• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8

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

    “We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13

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

    “Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30

  Patent outcomesUS 8,825,887 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips
  Patents in suitUS 8,825,887
• Google LLC v. Videoshare LLCInstitution denied
  PTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution

  The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.

  RulingsInstitution decision

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

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • BurdenDecided for patent owner

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

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

    “E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 10,362,341
• Emerson Electric Co. v. Sipco, LLCAll claims unpatentable
  PTAB · Jan 16, 2018 · CBM2016-00095 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1, 7, 9, 16, and 17 are unpatentable under § 101 and § 103(a) over Tymes; unpatentability under § 112, ¶ 1 was not shown.

  RulingsFinal written decision

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

    “Upon consideration of the parties’ contentions, we are not persuaded by Patent Owner’s arguments, as they conflate “power” with “transmission range”—the claim term recites “low-power,” not “low-transmission range.” We agree with Petitioner that Patent Owner’s proposed construction would import improperly a limitation into the claims, and we credit Mr. James T. Geier’s testimony (Ex. 1038 ¶¶ 34−39) as it consistent with the other evidence of record before us. We address below each of Patent Owner’s arguments in turn. First, Patent Owner argues that “the claim language itself indicates that the claimed low-power transceiver transmits low-power signals,” citing the language of claim 2, “wherein the low-power signal comprises a logical IP address.” PO Resp. 12 (citing Ex. 1001, 14:60–61). However, “the low-power signal” does not necessarily require a transceiver to transmit signals having a limited transmission range. Patent Owner does not explain meaningfully, or provide persuasive evidence to show, how a “low-power signal” is necessarily related to the transmission range of a transceiver. Consistent with the plain and ordinary meaning of the term, “a low-power transceiver” refers to a transceiver that consumes less power, e.g., by transmitting and receiving low power signals. Ex. 1038 ¶¶ 34−39.” slip op. at 23

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

    “However, Patent Owner’s arguments are not commensurate in scope with the claims. The purported problems that arose with the development of networks hosting wireless device—unlawful interruption of that data, interference, and contention—are addressed by using an extremely low-power transmitter. Ex. 1001, 5:65−6:11. As discussed above, the challenged claims recite a generic “low-power transceiver,” not an extremely low-power transmitter. Additionally, the alleged problem of transforming data to a different protocol is addressed by an unclaimed feature, as the ’842 patent itself recognizes that the invention is not necessarily limited to certain protocol or requires a protocol conversion. Id. at 13:55−14:5. Moreover, the challenged claims do not requires a protocol conversion or recite a device for converting data from one protocol to a different protocol. Rather, they recite generically a “network of addressable devices.” Patent Owner’s argument that the claims are “directed to an improvement in communication technology between remote devices that are accessible by wireless communication and a central location via a circuit interface” is unavailing. Significantly, the claims are not directed to a new type of transceiver, interface circuit, or controller to establish a communication link between a remote device and the central location. Instead, the claims are directed to transmitting data between locations using conventional or generic computer components. The challenged claims essentially recite a device for communicating information that comprises: (1) a low-power transceiver for transmitting or receiving data; (2) an interface circuit for communicating with a central 33 location; and (3) a controller for establishing a communication link. The Specification confirms that these features were known in the art. Ex. 1001, 5:23–25, 6:62–64 (“As is well known by those skilled in the art, a variety of transducers can perform this functionality adequately.”), 10:13–15 (“[T]he controller 256 may be a general purpose microprocessor or microcontroller.”), 10:21–23 (“The interface 258 within the transceiver 270 is designed to interface with this typical/standard telephone circuitry 263.”), 10:23–26 (“The specific implementation of the circuitry of [interface] 258 will be appreciated by persons skilled in the art and need not be described in detail herein.”). Indeed, the FCC Bulletin also confirms that low-power wireless transmitters were “used virtually everywhere,” noting that “[c]ordless phones, baby monitors, garage door openers, wireless home security systems, keyless automobile entry systems and hundreds of other types of common electronic equipment rely on such transmitters to function.” Ex. 2001, 1. Moreover, the ’842 patent itself recognizes that the communication link between the remote device and central location can be established by initiating a phone call over a telephone line that is part of the public-switched telephone network. Ex. 1001, 2:34−38. There is no dispute that such a communication link was known in the art. Id. at 10:21−26.” slip op. at 33

