• Quantile Technologies Limited v. Trioptima ABAll claims unpatentable
  PTAB · Oct 1, 2021 · CBM2020-00012 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–46 are unpatentable under § 101 because they claim abstract financial and mathematical processes without integrating them into a practical application or adding an inventive concept.

  RulingsFinal written decision

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

    “On October 6, 2020, based on the record before us at the time, we instituted a covered business method patent review of all challenged claims on all grounds alleged. Paper 11 (“Institution Decision” or “Dec.”). The claims and ground in this proceeding are indicated in the table below.” slip op. at 2

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

    “35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.200(b) (2019). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and customary meaning as they would be understood by an ordinarily skilled artisan. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)). Only terms that are in controversy need to be construed, and then 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). Patent Owner seeks construction of the terms “linking unit” and “combining unit” from claims 5 and 23, and “converting unit” from claim 6. Pet. 14–18. However, because we determine that even under Patent Owner’s constructions, the claims would be ineligible as discussed below, we discern no terms in need of express interpretation. Accordingly, we apply the legal standards set forth above when reading the claims. B. CBM PATENT REVIEW ELIGIBILITY” slip op. at 15

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

    “Id. at 33:66–34:12 (emphasis added). The combination of the elements italicized above recites the concept of simplifying a trade portfolio through premature termination of certain transactions. The claimed method accomplishes this through collecting information, grouping related information together, and then using mathematical techniques on the information, calculating a total value of the group, and selecting a certain group that meets certain criteria. This is all a mental process, an example of an abstract idea.” slip op. at 23

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

    “Claims 4 and 5 use a generic processor to perform well-understood, routine, conventional activities previously known to the industry, such as receiving and analyzing data and performing mathematical calculations. See Bancorp Servs., L.L.C v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an otherwise patent-ineligible process for no more than its most basic function--making calculations or computations-- fails to circumvent the prohibition against patenting abstract ideas and mental processes.”). We do not discern any claimed element for accomplishing the claimed solution that is other than what was generically known for performing those conventional functions. See Credit Acceptance, 859 F.3d at 1057 (“[T]he claims do not provide details as to any non-conventional software for enhancing the financing process.”); see Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Our law demands more” than claim language that “provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it.”); Elec. Power, 830 F.3d at 1354 (explaining that claims are directed to an abstract idea where they do not recite “any particular assertedly inventive technology for performing [conventional] functions”). Despite Patent Owner’s assertions that the claim steps add enough to make the claims patentable, we find the recitation of the steps performed by a generic processor at a high level of generality is insufficient to supply an inventive concept.” slip op. at 40

  Patent outcomesUS 8,010,441 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish · Electric Power · Phillips
  Patents in suitUS 8,010,441
• Bally Gaming, Inc., Dba Bally Technologies v. New Vision Gaming & Development, Inc.Rehearing denied
  PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2

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

    “on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3

  • BurdenDecided for petitioner

    “be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9

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

    “the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11

  § 101 eligibility
  Patents in suitUS 7,451,987
• 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
• Tradestation Technologies, Inc. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Nov 17, 2017 · CBM2016-00086 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 because they claim an abstract economic practice without an inventive concept.

  RulingsFinal written decision

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

    “I. INTRODUCTION TradeStation Technologies, Inc., (“Petitioner”)1 filed a Petition requesting a covered business method patent review of claims 1–21 of U.S. Patent No. 7,818,247 B2 (Ex. 1001, “the ’247 patent”) under the transitional program for covered business method patents.2 Paper 2 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1–21 of the ’247 patent (Paper 8 (“Dec.”)).” slip op. at 2

  • BurdenFwd all claims unpatentableUnpatentable

    “We have considered Petitioner’s showing and all of Patent Owner’s arguments, and determine, for all of the above reasons, Petitioner has shown sufficiently that claims 1–21 of the ’247 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101. IV. ORDER It is: ORDERED that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101; and” slip op. at 28

