Specifically, the specification discloses that “[i]n a system that communicates information only in words that are multiples of eight, a signal whose information is represented in twenty-one” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “claimed invention and any commercial success or industry praise. Patent Owner also failed to demonstrate a long-felt but unmet need for the claimed invention. We, thus, find that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over Monat. f. Conclusion of Analysis Regarding Monat For the foregoing reasons, and weighing the evidence as a whole, Petitioner has proven by a preponderance of the evidence that Monat teaches all elements of challenged claim 9 of the ’587 patent. We determine the record supports Petitioner’s contentions as summarized above and adopt the supported contentions as our own. Furthermore, we conclude that understanding Monat’s teachings as it applies to claim 9 would have been within the level of ordinary skill in the art, as evidenced by the prior art of record. We, therefore, determine that claim 9 would have been obvious at the time of the invention, and thus, is unpatentable under 35 U.S.C. § 103.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 50–51 (citing Ex. 2008). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2008 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). Additionally, Mr. Holtzman’s testimony lists patent family licenses and revenue, but does not discuss the merits of any of the challenged claims as they relate to any particular license for the ’587 patent in the portfolio of licenses. See PO Resp. 50 (citing Ex. 2008). We, therefore, find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’587 patent and the taking of the noted licenses. Although, Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2008 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’587 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 41

  Patent outcomesUS 7,827,587 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Markman · KSR · Graham
  Patents in suitUS 7,827,587
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01533 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 2, 3, 9–13, 18, 24, 49, 52, and 53 are unpatentable as obvious over Powell and Guillou; the motion to amend substitute claims 56–67 is denied.

  RulingsFinal written decision

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

    “We agree with Petitioner’s position. Particularly, we credit the testimony of Petitioner’s witness, Mr. Anthony J. Wechselberger, who explains that Campbell, Block, and Furukawa teach “force” or “automatic” tuning of a receiver, i.e., “sending a signal that forces a receiver to tune to a particular channel” and that such technology was well-known in 1981. Ex. 1035 ¶¶ 122–125. Patent Owner and Patent Owner’s expert, Dr. Weaver, also acknowledged that Furukawa teaches that a television system in which a signal is received from a central facility that causes the television to tune to a different channel. Mot. 15 (stating that “Furukawa describes the operation of a spot channel wherein a television set receiving any channel may be forced by a central facility to receive a spot channel”); PO Reply to Opp. 3 (discussing prior art “disclosure of the ‘automatic channel tuning’ feature which [Patent Owner] has already acknowledged in Furukawa”); Ex. 1038, 137:11–24, 140:16–21, 145:1–11. Patent Owner’s witness testified that “[a] person of ordinary skill in the art before 1981 would have known that you could send a signal to a properly equipped and responsive television and make it change channels.” Ex. 1038, 136:19–24. Additionally, other references (i.e., Hartung and Cogswell) that disclose “automatic channel tuning” are cited in the prosecution history of the ’749 patent. PO Reply to Opp. 3 (citing Exs. 1045, 1046). According to Patent Owner, these references describe “the state of the art.” Id. Thus, we are satisfied that “automatic channel tuning,” as taught by Campbell, Block, and Furukawa, was known to a person of ordinary skill in the art at the time of the invention of the ’749 patent. Although Patent Owner argues that applying such “automatic channel tuning” to digital television systems (rather than using analog television systems) would have been difficult and that one of ordinary skill in the art would not have been motivated to use such technology to change channels and to send encrypted digital data (Mot. 20–23; PO Reply to Opp. 10–11), we are not persuaded given the state of the art as shown by Guillou, discussed in detail previously. Guillou discloses the decryption of digital data (Ex. 2014 ¶ 85) and explains that such technology “could be applied to other systems without difficulty for the man skilled in the art, and notably to the CEEFAX or ORACLE systems or the VIEWDATA or PRESTEL systems” (Ex. 1022, 21:23–28). The Ceefax, Oracle, Viewdata, and Prestel systems are analog systems that send signals over television channels or telephone lines. Therefore, we are satisfied that a person of skill in the art would have had reason to use “automatic channel tuning” and apply digital encryption technology in order to “transmit messages to a receiver station on a first communication channel that, when processed by the receiver station, causes the receiver station to connect [to] a communication channel different from the first channel to receive encrypted programming or data.” Accordingly, we find that Patent Owner has not demonstrated the patentability of proposed substitute claims 56–62.” slip op. at 37

