• Apple Inc. / Google, Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Matthew R Clements · CBM · Final written decision

  Claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are unpatentable under § 101 as directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  • BurdenUnpatentable

    “ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 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.”” slip op. at 9

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

    “We are persuaded 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 conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 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 ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:23–57. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of that data by internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:19. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or 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.” slip op. at 9

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

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 50–76.” slip op. at 14

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,336,772
• Apple Inc. / Google, Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00133 · APJ Matthew R Clements · CBM · Final written decision

  Claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 are unpatentable under § 101 as directed to an abstract idea without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded 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 conditioning and controlling access to content. For example, claim 35 recites “code responsive to the payment validation data to retrieve data from the data supplier and to write the retrieved data into the data carrier.” Claim 36 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.”” slip op. at 9

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

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 5. We are persuaded that claims 2–4, 6, 7, 9, 11–13, 15–18, 20, 21, 23, 24, 27–29, 31, and 33–36 of the ’772 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 50–76.” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,336,772
• Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00131 · APJ Matthew R Clements · CBM · Final written decision

  Claims 3–6, 8–14, 16–25, 27–30, and 32–41 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded 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 conditioning and controlling access to content. For example, claim 21 recites “code for storing and accessing the one or more use rules in the use rule memory.” Claim 35 recites “evaluating the use status data using the one or more use rules to determine whether access to the content data item is permitted” and “enabling access to the content data item responsive to a determination that access to the content data item is permitted.” As discussed above, the ’598 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of that data by internet users who may not even realize that it is pirated. Id. The ’598 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’598 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or 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.” slip op. at 8

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

    “2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 6. We are persuaded that claims 3–6, 8–14, 16–25, 27–30, and 32–41 of the ’598 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 53–73.” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32

  Patent outcomesUS 8,061,598 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,061,598
• Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00130 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112.

  RulingsFinal written decision

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

    “We are persuaded 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 conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15. As discussed above, the ’221 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by internet users who may not even realize that it is pirated. Id. The ’221 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’221 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is controlling access to content based upon payment 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.” slip op. at 10

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

    “recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15

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

    “Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34

  Patent outcomesUS 8,118,221 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,118,221
• Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00126 · APJ Jennifer S Bisk · CBM · Final written decision

  Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112, ¶ 2.

  RulingsFinal written decision

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

    “Petitioner argues that the challenged claims are directed to the abstract idea of “controlling access to something based on validation that payment has been made” (’126 Pet. 21) or “payment for and/or controlling access to data” (Pet. 41). Specifically, Petitioner contends that “each challenged claim is drawn on its face to the concept of payment for and/or controlling access to data.” Pet. 43; see also ’126 Pet. 22 (“challenged claim 3 simply performs four steps inherent in the abstract idea of conditioning access on payment validation.”). We are persuaded 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 conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15.” slip op. at 10

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

    “132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15

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

    “Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34

  Patent outcomesUS 8,118,221 unpatentable
  § 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish
  Patents in suitUS 8,118,221
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00096 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 12–16 are unpatentable under § 103 over DeLorme; Patent Owner’s secondary-consideration evidence did not outweigh the showing of obviousness.

  RulingsFinal written decision

  • Skill levelOther

    “B. Unpatentability Over DeLorme Under 35 U.S.C. § 103, a claim is unpatentable if: the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. The ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 338 U.S. at 17–18). Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 15

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’850 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claim 12, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’850 patent, as a “control program [that] monitors and routes all communications [as] to the appropriate devices” in the ’850 patent and as “a single point of entry for all hospitality application to communicate with one another wirelessly or over the Web.” Ex. 1001, col. 9, ll. 21–22, col. 11, ll. 24–27. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the Specification of the ’850 patent into the claims. Although the specification of the ’850 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” The plain language of claim 12, does not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “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).” slip op. at 13

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,384,850
• Petitioner v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00080 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 12–16 are unpatentable under § 103 over DeLorme because its TRIPS system teaches or renders obvious the claimed elements; secondary considerations do not outweigh that showing.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 16

  • ExcludeOther

    “Patent Owner moves to exclude certain paragraphs of Exhibit 1070 and the entirety of Exhibits 1071, 1072, 1073, 1078, 1079, 1080, 1081, and 1082. Paper 33. We do not rely on these exhibits in reaching our Decision and, thus, dismiss Patent Owner’s motion to exclude these exhibits as moot. Petitioner moves to exclude the entirety of Exhibits 2021, 2023, 2025, 2027, 2030–2051, and 2053–2056 and with the annotated portions of Exhibit 2024. Paper 31. We also dismiss Petitioner’s motion to exclude these exhibits. Petitioner’s motion to exclude theses exhibits are moot because we have found this evidence insufficient regardless of their admissibility.” slip op. at 51

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8

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

    “Petitioner proposes that “applications” be construed to mean “sequences of instructions that can be executed on a computer that are designed to help people perform a specific task.” Pet. 22. To support its proposed construction, Petitioner cites to the Microsoft Computer Dictionary, 4th ed., which defines “application” as “a program designed to assist in the performance of a specific task” and “program” as “[a] sequence of instructions that can be executed by a computer.” Ex. 1034, 4, 10. Patent Owner does not propose an explicit construction of “applications” but does state that “[i]t is clear from the specification, consistent with the ordinary meaning as would be understood by a POSA, that an application is a software program, not data.” PO Resp. 32 n.15. This is consistent with Petitioner’s proposed construction, which is based in-part on the definition of application, as a program. Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’850 patent, of “hospitality applications” is a sequences of instructions that can be executed on a computer (i.e., a program) that are designed to assist in the performance of a specific task in the hospitality industry.” slip op. at 10

  Patent outcomesUS 6,384,850 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,384,850
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00097 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 11, 13, and 15 are unpatentable as obvious over DeLorme because the reference teaches or renders obvious their limitations.

  RulingsFinal written decision

  • BurdenUnpatentable

    “Petitioner contends that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 51–63. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 419–473. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–3, 14–80, PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 18

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9

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

    “We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “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, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 15

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

    “We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,871,325
• Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentable
  PTAB · Aug 26, 2016 · CBM2015-00082 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 11, 13, and 15 are unpatentable under § 103 over DeLorme because the evidence establishes the claimed system features, and secondary considerations do not outweigh the showing.

  RulingsFinal written decision

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

    “To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9

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

    “Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’325 patent, of “hospitality applications” is a sequence of instructions that can be executed on a computer (i.e., a program) and that is designed to assist in the performance of a specific task in the hospitality industry. We are not persuaded by Patent Owner that the hospitality industry excludes travel, tourism, and transportation. However, to resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to construe hospitality industry. See Vivid Techs, 200 F.3d at 803 (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme discloses that TRIPS can be used for buying event tickets and making restaurant or hotel reservations. E.g., see Ex. 1024, col. 21, ll. 8–17, col. 31, ll. 42–51, col. 77, ll. 60–67, Fig. 1B-3. The ’325 patent describes frequent customer ticketing and restaurant reservations as tasks in the hospitality application. Ex. 1003, col. 5, ll. 17–20, claim 5. Patent Owner’s also argues reservations, with regards to claim 13, include hotel reservations. See PO Resp. 14 (“within the hospitality industry e.g. restaurants/hotels and event ticketing”). Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “hospitality applications” excludes tasks performed in the travel, tourism, and transportation industries.” slip op. at 11

  • Prior constructionPrior construction not adoptedTerm construed board ownDecided for petitioner

    “As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “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, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 14

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

    “We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30

  Patent outcomesUS 6,871,325 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,871,325
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

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

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

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

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115

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.