• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00029 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1 and 9 are unpatentable under § 101 because they claim pre-authorized automatic auction payments using conventional computer components, without an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “4. Summary In summary, we determine that Petitioner has demonstrated by a preponderance of the evidence that all of the challenged claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 34

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

    “II. ANALYSIS A. Claim Construction In a covered business method patent review, we interpret claim terms in an unexpired patent according to the broadest reasonable interpretation in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes a construction for the claim term “web site.” Pet. 23. We, however, need not address the construction of any claim term to resolve the issues before us.” slip op. at 17

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

    “We agree with Petitioner that independent claim 1 is directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a payment account to automatically effect a pre-authorized financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7. The language of independent claim 1 supports the finding that it is directed to the abstract idea of using a payment account to automatically effect a pre-authorized financial transaction in an electronic auction. This claim recites a method for automatically effecting payment by a process that includes the steps of maintaining and storing funds in payment accounts for use in transactions in an electronic auction system; receiving authorization prior to an electronic auction to execute an automatic payment; and executing the automatic payment by deducting and transferring funds from a payment account. Ex. 1001, 18:20–53. This purchaser-seller arrangement is not meaningfully distinct from the financial arrangements found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”), and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a payment account to automatically effect a pre-authorized financial transaction is a fundamental economic practice.” slip op. at 22

  Patent outcomesUS 7,567,937 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Bilski · Enfish · Electric Power
  Patents in suitUS 7,567,937
• Ebay Inc. / Paypal, Inc. v. XPRT Ventures, LLCAll claims unpatentable
  PTAB · Jul 23, 2018 · CBM2017-00025 · APJ Kevin F Turner · CBM · Final written decision

  Claims 13–15 are unpatentable under § 101 because they claim the abstract idea of using a loan to effect a financial transaction without an inventive concept.

  RulingsFinal written decision

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

    “We preliminarily determined that the information presented in the Petition established that the ’528 Patent qualifies as a covered business method patent that is eligible for review, and that it was more likely than not that the challenged claims are unpatentable under 35 U.S.C. § 101. Paper 8. Pursuant to 35 U.S.C. § 324 and § 18(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 329–31 (2011), we instituted a covered business method patent review as to all of the challenged claims. Id.” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “Considering the claim elements as an ordered combination, each claimed method, as a whole, is simply indicative of the abstract idea of using a loan to effect a financial transaction when a buyer has insufficient funds in his or her payment account. See Alice, 134 S. Ct. at 2359–60 (explaining that the application of an abstract idea using some unspecified, generic computer is not enough to transform an abstract idea into a patent-eligible invention). There is no indication on the record developed during trial that these claims improve the functioning of a computer, or result in an improvement in any other technology or technical field. See id. at 2359. On the contrary, Dr. Neuman’s unrebutted testimony explains that the computer components recited in the claims add nothing that is not already present when the steps are considered separately, and viewed as a whole, the claims simply recite the well-known, conventional process of debiting and crediting a funded account. Ex. 1005 ¶ 36. Furthermore, there is no evidence of record that independent claim 13 is like those of BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC (i.e., a “non-conventional and non-generic arrangement of known, conventional pieces”). 827 F.3d 1341, 1350 (Fed. Cir. 2016). BASCOM explains that where claims “merely recite the abstract idea . . . along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components[, s]uch claims would not contain an inventive concept.” Id. Rather, the ’528 Patent seems to indicate that the existing payment process is simply made faster and more efficient in that an immediate, real-time payment is made without the winning bidder having to access a payment page, through the use of a conventional computing network. See Ex. 1001, 4:30–34, Fig. 1; Ex. 1005 ¶¶ 20–24. Meanwhile, the method of independent claim 13 may offer an improvement to the previously-known manual processes identified in the ’528 Patent––the need for a winning bidder “to draft checks, obtain money orders, etc. and mail them to the various sellers” (Ex. 1001, 3:3–4), or to “enter his credit card information” (id. at 3:15), or for the website operator and seller to exchange e-mails to authorize a commission payment (id. at 3:26–34). “But merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an otherwise abstract manual process is precisely the sort of invention that the Alice Court deemed ineligible for patenting.” Credit Acceptance Corp., 859 F.3d at 1056 (alteration in original). Accordingly, we agree with Petitioner that the claim elements recited” slip op. at 29

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

    “in an unexpired patent according to the broadest reasonable interpretation in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes a construction for the claim term “web site.” Pet. 20. We, however, need not address the construction of any claim term to resolve the issues before us.” slip op. at 16