  • BurdenUnpatentable

    “We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”).” slip op. at 16

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

    “We disagree with Patent Owner’s contentions, because (1) we agree with Petitioner’s explanation of why a person of ordinary skill in the art would have combined the teachings of Powell and Guillou, and (2) we agree with Petitioner’s arguments regarding the collective teachings of Powell and Guillou from the perspective of one of ordinary skill in the art. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). To the contrary, we agree with Petitioner’s contentions with respect to claim 2 and adopt them as our own. We specifically credit the testimony of Mr. Slinn that a skilled artisan would have looked to the teachings of Guillou in combination with Powell in an attempt to solve the problem of controlling access to content and providing billing opportunities for content (even advertising content) accessible via a videotext system and address the same problem–control and management of those communications. See Ex. 1004 ¶ 100. We also are satisfied that Petitioner has shown that one of skill in the art would have had the ability to apply the teachings of Guillou to Powell, because Guillou specifically states that its methods are applicable to the Prestel system discussed in Powell “without any difficulty for the man skilled in the art.” Ex. 1022, 21:23–28. Such points weigh in favor of finding that a person of ordinary skill in the art would have “fit the teachings” of Guillou and Powell together to render the challenged claims obvious. See KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Rather, “the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” See id. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Thus, Patent Owner’s contentions regarding backward compatibility are not persuasive and fail to show that a skilled artisan would have been discouraged from combining the teachings of the cited references in the manner claimed.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “We are not persuaded. In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were a less costly alternative to defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added) (citation omitted). Moreover, our reviewing court has held that “without a showing of [a] nexus, ‘the mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness.’” In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (quoting Iron Grip Barbell, 392 F.3d at 1324). Like the applicant in Antor Media, Patent Owner has done little more than cite to the declaration of Mr. Gerald Holtzman, which lists licenses and their respective sales revenue. See PO Resp. 52 (citing Ex. 2018). The cited testimony of Mr. Holtzman only details the revenues for each license and does not establish whether the licensing program was successful because of the merits of the claimed invention, the merits of other patented inventions, or for other economic reasons, such as to avoid litigation or because of prior business relationships. See Ex. 2018 ¶¶ 8–27; see also Antor Media, 689 F.3d at 1294 (affirming Board’s finding that evidence of existence of licenses was insufficient to overcome prima facie case of obviousness). We find that the evidence provided by Patent Owner does not establish a sufficient link between the merits of the invention claimed in the ’749 patent and the taking of the licenses. Although Mr. Holtzman notes that some of the provided licenses were taken in situations where there was pending litigation against the licensee (Ex. 2018 ¶ 14), he does not address whether litigation had been threatened against other licensing parties. Furthermore, evidence of $350M in licensing revenue alone is not enough to show commercial success, because Patent Owner must relate that figure to the overall market. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“Information solely on numbers of units sold is insufficient to establish commercial success.”); see also In re Huang, 100 F.3d at 140 (“Declining to find evidence of commercial success because ‘[a]though [the inventor’s] affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.’”). We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’749 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, Patent Owner’s evidence of licensing fails to establish commercial success. Accordingly, we give little weight to Patent Owner’s argument that its licensing program is evidence that the claims are not obvious.” slip op. at 26

