- Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00160 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because Petitioner failed to show the Jaffray references were prior art or that the asserted combination rendered the claims obvious.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in 9 Both the burden of production and the burden of persuasion. Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently,” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in 9 Both the burden of production and the burden of persuasion. Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently, on this record, that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to independent claim 1, and the challenged claims that depend therefrom, under 35 U.S.C. § 102(b).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Having considered the parties arguments and evidence regarding “[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“D. The Challenged Claims – Obviousness over Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp Petitioner asserts that a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp renders obvious claims 1–14, 16–29, 33, and 35–38. Pet. 18–58. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of claim 1, including, for example, “a cone-beam computed tomography system comprising: an x-ray source that emits an x-ray beam in a cone-beam form towards said object,” and “a flat-panel imager receiving x-rays after they pass through the object, said imager providing an image of said object.” Pet. 29–31. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–14, 16–29, 33, and 35–38. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–14, 16–29, 33, and 35–38 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 31
Patent outcomesUS 6,842,502 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,842,502 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00163 · APJ Matthew R Clements · IPR · Final written decision
Claims 43–46, 48–55, 57, 59–66, and 68 were not held unpatentable because Petitioner did not establish that the Jaffray references were prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1202 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level because it is based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would play in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu- Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable
“[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 13 Both the burden of production and the burden of persuasion. 14 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden. Tr. 20:9, 20:16–17. 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). slip op. at 23
Patent outcomesUS 6,842,502 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,842,502 - Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentablePTAB · May 4, 2017 · IPR2016-00169 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 and 20–31 were not held unpatentable under § 103 because the petitioner did not establish that Jaffray 1999 SPIE and Jaffray 1999 JRO were prior art.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “wherein said receiving said x-rays by said flat panel imager is performed substantially at a time of occurrence of said controlling said path of said beam of radiation through said object.” As an initial matter, we understand that Petitioner acknowledges that the ’590 Application supports the limitation “substantially at a time,” and arguments raised towards this limitation were originally presented as arguments towards indefiniteness.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“1. Principles of Law Petitioner has the burden of persuasion to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the initial burden of production to show that a reference is prior art to certain claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has met that initial burden, the burden of production shifts to Patent Owner to argue or produce evidence that the asserted reference is not prior art to certain claims, for example, because those claims are entitled to the benefit of priority of an earlier-filed application. Id. at 1380. Once Patent Owner has met that burden of production, the burden is on Petitioner to show that the claims at issue are not entitled to the benefit of priority of the earlier filed application. Id.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference not prior artNot shown unpatentable
“Having considered the parties arguments and evidence regarding, we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1999 JRO, Adler, and Depp renders obvious claims 1–13 and 20‒31. Pet. 28–59. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of independent claims 1, 7, 20 and 26. For example, claim 1 recites “a cone-beam computed tomography system comprising: an x-ray source that moves about said object and emits toward said object from multiple positions around said object x-ray beams in a cone-beam form” and “a flat-panel imager positioned to receive x-rays after at least a portion of said x-ray beams pass through said object, said imager providing an image that contains three-dimensional information concerning said object based on a plurality of two-dimensional projection images.” Petitioner relies solely on Jaffray 1999 SPIE and Jaffray 1999 JRO to meet these claim limitations. See Pet. 36‒38 (citing Ex. 1005, 17, 25; Ex. 1006, 9; Ex. 1002 ¶¶ 82‒84). Independent claims 7, 20, and 26 recite substantially similar limitations that Petitioner again solely relies on Jaffray 1999 SPIE and Jaffray 1999 JRO as disclosing these limitations. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–13 and 20‒31. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–13 and 20–31 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 32
Patent outcomesUS 7,471,765 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,471,765 - Apple Inc. v. Smartflash LLCAll claims unpatentablePTAB · Mar 29, 2016 · CBM2015-00016 · APJ Jeremy M Plenzler · CBM · Final written decision
Claims 6, 8, and 10 are unpatentable under § 101; claim 11 is unpatentable under § 112 ¶ 2; the proceeding is terminated as to claim 1.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“B. Related Matters and Termination In a previous covered business method patent review, CBM2014- 00106, we issued a Final Written Decision determining claim 1 unpatentable under 35 U.S.C. § 103. CBM2014-00106, Paper 52. Because Apple was the petitioner in that proceeding, we found that § 325(e)(1) estops Apple from filing or maintaining a proceeding before the Office with respect to claim 1, i.e., the same claim, in this case. Paper 50 (“Estoppel Order”), 4. We, therefore, ordered Apple not to present argument with respect to the patentability of that claim at the oral hearing on November 9, 2015. Id. at 8.” slip op. at 3
- Adverse judgmentAdverse judgmentGranted