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

    “We agree with Petitioner that independent claim 13 is directed to an abstract idea, and we adopt Petitioner’s description of the abstract idea as using a loan to effectuate a financial transaction in an electronic auction. Patent Owner does not challenge Petitioner’s description of the abstract idea, other than by making the conclusory statement that the challenged claims are not directed to an abstract idea based on Federal Circuit precedent and USPTO examination guidance. See PO Resp. 7–8. The language of independent claim 13 supports the finding that it is directed to the abstract idea of using a loan to effect a financial transaction when a buyer has insufficient funds in his or her payment account. This independent claim recites methods for effecting payment by a process that includes the steps of providing the user with the option to enable the loaning of funds, through receipt of a user’s authorization, and loaning funds to effect the payment if insufficient funds are determined for a payment source. Ex. 1001, 20:13–37. This purchaser-seller arrangement is not meaningfully distinct from the activity relating to commercial practices found to be abstract ideas in Alice, 134 S. Ct. at 2356 (“method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk”) and Bilski v. Kappos, 561 U.S. 593, 599 (2010) (arrangement between buyers and sellers to purchase commodities in the energy market at a fixed rate as a way of protecting, or “hedging,” against risks of price changes). The Supreme Court has explained that concepts like intermediated settlement and risk hedging are abstract ideas beyond the scope of 35 U.S.C. § 101 as they are “a fundamental economic practice long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski, 561 U.S. at 611). Likewise, in this case, the concept of using a loan to effect a financial transaction when a buyer has insufficient funds in his or her payment account is a fundamental economic practice.” slip op. at 21

  Patent outcomesUS 7,627,528 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 7,627,528
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Dec 21, 2017 · CBM2016-00081 · APJ Kevin F Turner · CBM · Final written decision

  Claims 20 and 21 are unpatentable under § 101 and § 103; the motion to amend proposing claims 22–49 is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner argues that “[b]ased on the technologies disclosed in the ’506 patent, one of ordinary skill in the art at the time of the alleged invention would have had the equivalent of a Bachelor’s degree or higher in computer science or computer engineering, as well as at least 3–5 years of academic or industry experience in the relevant field.” Pet. 10 (citing Ex. 1002 ¶ 22). Although Patent Owner does not address the level of ordinary skill in its Patent Owner’s Response, Patent Owner does opine about the same in its Motion to Amend. Therein, Patent Owner argues that: a person of ordinary skill in the art in 1995 would have been a person who had a degree in computer science, or the equivalent of that degree, and some substantive experience with Web technologies then being developed and considered by persons then working on internet systems. [Ex. 2006, 23] It would have been very rare to find anyone to have had a computer degree and as much as three to five years of experience in the area of Web technology as of November 1995. (Id.) Mot. Amend 5–6. Based on the positions of Petitioner and Patent Owner, we find mostly agreement as to the level of skill of such ordinarily skilled artisans and we are persuaded that one of ordinary skill in the art at the time of the invention would have had the equivalent of a degree in computer science or computer engineering, as well as some substantive experience 29 with Web technologies then being developed and considered by persons then working on Internet systems. This level of skill is considered and applied in the grounds below.” slip op. at 29

