• United Services Automobile Association v. Nader Asghari-Kamrani And Kamran Asghari-KamraniRehearing denied
  PTAB · Oct 13, 2016 · CBM2016-00064 · APJ Joni Y Chang · CBM · Rehearing

  The Board denied rehearing, leaving in place institution on claims 1–3, 5–28, and 30–55 based on the showing that those claims were more likely than not obvious over Nicholson and Brown.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2

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

    “2003/0046591 A1 (Ex. 1017), published on March 6, 2003, and WIPO International Publication No. WO 03/021837 A1 (Ex. 1028), published on March 13, 2003, more than one year before the actual filing date of the ’432 patent (September 15, 2008)—are also prior art under § 102(b), showing what was known in the art and the knowledge of a person of ordinary skill in the art at the time of the invention.4 See In re Van Langenhoven, 458 F.2d 132, 136–37 (CCPA 1972) (citing In re Hafner, 410 F.2d 1403 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 690–91 (CCPA 1958)) (noting that, because the patentee could not claim the benefit of the filing date of any prior-filed application, the patentee’s own prior patent or publication that was published more than one year from the actual filing date of the application at issue was available as prior art under § 102(b)). Therefore, we disagree with Patent Owner that we committed a clear error in determining that claim 1 does not recite a technological feature that is novel and unobvious over the prior art, and that we committed a clear error in concluding that Petitioner had demonstrated that the claims at issue are more likely than not unpatentable as obvious over Nicholson and Brown. For the reasons stated above, Patent Owner has not established that we abused our discretion in determining that the ’432 patent is not excluded as a technological invention, and that it is more likely than not that claims 1–3, 4 Petitioner’s asserted ground of unpatentability, on which we instituted a trial, is based on the combination of Nicholson and Brown under § 103(a). See Paper 2, 27–63; Dec. 35. 13 5–28, and 30–55 of the ’432 patent are unpatentable under § 103(a) as obvious over Nicholson and Brown.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner

    “was made. Req. Reh’g 13–14 (citing 35 U.S.C. § 103(a)). In the Decision (Dec. 18–19), we noted that in determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). We further noted in the Decision (Dec. 19) that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art). On this record, Nicholson, which was filed on July 14, 2006, and published on January 25, 2007, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.2 Ex. 1034 at [22], [43]. And, Brown, which was filed on June 3, 1996, and issued on April 14, 1998, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.3 Ex. 1035 at [22], [45]. Therefore, based on the current record, both Nicholson and Brown are prior art under § 102(b) as to the challenged claims. In addition, on this record, the publications of the first prior-filed application—U.S. Patent Application Publication No.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “demonstrated based on the current record that the benefit claim to the third prior-filed application complies with the requirements of 35 U.S.C. § 120, among which is the requirement that the original disclosure of the third prior-filed application provides written description support for the challenged claims as required by 35 U.S.C. § 112, first paragraph. See Dec. 26–27. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011); In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). Once again, Patent Owner’s arguments ignore the requirements of 35 U.S.C. § 120. As we determined in our Decision, Patent Owner has not shown, at this juncture, that the original disclosure of the second prior-filed application or the original disclosure of the third prior-filed application provides sufficient written description support for each limitation of the challenged claims. Dec. 23–29. Without this showing, the challenged claims are not entitled to the benefit of the filing date of any prior-filed application. Id. Therefore, on this record, “at the time of the invention” is not August 29, 2001, the filing date of the first prior-filed application, as alleged by Patent Owner, but rather, September 15, 2008, the actual filing date of the application that issued as the ’432 patent.” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 8,266,432
• Google Inc. / Apple Inc. v. Contentguard Holdings, Inc.All claims unpatentable
  PTAB · Jun 21, 2016 · CBM2015-00160 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1, 5, and 11 are unpatentable as anticipated by Stefik and obvious over Stefik with ordinary skill knowledge; the contingent motion to substitute claim 37 is granted.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “claims of the ’280 patent at issue in this proceeding based on the same grounds of unpatentability. The Petition in Case CBM2015-00160 was accompanied by a Motion for Joinder that requests we join Apple as a party to this proceeding. Pursuant to § 324 and § 18(a) of the AIA, we instituted another covered business method patent review proceeding as to claims 1, 5, and 11 of the ’280 patent, and then granted Apple’s Motion for Joinder. Paper 14.” slip op. at 3