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

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

    “we determine that Petitioner has shown4 that claim 1 is directed to the abstract idea of receiving market information, color-coding graphical areas based on market information, and then updating the display based on newly received market information to assist a trader to make an order, which is a fundamental economic practice. Claim 1, the sole independent claim, recites in the preamble a method for displaying market information corresponding to a commodity being traded at an electronic exchange. The method steps include receiving market data including a quantity of an order at a first price level, displaying a first and second graphical area corresponding to a first and second price level in an axial direction, color-coding the first and second graphical areas with a first and second color respectively, and updating the first and second graphical area such that the first graphical area is color-coded with the second color and the second graphical area is color-coded with the first color. We agree with Petitioner that claim 1 encompasses the abstract idea of displaying financial information in a manner that makes it easier to understand and facilitate trades on an exchange, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 31–38 (citing CyberSource Corp. v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (unpatentable mental process performed with aid of pen and paper)); Ex.” slip op. at 18

  Patent outcomesUS 7,818,247 unpatentable
  § 101 eligibilitycites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,818,247
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Nov 17, 2017 · CBM2016-00087 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–24 are unpatentable under § 101, and claims 2 and 15 are also unpatentable under § 112 ¶ 4.

  RulingsFinal written decision

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

    “Tradestation Securities, Inc., (“Petitioner”)1 filed a Petition requesting a review of claims 1–24 of U.S. Patent No. 7,412,416 B2 (Ex. 1001, “the ’416 patent”) under the transitional program for covered business method patents.2 Paper 3 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1– 24 of the ’416 patent (Paper 11 (“Dec.”)).” slip op. at 2

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

  • ExcludeDenied

    “Kawashima’s deposition (Ex. 1018), and portions of Exhibit 1060 (the cross examination testimony of Mr. Thomas). PO Mot. to Exclude 1. Patent Owner seeks to exclude Exhibits 1015 and 1016 as not relevant under Rules 401 and 402 of the Federal Rules of Evidence (FRE) and because the exhibits have not been authenticated under FRE 901. Id. at 1–4. Patent Owner also seeks to exclude Exhibit 1018 as hearsay, and pages 248, and 263–269 of Exhibit 1060 (the cross examination testimony of Mr. Thomas) as prejudicial and confusing. Id. at 4–13. In rendering our Final Decision, we did not and need not consider Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. We have determined that Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, without considering Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. Accordingly, Patent Owner’s Motion to Exclude is dismissed.” slip op. at 32

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

    “Notwithstanding Patent Owner’s arguments, which we address below, we determine that Petitioner has shown3 that claim 1 is directed to the abstract idea of displaying a chart with a vertical price axis and a horizontal time axis, displaying indicators representing historical trading data along those axes, placing an order icon at a particular location of a plurality of locations, and generating and sending the order to an electronic trading system to assist a trader to place an order, which is a fundamental economic practice. The preamble of claim 1 recites a method for facilitating trading and displaying information regarding the buying and selling of a good. The method steps of claim 1 include displaying a chart on a graphical user interface having a vertical axis of price values and a horizontal axis of time, placing an order icon for a quantity of a good at a location along the vertical axis of price levels, and generating and sending the order to an electronic trading system. We agree with Petitioner that claim 1 encompasses the abstract idea of the fundamental economic practice of graphing (or displaying) trading data to assist a trader to place an order, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 22–25” slip op. at 21

  Patent outcomesUS 7,412,416 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,412,416
• 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
• E-Loan, Inc. v. Imx, Inc.All claims unpatentable
  PTAB · Feb 16, 2016 · CBM2015-00012 · APJ James P Calve · CBM · Final written decision

  Claims 7, 8, 26, and 27 are unpatentable under § 101 because they claim the abstract idea of loan processing implemented with generic computers.