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther

    “networked object,” and that we “willfully left out ‘Individual’ and only construed ‘Network Object.’” PO Resp. 36. Patent Owner is correct that we did not construe “individual networked object.” The reason is that it is not a term recited in the challenged claims, nor claim 14, from which the challenged claims depend. We construed “networked object,” i.e., without “individual,” because it is a term recited in the claims. Patent Owner also argues that the proper construction of “networked object” is “the information entries and attributes in a DOLSIB [distributed on-line service information base].” Id. (citing Ex. 1001, 8:50–54). We do not agree. Although the specification of the ’506 Patent details that “[t]he networked object identity 11 identifies the information entries and attributes in the DOLSIB as individual networked objects,” that is not a definition of “network objects.” We continue to find that the broadest reasonable construction, in view of the specification, of “networked object” is “an object that operates within a network or transmitted over a network.” We are not persuaded that “individual networked object” need be construed because it is not a claim term, and we are not persuaded that every recitation of “networked object” must refer to an “individual networked object.” Patent Owner argues that we did not construe the claim term “attributes,” which should be understood as “characteristics of an object.” Id. at 36–37 (citing Ex. 1001, 4:45–58, 23:19–25). Petitioner counters that the passages cited by Patent Owner do not support the proffered definition, because those passages do not contain the word “attribute.” Pet. Reply 4. Although Patent Owner’s construction is not unreasonable, claim 14 already recites that the step of “associating an object identity with information entries and attributes,” so that “attributes” need not be referred to as “characteristics of an object,” since such an association is already directly recited in the claims. As such, we are not persuaded that the claim term “attributes” needs explicit construction. Similarly, Patent Owner argues that “information entries” should be construed as “values of the characteristics of an object.” PO Resp. 37 (citing Ex. 1001, 4:45–58, 23:19–25). Again, we find it unnecessary to tie “information entries” to an object, since the association is already provided 12 in claim 14. Therefore, we are not persuaded that the claim term “information entries” needs explicit construction. With respect to the claim term “virtual information store,” we construed that term as “an information store in which information entries and attributes are associated with a networked object identity,” as discussed above. Patent Owner argues that we have not given proper effect to the word “virtual,” arguing that the proper construction is “a transient information store that is temporarily created and which contains information entries and attributes associated with a networked object identity.” PO Resp. 39–41. Patent Owner cites to the specification of the ’506 Patent (Ex. 1001, 3:1–5, 8:47–54), and “[t]he IBM Computer Dictionary” (id.), but, as Petitioner points out, Patent Owner has not “submitted this dictionary as an exhibit or provided any further information to locate the dictionary.” Further, the sections of the ’506 Patent cited by Patent Owner are not explicit about the store being “transient” or “temporarily created;” this is an inference drawn by Patent Owner. See PO Resp. 40. The introduction of the terms “transient” and “temporarily” to the construction adds more ambiguity to the claim term because the specification of the ’506 Patent does not discuss how long any “virtual information store” would be stored or maintained. In addition, we are not persuaded that Patent Owner’s provision of affirmatively containing the information entries and attributes is necessary because having a store in which the information entries and attributes are associated with a networked object identity would have been understood by ordinarily skilled artisans as being a store containing those elements. 13 Therefore, we are not persuaded that the claim term “virtual information store” requires a different construction and we maintain the construction provided in the Institution Decision, which is reproduced above.” slip op. at 11

  • BurdenUnpatentable

    “not have been obvious to make any changes to Lawlor’s system,” and that “the whole purpose of Lawlor is to establish a system built upon an existing software and infrastructure that would require no changes.” PO Resp. 80–81 (emphasis in original). We do not agree. We agree with Petitioner that Patent Owner misinterprets Lawlor’s teachings, “improperly concluding that Lawlor teaches away from any combination or modification.” Pet. Reply 24 (emphasis in original). Lawlor explains that “[b]ecause the central computer interacts with the user's bank as a standard POS or ATM network node, no significant software changes are required at the banks’ computers,” demonstrating that Lawlor makes use of a standard ATM network and existing external systems without significant modification. Ex. 1004, Abstr. As explained by Dr. Sirbu, incorporation of techniques described in CORBA into Lawlor’s system would not require modification to the external systems of Lawlor or additional processing at the central computer of Lawlor. Ex. 1002 ¶ 72. Lawlor system does not restrict or disparage modification, and Patent Owner has not pointed out any portion that purportedly restricts or disparages modification. Patent Owner also argues that Lawlor does not disclose “an OSI Layer 7 application layer switch as is the VAN Switch in FIG. 5B.” PO Resp. 79. As discussed above, however, challenged claims 20 and 21 do not recite a VAN switch, and the only consideration of such a switch comes from Patent Owner’s claims constructions that we do not adopt. As such, we are persuaded that Petitioner has shown by a 45 preponderance of the evidence that claim 20 is unpatentable over the combination of Lawlor and CORBA, and that the subject matter of claim 21 is unpatentable over the combination of Lawlor, CORBA and Billings.” slip op. at 45