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

    “38 For the foregoing reasons, we are persuaded that Petitioner has demonstrated sufficiently that claims 1, 7, 9, 16, and 17 of the ’842 patent are directed to a patent-ineligible abstract idea. Whether the challenged claims lack a patent-eligible inventive concept Turning to the second step in the analysis, we look for additional elements that can “transform the nature of the claim” into a patent-eligible application of an abstract idea. That is, we determine whether the claims include an “inventive concept,” i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2357. The additional elements must be more than “well-understood, routine, conventional activity.” Mayo, 768 S. Ct. at 1297−98. Here, Petitioner argues that claims 1, 7, 9, 16, and 17 are unpatentable because they are “directed only to an abstract idea with nothing more added than generic computing components and ‘well-understood, routine, conventional activity’ previously performed in the field (both individually and as an ordered combination in the claims).” Pet. 23–24 (citing Mayo, 132 S. Ct. at 1294). According to Petitioner, the challenged claims “recite the concept of establishing a communication route between two points ‘as performed by a generic computer,’ without disclosing any ‘novel or unusual’ improvement to ‘the functioning of the computer itself’ or any ‘advance in computer technology that makes the performance of [routine] functions more effective.” Id. at 24 (citing Alice, 134 S. Ct. at 2358–60). 39” slip op. at 38

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

    “As Petitioner notes (Pet. 66−68; Ex. 1003 ¶¶ 353−366), Tymes discloses “an improved, low-cost, low-power, data communication network in which a number of remote terminal units are able to send packets of data to a central station, and . . . to receive acknowledge signals and data from the central station.” Ex. 1005, 2:36−56 (emphasis added). Tymes describes that the central station includes a number of base stations connected to a central computer. Id. at 3:21−25. As shown in Figure 1, the network includes base stations 12−14, each of which “is coupled by an RF link to a number of remote units.” Id. at 4:61−5:44. The RF link is used for sending “data packets from the remote terminals to the base stations and return.” Id. at 3:48−51 (emphasis added), 6:66–7:2. In fact, Tymes teaches that the “advantage of this type of RF data link is that a band may be used which does not require site licensing by the F.C.C.” Id. at 3:55−59. Contrary to Patent Owner’s assertion that “low-power” refers to only the remote terminals, Tymes describes a low-power network that includes base stations. As Petitioner also notes (Pet. 66–67, n.38), Tymes teaches an “indoor” limited range network and an RF data link “usable without site licensing under F.C.C. regulations, so that the expense and delays incident to such licensing are eliminated or minimized.” Ex. 1005, 2:36–56. Significantly, Tymes discloses that the optimum frequency is in the 902−928 MHz range 54 for the RF transceivers in the base stations. Id. at 6:66–7:2, 13:58–61, 18:1−3. The FCC limits the power for unlicensed transmitters, and the power limit under the FCC regulations is less than or equal to one watt for the disclosed 902–928 MHz range. Ex. 1010, 217; Ex. 1017, 7:9–11, 31–34. Mr. Geier testifies that an ordinarily skilled artisan “would have understood that an indoor communications network as taught by Tymes requires only a limited range (e.g., 1 mile or less (the length of a storage facility)), so that high-powered transceivers would be unnecessary and disfavored,” and that such an artisan “would have considered a transmission of 1 Watt to be a ‘low-power’ transmission, with a limited range of approximately 1 mile.” Ex. 1003 ¶¶ 358−359. Mr. Geier also testifies that such an artisan would have had a reason to use low-power transceivers in the base stations so that they are usable indoors without licensing under the FCC regulations. Id. We credit Mr. Geier’s testimony as it is consistent with Tymes’ teachings and other evidence. Ex. 1005, 2:36–56, 6:66–7:2, 13:58−61, 18:1−3, Figs. 1, 3, 10; Ex. 1010, 21; Ex. 1017, 7:9−11, 29−34 (explaining that “unlicensed systems using conventional modulation techniques attain ranges on the order of 500−1000 feet” (emphasis added)).” slip op. at 54

  Patent outcomesUS 8,908,842 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Phillips · KSR · Graham
  Patents in suitUS 8,908,842
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

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

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

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

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• 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
• Fidelity National Information Services, Inc. v. Datatreasury Corp.All claims unpatentable
  PTAB · Apr 29, 2015 · CBM2014-00021 · APJ Michael P Tierney · CBM · Final written decision

  Claims 1–123 are unpatentable under § 101; claims 1–41 and 51–69 are also unpatentable for lack of written description under § 112.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the evidence of record, we credit the testimony of Dr. Alexander and agree with Petitioner that: (1) the specification fails to describe encrypting the DAT_TERMINAL_ID; (2) generic “identification information” does not constitute the claimed subsystem identification information; and (3) subsystem identification information is not included in the “paper transaction data” of the disclosed receipt. Reply 12–13. We find that Petitioner has demonstrated that claims 1–41 and 51–69 are unpatentable for lack of sufficient written description for encrypting subsystem identification information.” slip op. at 22

