- Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentablePTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony of Mr. Donefer, for why a person of ordinary skill in the art would have had reason to combine Pictet’s teachings and arrive at the method of proposed substitute claim 13. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39
Patent outcomesUS 7,496,534 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · GrahamPatents in suitUS 7,496,534 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision
Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that 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). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30
Patent outcomesUS 8,825,887 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · PhillipsPatents in suitUS 8,825,887 - Google LLC v. Videoshare LLCInstitution deniedPTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution
The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- BurdenDecided for patent owner
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11
§ 101 eligibilityDiscretionary denialPatents in suitUS 10,362,341 - Banilla Games, Inc. v. Savvy Dog Systems, LLCInstitution deniedPTAB · Nov 19, 2020 · CBM2020-00014 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution because the remaining claims did not establish that the patent claims a financial product or service, as required for CBM review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). For reasons that follow, we determine that Petitioner has failed to show that the challenged patent qualifies as a covered business method patent. Accordingly, we decline to institute a covered business method patent review of the challenged claims.” slip op. at 2
- BurdenDecided for patent owner
“We agree with Patent Owner that the limitations “determining a winning combination” and “testing the game field . . . to ensure that a winning combination more valuable . . .” are not financial in nature. Beginning with “winning combination,” we agree with Patent Owner that “winning,” by itself, is not necessarily monetary in nature. Prelim. Resp. 28. Indeed, other games include the step of determining whether a combination is a “winning combination” or not without necessarily involving any kind of prize or payout. See id. at 29–30. Instead, as is shown in the ’223 patent, some additional step after the determination of who won is necessarily if there is going to be some monetary payout corresponding to the win. See Ex. 1001, Fig. 6 (showing Step 630 of “Redeem Payout and Credit Balance”), Fig. 8 (showing Step 820 of “Redeem Payout and Credit Balance”), 6:34–40 (explaining a player “may” redeem points earned in the game for cash). Petitioner identifies nothing in the specification requiring that money be paid for just winning. Moreover, the ’223 patent makes clear that the games are intended broadly for “entertainment” and “amusement” and not just for gambling. See id. at 1:13–15 (explaining patent is related to “amusement and entertainment electronic gaming”). As Patent Owner explains, the ’223 patent expressly discusses the use of the games in Ohio, which prohibits gambling, but permits the use of games of skill for entertainment purposes. See Prelim. Resp. 52–58 (discussing Ohio’s laws in detail); Ex. 1001, 1:18–33 (describing Ohio’s laws prohibiting gambling, but allowing “games of skill”). Thus, at best, “winning combination” relates only to the possibility that a monetary payout could be received, not that a player necessarily will receive anything of monetary value for playing the game. This possibility is insufficient to meet the financial product or service requirement. See Unwired Planet, 841 F.3d at 1382 (noting “it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service” and “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur”).” slip op. at 10
Discretionary denialPatents in suitUS 7,736,223 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00013 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied rehearing of its decisions denying institution of CBM review of the challenged claims in four proceedings, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner also contends that the Board failed to consider its obviousness arguments. Req. Reh’g 14–15. We considered these arguments, but ultimately found them unpersuasive. Inst. Dec. 13–14. In short, Petitioner presumed a construction of “using the relational database management system to . . . calculate” that we did not adopt, and did not explain sufficiently why the prior art of record would have rendered the challenged claims obvious under the adopted claim construction. A request for rehearing is not an opportunity to remedy these deficiencies.