  RulingsFinal written decision

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

    “I. BACKGROUND Petitioner E-Loan, Inc. (“E-Loan”) filed a Petition (Paper 1, “Pet.”) seeking a covered business method patent review of claims 7, 8, 26, and 27 of U.S. Patent No. 5,995,947 (Ex. 1001, “the ’947 patent”). Patent Owner IMX, Inc. (“IMX”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324. Based on these submissions, we instituted trial as to claims 7, 8, 26, and 27 of the ’947 patent. Paper 7 (“Dec. to Inst.”). IMX filed a Response. Paper 11 (“PO Resp.”). E-Loan then filed a Reply. Paper 12 (“Pet. Reply”).” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “unconstitutional. PO Resp. 14–16. IMX argues that issued patents are no longer under the jurisdiction of the U.S. Patent and Trademark Office (“USPTO”) and may be set aside, annulled, or corrected only by the courts of the United States, not by the USPTO or PTAB. Id. at 14–15. IMX argues that post-grant proceedings to invalidate patents deprive patent owners of due process and invade the province of Article III courts. Id. at 16. IMX’s arguments are not persuasive in view of the recent decision of the United States Court of Appeals for the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091, 2015 WL 7755665 (Fed. Cir. Dec. 2, 2015), which held that Congress can grant authority to the USPTO to correct or cancel issued patents. MCM Portfolio, 2015 WL 7755665, at *5. Congress has done so by creating inter partes reexamination proceedings, ex parte reexamination proceedings, inter partes review, post-grant review, and covered business method patent review. Id. (citations omitted). As stated with regard to the inter partes review provisions at issue in MCM Portfolio, “Supreme Court precedent demonstrates that these statutes, and particularly the inter partes review provisions, do not violate Article III.” Id.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We interpret “can bid on loan applications” in claim 7 and “capable of submitting bids on loan applications” in claim 26 as “can offer to make loans on loan applications that are pending in the database.” This interpretation is consistent with the claims. Claim 1 recites a method for processing loan applications including “maintaining a database of pending loan applications and their statuses at a database server.” Dependent claim 7 recites “said lender can search the database for particular desired types of loans, and can bid on loan applications.” Ex. 1001, 15:26–27 (emphasis added).” slip op. at 10

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

    “E-Loan has established, by a preponderance of evidence, that each of the challenged claims is directed to a fundamental economic or longstanding commercial practice of loan processing. The ’947 patent describes the conventional loan processes as involving large amounts of information that must be collected, compared, evaluated, and disseminated among parties to a transaction so lenders can offer loans at competitive rates. Ex. 1001, 1:9–17. Parties include lenders, borrowers, mortgage brokers, appraisers, regulatory agencies, and mortgage insurance companies. Id. at 1:17–21. Conventional processes required parties to collect nearly all loan application information by hand, transmit it on paper applications, and compare loan information by hand, according to each party’s role of loan evaluation, property appraisal, financial market evaluation, and setting lending rates with rate sheets. Id. at 1:22–27. Thus, parties to a conventional loan transaction monitor loan status and search and modify information in loan applications and loan processes. Claim 1 automates this known method and system of processing loan applications by maintaining a database of pending loan applications and their statuses at a database server where each party to a loan can search and modify that database consistent with their role in the transaction by requests to the server from client devices. Claim 19 recites a system for processing loan applications with a database of pending loan applications including status information and a transaction server for responding to requests of parties to the loan applications to search and modify the database consistent with their roles in the transaction. Whereas conventional loan processing required human beings to collect, compare, evaluate, and disseminate loan applications and loan information by hand, claims 1 and 19 recite the use of a database and transaction server to maintain loan applications so parties can search and modify the loan applications using those computer components instead of using pen and paper to perform these processes.” slip op. at 16

  Patent outcomesUS 5,995,947 unpatentable
  Claim construction§ 101 eligibilitycites Alice
  Patents in suitUS 5,995,947
• Epicor Software Corporation v. Protegrity CorporationRehearing denied
  PTAB · Jun 30, 2015 · CBM2015-00006 · APJ Meredith C Petravick · CBM · Rehearing

  The Board denied both rehearing requests, leaving in place institution on § 101 claims 1–60 and § 102 Denning claims 1, 2, 6, 9, 17, 18, 22, and 25.