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.300(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Trial Practice Guide”); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms are given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 7

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “We credit Dr. Alexander’s testimony and determine that the ’988 patent simply arranges old well-known elements with each performing the same function it had been known to perform. E.g., Ex. 1003 ¶¶ 26–28, 31, 85. Based on the record presented, we do not see how the limitations in claim 46 are significant meaningful limitations that transform the abstract 4 Petitioner contends that the challenged claims do not recite a “three-tiered” architecture. Reply 8. For purposes of this decision, we assume the Patent Owner is correct in stating that its claims require such architecture. idea into patent-eligible applications of these abstractions. Patent Owner’s contentions focused on the alleged meaningful limitations appearing in claim 46 or the challenged claims in general. We have reviewed the remaining challenged claims and likewise are persuaded, based on the evidence presented, that the remaining claims also lack limitations that meaningfully limit the abstract idea and avoid unacceptable preemption. Reply, 1. We hold that the challenged claims recite nothing more than conventional equipment and steps, specified at a high level of generality on top of the underlying abstract concept. Mayo, 132 S. Ct. at 1300.” slip op. at 18

  Patent outcomesUS 5,910,988 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Bilski
  Patents in suitUS 5,910,988
• Linkedin Corp. v. Avmarkets Inc.All claims unpatentable
  PTAB · Nov 10, 2014 · CBM2013-00025 · APJ Michael P Tierney · CBM · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable under § 101 because they claim an abstract product catalog using routine computer technology.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “While a Motion to Exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a Sur-Reply, and also is not a mechanism to argue that a Reply contains new arguments or relies on evidence that should have been included in the prima facie case. Here, AvMarkets’ Motion to Exclude contains such improper arguments, and is in the nature of a Sur-Reply. Moreover, as discussed below, AvMarkets’ arguments also are without merit.” slip op. at 5

  • Skill levelSkill level board ownDecided for patent owner

    “We also hold that both Mr. Pollastro and Dr. Freedman are qualified to testify as to the level and knowledge of one of ordinary skill in the art as of 2007, the time of the invention. Specifically, one of ordinary skill in the art would have at least a bachelor’s degree in computer science or equivalent experience in the art of software and hardware development, including the development of Web applications. Ex. 1012 ¶ 3; Ex. 2001 ¶ 4. Mr. Pollastro is qualified to testify as, at the time of the invention, he was a Microsoft Certified Professional who had years of experience building and managing servers for an in-house network. Ex 2001 ¶¶ 2–3. Dr. Freedman is qualified to testify as, at the time of the invention, he possessed a Bachelor’s degree and Master’s degree from the Massachusetts Institute of Technology in Computer Science and Engineering, and a Ph.D. in Computer Science from New York University. Ex. 1012 ¶ 3.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find that the claimed invention merely requires the use of a general-purpose computer. This finding is based on the teachings of the ’430 patent Specification and Dr. Freedman’s testimony. We credit the testimony of Dr. Freedman over that of Mr. Pollastro, as Dr. Freedman’s testimony is consistent with the teachings of the ’430 Specification and provides a thorough, well-reasoned analysis as to why the ’430 claims require nothing more than a general-purpose computer.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “See Dec. on Inst. 4–6. The parties do not dispute these interpretations in their Patent Owner Response and Reply. We adopt the above claim constructions based on our previous analysis, and see no reason to deviate from those constructions for purposes of this decision.” slip op. at 8

  Patent outcomesUS 7,856,430 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Phillips
  Patents in suitUS 7,856,430
• Interthinx, Inc. v. Corelogic Solutions, LLCAll claims unpatentable
  PTAB · Jan 30, 2014 · CBM2012-00007 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1, 6, 9, and 10 are unpatentable under § 101 and anticipated by or obvious over Jensen-1; the Board did not reach the remaining prior-art challenges.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “determinations are pure questions of law, not subject to the clear and convincing evidence standard, is not supported by the Federal Circuit. “[T]he analysis under [35 U.S.C.] § 101, while ultimately a legal determination, is rife with underlying factual issues.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013) (citing, e.g., CLS Bank Int'l v. Alice Corp., 717 F.3d 1269, 1304–05 (Fed. Cir. 2013) (en banc)) (Chief Judge Rader, and Judges Linn, Moore, and O'Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.)). In denying Petitioner’s motion for judgment as a matter of law under 35 U.S.C. § 101, the District Court stated only that Petitioner failed to show that claims 1 and 10 of the ’201 Patent do not cover a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Ex. 2039, 2. The District Court’s decision applied the clear and convincing evidence standard to the facts underlying its determination of law when denying Petitioner’s motion for summary judgment and motion for judgment as a matter of law that the claims of the ’201 Patent do not recite eligible subject matter. In contrast, the Board reviews the patentability of a claim, rather than its validity, and applies a preponderance of the evidence standard to the underlying factual determinations, e.g., whether the claims contain limitations that narrow or tie them to specific applications of an otherwise abstract concept. 35 U.S.C. § 326(e); Ultramercial, 722 F.3d at 1339. Because the Board applies to the underlying facts an evidentiary standard that is different from the standard applied by the courts, the issue decided by the Board is not identical to the one decided or litigated in the first action and could not have been essential to the final judgment in the first action. See In re Freeman, 30 F.3d, 1459, 1465 (Fed. Cir. 1994). Petitioner did not have an opportunity to litigate the issue in the first action. Id. Therefore, we conclude that Petitioner’s challenge under 35 U.S.C. § 101 is not barred by res judicata or collateral estoppel.” slip op. at 5

