• Google Inc. v. Unwired Planet, LLCAll claims unpatentable
  PTAB · Mar 30, 2015 · CBM2014-00005 · APJ Barbara A Parvis · CBM · Final written decision

  Claims 1–6 are unpatentable under § 112, first paragraph, because the patent lacks written description support for the claimed limitations.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “To satisfy the written description requirement, the focus is not just on whether the claims are supported by the specification, but whether one of ordinary skill in the art reasonably would conclude from the original disclosure that the inventor had possession of the claimed invention. See, 2 Claim 4, which depends from claim 1, recites “wherein said step of accessing comprises obtaining information established by a network administrator regarding said prioritization for presenting said service provider information to said subscriber.” Claim 4 was added as claim 79 during prosecution. Ex. 1003, 233. e.g., Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Additionally, where an explicit limitation is not present in the written description, “it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Furthermore, “[n]egative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F. 3d 1344, 1351 (Fed. Cir. 2012).” slip op. at 13

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Dr. Kingdon, who Patent Owner relies on for support, does not provide sufficient rationale for his opinion to the contrary. Ex. 2002 ¶ 27. In particular, Dr. Kingdon provides a conclusory statement, “[t]his preference information is, by its very nature, determined by the network administrator—not by the subscriber, and not on the basis of proximity determined from location finding equipment.” Id. Dr. Kingdon does not identify persuasive support in the ’205 patent specification or describe persuasively other evidence that supports his conclusion. Id. ¶¶ 23–27; see also id. ¶¶ 11–15 (describing a background of location based services including a description of certain handsets, promotion of implementation of location services worldwide by several companies, and an exemplary commercial launch in Sweden of a mobile positioning service). Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. See 37 C.F.R. § 42.65(a).” slip op. at 17

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

    “5. “prioritization” The term “prioritization” is recited, for example, in claim 1: “a prioritization for presenting service provider information to a subscriber” and “prioritization information establishing a basis independent of proximity and independent of any subscriber preferences for prioritizing.” Neither party provides a proposed construction for the term “prioritization.” We, however, construe this term as part of our evaluation of the parties’ dispute as to whether the ’205 patent specification provides written description support for the limitations challenged by Petitioner. The specification does not provide a definition of “prioritization.” The IEEE Dictionary sets forth a plain and ordinary meaning of “priority” as follows: “A rank order of status, activities, or tasks.” Institute of Electrical and Electronics Engineers, The Authoritative Dictionary of IEEE Standard Terms 867 (7th Ed., IEEE Press 2000) (emphasis added) (Ex. 3001). This definition is consistent with the specification, which provides an example of “prioritization” as follows: “[t]he menu may be ordered based on any of various criteria such as preferences expressed in the subscriber profile, nearest to farthest, preferred service providers defined by the network administrator, etc.” Ex. 1001, 8:32–36 (emphasis added). Upon review, we determine that construing “prioritization” to have its plain and ordinary meaning of “ordering” is reasonable and consistent with the specification. Therefore, we adopt it as a broadest reasonable construction.” slip op. at 10

  Patent outcomesUS 7,024,205 unpatentable
  Claim construction§ 112 disclosure
  Patents in suitUS 7,024,205
• Search America, Inc. v. Transunion Intelligence, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,333,937
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPreamble limitingDecided for patent owner

    “Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7

  • BurdenNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 24

  Patent outcomesUS 7,664,516 mixed
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 7,664,516
• Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.All claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00027 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1–23 and 41–49 are unpatentable: claims 1–23 are indefinite, and claims 1–4, 6–23, and 41–49 are obvious; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “considered, including “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. CME’s expert witness, Dr. Pirrong, attests that a person with ordinary skill in the art would be an individual who possesses the following: (1) a bachelor’s degree in computer science, or another quantitative field such as mathematics, statistics, economics, or finance; (2) two to five years of work experience in any one of the aforementioned areas; and (3) an understanding of the operation of markets for financial instruments, including computerized and electronic markets. Ex. 1005 ¶ 44.” slip op. at 24

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

    “We are not persuaded by 5th Market’s proposed claim construction of the claim phrase “external price feed” because its construction of “outside” the network is overly narrow. 5th Market does not direct us to a disclosure in the Specification of the ’419 patent that suggests “outside” the network should be limited to a marketplace trading, but not aggregating orders for, the same securities or items as the originating CORE trading engine, or a diverse marketplace that does not trade or aggregate the same securities or items, as the originating CORE trading engine. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be 15 “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We decline to adopt 5th Market’s construction of “outside” the network as the broadest reasonable interpretation, as it would import extraneous limitations into the claims, and it would be inconsistent with the Specification of the ’419 patent. 5th Market’s attempt to limit “outside” the network to the two types of marketplaces identified above is not necessary to give meaning to the claim phrase “external price feed,” and should not be read into the claims that recite this feature. We maintain that the broadest reasonable interpretation of the claim phrase “external price feed” is “price data received from outside of the conditional order transaction network.” As we explained in the Decision to Institute (Dec. 20–22), this claim construction is consistent with the ordinary and customary meaning of “external,” as would be understood by one with ordinary skill in the art, in light of the ’419 patent.” slip op. at 15