  Patent outcomesUS 7,805,749 unpatentable
  § 101 eligibility§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,805,749
• 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
• SAP America, Inc. v. Lakshmi ArunachalamRehearing denied
  PTAB · May 22, 2015 · CBM2014-00018 · APJ Brian J Mcnamara · CBM · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 4–6 and 9–10 unpatentable based on the prior final written decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “§ 42.6(a)(3). We consider only those arguments advanced in Patent Owner’s Request for Rehearing concerning subject matter Patent Owner contends we overlooked or misapprehended in our Final Written Decision. 37 C.F.R. § 42.71(d). We are not persuaded by Patent Owner’s argument that we misapprehended or overlooked that the subject matter of the ’158 Patent is drawn to a technical solution to a technical problem because Patent Owner coined terms such as POSvc application, VAN service, object routing, service network, and VAN switch. Req. Rh’g. 3–4. We addressed these issues extensively in our Final Written Decision, noting that claim 1, from which claim 4 depends, is directed to a method of performing a transaction that includes providing a webpage for display, providing an application the user can select to access checking and savings accounts, accepting signals from an input device, and transferring funds. Final Dec. 14. We also addressed the terminology used in the claims and determined that none of these features changes the non-technological nature of the claim. Id. at 13–15. Patent Owner has not identified any matter that we overlooked or failed to apprehend on this issue.” slip op. at 5

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

    “In a conclusory fashion, Patent Owner states that we have erroneously applied the Supreme Court’s Decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Req. Rh’g. 15. However Patent Owner does not otherwise address our conclusion that claims 9 and 10 are unpatentable subject matter under 35 U.S.C. § 101 and does not explain how we misapplied the Court’s decision in Alice.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Patent Owner takes a similar approach to our analysis of the prior art, stating that SFCU and Computerworld did not conduct real-time transactions and that Lawlor operates over phone lines. Id. at 15. However, the Request for Rehearing does not address our combinations of the art, i.e., Lawlor and Computerworld, Final Dec. 20–23, and EB and SFCU, id. at 23–26, along with CORBA 1 and CORBA 2, id. at 26–36. Patent Owner does not address the further combination with respect to claims 5 and 6 with SNMP.” slip op. at 7

  § 101 eligibility§ 103 obviousnesscites Alice
  Patents in suitUS 8,037,158
• American Express Company / American Express Travel Related Services Company, Inc. et al. v. Metasearch Systems, LLCAll claims unpatentable
  PTAB · Mar 13, 2015 · CBM2014-00001 · APJ Howard B Blankenship · CBM · Final written decision

  Claims 2, 6, and 8 are unpatentable under §§ 101 and 103(a); Patent Owner’s motion to amend is denied.

  RulingsFinal written decision

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

    “In this case, representative claim 2 recites eight steps for a search that is “associated with at least one travel related item,” and which include receiving the search results, communicating the results along with an advertisement, receiving an order for the item, and processing the order. See Ex. 1001, col. 145, ll. 33–61. Although the claimed process requires computer hardware and software (e.g., step (a) of claim 2, “receiving a Hypertext Transfer Protocol request from a client device”), we agree with Petitioner that the claim embraces 5 The Court’s decision is sometimes referenced as Ultramercial III. The Federal Circuit heard the second appeal from the U.S. District Court after the Supreme Court vacated the Federal Circuit’s first decision. 772 F.3d at 711–12. the abstract idea of marketing an item on a metasearch Web site with keyword ads and providing a way to order the item.” slip op. at 13