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

    “abstract idea, the claim instead is drawn to the abstract idea itself. Ultramercial, 722 F.3d at 1343. Inventor, Dr. Jost considers his invention to be the process for predicting the selling price of a home (a point estimate) using statistical analysis to develop the point estimate, and a co-inventor’s error model, which was also developed using statistical analysis. Ex. 1022, 72-73, 81-82. Dr. Jost’s testimony is consistent with claims 1 and 10, which recite appraising real estate by developing and storing a predictive model and generating a signal indicative of the appraised (predicted) value, and developing and storing an error model and generating a signal indicative of the error range for the appraised (predicted) value. Patent Owner’s expert Dr. Lipscomb characterizes the invention as “a way to determine the sales price of a property that may not have a recent sales transaction” and that predictive models “have been around a long time.” Ex. 1024, 42-43. Determining a price has been found to be abstract as a method of calculating. See, SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012- 00001, 2013 WL 3167735, at *16 (PTAB, June 11 2013). Dr. Jost testified that it was common in statistics to provide a confidence interval around estimates. Ex. 1022, 102. The testimony of Dr. Jost and Dr. Lipscomb indicates that determining an error can be accomplished using the same well known techniques as those applied to the predictive model and that bounding a price estimate by an error range is an abstract concept. Therefore, we find the claimed development of a model to predict a value and an error model to assess the error range around the predicted value, as recited in claims 1 and 10, is an abstract concept. Similarly, claims 6 and 9 recite limitations that bound the geographic area from which data is obtained to develop the model. The limitations in claims 6 and 9 recite the abstract and well known concept of examining the geographic area around the subject property so that relevant samples can be obtained to predict the price of the property.” slip op. at 10

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “54-55. Patent Owner’s argument is similar to its underlying theme that CAMA prior art does not apply to the claimed AVM system. As discussed above, we do not find this argument persuasive because the ultimate objective of each system is to determine a value for each individual parcel. The same sentence in Jensen-1 that refers to a model estimating the sales price of all the properties also refers to adjustments necessary to correct the actual sales prices of selected recent comparable sales for the property characteristic differences between the subject property being valued and each comparable sale, in order to ascertain what each comparable property would have sold for had it been identical to the subject property in a physical descriptive sense on the valuation date. Ex. 1014, p. 194. (Emphasis added). Thus, as recited in claims 1, 6, 9 and 10, Jensen-1 obtains individual property data and recognizes a relationship between individual property data and the training data. Jensen-1 also discloses using the training data to predict the individual property value, as recited in claims 1, 6, 9 and 10. Jensen-1 discusses a model in which the value of a property is based on the land value qualified by a set of adjustments. Ex. 1014, p. 198. The adjustments reflect specific property characteristics. For example, up to a point, the value of a property can be expected to increase with increasing frontage. Id. Thus, specific properties with different frontage are valued differently. Jensen-1 discloses other modeling approaches that determine various per unit rates within a market model using regression analysis, Longini and Carbone’s adaptive estimation, and Carlson’s iterative correlative estimation procedure. Id. at 200. Jensen-1’s discussion of interactive correlative estimation specifically states that, within each iteration, “the model estimate and then the residual error (the actual sale price minus the model estimate) are computed on a per parcel basis.” Ex. 1014, p. 220. Thus, Jensen-1 discloses generating an appraised value responsive to the application of individual property data to the predictive error model. Jensen-1 specifically states that “[o]nce meaningful market models have been developed from the available sales, they can be used to estimate the fair market values of all of the parcels in the jurisdiction whether recently sold or not.” Ex. 2014, p. 224. As discussed above, the reference to all parcels in the jurisdiction does not imply that all the parcels are evaluated the same. Jensen discloses that the market models take into account the various characteristics of each parcel and determine a value for each parcel. Jensen-1 notes that the model estimate, i.e., the fair market value of each parcel as determined by the market models, is an abstract number and its reliability as an approximation of true market value depends on the quality of the individual estimates. Ex. 1014, p. 224. Jensen-1 specifically notes that when an actual sale price falls below the value estimate, it may or may not indicate a problem with the appraisal. Id. Thus, Jensen-1 applies to individual appraisals and attempts to assess an error in the appraisal of each parcel.” slip op. at 13