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

    “transitional program for covered business method patents of claims 1, 5, 11, 12, and 22 of U.S. Patent No. 7,774,280 B2 (“the ’280 patent,” Ex. 1001). Paper 1 (“Pet.”). ContentGuard Holdings, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Taking into account the arguments presented in the Preliminary Response, we determined that the information presented in the Petition establishes that claims 1, 5, and 11 of the ’280 patent are more likely than not unpatentable under 35 U.S.C. §§ 102(b) and 103(a). We, however, determined that the information presented in the Petition did not establish that claims 12 and 22 of the ’280 patent are more likely than not unpatentable. Pursuant to 35 U.S.C. § 324 and § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329–31 (2011) (“AIA”),2 we instituted this covered business method patent review proceeding on June 24, 2015, only as to claims 1, 5, and 11 of the ’280 patent. Paper 9 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “2. Level of Skill in the Art There is sufficient evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioners’ declarant, Dr. Goldberg, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who (1) possesses a bachelor’s degree in electrical engineering, computer science, or a related field; and (2) has at least two years of experience with digital content distribution and/or computer security. Ex. 1014 ¶ 10. Patent Owner’s declarant, Dr. Martin, agrees with Dr. Goldberg’s assessment. Compare Ex. 1014 ¶ 10, with Ex. 2009 ¶ 16. In addition, we note that the prior art of record in this proceeding—namely, Stefik—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 48

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

    “8. Summary For the foregoing reasons, Patent Owner has demonstrated by a preponderance of the evidence that proposed, substitute independent claim 37 satisfies the requirements of 37 C.F.R. § 42.221 and is patentable over the prior art. Accordingly, we grant Patent Owner’s request to cancel independent claim 1 of the ’280 patent and replace it with proposed, substitute independent claim 37.” slip op. at 72

  Patent outcomesUS 7,774,280 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,774,280
• 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
• Epicor Software Corporation v. Protegrity CorporationRehearing denied
  PTAB · Apr 19, 2016 · CBM2015-00030 · APJ Kevin F Turner · CBM · Rehearing

  The Board denied both parties’ rehearing requests and left in place institution on the § 101 ground for claims 1, 5, 8, 19, 20, and 27–31.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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

    “’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

  • Burden

    “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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not found

    “As stated in the Decision: “Petitioner’s approach of offering a plurality of prior art references for consideration, with the particular and necessary combination to be selected or chosen by the Board is improper.” ’02 Decision 31. The fact that the group of references might teach every feature of a claim is not persuasive to demonstrate the combination of those references. Similarly, the assertion of Petitioner’s declarant, Bruce Schneier, that the aspects could have been combined as “common-sense application of known systems in a known manner with expected outcome,” Ex. 1002 ¶ 54, is conclusory and generic. As 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.” ’02 Decision 31. The bare assertions made in the Petition and by Petitioner’s declarant do not rise to that standard.” slip op. at 17

  § 103 obviousness
  Patents in suitUS 6,321,201
• Informatica Corporation v. Protegrity CorporationRehearing denied
  PTAB · Apr 19, 2016 · CBM2015-00021 · APJ Kevin F Turner · CBM · Rehearing

  The Board denied the Patent Owner’s rehearing request and left institution in place, including the § 101 and § 103 grounds against 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

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

    “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 21–23 (citing Prelim. Resp. 27–41). 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. 31 (“[t]he ’201 Patent’s claims provide a solution to a computer technology problem – how to protect data at the data element level, something thought to be technologically not possible.”); see also Req. 12. 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 21. See also Pet. 17. As such, the abstract idea goes directly to the concept of protecting data at the data element level. Patent Owner also argues that the claims are directed to more than a generic computing device. Req. 12. Such arguments, however, are not commensurate with the scopes of the contested claims, where those claims are drawn to processing of protected data, using conventional databases. Although the claims can be applied to “prevent those with administrative responsibilities from having too much access to confidential information” (id. at 12), nothing in the subject claims themselves explicitly recites or suggests such an intrinsic utility, and is not specifically addressed in the Specification. We, thus, are not persuaded by Patent Owner that we abused our discretion in determining that the claims of the ’201 Patent are more likely than not directed to a patent-ineligible abstract idea.” slip op. at 11

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “SecureBuy. In SecureBuy, the Board determined that 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy slip op. at 2–3. Although only an informative Decision, the Board has also determined that “[t]he dismissal of an action without prejudice leaves the parties as though the action had never been brought.” Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). See also Decision 9. In this case, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See Decision 9. Dismissal without prejudice does not trigger the statutory bar. See Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013- 00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21). As such, we did not ignore the statute or the precedential decision in SecureBuy, but applied both and took into account that the action for declaratory judgment of non-infringement and invalidity dismissed without prejudice. As well, we also do not agree that we cited to Ariosa Diagnostics as authority, as Patent Owner alleges (Req. 4), but rather agreed with the reasoning provided in that informative decision.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “arguments that Hoffman lacks a second database. Req. 14–15. Patent Owner continues that even if the blocks “ACCESS” and “CONTROL” in Hoffman are considered databases, they would be two separate databases and that they cannot be a single second database as required by claim 1. Id. We do not agree. The “comprising” language found in claim 1 connotes that the claim is not exclusively limited to just the elements recited. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Further, we concur with Petitioner’s argument that “to the extent that the Board does not find that the protection catalog of Hoffman has the claimed protection catalog and data element types stored as data element values, IBM DB2, or the references of the DB2 Documentation, cures this ‘deficiency.’” Pet. 56. Implementing the blocks “ACCESS” and “CONTROL” in Hoffman as a single database would have been motivated to ordinarily skilled artisans for the reasons supplied by Petitioner’s declarant. Id. As such, we are not persuaded by Patent Owner that we abused our” slip op. at 13