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

    “2. 37 C.F.R. § 42.221(a)(2)(i) Rule 221(a)(2)(i) requires that the amendments in a motion to amend must respond to a ground of unpatentability involved in the trial. Patent Owner’s new claims do not respond to any ground of unpatentability in the trial. Those grounds are based on 35 U.S.C. §§ 101, 103 and directed at claims 20 and 21. Pet. 28–73. Both claims 20 and 21 depend on claim 14 and the grounds of unpatentability consider all of the elements of claim 14. Thus, for example, new claim 25, which recites “[t]he apparatus of claim 14, wherein the user device is a multi-media device,” does not purport to demonstrate that such a claim brings the subject matter into the scope of § 101, nor that such a multi-media device would not be obvious over Lawlor, CORBA, and Billings. See Mot. Amend 9–17. Patent Owner’s analysis addresses claims 22–49 as a group and does not address all of the elements of the new claims. Id. Patent Owner also fails to indicate if any of the new claims include any feature of the challenged claims. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(i). 3. 37 C.F.R. § 42.221(a)(2)(ii) and 35 U.S.C. § 326(d)(3) Rule 221(a)(2)(i) requires that the amendment may not seek to enlarge the scope of the claims of the patent. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(3), which details that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent.” Patent Owner appears to take this rule as merely requiring that “the new claims do not enlarge the scope of any of the old claims.” Mot. Amend 3. 52 The “old claims,” however, are the only two claims existing in the ’506 Patent, namely claims 20 and 21. They are the “scope of the claims of the patent,” and the scope cannot refer to any claim that might have existed during the prosecution of the ’506 Patent. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1329–30 (Fed. Cir. 2003). Therefore, we look to the scope of claims 20 and 21 to determine the scope of the claims of a patent. Proposed new claims in the Motion to Amend improperly enlarge the scope of claims 20 and 21. For example, new claim 27 recites “[t]he apparatus of claim 14, wherein the service is configurable specific to the context of a Web merchant.” This proposed claim is broader, in at least one aspect, than claims 20 and 21, which also depend from claim 14, because it contains none of the elements of claims 20 and 21, although it adds an additional element, i.e., “the service is configurable specific to the context of a Web merchant.” For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(ii) or 35 U.S.C. § 326(d)(3). 4. § 42.221(a)(3) and 35 U.S.C. § 326(d)(1)(B) Section (a)(3) of Rule 221 discusses that a patent owner must propose a reasonable number of substitute claims, and goes on to discuss that “[t]he presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.” The claims subject to the instant proceeding are claims 20 and 21, such that the normal presumption would be for the inclusion of two substitute claims. 53 Patent Owner does not address why the proposed 28 claims are a reasonable number of substitutes for the 2 challenged claims, so Patent Owner cannot be said to have rebutted the one for one presumption by any demonstration of need. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(1)(B), which details that for the amendment of a patent, for each challenged claim, “a reasonable number of substitute claims” must be proposed. Petitioner points out that the meaning of “reasonable number of substitute claims” has been previously addressed by the Board, providing “in the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace.” Opp. 1–2 (citing Idle Free at 5). Furthermore, as Petitioner addresses, Patent Owner has failed to identify which of the challenged claims are intended to be replaced by the new claims. Id. Patent Owner’s response appears to be that “PO does not propose a reasonable number of substitute claims, because it is not necessary.” PO Reply 2. This, however, is not responsive. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(3) or the statutory requirements of § 326(d)(1)(B). 5. 37 C.F.R. § 42.221(b)(1) Rule 221(b)(1) requires that a motion to amend must show the changes clearly and set for the support in the original disclosure of the patent for claim that is added. In the case of new claims 22–49, Patent Owner does 54 not indicate any changes from the claims subject to the present proceeding. The claims are indicated as being new, so that no changes from the pending claims are discussed at all. See Claim App’x. In addition, Patent Owner argues that written description support for the new claims can be found in a chart provided in a reexamination of the patent. Mot. Amend 3 (citing inter partes Reexamination Control No. 95/001,129). We note that such incorporation by reference is not permitted under our rules. 37 C.F.R. § 42.6(a)(3). As well, as Petitioner points out, Patent Owner has not demonstrated that the claims provided in the chart are the same as the new claims. Opp. 4. Given this deficit, Patent Owner cannot successfully meet the regulatory requirements under 37 C.F.R. § 42.221(a) or (b)(1) regarding written description support, based on the present record. Additionally, Patent Owner has failed to provide any mapping of the new claims to those old claims, and, as Petitioner points out, the Board determined during the cited inter partes reexamination that no written description support was provided for a number of limitations identical to those recited in the new claims. Id. (citing Ex. 1007, 32–36). For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(b)(1). 6. Conclusion As discussed above, Patent Owner has not demonstrated compliance with 37 C.F.R. §§ 42.221(a), 42.221(a)(2)(i), 42.221(a)(2)(i), 42.221(a)(3), or 42.221(b)(1) or 35 U.S.C. § 326(d)(1)(B) and (3). As such, Patent Owner has failed to meet the substantive requirements for a motion to amend.” slip op. at 52

  Patent outcomesUS 7,340,506 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR · Graham
  Patents in suitUS 7,340,506
• CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00048 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional graphical interface features.