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

    “Next, or in step two of the analysis, we search for an “inventive concept”— i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Alice, 134 S. Ct. at 2355. In this case, the claims recite, for the most part, an ordered combination of steps that contain Internet operations that were conventional at the time of invention. For example, the claims recite communicating with a client device using a Hypertext Transfer Protocol [HTTP]. Momma.com demonstrates that browsers on Internet client devices used such a protocol at the time of invention. See Ex. 1005, 10 (for “Microsoft Internet Explorer,” go to the address “http://www.mamma.com”). The claims further recite a “metasearch engine,” which also was conventional at the time of invention. See id. at 5 (“Mamma is a meta search engine”); see also Prelim. Resp. 3 (Patent Owner did not claim that “metasearching” was novel at the time of invention). Patent Owner argues that designing more than a “rudimentary” metasearch engine in the late 1990’s was not a trivial task. PO Resp. 44. The argument is premised on the assumption that the claims require more than “rudimentary” metasearching. The claims recite, however, as in claim 2, a “metasearch engine to send at least one search query to a plurality of unique hosts”—e.g., a metasearch engine capable of sending a single search query to a plurality (e.g., two) different hosts. The claims are drawn to implementing the abstract idea of marketing an item on a metasearch Web site with keyword ads and some way to order the item with routine, conventional activity. Such an implementation does not transform the abstract idea into patent eligible subject matter.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “5. Combining Knowledge Broker and Mamma.com Patent Owner argues that a person of ordinary skill in the art would not have been motivated to combine the “disparate technologies” of Mamma.com and Knowledge Broker and would not have known how to do so “without complex, lengthy, and uncertain experimentation.” PO Resp. 62. According to Patent Owner, the “two technologies” of “metasearch engines and structured e-commerce comparison shopping services providing product purchase functionality and associated advertisements—were vastly different technologies during the late 1990s and in particular in 1999-2000.” Id. at 59. A person of ordinary skill in the art would “not have been motivated to combine metasearch engines with structured e-commerce comparison shopping sites due to numerous other technical challenges present at the time.” Id. at 63. We agree with Petitioner, however, that the claims do not require addressing the “technical challenges” submitted by Patent Owner. Pet. Reply 11–12. Adding advertisements to Knowledge Broker would not require combining a metasearch engine with other “technologies” such as “structured ecommerce comparison shopping sites.” For example, the advertisements could be supplied from the hosts. Patent Owner acknowledges there is no limitation as to where the advertisement comes from. Tr. 61:20–25.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersNot shown unpatentableDecided for petitioner

    “The Declaration does not point to any evidence in the record in support of the allegations. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Moreover, Dr. Carbonell does not allege, let alone show, that others tried and failed to solve the problem allegedly solved by the ’924 patent. See Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.”); In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (declarations that failed to show a long-felt need and failure of others to meet that need, and which offered only opinion evidence that has little value without sufficient support, were insufficient to establish nonobviousness). Further, on this record, the “desirability of combined search and shopping functionality” (Ex. 2006 ¶ 40) was not unmet at the time of invention. Patent Owner acknowledges that e-commerce services that allowed a user to query structured databases predated the invention. E.g., PO Reply 8–9, 12, 62 (discussing “SoftBot” and “ShopBot” e-commerce services). For the foregoing reasons, we find that Patent Owner’s evidence in support of a long-felt but unmet need is entitled to little weight in support of nonobviousness.” slip op. at 29

  Patent outcomesUS 8,326,924 unpatentable
  § 101 eligibility§ 103 obviousnesscites Mayo · Bilski · Phillips · KSR · Graham
  Patents in suitUS 8,326,924
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Mar 6, 2015 · CBM2014-00018 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 4–6 are unpatentable under § 103, and claims 9–10 are unpatentable under § 101 as directed to patent-ineligible subject matter.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Web application We addressed the construction of this term in our Final Written Decision in IPR2013-00194. See SAP Am., Inc. v. Arunachalam, Case IPR2013-00194, slip op. at 11–14 (PTAB Sep. 18, 2014) (Paper 67). We apply the same construction in this proceeding. For the reasons discussed in IPR2013-00194, we construe “Web application” to mean a computer program to perform a certain type of work using the Web. Point-of-service (POSvc) application We addressed the construction of this term in our Final Written Decision in related case IPR2013-00194. See SAP Am., Inc. v. Arunachalam, Case IPR2013-00194, slip op. at 14-16 (PTAB Sep. 18, 2014) (Paper 67). We apply the same construction in this proceeding. Thus, we construe POSvc application to mean a software program that facilitates execution of transactions requested by a user. Service network running atop the World Wide Web We addressed the construction of “service network (running on top of a facilities network)” in our Final Written Decision in related case IPR2013- 00194. See SAP Am., Inc. v. Arunachalam, Case IPR2014-00194, slip op. at 16–18 (PTAB Sep. 18, 2014) (Paper 67). In that proceeding, we construed “service network” to mean a network on which services, other than underlying network communication services, are provided. We apply a similar construction to this similar term in this proceeding. We construe “service network running atop the World Wide Web” to mean a network on which services other than underlying network communications services are provided over the Web. Utilizing a routed transactional data structure that is both complete and non-deferred In our Decision to Institute, we construed this term to mean “using a data structure that facilitates switching a user who selects a transactional application to a service provider program that provides immediate processing.” Dec. to Institute 11–12. In our Final Written Decision in CBM2013-00013, we reconsidered our construction of this term and concluded that “utilizing a routed transaction data structure” encompasses using a data structure that facilitates switching the processing of information associated with a user selected transactional application that provides immediate processing. We apply this broadest reasonable construction for purposes of our analysis under 35 U.S.C. §§ 101 and 103 in this proceeding.11 11 In CBM2013-00013, we also concluded that this term is indefinite under 35 U.S.C. § 112, second paragraph. That challenge is not before us in this proceeding, although we determined that claims 4–6 are unpatentable over Object routing In related proceeding CBM2013-00013, we construed “object routing” in claim 4 to mean the use of individual network objects to route a user from a selected transactional application to the processing provided by the service provider. We apply the same construction in this proceeding. Virtual Information Store In our Decision to Institute, we construed “virtual information store” to mean an information store in which information entries and attributes are associated with a networked object identity. We apply that construction in this final written decision.” slip op. at 10

