• Tiz Inc. D/B/A Provi v. Jason K. SmithAll claims unpatentable
  PTAB · Mar 23, 2022 · CBM2020-00029 · APJ Frances L Ippolito · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 because they claim an abstract idea without integrating it into a practical application or adding an inventive concept.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “For the reasons expressed below, we conclude that Petitioner has demonstrated by a preponderance of evidence that claims 1–19 are unpatentable as being directed to ineligible subject matter.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art Based on the full trial record, including our review of the ’585 patent and the types of problems and solutions described in the ’585 patent and cited reference materials, we agree with Dr. Min that a person of ordinary skill in the art would have had “the equivalent of a Bachelor’s degree or higher in electrical engineering, computer science or computer networking, and at least 2 years working experience designing communication systems.” See Ex. 1008 ¶ 21. Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art.2 See generally PO Resp. 2 In opposing Petitioner’s Motion to Exclude, Patent Owner states that “the Board should modify its definition of person of ordinary skill in the art,” Opp. Exclude 5 n.1, but never proposes a different definition and does not dispute Petitioner’s definition in its Response or Sur-Reply.” slip op. at 19

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner does not propose any explicit constructions for any claim terms. See Pet. 44. Patent Owner also does not propose any explicit constructions for any claim terms. See PO. Resp. We determine that no explicit construction is necessary in order to resolve the issues before us.” slip op. at 19

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

    “items by collecting, analyzing, and transmitting information related to inventory, promotions, and particular sellers” is not an abstract idea because it “requires multiple steps that may or may not be implicated (collecting, analyzing, and transmitting) for information from multiple sources that may or may not be used (inventory, promotions, distributors, i.e., ‘particular sellers’).” PO Resp. 33–34. Contrary to Patent Owner’s position, we do not agree that this abstract idea (or the claims) requires a complex or complicated, multi-step process. Rather, the claims are directed to the collecting, analyzing, and transmitting of information. Claim 1, for example, requires only a list and inventory order of “one or more products” (i.e., the claim may be satisfied with only a single product). The Federal Circuit has explained that, generally, “claims focused on ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ are directed to an abstract idea.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (quoting Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “Information as such is an intangible,” hence abstract, and “collecting information, including when limited to particular content (which does not change its character as information), [i]s within the realm of abstract ideas.” Electric Power, 830 F.3d at 1353 (citing cases). Thus, even assuming that different types of information may be implicated by a claim limitation, the fact remains that the type or source of information, e.g., inventory, promotions, distributors,” slip op. at 45

  Patent outcomesUS 10,467,585 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Berkheimer · Enfish · Electric Power · Phillips
  Patents in suitUS 10,467,585
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision

  Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32

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

    “analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17

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

    “Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23

  Patent outcomesUS 8,671,057 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish
  Patents in suitUS 8,671,057
• Apple Inc. v. Ameranth, Inc.Institution denied
  PTAB · Sep 28, 2016 · CBM2016-00053 · APJ Kevin W Cherry · CBM · Institution

  The Board denied Apple’s petition and did not institute CBM review because Apple failed to establish standing, including a real and immediate controversy concerning the ’060 patent.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “3. Analysis We agree with Patent Owner that Petitioner has failed to show sufficiently that it has standing to bring this covered business method patent review. Specifically, we agree with Patent Owner that Petitioner has not established sufficiently, at this time, that there is a real and immediate 8 controversy regarding the ’060 patent. An essential link in the logical chain of Petitioner’s allegations that it has standing is that the scope of the claims of the ’060 patent and the asserted claims of ’850 patent in the district court lawsuit are “substantially similar.” See Pet. 7–10. We agree, however, with Patent Owner that Petitioner has not shown adequately that the claims of the two patents are sufficiently similar. Although Petitioner contends that claim 13 of the challenged patent is similar in scope to claim 12 of the already asserted ’850 patent, it fails to provide any meaningful analysis to support its contention. Instead, it merely summarizes and lists certain similar claim limitations in the two claims without providing any discussion of the actual language of the identified limitations, the other limitations in the claims, and the claims as a whole.” slip op. at 8

  • PTAB / AIA Trials › Real party in interest / privityDenied

    “petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id. One of those eligibility requirements is that only persons (or their privies) who have been sued or charged with infringement under a patent are permitted to file a petition seeking a covered business method patent review of that patent. AIA § 18(a)(1)(B); 37 C.F.R. § 42.302(a). Under our rules, “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 C.F.R. § 42.302(a).” slip op. at 5

  Discretionary denial
  Patents in suitUS 9,009,060
• 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
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · Mar 21, 2016 · CBM2015-00180 · APJ Barry L Grossman · CBM · Institution

  The Board denied institution of CBM review of claims 1, 9, 16, 18-25, 34, 49-52, and 57 because Acxiom failed to establish standing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied

    “Acxiom must establish more than just the fact that it has sold products to an entity that has been sued for infringement. It must establish that the relationship between itself and a sued customer is sufficient to constitute privity.1 The evidence provided by Acxiom, which will be discussed in detail below, in short, indicates that Acxiom has sold some unspecified software and/or other goods and services to a variety of entities and that some of those entities have approached Acxiom with claims of indemnity. We are not persuaded that these requests for indemnity without evidence or an acknowledgement of an obligation to indemnify are sufficient to establish privity. See Microsoft Corp. v. DataTern, Inc., 755 F. 3d 899 (Fed. Cit. 2014); Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011).” slip op. at 6

  Discretionary denial
  Patents in suitUS 8,352,317
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · Nov 19, 2015 · CBM2015-00134 · APJ Stacey G White · CBM · Institution

  The Board denied the petitions because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied

    “authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed 3 AAA also is listed as a real party-in-interest. Pet. 3. Petitioner, however, provides no argument or evidence as to why it believes that AAA is a real party-ininterest of Petitioner. Thus, we have no basis to ascertain whether Petitioner may above, Petitioner has not provided evidence sufficient to show what services, if any, Petitioner provides to Gerber. Therefore, Petitioner does not provide us with evidence sufficient to show that Gerber is a real party-in-interest of Petitioner. Also, the heavily redacted Agreement does not provide us with sufficient evidence regarding the relationship between these entities to show that Gerber is a privy of Petitioner sufficient to support Petitioner’s argument for standing. Thus, we do not have sufficient evidence to show that Petitioner has proper standing to bring this Petition. Therefore, we deny Petitioner’s request to institute a covered business method review of the challenged claims. See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680, 48,709 (Aug. 14, 2012) (Response to Comment 102) (“Facially improper standing is a basis for denying the petition without proceeding to the merits of the decision.”).” slip op. at 5

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied

    “Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits base its standing on its relationship with AAA. See Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068, slip. op at 4–6 (PTAB Aug. 11, 2015) (Paper 23). 1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this decision.” slip op. at 6

  Discretionary denial
  Patents in suitUS 8,234,184
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · Nov 19, 2015 · CBM2015-00137 · APJ Stacey G White · CBM · Institution

  The Board denied the petitions because Acxiom did not establish standing to seek covered business method review; it did not reach the merits of the challenged claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityDenied

    “authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied

    “their real parties-in-interest or privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Of key importance in this case is the requirement that “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” AIA § 18(a)(1)(B) (emphases added); see 37 C.F.R. § 42.302(a). Regarding this requirement, Petitioner does not allege that it has been charged with or sued for infringement, but instead contends that its” slip op. at 3

  Discretionary denial
  Patents in suitUS 7,890,366

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.