  RulingsFinal written decision

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 21, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 49. Patent Owner argues that “the claimed solution of the ’435 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the claimed implementation is neither conventional nor generic.” Id. at 50. Patent Owner contends that its claims are unlike Electric Power Group because “the ’435 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id. at 51–52. Instead, Patent Owner asserts that the challenged claims are “directed to an inventive device or technique for trading with a particular layout of elements and particular techniques, including alterable and selectable features, i.e., a specialized [graphical user interface] tool.” Id. at” slip op. at 28

  • 101 substituteMotion to amend, deniedDenied

    “of a limitation for pre-populating the price field, and an explicit limitation requiring that the adjustment of the price field occur using the up and down arrows. As we discussed above, allowing pre-population of data fields and modification of data fields using up and down arrows was known and does not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, the original claims already recited the up and down arrows to modify the price and size fields and this limitation only slightly narrows the claim to using those arrows, which were already present in the claim. As we discussed above, those up and down price arrows did not later our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” Merely, reciting that the already present arrows are used, does not limit the claim in any meaningful way. The explicit use of the arrows and pre-populating a data field are simply specifying how and in what order certain data are to be displayed, which without more, is still collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Amaranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42

  • ExcludeMotion to exclude, deniedMixed

    “paragraphs 59–97 of Mr. Molokhia’s Declaration (Exhibit 2027). Mot. Exclude 1. With respect to Exhibit 2026, Petitioner argues that the exhibit is not relevant under Federal Rules of Evidence 401 and 402, would lead to undue prejudice under Federal Rule of Evidence 403, and is inadmissible hearsay under Federal Rule of Evidence 802. Mot. Exclude 2–3. Patent Owner argues that the testimony is relevant, not prejudicial, and not hearsay. Opp. Exclude 3–8. We did not rely on Exhibit 2026, so we dismiss the motion to exclude as moot insofar as it applies to Exhibit 2026. With respect to paragraphs 59–97 of Exhibit 2027, Petitioner argues that they should be excluded under Fed. R. Evid. 702 and as “inadmissible conclusions of law.” Mot. Exclude 3. Petitioner argues that Mr. Molokhia fails to provide any underlying facts or data for his conclusions that the amended claims are not obvious. Id. at 5. Petitioner contends that “[w]ithout sufficient facts or data to support Mr. Molokhia’s opinion, such testimony stands as conclusory and unreliable, and thus inadmissible under F.R.E. 702 in view of the Supreme Court’s holdings in Daubert and Kumho.” Id. at 6. We disagree with Petitioner’s argument that Mr. Molokhia’s testimony should be excluded. We have reviewed Mr. Molokhia’s testimony and find that although phrased at times as the ultimate legal issue of obviousness, the bulk of his testimony goes to the underlying factual issues of obviousness. To the extent that the reasoning provided by Mr. Molokhia is insufficient, Petitioner’s arguments go more to the weight that should be given the testimony than its admissibility. See Microfinancial, Inc. v. Premier Holidays Int’l, Inc., 385 F.3d 72, 81 (1st Cir. matter affecting the weight and credibility of the testimony—a question to be resolved by the [factfinder].”). Thus, we deny Petitioner’s motion to exclude paragraphs 59–97 of Exhibit 2027.” slip op. at 45

  Patent outcomesUS 8,060,435 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,060,435
• CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00046 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–78 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer interfaces; the motion to amend is denied.

  RulingsFinal written decision

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 24, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 52. Patent Owner argues that “the claimed solution of the ’416 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the implementation is neither conventional nor generic.” Id. at 53. Patent Owner contends that its claims are unlike Electric Power Group because “the ’416 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id.” slip op. at 27

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

    “a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the terms Patent Owner relies upon for its dictionary definitions is actually recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the independent claims recite the “second interface” receiving input from the user, there is no discussion of the second interface displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the claimed as the “second interface.” The specification describes a second interface as follows: After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:12–24. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 10

  • 101 substituteMotion to amend, deniedDenied

    “The only substantive amendments made to the claims are the addition of an explicit limitation requiring a “pointer device” as providing the input recited in the claims, an explanation that what is selected is the bid price or the bid price and offer price are pre-populated in the second interface. As we discussed above, these limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 40