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00009 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied Teradata’s rehearing requests, leaving in place the denials of CBM review based on the petition’s failure to show the challenged claims unpatentable under the adopted construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137 - Teradata Operations, Inc. v. Berkley*ieorRehearing deniedPTAB · Sep 27, 2019 · CBM2019-00015 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Teradata’s rehearing request, leaving institution denied for claims 1, 3–5, and 10–26 because it had not shown the patent was not a technological invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity for a petitioner to respond to an institution decision to make a better argument for any given matter than that which was initially presented in a petition. Notably, in now challenging the claim construction of the above-noted term, Petitioner does not cite or identify any portion of the Petition that was misapprehended or overlooked. Instead, Petitioner seeks to make a better case through citation to portions of the record that were not previously relied upon. For instance, Petition now points to content of the prosecution history (Ex. 1002) pertaining to claim amendments made during prosecution that Petitioner would have us infer as demonstrating that the applicant “knew” how to limit the claims to calculations “in the RDBMS” but chose not to. Req. Reh’g 2– 3. That was not an argument on which Petitioner previously relied, and thus was not an argument that we could have misapprehended or overlooked. Moreover, in now making the argument, Petitioner seemingly discounts the plain language of the claims in specifically reciting “using” the RDBMS “to independently calculate” marginal values of profit. Ex. 1001, 30:61–63. We have considered Petitioner’s arguments pertaining to claim construction, but are not persuaded that they demonstrate that we misapprehended or overlooked content of the Petition that warrants a change in the claim constructions that were identified in the Institution Decision.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition, and which we found unpersuasive. As we explained in the Institution Decision, we were not satisfied that “bulk citations” to large portions of the record provided “meaningful explanation that the prior art shows an RDBMS, itself, that is performing the necessary profit calculations.” Inst. Dec. 13–14. We were not persuaded that Petitioner’s assessment of the prior art showed adequately that the “requirements of limitation 1[d] pertaining to independent profitability calculation by an RDBMS are non-novel or obvious.” Id. at 15. Although Petitioner may disagree with our determination in that respect, mere disagreement is not the proper basis for rehearing.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of deciding whether to institute trial, we adopted the Patent Owner’s construction of claim element 1[d(i)] (id. at 8), concluding that the construction was supported by “(1) the ’521 patent itself [see, e.g., id. at 15 (citing Ex. 1001, 10:42–47)]; (2) the testimony of Patent Owner’s declarant [see, e.g., id. at 14–16 (referencing Ex. 2001, ¶¶ 58–67, 75, 81– 85)]; and (3) the prosecution history of the ’521 patent [see, e.g., id. at 16” slip op. at 3
- BurdenDecided for patent owner
“Page 12 of the Petition, however, makes no connection between Blain’s teachings and the pertinent claim limitation 1[d]. There is no reasonable inference from the above-noted content of page 12 of the Petition that paragraph 85 of Dr. Weber’s testimony should be evaluated in the context of viewing an RDBMS as independently performing profitability calculations. We simply were not persuaded that the Petition and the applicable portions of Dr. Weber’s testimony cited therein, including paragraph 85, adequately addressed the features required by claims limitation 1[d].” slip op. at 7
Claim constructionPatents in suitUS 7,596,521 - Teradata Operations, Inc. v. Berkley*ieorRehearing deniedPTAB · Sep 27, 2019 · CBM2019-00016 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Teradata’s rehearing request and left in place denial of CBM review of claims 2, 6-9, and 27-32 because it had not shown the patent was not for a technological invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition, and which we found unpersuasive. As we explained in the Institution Decision, we were not satisfied that “bulk citations” to large portions of the record provided “meaningful explanation that the prior art shows an RDBMS, itself, that is performing the necessary profit calculations.” Inst. Dec. 14. We were not persuaded that Petitioner’s assessment of the prior art showed adequately that the “requirements of limitation 1[d] pertaining to independent profitability calculation by an RDBMS are non-novel or obvious.” Id. at 16. Although Petitioner may disagree with our determination in that respect, mere disagreement is not the proper basis for rehearing. We also concluded that record evidence conveyed that the claims solved a technical problem with a technical solution in providing “a distinctive software-based process that harnesses benefits to computer performance.” Id. at 17. In reaching that conclusion, we rejected Petitioner’s premise that the claims were simply directed to solving a business problem using a business solution. Petitioner does not address adequately the issue of improved computer performance, or identify any matter that we misapprehended or overlooked in determining that record evidence reasonably conveyed that such improved computer performance emerges from the method of claim 1.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of deciding whether to institute trial, we adopted the Patent Owner’s construction of claim element 1[d(i)] (id. at 9), concluding that the construction was supported by “(1) the ’521 patent itself [see, e.g., id. at 16–17 (citing Ex. 1001, 10:42–47)]; (2) the testimony of Patent Owner’s declarant [see, e.g., id. at 15–17 (referencing Ex. 2001, ¶¶ 58–67, 75, 81–85)]; and (3) the prosecution history of the ’521 patent [see, e.g., id.” slip op. at 3