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for petitioner

    “When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, 3 the corresponding structure of a means-plus-function limitation must be more than simply a general-purpose computer or microprocessor to avoid impermissible functional claiming, unless certain narrow exceptions concerning generic computer functions apply. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). That is, the specification must disclose “enough of an algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure that can be 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Nonetheless, because the ’419 patent has a filing date before September 16, 2012 (the effective date of the AIA), we refer to the pre-AIA version of 35 U.S.C. § 112. 18 expressed in any understandable terms, e.g., a mathematical formula, in prose, or as a flowchart. Finisar Corp. v. The DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Simply reciting a claimed function in the specification, and saying nothing about how the computer or processor ensures that such a function is performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). According to the Specification of the ’419 patent, Table 1 includes conditions that are available for input by subscribers, viewable by other subscribers, and executed by the system’s trading engine, e.g., the CORE trading engine illustrated in Figure 1. Ex. 1001, 17:20–23. Although the CORE trading engine is tantamount to a general purpose computer, there is no explicit disclosure that explains how the conditions included in Table 1 are used to compare orders. For instance, Table 1 includes, amongst other conditions, price, quantity, minimum quantity, cap, and a collar kill that may be used to compare orders. Id. at 17:25–18:20. Table 1, however, does not disclose a well-defined or otherwise recognizable sequence of steps that uses these conditions to compare orders. See Blackboard, 574 F.3d at 1384. Absent such a disclosure, we are not persuaded that the Specification of the ’419 patent discloses a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Finisar, 523 F.3d at 1340. 19 In summary, because Federal Circuit precedent dictates that the corresponding structure for performing a specialized function, as here, cannot just be a general purpose computer, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.”” slip op. at 18

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “Table 1, that purportedly identify the corresponding structure for performing the recited function of “comparing.” PO Resp. 76–77 (citing Ex. 1001, 17:20–18:20; Ex. 2008 ¶ 86). 5th Market argues that these disclosures in the Specification collectively amount to a structure in the form of an algorithm that transforms an otherwise general purpose computer into a special-purpose computer programmed to perform the recited function of “comparing.” Id. at 77–78 (citing Ex. 2008 ¶ 87). In its Reply, CME contends that the ’419 patent does not disclose an algorithm for comparing orders, nor does it explain how a computer may be programmed to compare algorithmic orders with algorithmic or non-algorithmic orders. Pet. Reply 15. As we explained in the claim construction section above, upon reviewing the disclosures in the Specification of the ’419 patent relied upon by 5th Market in its Patent Owner Response, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.” In other words, the conditions included in Table 1 of the ’419 patent, by themselves, do not set forth a well-defined or otherwise recognizable sequence of steps for comparing orders and, therefore, do not amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Blackboard, 574 F.3d at 1384; Finisar, 523 F.3d at 1340. Consequently, we conclude that CME has demonstrated by a preponderance of evidence that claims 1–23, each of 21 which recites the claim phrase “means for comparing,” are indefinite under § 112 ¶ 2.” slip op. at 21

  Patent outcomesUS 6,418,419 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 6,418,419
• SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentable
  PTAB · Sep 18, 2014 · CBM2013-00013 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–3 and 11 are unpatentable under §§ 101 and 103, and claims 1–6 and 11 are unpatentable under § 112, second paragraph.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Under Federal Rules of Evidence (“FRE”) 901(b)(1) a proponent may authenticate evidence through testimony that the evidence is what it is claimed to be. In Loraine v. Markel American Insurance Co., 241 F.R.D. 534, (D. Md. 2007), the court noted that a witness authenticating electronic evidence must “provide factual specificity about the process by which the electronically stored information is created, acquired, maintained, and preserved without alteration or change, or the process by which it is produced if the result of a system or process that does so.” Id. at 545. The inventor’s statements do not meet these criteria. However, under FRE 901(b)(4) a party may authenticate evidence using circumstantial evidence in conjunction with the appearance, contents, substance, internal patterns, or other distinctive characteristics of the evidence. Although Patent Owner has not provided evidence such as hash values or metadata (see Lorraine at 547), the contents and substance of the documents indicate that they are what they purport to be. Given their technical nature of the documents, this panel can assign them appropriate weight.” slip op. at 28