  Patent outcomesUS 7,890,416 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 7,890,416
• Epicor Software Corporation v. Protegrity CorporationAll claims unpatentable
  PTAB · Jun 2, 2016 · CBM2015-00030 · APJ Kevin F Turner · CBM · Final written decision

  Claim 8 is unpatentable under § 101 because it is directed to an abstract idea and lacks an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTION TO EXCLUDE Patent Owner moves to exclude Exhibit 1002, Declaration of Mr. Bruce Schneier, from the record. Mot. Exclude. This filing is largely identical to a similar filing in CBM2015-00002, with the exception that the instant Motion to Exclude also seeks to exclude Ex. 1014 as well, in addition to Ex. 1002, by the same affiant on the same basis. Compare CBM2015- 00030, Paper 30, with CBM2015-00002, Paper 37. We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declarations should be excluded for the same reasons provided previously. See ’02 FWD 35–36.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

    “Similar to the CBM2015-00002 proceeding, we find that the cross- examination of Mr. Bruce Schneier occurred before Patent Owner filed its last substantive paper, making Patent Owner’s Motion for Observation improper. See ’02 FWD 36-38. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 15

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

    “In addition, Patent Owner argues that the claim term in claim 8, “initially produc[ing] a calling,” should be read as “the database itself that produces the calling to the data element protection catalogue,” as compared to the operating system or the individual field producing the calling. Resp. 23 (citing Ex. 1001, 3:53–61; Ex. 2047 ¶ 22; Ex. 2046 ¶ 40). We do not agree. As discussed in ’02 FWD and incorporated above, we are persuaded that the application 40, control module 20, and program module 30 handle system calls in the ’201 Patent, and the calling need not be produced by the first database itself.” slip op. at 5

  • BurdenUnpatentable

    “Upon review of Petitioner’s analysis and supporting evidence and taking into account Patent Owner’s arguments, discussed below, we are persuaded by Petitioner that claim 8 does not recite additional elements that transform the claim into a patent-eligible application of an abstract idea. We are not persuaded by Patent Owner’s arguments that the claims require additional elements that transform that abstract idea into a patent-eligible application (Resp. 43–49) because they are based upon an overly narrow construction of the claimed elements, as discussed in section II(A)(i) above, i.e., the ability of the first database calling out to the data protection catalogue, and based on additional elements not recited or required by the claims, as discussed previously.” slip op. at 14

  Patent outcomesUS 6,321,201 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Graham
  Patents in suitUS 6,321,201
• Informatica Corporation v. Protegrity CorporationAll claims unpatentable
  PTAB · May 31, 2016 · CBM2015-00021 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1–8 and 18–53 are unpatentable under § 101; claims 1, 2, 8, 19–26, 29, 31–35, 37–44, and 47–53 are also unpatentable under § 103.

  RulingsFinal written decision

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

    “claim, and “it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description of the ’201 Patent provides specific definitions of many terms (Ex. 1001, 2:64–3:43) but does not contain a definition of “database.” The claimed database for storing a plurality of data element values corresponds to the O-DB database disclosed in the ’201 Patent. The O-DB database is part of a larger “database management system” that includes multiple databases. Id. at 5:49–6:12, Fig. 3. Similar to the other databases, the O-DB database is described as containing data and, in particular, data to be protected. Id. at 5:53–58. Contrary to Patent Owner’s argument (Resp. 20), the ’201 Patent does not describe the O-DB database, or any other database, as performing any other data processing or managing functions. In particular, the ’201 Patent does not describe that the O-DB database produces the compelling calling to the data protection catalogue. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54– 61, 3:51–65, 4:16–22, 7:57–61 (describing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “Claims 1 and 8 do not recite unencrypted data element values, and only recites “encrypted data element values.” Those claims do not specify that the “given data element value” should be encrypted or unencrypted. We are not persuaded by Patent Owner’s declarants (Ex. 2063 ¶ 33; Ex. 2064 ¶ 48) as their testimonies are conclusory and are unsupported by the Specification or claims of the ’201 Patent. Although the “given data element value” could be the unencrypted data element value, it need not be in the context of claim 1.” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013- 00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Petitioner to exclude Exhibits 2064, 2089, and 2093 and Petitioner’s Motion to Exclude is denied. Additionally, we are also not persuaded that Dr. Direen is unqualified to testify as an expert. As Petitioner points out, Dr. Direen has knowledge, skill, experience, and training beyond degrees and is the holder of several patents. Opp. to Mot. Exclude 3–8; See Ex. 1002 ¶¶ 1–7 (discussing additional credentials and qualifications). Given this, we are persuaded that Dr. Direen is qualified to testify as an expert as to what a person of ordinary skill in the art would know or understand during the relevant time frame.” slip op. at 52