- BurdenDecided for patent owner
“Page 13 of the Petition, however, makes no connection between Blain’s teachings and the pertinent claim limitation 1[d]. There is no reasonable inference from the above-noted content of page 13 of the Petition that paragraph 85 of Dr. Weber’s testimony should be evaluated in the context of viewing an RDBMS as independently performing profitability calculations. We simply were not persuaded that the Petition and the applicable portions of Dr. Weber’s testimony cited therein, including paragraph 85, adequately addressed the features required by claims limitation 1[d].” slip op. at 7
Claim constructionPatents in suitUS 7,596,521 - PTAB · Nov 20, 2018 · CBM2018-00018 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review of claims 1–17 and 22–24 because the patent did not qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“completion of a purchase of a ticket, is a “recitation of a financial operation” sufficient to establish that claims 23 recite a covered business method. See 37 C.F.R. § 42.304(a) (“The petitioner must demonstrate that the patent for which review is sought is a covered business method patent . . . .”). Petitioner simply does not now explain persuasively why the transmission of a secured validating display by a computer system in the course of validating a ticket that had been purchased constitutes activity that is “active[] and contemporaneous[]” with the “management or administration of a financial product or service.” See Req. Reh’g 3–4. In order to be eligible for a CBM review, the challenged patent must “claim[] 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 . . . .” AIA § 18(d)(1). After considering the Petition, we determined that Petitioner did not meets its burden of demonstrating that the patent for which review is sought is a covered business method patent. Although Petitioner may disagree with our determination as to claim 23, disagreement is not, itself, a proper basis for requesting rehearing. Here, Petitioner does not identify persuasively that we misapprehended or overlooked any matter in reaching a determination other than that desired by Petitioner.” slip op. at 5
- BurdenDecided for patent owner
“The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
NonePatents in suitUS 9,239,993 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Oct 17, 2017 · CBM2016-00054 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–23 are unpatentable under § 101 and § 103; the Board found the claims patent-ineligible and found the challenged obviousness grounds established.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is not persuasive. FRE 106 provides that: If a party introduces all or part of a writing or recorded statement, an adverse party may require the introduction, at that time, of any other part —or any other writing or recorded statement — that in fairness ought to be considered at the same time. As Petitioner points out, “rather than providing a basis for excluding evidence, Fed. R. Evid. 106 is a vehicle for entry of additional evidence.” Here, the two translator’s notes from Patent Owner’s original translation already appear in the record. Ex. 2178, 39–40. FRE 403 provides: The court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence. Patent Owner has not met its burden to show Exhibit 1017 should be” slip op. at 75
- Skill levelOther
- Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner
“We have considered the evidence to which we are directed, but do not find that evidence (passages from Mr. Kawashima’s original and cross examination) to support Patent Owner’s assertions that Mr. Kawashima is biased. Indeed, when asked if the Tokyo Stock Exchange preferred that vendors like Trading Technologies not have patents on trading screens, Mr. Kawashima testified, that that was “not something I would know.” Ex. 2163, 41:6–12. Lastly, Patent Owner has not demonstrated sufficiently that Mr. Kawashima’s meetings with Petitioner’s attorneys prior to his cross examination is demonstrative of “bias.” PO Resp. 24. Patent Owner has not shown why Mr. Kawashima’s meeting with Petitioner’s counsel prior to his deposition would make him biased. For these reasons, we are not persuaded that Mr. Kawashima is an interested witness.” slip op. at 45
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“2. Abstract Idea “The ‘abstract idea’ step of the inquiry calls upon us to look at the” slip op. at 27
Patent outcomesUS 7,693,768 unpatentable§ 101 eligibility§ 103 obviousnesscites Mayo · Enfish · Electric Power · KSRPatents in suitUS 7,693,768
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.