  Patent outcomesUS 5,361,201 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo
  Patents in suitUS 5,361,201
• SAP America, Inc. v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Jun 11, 2013 · CBM2012-00001 · APJ Michael P Tierney · CBM · Final written decision

  Claims 17 and 26–29 are unpatentable under § 101 because they claim abstract pricing and hierarchy concepts without meaningful limitations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “SAP, as petitioner, bears the ultimate burden of proof that Versata’s claims are unpatentable under § 101. To place SAP’s and Versata’s contentions in context, we begin our analysis by first discussing our construction of the challenged claims. Bancorp Serv., LLC v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) (“[I]t will ordinarily be desirable—and often necessary— to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter.”).” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “The parties’ experts disagree as to whether the appended steps are merely routine, conventional steps or reflect meaningful limitations. Dr. Siegel, SAP’s expert, testifies that besides the abstract ideas, the claims merely recite routine, conventional activities. Ex. 1005, ¶ 49.19 In contrast, Dr. Liebich, Versata’s expert, testifies that the SAP R/3 pricing technology available at the time of the invention did not practice the combination of steps (storing, retrieving, sorting, eliminating, and determining) recited in the claims. Ex. 2091, ¶ 62. Dr. Liebich further testifies that he was not aware of any pricing technology in the marketplace at that time that performed the combination of steps. Id. Patent eligibility is distinct from the question of whether or not the claims recite subject matter that was not in the marketplace at the time of the invention. Flook, 437 U.S. at 593 (“[Section 101] does not involve the familiar issues of novelty and obviousness that routinely arise under §§ 102 and 103.”).20 We agree with SAP that Versata and Dr. Liebich fail to establish that the additional “specific” steps that are appended to the abstract idea provide meaningful limitations. The contention that the combination of the abstract idea and the specific steps represents an improvement in marketplace technology does not demonstrate that the additional steps are anything other than conventional, routine steps that are a consequence of implementing the abstract idea. Specifically, the Court in Flook held that a claim for an “improved” method is” slip op. at 31

  • Skill levelOther

    “after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

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

    “We agree with SAP that claim 17 does not itself impose a temporal limitation on when the pricing information is sorted. As SAP contends, Versata’s arguments and expert testimony as to what is “generally” the case do not demonstrate that Versata sought to limit claim 17 in the way that claim 1 expressly was limited. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1314 (Fed. Cir. 2003) (holding that similar language did not require separate and consecutive performance of various steps). Versata contends that the specification demonstrates that sorting must occur after retrieval. PO Resp. 55-57. We agree with Versata that Figure 15B of the ’350 patent describes the use of the method where the sorting step occurs after 17 The field of the invention is computerized financial systems. See, e.g., Ex. 1005, ¶ 16. A person of ordinary skill in the art would have at least a bachelor’s degree in computer science and experience developing computerized financial systems. Id., ¶ 18. retrieving all pricing adjustments. Id., and Ex. 1001, Fig. 15b, 4:62, 18:53-54 and 19:4-43. Yet, the ’350 patent states explicitly that numerous specific details are set forth in the description, but that it would be apparent to one of ordinary skill in the art that the present invention could be practiced without the specific details. Ex. 1001, 4:67-5:5. SAP’s expert, Dr. Siegel, testifies that one of ordinary skill in the art would have understood that claim 17 “does not imply or require a temporal limitation forcing the sorting to occur after the retrieving.” Ex. 1005, ¶ 98. Versata’s expert, Dr. Liebich, testifies that “it is generally the case that data stored in a data source must first be retrieved from the data source before the data can be sorted.” Ex. 2091, ¶ 126 (emphasis added). Based upon the record presented, we find that one of ordinary skill in the art reading the ’350 specification would have understood that retrieving then sorting was the preferred, but not the only, method of carrying out the invention. Accordingly, we hold that the ’350 patent specification does not require retrieving then sorting.” slip op. at 21

  Patent outcomesUS 6,553,350 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Phillips
  Patents in suitUS 6,553,350

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.