• American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentable
  PTAB · Oct 30, 2019 · CBM2018-00035 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1, 2, 5, 6, 9, 10, 13, and 14 are unpatentable under § 101; proposed substitute claims 17–20 are unpatentable under § 101, and the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelOther

    “F. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”)” slip op. at 32

  • Expert testimonyOther

    “For the above reasons, we are persuaded that Petitioner has met its” slip op. at 62

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

    “1. Principles of Law Use of the word “means” in a claim gives rise to a rebuttable” slip op. at 12

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

    “Further, based on the entirety of the record, we determine that proposed substitute claims 17–20 are unpatentable by a preponderance of the evidence based on 35 U.S.C. § 101. Motion to Amend Outcome Claims Substitute Claims: Proposed in the Amendment 17–20 Substitute Claims: Motion to Amend Denied 17–20” slip op. at 101

  Patent outcomesUS 8,423,402 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 8,423,402
• 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

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