“We are persuaded that the particular facts of this proceeding now counsel in favor of termination with respect to claim 1. 37 C.F.R. § 42.72. Claim 1 of the ’458 patent has been finally cancelled and any decision we might reach in this proceeding regarding the patentability of this claim would be moot and purely advisory. We do not see how the just, speedy, and inexpensive resolution of every proceeding (37 C.F.R. § 42.1(b)) would be secured by rendering a final written decision with respect to claim 1.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree that the challenged claims are drawn to a patent-ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of controlling access to content. For example, claim 6 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data” and “code to access the stored data when access is permitted.” As discussed above, the ’458 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1201, 1:20–55. The ’458 patent proposes to solve this problem by restricting access to data on a device based upon satisfaction of use rules linked to payment data. Id. at 9:7–25. As Petitioner notes (Pet. 26), the ’458 patent makes clear that the claimed subject matter is directed to paying for data and providing access to data. See Ex. 1201 at 2:20–23 (“This invention is . . . particularly . . . relate[d] to a portable data carrier for storing and paying for data and to computer systems for providing access to data.”). Although the specification discusses data piracy on the Internet (see id. at 1:29–39), the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the ’458 patent specification, is controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611. We are, thus, persuaded, based on the ’458 patent specification and the language of the challenged claims, that claims 6, 8, and 10 are directed to an abstract idea. See Alice, 134 S. Ct. at 2356 (holding that the concept of intermediated settlement at issue in Alice was an abstract idea); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event”).” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The specification of the ’458 patent treats as well-known all potentially technical aspects of the claims, which simply require generic computer components (e.g., interfaces, program store, and processor). The linkage of existing hardware devices to supplier-defined access rules appear to be “‘well-understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359; Mayo, 132 S. Ct. at 1294. Further, the claimed computer code simply performs generic computer functions, such as accessing, retrieving, and evaluating data. See Pet. 29–30. The recitation of these generic computer functions is insufficient to confer specificity. See Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). Moreover, we are not persuaded that claims 6, 8, and 10 “recite specific ways of using distinct memories, data types, and use rules that amount to significantly more than” conditioning and controlling access to content based on payment. See PO Resp. 18. The challenged claims do not recite any particular or “distinct memories.” To the extent Patent Owner argues that the claimed “program store” is a memory, Patent Owner does not provide any argument as to how it is constructed or implemented in an unconventional manner. Moreover, the claims recite several generic data types, such as “code,” “use status data,” and “use rules data.” We are not persuaded that the recitation of these data types, by itself, amounts to significantly more than the underlying abstract idea. Patent Owner does not point to any inventive concept in the ’458 patent related to the way these data types are constructed or used. The recitation of generic data types, being used in the conventional manner, is insufficient to confer the specificity required to elevate the nature of the claims into a patent-eligible application. Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294) (“We have described step two of this analysis as a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’”) (brackets in original). In addition, the ’458 patent simply recites data types with no description of the underlying implementation or programming that results in these data types. See Content Extraction and Transmission LLC, 776 F.3d at 1347 (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). In addition, because the recited elements can be implemented on a general purpose computer, the challenged claims do not cover a “particular machine.” Pet. 36; see Bilski, 561 U.S. at 604–05 (stating that machine-or-transformation test remains “a useful and important clue” for determining whether an invention is patent eligible). And the challenged claims do not transform an article into a different state or thing. Pet. 36.” slip op. at 10
Patent outcomesUS 8,033,458 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · NautilusPatents in suitUS 8,033,458 - Fidelity National Information Services, Inc. v. Datatreasury Corp.All claims unpatentablePTAB · Apr 29, 2015 · CBM2014-00021 · APJ Michael P Tierney · CBM · Final written decision
Claims 1–123 are unpatentable under § 101; claims 1–41 and 51–69 are also unpatentable for lack of written description under § 112.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the evidence of record, we credit the testimony of Dr. Alexander and agree with Petitioner that: (1) the specification fails to describe encrypting the DAT_TERMINAL_ID; (2) generic “identification information” does not constitute the claimed subsystem identification information; and (3) subsystem identification information is not included in the “paper transaction data” of the disclosed receipt. Reply 12–13. We find that Petitioner has demonstrated that claims 1–41 and 51–69 are unpatentable for lack of sufficient written description for encrypting subsystem identification information.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“reasonable construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.300(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Trial Practice Guide”); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281 (Fed. Cir. 2015); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms are given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 7
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We credit Dr. Alexander’s testimony and determine that the ’988 patent simply arranges old well-known elements with each performing the same function it had been known to perform. E.g., Ex. 1003 ¶¶ 26–28, 31, 85. Based on the record presented, we do not see how the limitations in claim 46 are significant meaningful limitations that transform the abstract 4 Petitioner contends that the challenged claims do not recite a “three-tiered” architecture. Reply 8. For purposes of this decision, we assume the Patent Owner is correct in stating that its claims require such architecture. idea into patent-eligible applications of these abstractions. Patent Owner’s contentions focused on the alleged meaningful limitations appearing in claim 46 or the challenged claims in general. We have reviewed the remaining challenged claims and likewise are persuaded, based on the evidence presented, that the remaining claims also lack limitations that meaningfully limit the abstract idea and avoid unacceptable preemption. Reply, 1. We hold that the challenged claims recite nothing more than conventional equipment and steps, specified at a high level of generality on top of the underlying abstract concept. Mayo, 132 S. Ct. at 1300.” slip op. at 18
Patent outcomesUS 5,910,988 unpatentableClaim construction§ 101 eligibility§ 112 disclosurecites Alice · BilskiPatents in suitUS 5,910,988
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.