  • Strike new argumentNew argument disregardedGranted

    “The scheduling order states “[a] motion for observation on cross- examination provides the parties with a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply” and refers to the Office Patent Trial Practice Guide. Paper 15, 4–5. The Trial Practice Guide states: In the event that cross-examination occurs after a party has filed its last substantive paper on an issue, such cross-examination may result in testimony that should be called to the Board’s attention, but the party does not believe a motion to exclude the testimony is warranted. The Board may authorize the filing of observations to identify such testimony and responses to observations, as defined below. 77 Fed. Reg. at 48,767–68 (emphasis added).” slip op. at 53

  Patent outcomesUS 6,321,201 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Bilski · Graham
  Patents in suitUS 6,321,201
• Epicor Software Corporation v. Protegrity CorporationSome claims unpatentable
  PTAB · Apr 20, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Final written decision

  Claims 1, 5, 19, and 20 are unpatentable under § 101; claims 27–31 were not shown unpatentable under that ground.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “e. Broadest Reasonable Construction of “Database” We determine that the broadest reasonable construction, in light of the specification of the ’201 Patent, and the proffered evidence, of “database” is “an organized collection of structured data.” As discussed above, this construction is consistent with the words of the claims, the disclosure of the ’201 Patent, the testimony of Mr. Schneier and Dr. Shamos and the position taken by Patent Owner in the related district court proceeding. We are not persuaded by Patent Owner’s arguments, Patent Owner’s declarants’ testimony, database manual, or technical encyclopedia that this construction is unreasonably broad.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “Mr. Mattsson’s and Dr. Direen’s testimony is unpersuasive because it is inconsistent with the ’201 Patent. As discussed above, the ’201 Patent describes the O-DB as one database in a larger database management system. Ex. 1001, 5:49–6:12. The ’201 Patent describes the O-DB database as containing data and describes the modules of the larger database management system as performing data processing. Id. at 5:53–58, 6:13–45. The ’201 Patent does not describe the O-DB database as producing the compelling calling. See Ex. 1001, 10:44–58 (“is first collected by the system”); see id. at Abstract, 2:54–61, 3:51–65, 4:16–22, 7:57–61 (disclosing a compelling calling to a data protection catalogue, but failing to describe the compelling calling being produced by the O-DB database). The assertion that the compelling calling is produced by the O-DB database is only found in Patent Owner’s arguments, Mr. Mattsson’s testimony, and Dr. Direen’s testimony, and not the ’201 Patent. See, e.g., Ex. 2045 ¶¶ 12– 16, 22, 29; Ex. 2046 ¶ 57. Extraneous features 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). In that regard, “extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history.” Bell Atl. Network Servs. v. Covad Commc'ns Grp., 262 F.3d 1258, 1269 (Fed. Cir. 2001); see Vitronics, 90 F.3d at 1584 (“expert testimony, which was inconsistent with the specification and file history, should have been accorded no weight”). Further, we give little weight to Mr. Mattsson’s testimony because Mr. Mattsson is not a disinterested witness. Mr. Mattsson is Patent Owner’s Chief Technology Officer (Ex. 2045 ¶ 1) and has an interest in the outcome of this proceeding.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by Patent Owner’s argument that Mr. Schneier’s declaration should be excluded under FRE Rule 702 or 403. Patent Owner’s arguments attack the sufficiency and credibility of Mr. Schneier’s testimony. As the Board has noted in numerous cases, “the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial, without resorting to formal exclusion that might later be held reversible error.” See, e.g., Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 66 at 70 (PTAB Jan. 23, 2014); Gnosis S.P.A., et al. v. S. Alabama Medical Science Foundation, IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014); S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005); Opp. to Mot. Exclude 4. We, thus, are not persuaded by Patent Owner to exclude Exhibit 1002 and Patent Owner’s Motion to Exclude is denied.” slip op. at 35