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

    “As discussed further in this decision, based on Patent Owner’s contentions and the language of the Specification, we conclude that the term “routed transactional data structure” fails to inform a person of ordinary skill in the art of the scope of the claim with reasonable certainty and is therefore indefinite under 35 U.S.C. § 112 , second paragraph. See, Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014) . However, to the extent that the claim can be construed in order to analyze its relationship to the prior art in this proceeding and whether the claim recites patent eligible subject matter under 35 U.S.C. § 101, we have reconsidered our use of the expression “switching a user” in the construction we applied in our Decision to Institute. Dec. to Inst. 15-16. Claim 1 recites that the “routed transactional data structure” is specific to a POSvc application, which is a software program that facilitates execution of transactions requested by a user. Upon reconsideration, we conclude that “utilizing a routed transaction data structure” encompasses using a data structure that facilitates switching the processing of information associated with a user selected transactional application that provides immediate processing.” slip op. at 11

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

    “In our Decision to Institute, we noted that “object routing” requires the use of individual networked objects to route a user from a selected transactional application to the processing provided by the service provider. In contrast, the limitation “routed transactional data structure,” does not impose a meaningful limit on the scope of claims 1–3 and 11 because it does not play a significant part in permitting the claimed method to be performed. See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). For example, as explained below in our 35 U.S.C. § 112 , second paragraph analysis, the Specification does not describe clearly how a data structure is transactional, as opposed to non-transactional, or routed, as opposed to non-routed. As discussed above, to the extent that “utilizing a routed transactional data structure that is both complete and non-deferred,” can be construed, we have interpreted it to mean using a data structure that facilitates switching the processing of information associated with a user– selected a transactional application that provides immediate processing. Switching the processing of information from one resource to another, such as from one program or data base to another, is a well-known abstract concept that is not limited to any particular technical approach, such as object routing, as recited in claim 4. The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter.” slip op. at 16

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

    “The remaining limitations in claim 1 do not contribute any patent– eligible subject matter. The service network atop the Web, which we have construed to mean a network on which services other than underlying network communications services are provided over the Web, is an abstract concept under which customers and service providers communicate over a network so that the service provider can service the customer, in this case to allow the user to transfer funds between checking and savings accounts. This does not impose a meaningful limitation on the scope of the claim. See SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite patent–eligible subject matter. Claims 2, 3, and 11 do not add limitations that contribute to patent eligibility. Thus, we conclude that Petitioner has demonstrated that claims 1–3 and 11 do not recite patentable subject matter under 35 U.S.C. § 101.” slip op. at 17

  Patent outcomesUS 8,037,158 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Nautilus
  Patents in suitUS 8,037,158
• Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.All claims unpatentable
  PTAB · Mar 13, 2014 · CBM2013-00004 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1–78 are unpatentable: anticipated by Burge and Nakagawa, and claims 16, 17, 47, 63, and 64 are also obvious over the stated combinations with Herrod.

  RulingsFinal written decision

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

    “Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier-filed application provides written description support for the patent claim as required by 35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). The test for determining compliance with the written description requirement under 35 U.S.C. § 112, ¶ 1, is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The specification must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the claimed subject matter, as of the filing date of the earlier-filed application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563- 64 (Fed. Cir. 1991).” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Upon reviewing the parties’ arguments and supporting evidence, we have reevaluated our determination in the Decision on Institution (Dec. 19- 30) that certain claim features lack written description support in the ’650 application. For example, we agree with Progressive that the claim term “a level of risk” does not require a level of risk to be “assigned based at least in part on the indicated level of willingness of the driver to allow at least one aspect to be recorded.” PO Resp. 10. Nevertheless, based on the record before us, we determine that the original disclosure of the ’650 application does not support the claimed subject matter set forth in claims 1-78 of the ’598 patent. For the reasons stated below, we determine that claims 1-78 of” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “C. Principles of Law To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as is recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 30

  • ExcludeMotion to exclude, deniedDenied

    “We disagree with Liberty that Mr. Zatkovich must be qualified both in the field of insurance and in the field of vehicle telematics to give reliable testimony in this proceeding. It is only the “hypothetical” person of ordinary skill in the art who possesses ordinary skill in each of the fields involved in a claimed invention. In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”). The qualifications of Mr. Zatkovich, as summarized in his curriculum vitae (Ex. 2014), qualify him to give expert testimony on the subject of vehicle telematics, computer systems, and network communications. With regard to Mr. Zatkovich’s alleged lack of 5 With some enumerated exceptions, the Federal Rules of Evidence apply to covered business method patent review. 37 C.F.R. § 42.62. The Federal Rule of Evidence 702 entitled “Testimony by Experts” states: If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. 59 ordinary skill on the specific subject of insurance, the Board weighs his testimony accordingly, taking into account the limited extent of his expertise. We also disagree that Mr. Zatkovich’s technical experience must have been acquired prior to January 1996. Under the Federal Rule of Evidence 702, a witness who is qualified as an expert by knowledge, skill, experience, training or education may testify in the form of an opinion. Liberty has not shown that Rule 702 of the Federal Rules of Evidence requires the witness to have particular experience with the specific subject matter of the ’598 patent, or requires the relevant experience of the witness to have been acquired during the January 1996 time-frame.” slip op. at 59

  Patent outcomesUS 8,090,598 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,090,598

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.