- Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCRehearing deniedPTAB · Jun 25, 2015 · CBM2014-00030 · APJ Thomas L Giannetti · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–23 unpatentable under § 101 because no matter was overlooked or misapprehended and the Board did not abuse its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The 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. In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355” slip op. at 3
- 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.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Decision. The first statement, regarding “abstract level,” was cited twice in the Final Decision. In the first instance, the citation followed a discussion of the first element of the Alice test. Final Dec. 9. Patent Owner’s main argument was that the ʼ382 patent did not fall within the categories of unpatentable, abstract ideas enumerated in Alice. Without reference to Mr. Martin’s testimony, the Board agreed with Petitioners that these enumerated categories are not exclusive. Id. The Board went on to state in a sentence that they were “influenced” by Mr. Martin’s testimony, which is then quoted in full, in determining that the patent is directed to an abstract idea. But the Board also had before it Dr. Myers’ testimony to the same effect. Myers Decl. ¶¶ 24–27. The second citation of this statement by Mr. Martin, also in a single sentence,1 follows a lengthy discussion of the patent claims based on the oral argument and Dr. Myers’ analysis. Final Dec. 11–14.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“[Patent Owner’s] supposed “inventive concept”—“delivering tailored web pages through an interactive interface as a function of web site navigation history”—fails to meet this standard. It is merely a restatement of the ’382 patent’s abstract idea (i.e., “tailoring an information provider’s web pages based on data about a particular information user”). This “concept” fails to include how to tailor web pages or use the web site navigation data. It therefore cannot “ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself,” as required by Alice Corp. Pet. Reply 5–6 (footnote omitted). Nor are we persuaded that the argument was overlooked or misapprehended by the Board. The Board considered all arguments presented. The Board was not persuaded by Patent Owner’s argument on this issue. In fact, this argument was rejected by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). The patent owner there argued “abstract ideas remain patent-eligible under §101 as long as they are new ideas, not previously well known, and not routine activity.” Ultramercial, 772 F.3d at 714. The Federal Circuit rejected this argument, concluding “[w]e agree with [defendant] that the claims of the ʼ545 patent are not directed to patent-eligible subject matter.” Id. Petitioners cite this very holding of Ultramercial in their response to Patent Owner’s “inventive concept” argument. Pet. Reply 5, n.1. We, therefore, did not overlook or misapprehend the “inventive concept” argument put forth by Patent Owner. We simply found Petitioners’ argument more persuasive under the prevailing legal authorities, including Ultramercial.” slip op. at 4
§ 101 eligibilitycites AlicePatents in suitUS 7,603,382 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · May 19, 2015 · CBM2014-00029 · APJ Hyun J Jung · CBM · Final written decision
Claims 1–18 are unpatentable under § 101 because they claim the abstract idea of protecting billing data with substitute billing data using only generic, routine computer activity.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Petitioner replies, and we agree, that the claims of the ’701 patent do not require that “substitute billing data” be tied to an actual financial account or be tested by an existing payment system. Also, we determine that the Specification does not describe how billing data becomes valid. The portion of Patent Owner’s expert declaration cited in Patent Owner’s Response does not refer to any portion of the Specification. PO Resp. 11; Martin Decl. ¶¶ 35–37. Thus, Patent Owner’s arguments regarding “valid billing data” do not persuade us that “substitute billing data” applies only to electronic transactions. Based on our conclusions from the Specification of the ’701 patent regarding “client” and the lack of any disclosure for validating billing data and the complete record before us, we are not persuaded that the broadest, reasonable interpretation of “substitute billing data” requires only electronic transactions. We determine that the broadest, reasonable interpretation of “substitute billing data” in view of the Specification is “valid billing data that is owned and/or controlled by a billing service, where billing data is temporarily or permanently distributed to clients to replace personal and/or private billing data of the client.” See Ex. 1001, 3:11–16. Also, Patent Owner’s arguments for “substitute billing data” do not persuade us to modify our interpretation of “a substitute for said personal billing data” and “substitutes for personal billing data.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Specification of the ’701 patent also states that, “[f]or the purposes of this description, the phrase ‘web site’ is intended to be a general reference to a network ‘presence’ maintained by a business as well [as] a logical presence maintained on behalf of a business.” Ex. 1001, 2:66–3:2. When this statement is considered together with Patent Owner’s asserted definition of “businesses”—that “each of the network locations to which a client may communicate provide[s] a ‘web site’ for engaging in commercial transactions”—the ’701 patent uses “businesses” or “business” to refer to the network locations, web sites, network presences or logical presences maintained by or on behalf of a business. Thus, we interpret “business” or “businesses” to mean the “network locations, web sites, network presences or logical presences maintained by or on behalf of a business.” In re Paulsen, 30 F.3d at 1480.” slip op. at 11