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

    “under 35 U.S.C. §101, applying the most recent guidance from the Supreme Court in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), which was decided after the Patent Owner Response was filed. To determine whether a claim recites patent-ineligible subject matter, the first step is to determine whether the subject claim is drawn to a law of nature, a natural phenomenon, or an abstract idea. Id. at 134 S. Ct. 2356 (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–97 (2012)). If the claim is directed to patent-ineligible subject matter, the second step is to consider the elements of each claim 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. This second step of the analysis searches for an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (internal quotations omitted). Applying the broadest reasonable construction, claim 1 recites a method of carrying out a transaction from a Web application (a computer program to perform a certain type of work on the Web) in which a user selects a POSvc application (a software program that facilitates execution of transactions requested by a user). Thus, claim 1 recites an abstract method, i.e., performing a real-time Web transaction by displaying and providing at least one application a user selects to access checking and savings accounts, and transferring funds (i.e., debiting or crediting) in response to user signals from an input device. Patent Owner contends that our Decision to Institute ignores concrete limitations of claim 1, e.g., the routed transactional data” slip op. at 16

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

    “of routing a data structure as a whole, does not compare a routed data structure to standard I/O, and recites only that the point of service application provides access to the checking and savings account. Although claim 1 recites that transferring funds from checking to savings utilizes a routed transactional data structure that is specific to the POSvc application, claim 1 does not recite specifically what steps are taken to transfer funds in this manner. This recitation does not impose a meaningful limitation on the scope of claim1 because it does not play a significant part in permitting the claimed method to be performed.12 See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). The Specification does not describe clearly how a data structure is transactional, as opposed to non-transactional, or routed, as opposed to non-routed. To the extent that “utilizing a routed transactional data structure that is both complete and nondeferred,” can be construed, we have interpreted it to mean using a data structure that facilitates switching the processing of information associated 12 Claim 1 does not recite what, if any, role is played by the claimed “routed transactional data structure.” with a user- selected transactional application that provides immediate processing. Switching the processing of information from one resource to another, such as from one data base or program, e.g., the claimed point-of service application, to another, is a well-known abstract concept that is not limited to any particular technical approach. The remaining limitations in claim 1 do not contribute any patent- eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent-eligible subject matter. Claims 9 and 10 do not add limitations that contribute to patent eligibility. Thus, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 9 and 10 do not recite patentable subject matter under 35 U.S.C. § 101.” slip op. at 18