  § 103 obviousness
  Patents in suitUS 6,321,201
• Ebay Inc. v. Moneycat Ltd.All claims unpatentable
  PTAB · Sep 23, 2015 · CBM2014-00091 · APJ Minn Chung · CBM · Final written decision

  Claims 1, 2, 4–6, 8, 10, and 11 are unpatentable as obvious over Teramura and APA NetCash, and over Bernstein and APA NetCash.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System. Pet. 34–46. Upon review of all of the parties’ papers and supporting evidence discussed in those papers, we are persuaded that Petitioner has demonstrated, by a preponderance of evidence, that claims 1, 2, 4–8, 10, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “NetCash System, Exhibit 1008 (Simon), Exhibit 1009 (Neuman Declaration), and Exhibit 1012 (Neuman Reply Declaration). As the movant, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Patent Owner’s Motion to Exclude is DENIED.” slip op. at 64

  • Skill levelSkill level board ownDecided for petitioner

    “On this record, we find that a person of ordinary skill in the art, at the time of the invention of the ’011 patent, would have been familiar with various conventional systems for electronic payments and electronic currency transactions, including two-step transaction systems that employ intermediary “broker servers” that can be trusted, and would have Resp. 26–29), the Board declined to do so for purposes of institution of trial. Dec. to Inst. 10–11. Therefore, Patent Owner is not justified to presume Dr. Neuman’s testimony is not part of the record in this proceeding and conclude it does not exist for the purposes of trial in this case. 28 understood the security problems to be an important issue in existing systems. In addition, the level of ordinary skill is relatively high and would require knowledge specific to electronic currency and electronic payment transactions. See Ex. 1001, col. 1, ll. 49–54 (“The problem of payments over the Internet is . . . a complicated one, because the use of credit cards over the Internet is unsafe, and because in many transactions the buyer does not wish to provide details of himself, or of his bank account.”) (emphases added).” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are also persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been guided by Simon and motivated to co-locate the currency server of the APA NetCash System with Teramura’s intermediary broker to further increase the security of the combined system. In addition, we credit the testimony of Dr. Neuman, and are persuaded that a person of ordinary skill would have been motivated by the double-spending problem addressed in the APA NetCash System and Simon’s teaching of currency swapping at the middleman to recognize that, in a combined system where the currency server and the intermediary broker are co-located, the middleman is a preferred location to place the coin exchange 47 function. That is, a person of ordinary skill in the art would have found an internal coin exchange function at the middleman desirable. As discussed above, this means that an ordinary artisan would have found it desirable to have the broker check the coins received from the buyer with the co-located currency server, and, upon verification, replace them with new coins to be sent to the seller, as opposed to forwarding the coins “as-is” to the seller without checking them.” slip op. at 47

  Patent outcomesUS 8,051,011 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,051,011
• 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
• TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing denied
  PTAB · Feb 2, 2015 · CBM2014-00133 · APJ Philip J Hoffmann · CBM · Rehearing

  The Board denied both rehearing requests, leaving in place institution on claims 1–28 under § 101 and denial of institution under § 103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2

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

    “Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) on May 19, 2014, which requested review under the transitional program for covered business method patents of U.S. Patent No. 7,676,411 B2 (Ex. 1001, “the ’411 patent”). Trading Technologies International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim. Resp.”) on September 3, 2014. The Board instituted covered business method patent review of claims 1–28 of the ’411 patent under 35 U.S.C. § 101, and denied institution of any claims under 35 U.S.C. § 103. Paper 19 (“Decision”). Petitioner and Patent Owner each filed a Request for Rehearing asking that the Board reconsider its Decision – Petitioner requesting that we institute based on grounds 2 and 3 of the Petition because claims 1–28 are obvious based on Silverman, Gutterman, and Togher with or without Paal (Paper 21, “Petitioner’s Req. Reh’g”), and Patent Owner requesting that we deny institution because the ’411 patent does not qualify for covered business method patent review (Paper 22, “Patent Owner’s Req. Reh’g”).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular graphical area in the order entry region through a single action of the user input device to . . . set a price for the trade order and send the trade order . . . to the electronic exchange,” and relied on Togher to disclose the claim limitation “the trade order having a default quantity.” Thus, Petitioner’s argument that Togher discloses “a single action of the user input device [] both set[ting] a price for the trade order and send[ing] the trade order having a default quantity” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3

  • BurdenDecided for patent owner

    “information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 7,676,411

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.