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“C. Are the ’701 Patent Claims Directed to Abstract Ideas? Petitioner argues that “the claims are directed to the basic idea of protecting personal billing data from thieves and hackers by providing ‘substitute billing data’ to a consumer for making online purchasing transactions.” Pet. 21. Patent Owner responds that Petitioner’s proposed abstract idea “does not rise to the level of a ‘fundamental building block’ of technology, of economic behavior, or of human organization.” PO Resp. 24–25 (citing Pet. 21), 27–28 (citing Martin Decl. ¶ 76); Tr. 56:15–22. Patent Owner also argues that, even if online purchasing transactions were a “fundamental building block,” the claims are directed to “a very specific subset of transactions that use a specific subset of ‘substitute billing data.’” Id. at 28–29 (citing Martin Decl. ¶ 17). Petitioner replies that “there is no rule that an idea is abstract only if it falls within a particular category of abstract ideas.” Reply 8–9. We are persuaded by the Supreme Court’s opinion in Alice that Petitioner is 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. Furthermore, providing substitute billing data is similar in principle to using a purchasing agent. We, therefore, conclude that the first step in the Alice/Mayo test is met for claims 1–18 of the ’701 patent.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Three of the four steps of claim 1 recite an “electronic device facilitating . . .” and the last step recites the “electronic device obtaining” The plain and ordinary meaning of “electronic device” does not tie claim 1 “to any particular novel machine or apparatus, only a general purpose computer.” See Ultramercial, 772 F.3d at 716. In arguing that the “electronic device” is integral to the claim, Patent Owner cites its expert declaration, but the declaration relies on Patent Owner’s proposed interpretations of “substitute billing data” and “billing service,” which we did not adopt. See Martin Decl. ¶¶ 69–77. Also, the words of the claim do not specify how the electronic device facilitates or obtains the recited activities. Claim 1 generally recites the activities of requesting credit card numbers, obtaining credit card numbers as a substitute for personal billing data, and purchasing from businesses associated with the credit card numbers. We find no persuasive evidence in the record that claim 1 recites more than “well-understood, routine, conventional activity.” Mayo, 132 S. Ct. at 1298. Thus, based on the complete record before us, we conclude that method claim 1, which merely requires generic computer implementation, fails to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2357.” slip op. at 25
Patent outcomesUS 7,664,701 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,664,701 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,603,382 - Regions Financial Corporation / Advance America, Cash Advance Centers, Inc. et al. v. Retirement Capital Access Management Company LLCAll claims unpatentablePTAB · Mar 23, 2015 · CBM2014-00012 · APJ Trenton A Ward · CBM · Final written decision
Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim the abstract idea of advancing funds based on future retirement payments without meaningful additional limitations.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting “means for causing said . . . payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.5 As noted by Patent Owner (PO Resp. 34–35), the corresponding structure within the specification supporting the means-plus-function limitation is described as follows: “[b]enefits source 12 of system 10 5 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’582 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of § 112. disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” PO Resp. 34–35 (quoting Ex. 1003, col. 5, ll. 18–22). Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to require “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“For method claims 1 and 18, however, we are not persuaded by Patent Owner’s argument that the term “deposited” should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 35–39. More particularly, claims 1 and 18 do not contain means-plus-function limitations, like claims 13 and 30, that must be construed according to the corresponding structure within the specification. Furthermore, Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (citations omitted). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as noted above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer.” The specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 9
- BurdenDecided for petitioner
“We agree with Petitioner and determine that it has made a sufficient showing to support its §101 challenge. Neither the claims nor the specification of the ʼ582 patent describes particularly complex technological implementations or modifications of these technologies requiring the explanation of an expert. 35 U.S.C. § 6(a). In fact, the ’582 patent itself states that it describes implementing electronic funds transfer and direct deposit by “utiliz[ing] existing computer capabilities” and “utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, l. 2; col. 5, ll. 21–22 (emphasis added). Furthermore, the “without encumbering” limitation discussed above expresses an easily understood concept and recites no specific technological mechanism for achieving its result.” slip op. at 21