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

    “We agree with Petitioner that a person of ordinary skill in the art would have considered it obvious to include accessing banking services over the Internet using a browser (as taught in Computerworld) in the system of Lawlor. Pet. 54–56. Lawlor discloses “a new central/communications system performing new functions” and an ATM network linking to a digital packet switched network, such as the Internet, of which the World Wide Web is a part. Ex. 1006, col. 7, ll. 40–50. Petitioner notes that the combination of Lawlor and Computerworld is nothing more than combining the remote banking services of Lawlor with the World Wide Web banking Web sites described in Computerworld without any significant modification and that, like the ’158 Patent, both Lawlor and Computerworld address providing real-time transactional capabilities. Pet. 54. Petitioner points out that both references discuss home banking systems, i.e., the disclosed Computerworld systems operate on the World Wide Web, while Lawlor operates over standard phone networks. Id. at 55. Citing the Declaration of Dr. Sirbu (Ex. 1003) (“Sirbu 1 Decl.”), Petitioner persuasively argues that one of ordinary skill in the art would have found it obvious to adapt the Lawlor system to the World Wide Web, as Computerworld discusses banks that were performing money transfers over the World Wide Web. Id. In view of the above, we conclude that the combination of Lawlor and Computerworld discloses all of the limitations of claim 1, from which claims 4–6 directly or indirectly depend.” slip op. at 23

  Patent outcomesUS 8,037,158 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 8,037,158
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Sep 18, 2014 · CBM2013-00013 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–3 and 11 are unpatentable under §§ 101 and 103, and claims 1–6 and 11 are unpatentable under § 112, second paragraph.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Under Federal Rules of Evidence (“FRE”) 901(b)(1) a proponent may authenticate evidence through testimony that the evidence is what it is claimed to be. In Loraine v. Markel American Insurance Co., 241 F.R.D. 534, (D. Md. 2007), the court noted that a witness authenticating electronic evidence must “provide factual specificity about the process by which the electronically stored information is created, acquired, maintained, and preserved without alteration or change, or the process by which it is produced if the result of a system or process that does so.” Id. at 545. The inventor’s statements do not meet these criteria. However, under FRE 901(b)(4) a party may authenticate evidence using circumstantial evidence in conjunction with the appearance, contents, substance, internal patterns, or other distinctive characteristics of the evidence. Although Patent Owner has not provided evidence such as hash values or metadata (see Lorraine at 547), the contents and substance of the documents indicate that they are what they purport to be. Given their technical nature of the documents, this panel can assign them appropriate weight.” slip op. at 28

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

    “As discussed further in this decision, based on Patent Owner’s contentions and the language of the Specification, we conclude that the term “routed transactional data structure” fails to inform a person of ordinary skill in the art of the scope of the claim with reasonable certainty and is therefore indefinite under 35 U.S.C. § 112 , second paragraph. See, Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014) . However, to the extent that the claim can be construed in order to analyze its relationship to the prior art in this proceeding and whether the claim recites patent eligible subject matter under 35 U.S.C. § 101, we have reconsidered our use of the expression “switching a user” in the construction we applied in our Decision to Institute. Dec. to Inst. 15-16. Claim 1 recites that the “routed transactional data structure” is specific to a POSvc application, which is a software program that facilitates execution of transactions requested by a user. Upon reconsideration, we conclude that “utilizing a routed transaction data structure” encompasses using a data structure that facilitates switching the processing of information associated with a user selected transactional application that provides immediate processing.” slip op. at 11

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

    “In our Decision to Institute, we noted that “object routing” requires the use of individual networked objects to route a user from a selected transactional application to the processing provided by the service provider. In contrast, the limitation “routed transactional data structure,” does not impose a meaningful limit on the scope of claims 1–3 and 11 because it does not play a significant part in permitting the claimed method to be performed. See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). For example, as explained below in our 35 U.S.C. § 112 , second paragraph analysis, the Specification does not describe clearly how a data structure is transactional, as opposed to non-transactional, or routed, as opposed to non-routed. As discussed above, to the extent that “utilizing a routed transactional data structure that is both complete and non-deferred,” can be construed, we have interpreted it to mean using a data structure that facilitates switching the processing of information associated with a user– selected a transactional application that provides immediate processing. Switching the processing of information from one resource to another, such as from one program or data base to another, is a well-known abstract concept that is not limited to any particular technical approach, such as object routing, as recited in claim 4. The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter.” slip op. at 16

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

    “The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter. Claims 2, 3, and 11 do not add limitations that contribute to patent eligibility. Thus, we conclude that Petitioner has demonstrated that claims 1–3 and 11 do not recite patentable subject matter under 35 U.S.C. § 101.” slip op. at 17

  Patent outcomesUS 8,037,158 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Nautilus
  Patents in suitUS 8,037,158

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