  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 3

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

    “The Board instituted covered business method patent review of the ’281 patent based upon the following grounds: Ground Prior Art Challenged Claims § 101 n/a 1–60 Denning1 § 102 1, 2, 6, 9, 17, 18, 22, and 25” slip op. at 2

  • BurdenDecided for patent owner

    “As we stated in the Decision, Petitioner, must identify and articulate clearly each prior art combination relied on to support an assertion of unpatentability based on obviousness. Decision 36–37. Providing numerous claim charts and a broad statement that any or all of the prior art could be combined, without articulating the precise combination, is insufficient. Petitioner’s approach of offering a plurality of prior art references for consideration, without the particular and necessary combination to be selected or chosen by the Board, is improper. See 37 C.F.R. § 42.304 (b)(4). We are not persuaded by Petitioner that we abused our discretion in declining to institute review of any claim based on grounds of: obviousness over Denning, Lang, Atalla, and/or Hwang; obviousness over Denning, Lang, Atalla, and/or Hwang, and further over Thomson; and obviousness over Denning, Lang, Atalla, and/or Hwang and further over Abraham.” slip op. at 14

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

    “We did not overlook Patent Owner’s argument regarding patent- eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response because it was not commensurate with the scope of the claims. Decision 20–21 (citing Prelim. Resp. 30–32). In the Preliminary Response, Patent Owner argues that the claims are directed toward data protection systems and methods that work on the cell or data element level. Id. The claims, however, do not require that data protection at the data element level or preclude data protection at the record-level. See Decision 16–17. We also did not ignore Patent Owner’s argument regarding the cited disclosure of Denning. Although, Denning is evidence included in the record of this proceeding, Patent Owner does not identify where it was raised in its Preliminary Response with regards to Patent Owner’s abstract idea argument, and we can find no such argument in its Preliminary Response. See PO Req. 9; see Prelim. Resp. 24–33. We could not have overlooked or ignored an argument that was not raised in the Preliminary Response. Nonetheless, Patent Owner’s argument regarding Denning’s alleged disclosure that “that data protection must be done at the record-level, and not at the data element level” (PO Req. 9) is unpersuasive because it is not commensurate with the scope of the claims. The claims do not require that data protection at the data element level or preclude data protection at the record-level. See Decision 16–17. We, thus, are not persuaded by Patent Owner that we abused our discretion in determining that the claims of the ’281 patent are more likely than not directed to a patent-ineligible abstract idea.” slip op. at 9

  § 101 eligibility§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,402,281
• Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Apr 24, 2015 · CBM2014-00030 · APJ Thomas L Giannetti · CBM · Final written decision

  Claims 1–23 are unpatentable under § 101 because they claim an abstract idea implemented with routine, conventional activity.

  RulingsFinal written decision

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

    “are directed to the abstract idea of tailoring an information provider’s web page based on data about a particular user. Institution Dec. 12. Patent Owner responds that the claims do not fall within any of the “categories of abstract ideas enumerated by the Supreme Court.” PO Resp. 15. Citing Alice, Patent Owner asserts that the claims are not directed to “an idea itself, a mathematical formula or algorithm, a fundamental economic practice long prevalent in our system of commerce, or a method of organizing human activity.” Id. (internal quotation marks omitted). Therefore, Patent Owner asserts, the first step in the Alice/Mayo test is not met. Id. at 15–21. Petitioners respond that in Alice, the Supreme Court expressly declined to limit the categories of unpatentable abstract ideas as suggested by Patent Owner. Reply 3. We are persuaded by the Supreme Court’s opinion in Alice that Petitioners are correct, and that these enumerated categories were not intended as exclusive. Specifically, the Court wrote: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” 134 S. Ct. at 2357; accord Content Extraction, 776 F.3d at 1347. We are influenced also by the evidence from Patent Owner’s expert, who testified as follows: I’m trying to make clear that the patent is described at what may appear to be a fairly high abstract level, because it was generally known by persons of skill in the art that there are multiple ways to go about reducing the invention to practice depending upon the technologies that they have at hand. And it wasn’t the patent’s job to be that specific at the time. I shouldn’t say it wasn’t the patent’s job. The inventor did not choose to describe at that level of detail. Ex. 1037, 47:12–23 (emphasis added). We therefore conclude that the first step in the Alice/Mayo test is met for claims 1–23.” slip op. at 9