  • Strike new argumentNew argument disregardedGranted

    “The scheduling order authorizes the filing of such a motion for observations regarding cross-examination of a reply witness by Due Date 4. Mr. Schneier cross-examination testimony was given on June 12, 2015, prior to Patent Owner filing its Patent Owner’s Response, on June 24, 2105. The cross-examination did not occur after Patent Owner filed its last substantive paper. Patent Owner’s Motion for Observation, thus, is improper. The Scheduling Order did not authorize Patent Owner to file a Motion for Observation of cross-examination that occurred prior to Patent Owner filing its last substantive paper on an issue, the Patent Owner’s Response and Patent Owner did not seek other authorization for such. The improper observations are akin to an unauthorized sur-reply to argument made in Petitioner’s Reply. We, thus, expunge Patent Owner’s unauthorized observations from the record. See 37 C.F.R. § 42.7(a). Additionally, we expunge Petitioner’s Opposition to that Observation (Paper 40) as being unnecessary.” slip op. at 37

  Patent outcomesUS 6,321,201 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski
  Patents in suitUS 6,321,201
• Epicor Software Corporation v. Protegrity CorporationRehearing denied
  PTAB · Apr 19, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Rehearing

  The Board denied both rehearing requests, leaving the institution of § 101 review of claims 1, 5, 8, 19, 20, and 27–31 and denial of prior art grounds unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “D. Conclusion We are not persuaded of an abuse of discretion either by Patent Owner or Petitioner. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that each Request for Rehearing is denied.” slip op. at 18

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

    “The Board instituted covered business method patent review of the ’201 Patent based upon the following ground, combined from both proceedings: Ground Prior Art Challenged Claims § 101 n/a 1, 5, 8, 19, 20, and 27–31 Papers 17 and 13 (’02 Decision and ’30 Decision, respectively). The Board did not institute covered business method patent review upon any prior art grounds. See ’02 Decision 6 and ’30 Decision 4–5 (listing grounds proffered by Petitioner).” slip op. at 2

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

    “Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 27 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the date element level”). However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” ’02 Decision 20. See also Pet. 20. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Although Atalla discloses authorization to a file based on information about the file, Ex. 1007, 3:27–58, Petitioner has not shown that the information about the file is individual data element types. Overall, Atalla addresses accessing files, in part, based on whether the files were previously accessed, but a file in not the same as an individual data element value. The section of Atalla cited in Petitioner’s Rehearing Request discloses the need for a correct key code, but that key code is for the entire file and not specific to the data element type. Pet. Req. 6 (citing Ex. 1007, 3:27–58). Although “information about the file” could include information about individual data element types, Petitioner has not demonstrated any such teaching or suggestion in Atalla. As stated in the ’02 Decision, Atalla “does not describe that access authorization file 15 comprises ‘a data element protection catalogue (DPC), which contains each individual data element type (DT) and one or more protection attributes stating processing rules for data element values’ as requires by claim 1.” ’02 Decision 28. Thus, we are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 1, 5, 19, 20, and 27–31 over the anticipation ground of Atalla provided in the Petition.” slip op. at 16

  § 101 eligibility§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,321,201
• Square, Inc. v. Protegrity CorporationRehearing denied
  PTAB · Apr 19, 2016 · CBM2015-00014 · APJ Kevin F Turner · CBM · Rehearing

  The Board denied Patent Owner’s request for rehearing, leaving institution intact on the § 101 and § 103 grounds for the challenged claims.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2

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

    “In the Decision, we discussed the proper construction of the claim term “data element type,” as well as data processing rules related to encryption. Decision 14–17. As such, the Decision evidences that the challenged claims recite both encryption and data element types. Thus, we agree that our statement that “claim 1 does not require data element types or encryption elements” is incorrect. The statement was made in the context of determining whether claim 1 solves a technical problem using a technical solution, where we remain persuaded that it does not. We remain persuaded, as discussed above, that at least claim 1 of the ’201 Patent does not recite a novel or unobvious technological feature and does not solve a technological problem with a technological solution, notwithstanding the errant statement.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (informative). “[P]arties are not permitted to request, and panels do not authorize, panel expansion.” Id. The Chief Judge was informed of Patent Owner’s request, and the Chief Judge declined to expand the panel.” slip op. at 3

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

    “eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response. Decision 20–21 (citing Prelim. Resp. 31–36). In the Preliminary Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 34 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the data element level.”); see also Req. 11. However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” Decision 20–21. See also Pet. 24. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 11

  Claim construction§ 101 eligibility§ 103 obviousnessDiscretionary denial
  Patents in suitUS 6,321,201

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.