- Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentablePTAB · Nov 2, 2015 · CBM2014-00148 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–18 and 20–23 are unpatentable; claim 19 was not shown unpatentable because Gerson does not disclose its product identification code and quantity limitations.
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“discloses every limitation of claims 12–16 and 18. For example, with respect to claim 12, Petitioner asserts, with supporting testimony from Dr. Shamos, that Gerson discloses (1) a “payment authorization source” (i.e., bank or other financial institution) configured to authorize payment for a transaction; (2) a “payment resolution module” (i.e., central processing computer) in communication with the bank or other financial institution; (3) a “hand-held device” (i.e., user’s mobile phone) in communication with the central processing computer that transmits an authorization request (i.e., payment transaction) to the central processing computer; and (4) a “confirmation device” (i.e., POST) that receives an “authorization code” (i.e., transaction-specific authorization code) from the user and authorizes the transaction in response to validating the authorization code. -140 Pet. 69–73; see Ex. 1003, 83–90. Petitioner further argues that Gerson necessarily includes an “I/O interface” because the central processing computer transmits (i.e., outputs) the transaction-specific authorization code to the mobile phone via a “wireless telecommunications link,” and such transmission requires an I/O interface between the mobile phone and central processing computer. -140 Pet. 71–72 (citing Ex. 1005, 6 (ll. 8–14)). We also have reviewed Petitioner’s arguments and evidence for the other challenged claims, and are persuaded that Petitioner has met its burden of demonstrating anticipation by a preponderance of the evidence. Based on all of the evidence of record, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 12–16 and 18 are anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20
- Skill levelSkill level board ownOther
“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 to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18
Patent outcomesUS 7,273,168 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,273,168 - Boku, Inc. / Boku Account Services, Inc. v. Xilidev, Inc.Some claims unpatentablePTAB · Nov 2, 2015 · CBM2014-00140 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–18 and 20–23 are unpatentable: claim 17 is indefinite, claims 12–16 and 18 are anticipated by Gerson, claims 1–11 and 20–23 are obvious over Gerson and Wronski, and claims 1–5, 7–16, 18, and 20–23 …
RulingsFinal written decision- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“the particular function of the limitation and then identifying the corresponding structure for that function in the specification. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). A structure is corresponding “only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (quotation omitted). Additionally, the corresponding structure of a means-plus-function limitation must be “more than simply a general purpose computer or microprocessor” to avoid pure functional claiming. Williamson, 792 F.3d at 1352 (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). If a special purpose computer is required to carry out the recited function, the specification must disclose an “algorithm for performing the claimed function,” id., which may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure,” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citation omitted). “[I]f a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite” under 35 U.S.C. § 112, second paragraph. Williamson, 792 F.3d at 1352.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Petitioner has not shown that Gerson discloses, expressly or inherently, a hand-held device providing a product identification code and product quantity (in addition to the transaction amount), and we do not find any such disclosure in the reference. The mobile phone in Gerson only provides the purchase amount. See Ex. 1005, 3 (ll. 22–23), 7 (ll. 6–13). Further, Petitioner’s assertion that it “would have been obvious” to also provide a product identification code and product quantity is insufficient to prove anticipation. See -140 Pet. 79–80; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Based on all of the evidence of record, we determine that Petitioner has not shown, by a preponderance of the evidence, that claim 19 is anticipated by Gerson under 35 U.S.C. § 102(b).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“It would have been obvious to combine Gerson’s system storing the authorization code in a processor with Wronski’s database additionally storing an indication of the transaction request because in both cases the information relates to the transaction being authorized and therefore Wronski merely stores additional information about the same transaction that Gerson does. Furthermore, a user in Gerson would be motivated to combine the processor database with Wronski’s database including an indication of the transaction request because such a combination would facilitate the later retrieval of transaction specific information (such as when Gerson’s processor database is accessed by the point-of-sale system).” slip op. at 20
- Skill levelSkill level board ownDecided for petitioner
“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 to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Shamos testifies that he believes a person of ordinary skill in the art would have had “an undergraduate degree in computer science, or equivalent work experience, and, in addition, at least two years of experience with electronic payment systems, including familiarity with databases and integration with interactive voice response software.” Ex. 1003 ¶ 14; see -140 Pet. 11. Based on the record presented, including our review of the ’168 patent and the types of problems and solutions described in the ’168 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science (or equivalent work experience) and at least two years of experience with electronic payment systems, including familiarity with databases. We apply this level of ordinary skill in the art for purposes of this Decision. Although a person of ordinary skill in the art may have had experience with interactive voice response software, we do not see why such experience should be required, as the ’168 patent discloses that “various communication mediums and protocols [for interacting with users were] known in the art,” of which interactive voice response is merely one example. See, e.g., Ex. 1001, col. 5, ll. 4–52.” slip op. at 18
Patent outcomesUS 7,273,168 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,273,168 - Google Inc. v. Simpleair, Inc.Rehearing deniedPTAB · Aug 19, 2015 · CBM2015-00020 · APJ Justin T Arbes · CBM · Rehearing
The Board denied Google's rehearing request and maintained its denial of CBM review because the petition did not show that the challenged patent claims qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review, the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition was that Petitioner provided no analysis of the language of claim 1 or explanation as to why the particular language of claim 1 meets the standard for covered business method patent eligibility. Dec. 11. Rather, Petitioner simply stated that the claims of the ’154 patent “overlap significantly” with unspecified claims of a related patent that previously was found eligible, without explaining why or how the claims allegedly overlap. See id. at 10–11; Pet. 6–7. The test for whether a patent is a covered business method patent is whether the patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1) (emphasis added); 37 C.F.R. § 42.301(a). Absent some analysis of the actual language of a claim, it is difficult to see how the test can be met.” slip op. at 3
- Adverse judgmentOther
“Petitioner’s arguments are not persuasive. Our rules permit a patent owner to file a statutory disclaimer with its preliminary response, and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). Further, the decision whether to institute a covered business method patent review is based on the “claims” of the patent as they exist at the time of the decision, not as they may have existed at some previous time. See 35 U.S.C. § 324(a). For example, where a reexamination certificate amending the claims of a patent issues subsequent to a petition but prior to institution, the Board’s decision whether to institute is based on the claims of the patent as amended in the reexamination certificate. See Eizo Corp. v. Barco N.V., Case IPR2014-00358, slip op. at 5 (PTAB July 23, 2014) (Paper 11); GEA Process Eng’g, Inc. v. Steuben Foods, Inc., Case IPR2014-00051, slip op. at 2–3, 10–11 (PTAB Mar. 10, 2014) (Paper 14). We also note that, to the extent Petitioner was concerned about being unable to anticipate Patent Owner statutorily disclaiming claim 24, or believed some action from the Board would have been appropriate with respect to the statutory disclaimer, Petitioner could have contacted the Board and sought authorization to file a reply after Patent Owner filed its statutory disclaimer and Preliminary Response, but did not do so.” slip op. at 5
NonePatents in suitUS 8,601,154
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.