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

    “We are convinced by Petitioners’ argument that the ʼ382 patent claims do not contain an “inventive concept” sufficient to transform the claimed abstract idea into a patentable invention. Stated another way, we determine that the claims do not “significantly more than simply describe that abstract method.” Ultramercial, 772 F.3d at 715. Instead, “the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.” Id.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner’s expert does not rebut convincingly Dr. Myers’s claim- by-claim analysis. Instead, Patent Owner’s expert addresses the claims in two groups only. Ex. 2003, ¶¶ 26–28. We find this approach unconvincing, and therefore, credit Dr. Myers’s testimony as to specific claims over the testimony of Patent Owner’s expert. We are therefore persuaded, by a preponderance of the evidence, that, like the claims considered in Ultramercial, claims 1–23 of the ʼ382 patent simply instruct the practitioner to implement the abstract idea with routine, conventional activity. Ultramercial, 772 F.3d at 715. For the reasons stated above, none of the elements recited in the claims, including the “interactive interface” and the “plurality of data streams,” transforms the nature of the claims into patent-eligible subject matter. We credit the cited testimony of Patent Owner’s expert that the ʼ382 patent lacks implementation details because it is written at a “fairly high abstract level.” See supra. As a result of this choice by the patentee, the risk of preemption is great.” slip op. at 15

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

    “Patent Owner contends that neither Petitioners nor the Board provides any evidence that “interactive” and “Internet” have the same meaning, “either in the ʼ382 patent or as understood by one of skill in the art.” PO Resp. 7. Patent Owner further contends that Board should adopt a construction requiring the interface to be a “selectively tailored medium.” Id. at 8–9. Petitioners respond that there are not any claim terms “that could reasonably be construed in a manner that would impact the 35 U.S.C. § 101 analysis.” Reply 11. Petitioners further contend that the Board’s construction was nevertheless correct because the patent specification and claims make it clear that it is the information that is “selectively tailored,” not the information medium. Id. at 11–12. We are not convinced of any error in our initial construction of “interactive interface” as an Internet interface. Institution Dec. 6. Petitioners’ reliance on the Myers Declaration and the ʼ382 patent’s interchangeable use of interactive and Internet to describe the interface are persuasive. Pet. 15, 17 (citing Myers Dec., Ex. 1004 ¶ 52), 18 (citing Ex. 1001, Title, Abstract). We, therefore, determine that the correct construction of “interactive interface” is “an Internet interface that provides a medium for information users to communicate with information providers.”” slip op. at 6

  Patent outcomesUS 7,603,382 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,603,382
• Agilysys, Inc. / Expedia, Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Mar 20, 2015 · CBM2014-00016 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–10 are unpatentable under § 101 because they claim the abstract idea of generating a criteria-based menu and transmitting it using conventional computer elements.

  RulingsFinal written decision

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

    “Petition (Paper 8, “Pet.”) requesting review under the transitional program for covered business method patent of claims 1–15 of U.S. Patent No. 6,871,325 B1 (Ex. 1032, “the ’325 patent”). On March 26, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–10 of the ’325 patent on only one proposed ground of unpatentability, 35 U.S.C. § 101. Paper 19 (“Dec. to Inst.”). We did not institute as to claims 11–16 on any of the grounds proposed in the Petition. Ameranth, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 26, “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Reply”).” slip op. at 2

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

    “Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 30), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 33–35). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). We construe, below, the limitations that are relevant to the issues of patenteligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’325 patent uses typical hardware elements in the form of a computer workstation and that “[a] typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1032, col. 5, ll. 43–45; see also id. at col. 5, ll. 54–56 (“a CPU, e.g., Pentium® microprocessor”). Further the Specification discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 6, l. 33–col. 9, l. 3), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 31–37). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 6,871,325

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.