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  • HP Inc. / SAP America, Inc. v. Big Baboon, Inc.Institution denied
    PTAB · Jun 28, 2016 · CBM2016-00020 · APJ Trenton A Ward · CBM · Institution

    The Board denied institution because Petitioner did not show that claims 15 and 20–34 were more likely than not unpatentable under § 101 or any of the three § 103 grounds.

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

      “For the reasons that follow, Petitioner failed to establish that it is more likely than not that at least one of the challenged claims is unpatentable. Therefore, we deny the Petition.” slip op. at 2

    • BurdenDenied

      “We believe the same is true in this matter. Petitioner fails to identify specific documentary evidence indicating that the claim element “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” would have been obvious to a person of ordinary skill in the art at the time of the ’275 patent. At best, Petitioner provides a string cite to nine different documents, without pointing to any particular page or disclosure in any of those documents, as allegedly illustrating an “industry-wide push to Web-enable,” and provides a string cite to eight different paragraphs of testimony from Dr. Greenspun, as allegedly indicating why a skilled artisan “would have seen a strong need to provide Web-enabled system administration capabilities for the R/3 system described in R/3 Online and R/3 Book.” See Pet. 63–64 (citing Exs. 1017– 1021, 1023, 1026, 1027, 1030; Ex. 1032 ¶¶ 58–60, 85–86, 110–112). Petitioner, however, fails to identify with specificity which documentary evidence indicates that it would have been common knowledge to provide a Web interface for system administration of the system described by R/3 Online and the R/3 Book and, thus, that claim 15 would have been obvious to an ordinarily skilled artisan based on combining this alleged common knowledge with the system described by R/3 Online and R/3 Book. The Board, and Patent Owner, are left to speculate as to which particular evidence Petitioner is relying on. See Pet. 12, 42; 37 C.F.R. §§ 42.304(b)(4)–(5) (a petition must “specify where each element of the claim is found in the prior art” and identify “specific portions of the evidence that support the challenge”), 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). In view of this deficiency, we determine that Petitioner fails to articulate sufficient reasoning to support its assertion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, based on the record before us, we determine that Petitioner fails to demonstrate that it is more likely than not that independent claim 15, and claims 20–34 dependent therefrom, would have been obvious over R/3 Online and R/3 Book.” slip op. at 29

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

      “Petitioner urges the Board to construe two claim phrases. First, Petitioner urges us to construe the claimed “end-to-end, business-to-business, e-commerce business automation software for automation business functions across multiple business domains” to mean “[s]oftware that, using a computer network, at least partially automates business functions relating to two or more businesses and from two or more business domains (such as products, payments, and financial performance).” Pet. 19. Second, Petitioner urges us to construe the claimed “via Web administration, producing a software configuration in which selected ones of the modules are enabled or disabled” to mean “producing a software configuration in which modules can be enabled or disabled by (1) changing the configuration parameters of a web server program or (2) using a Web browser to change configuration parameters of software running on a server.” Pet. 21. Patent Owner does not offer any proposed constructions of claim terms in its Preliminary Response. For the reasons explained below, in this case determining the scope of the terms proffered by Petitioner is not necessary to determine whether Petitioner has met the standard for institution of a covered business method patent review, and we decline to adopt the constructions sought by Petitioner. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

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

      “Claim 15 (the only claim substantively addressed by Petitioner), however, does not recite any “gathering” steps, and Petitioner does not explain sufficiently how the limitations of claim 15 are directed to the concept of “gathering” information. For example, claim 15 merely recites “providing . . . business automation software, “identifying multiple modules of the software,” and producing a “software configuration.” Additionally, claim 15 requires producing a “workscope/workflow structured display of complex database records,” which constitutes “an integrated decision-making environment for a particular business function.” Thus, the method of claim 15 does not expressly require that information be gathered across “multiple business domains.” Rather, claim 15 requires providing “business automation software” to produce a “structured display” of “records” pertaining to a “business transaction,” such that the display constitutes an “integrated decision-making environment for a particular business function.” Thus, even if Petitioner is correct that “gathering information from across a business and using the information to make decisions” by itself is an abstract idea, Petitioner’s analysis does not address sufficiently the specific language of claim 15 and explain why claim 15 is directed to that idea. See Pet. 27. Similarly, dependent claims 20–34 are not directed to “gathering information,” and Petitioner provides no analysis of the language of the dependent claims. In light of the above, we determine that Petitioner has failed to establish the first step of the Mayo framework; i.e., Petitioner fails to identify sufficiently an abstract idea to which claim 15 is directed.8 Petitioner combines its arguments under § 101 against dependent claims 20– 34 with its arguments against claim 15 and fails to provide any additional arguments for these dependent claims. See Pet. 25 (arguing that the “sixteen challenged claims of the ’275 patent are likewise unpatentable under §101”). Therefore, we similarly determine that Petitioner fails to establish the first step of the Mayo framework with respect to dependent claims 20–34. Based on the foregoing, we determine Petitioner has failed to establish, based on the record presented, that claims 15 and 20–34 are more likely than not directed to patent ineligible subject matter under 35 U.S.C. § 101. 8 We need not decide whether claim 15 is directed to a different abstract idea, and only determine that Petitioner has not shown sufficiently that claim 15 is directed to the alleged abstract idea that Petitioner proposes in the Petition.” slip op. at 19

    Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo
    Patents in suitUS 6,343,275
  • 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
  • Intermix Media, LLC v. Bally Gaming, Inc.Institution denied
    PTAB · Jan 20, 2016 · CBM2015-00154 · APJ Hyun J Jung · CBM · Institution

    The Board denied institution because the petition did not show that claims 1–34, 38, 39, and 45–77 were more likely than not ineligible under § 101.

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

      “Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7

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

      “Petitioner fails to provide a credible analysis considering the elements of the challenged claims “individually and ‘as an ordered combination”’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis. The Petition fails to provide a credible and sufficient explanation as to whether an element or combination of elements is sufficient to ensure that the ’918 patent in practice amounts to significantly more than a patent upon the ineligible concept itself. The Petition, instead, asserts cursory and conclusory arguments with no or insufficient evidence that the additional claim elements are well known or recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with particularity.”” slip op. at 7

    § 101 eligibilitycites Alice · Mayo · Bilski
    Patents in suitUS 5,816,918
  • Regions Financial Corporation / Advance America, Cash Advance Centers, Inc. et al. v. Retirement Capital Access Management Company LLCAll claims unpatentable
    PTAB · Mar 23, 2015 · CBM2014-00012 · APJ Trenton A Ward · CBM · Final written decision

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

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

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

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

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

    • BurdenDecided for petitioner

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

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

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

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

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

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

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

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

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

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

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

    • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
    Patent outcomesUS 6,625,582 unpatentable
    Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · Graham
    Patents in suitUS 6,625,582

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.