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355. In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice, 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice, 134 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not dispute this. In the related case, CBM2013-00014, Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what they claim is the abstract concept” with respect to the challenged claims of the ’582 patent. CBM2013-00014, Paper 32 (Oral Hearing Transcript), 40; see CBM2013-00014 Final Decision, 13. Similar to the concept of intermediated settlement in Alice and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 14
Patent outcomesUS 6,625,582 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 6,625,582 - Search America, Inc. v. Transunion Intelligence, LLCAll claims unpatentablePTAB · Feb 3, 2015 · CBM2013-00037 · APJ Patrick M Boucher · CBM · Final written decision
Claims 1–14 are unpatentable: the TDHS System anticipates claims 1–3, 5–8, and 10–14; the asserted obviousness grounds and written-description ground also succeed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, Patent Owner contends that the plain meaning of “derived” to one of ordinary skill in the art at the time of filing the application was “obtained by reasoning” or “calculated.” Id. In support of this contention, Patent Owner cites the Declaration of Stephen Gray,1 which refers to one of the definitions provided by Random House Webster’s Dictionary, 4th ed., Ballantine Books (New York 2001). Ex. 2002 ¶ 104 (citing Ex. 2002E). But as Petitioner points out, Mr. Gray refers to the last definition in the dictionary entry, although the first definition provided for the word “derive” is “to receive or get from a source.” Reply 4. Second, Patent Owner refers to a statement in the specification of the ’937 patent that “the debt to income ratio can be computed,” reasoning that “one of ordinary skill would understand that the credit information input into the method of claim 1 could not have been mere data taken from a credit report but rather would have been the result of some calculation or computation.” PO Resp. 21 (citing Ex. 1001, col. 3, ll. 65–66; Ex. 2002 ¶ 104). We disagree with Patent Owner’s reasoning, because the statement in the specification merely provides an example of a calculation. Furthermore, as Petitioner observes, Patent Owner’s position is untenable because the context of the identified statement refers to calculation of “qualification 1 As discussed below, we deny Petitioner’s motion to exclude the Gray Declaration. criteria” rather than of “credit information.” See Reply 5. The claim’s text distinguishes between “qualification criteria” and “credit information.” In addition, and as Petitioner also observes, the prosecution history supports that credit information need not be calculated to be input. See id.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“a credit report of the patient.” Petitioner contends that the Data Broker module obtained a computerized report on each applicant at the request of an eligibility worker, extracted certain credit information, and combined the extracted credit information with data about the applicant to provide a combined report to the eligibility worker for viewing in the TDHS System. Pet. 38. Patent Owner contends that the credit information extracted from the computerized report is not “credit information derived from a credit report” (emphasis added). PO Resp. 20–21. We disagree. In accordance with our construction of “derived” as “received from a source,” we conclude that the Data Broker module inputs “credit information derived from a credit report.”” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner responds the “Belford has nothing to do with providing financial assistance for medical care of financially needy people” and that “Petitioner provides no reasoning why a person of ordinary skill in the art would be motivated to combine the teaching of a reference that discusses providing loans to people that have the ability to pay (credit worthiness) with needy people that cannot pay (charity).” PO Resp. 28. Patent Owner characterizes the relevant disclosures too narrowly. Belford is reasonably pertinent to the problem identified by Petitioner, namely the need for a patient to pay some amount even after receiving financial assistance. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Identification of the problem and how it is solved by Belford provides sufficient articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). We conclude that Petitioner has shown, by a preponderance of the evidence, that claim 9 would have been obvious over the TDHS System and Belford.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus, Patent Owner must offer “proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citation omitted). slip op. at 30
Patent outcomesUS 7,333,937 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,333,937 - U.S. Bancorp v. Retirement Capital Access Management CompanyAll claims unpatentablePTAB · Aug 22, 2014 · CBM2013-00014 · APJ Trenton A Ward · CBM · Final written decision
Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim an abstract economic concept without meaningful additional limitations.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting a “means for causing said future retirement payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.3 As noted by Patent Owner (PO Resp. 29), the corresponding structure within the specification supporting the means-plus-function limitation states the following: “[b]enefits source 12 of system 10 disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, ll. 18–22. Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to mean “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Unlike the means-plus function claims, we are not persuaded by Patent Owner’s argument that the term “deposited” in method claims 1 and 18 should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 30–33. Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as cited above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer,” but the specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp., 132 S.Ct. at 2355. In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 132 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 132 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not disagree. Tr. 40 (Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what [Petitioner] claim[s] is the abstract concept.”). Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
Patent outcomesUS 6,625,582 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 6,625,582 - CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc.All claims unpatentablePTAB · Jan 21, 2014 · CBM2012-00005 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 3, 6, 7, 16, 24, and 33 are unpatentable under § 101 because they claim abstract substitute fulfillment using generic computing technology without meaningful limitations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“the act of conveying or supplying for use making information available For each of the claim terms discussed above, we conclude that either definition would result in the same § 101 analysis. In other words, each of the challenged claims is unpatentable under § 101 whether or not we adopt CRS’s proposed claim constructions. Therefore, we conclude that each of the claim terms is given its ordinary and customary meaning and the issue of claim construction will not be addressed further.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We conclude that claims 3, 16, 24, and 33 are directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment. The claims are directed to concepts for taking the preexisting process of substitute fulfillment and implementing it in a networked computing environment. We do not agree with Frontline’s argument that the computer technology is integral to the claimed subject matter. As we explained in the Decision to Institute, the “one or more computers,” “Internet communication link,” and “website” recited in claim 3 are not analogous to the GPS receiver in SiRF. Decision to Institute 10-11. Frontline has not directed us to anything in the record at trial to cause us to change our position. Frontline asserts that because the claimed limitations “generating and posting by one or more computers a list of one or more positions of one or more absent workers that need to be filed by one or more substitute workers on a website” and “receiving via at least one communication link absentee information” are required for the claimed process to work as intended, they, like the GPS receiver in SiRF, are integral to the claimed subject matter. PO Resp. 25-26. We, however, disagree. We find these additions of generic computer technology to be more akin to the addition of “computer-aided” to the claims of Dealertrack, and the additions of “transaction database” and “transmitting information” to the claims of Accenture. Accenture, 728 F.3d at 1339; Dealertrack, 674 F. 3d at 1333. Like the terms “computer-aided” in Dealertrack, and “transaction database” in Accenture, the terms “one or more computers,” “website,” and “communication link” at issue in this case do not impose meaningful limits on the challenged claims’ scope. This particular technology is employed only for the purposes of creating more efficient communication and data storage—basic functions of those components. Ex. 1001, col. 4, ll. 46-58 (stating that the advantages of the present invention are “to provide a reliable, efficient system . . . . that has low overhead and requires little . . . oversight. . . . includ[ing] an interface to the Internet . . . .[and] a central database”); see also col. 3, ll. 36-64 (describing the prior art automated systems). In other words, the claims here, even with the recitation of computing technology, are not part of a “technological advance” of any sort. See Bancorp, 687 F.3d at 1279.” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Like the terms “computer-aided” in Dealertrack, and “transaction database” in Accenture, the terms “one or more computers,” “website,” and “communication link” at issue in this case do not impose meaningful limits on the challenged claims’ scope. This particular technology is employed only for the purposes of creating more efficient communication and data storage—basic functions of those components. Ex. 1001, col. 4, ll. 46-58 (stating that the advantages of the present invention are “to provide a reliable, efficient system . . . . that has low overhead and requires little . . . oversight. . . . includ[ing] an interface to the Internet . . . .[and] a central database”); see also col. 3, ll. 36-64 (describing the prior art automated systems). In other words, the claims here, even with the recitation of computing technology, are not part of a “technological advance” of any sort. See Bancorp, 687 F.3d at 1279.” slip op. at 14
Patent outcomesUS 6,675,151 unpatentableClaim construction§ 101 eligibilityPatents in suitUS 6,675,151
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.