• Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentable
  PTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.

  RulingsFinal written decision

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

    “does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35

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

    “Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  • 101 substituteMixed

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  Patent outcomesUS 7,134,087 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 7,134,087
• CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00048 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–31 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional graphical interface features.

  RulingsFinal written decision

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 21, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 49. Patent Owner argues that “the claimed solution of the ’435 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the claimed implementation is neither conventional nor generic.” Id. at 50. Patent Owner contends that its claims are unlike Electric Power Group because “the ’435 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id. at 51–52. Instead, Patent Owner asserts that the challenged claims are “directed to an inventive device or technique for trading with a particular layout of elements and particular techniques, including alterable and selectable features, i.e., a specialized [graphical user interface] tool.” Id. at” slip op. at 28

  • 101 substituteMotion to amend, deniedDenied

    “of a limitation for pre-populating the price field, and an explicit limitation requiring that the adjustment of the price field occur using the up and down arrows. As we discussed above, allowing pre-population of data fields and modification of data fields using up and down arrows was known and does not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, the original claims already recited the up and down arrows to modify the price and size fields and this limitation only slightly narrows the claim to using those arrows, which were already present in the claim. As we discussed above, those up and down price arrows did not later our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” Merely, reciting that the already present arrows are used, does not limit the claim in any meaningful way. The explicit use of the arrows and pre-populating a data field are simply specifying how and in what order certain data are to be displayed, which without more, is still collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Amaranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42

  • ExcludeMotion to exclude, deniedMixed

    “paragraphs 59–97 of Mr. Molokhia’s Declaration (Exhibit 2027). Mot. Exclude 1. With respect to Exhibit 2026, Petitioner argues that the exhibit is not relevant under Federal Rules of Evidence 401 and 402, would lead to undue prejudice under Federal Rule of Evidence 403, and is inadmissible hearsay under Federal Rule of Evidence 802. Mot. Exclude 2–3. Patent Owner argues that the testimony is relevant, not prejudicial, and not hearsay. Opp. Exclude 3–8. We did not rely on Exhibit 2026, so we dismiss the motion to exclude as moot insofar as it applies to Exhibit 2026. With respect to paragraphs 59–97 of Exhibit 2027, Petitioner argues that they should be excluded under Fed. R. Evid. 702 and as “inadmissible conclusions of law.” Mot. Exclude 3. Petitioner argues that Mr. Molokhia fails to provide any underlying facts or data for his conclusions that the amended claims are not obvious. Id. at 5. Petitioner contends that “[w]ithout sufficient facts or data to support Mr. Molokhia’s opinion, such testimony stands as conclusory and unreliable, and thus inadmissible under F.R.E. 702 in view of the Supreme Court’s holdings in Daubert and Kumho.” Id. at 6. We disagree with Petitioner’s argument that Mr. Molokhia’s testimony should be excluded. We have reviewed Mr. Molokhia’s testimony and find that although phrased at times as the ultimate legal issue of obviousness, the bulk of his testimony goes to the underlying factual issues of obviousness. To the extent that the reasoning provided by Mr. Molokhia is insufficient, Petitioner’s arguments go more to the weight that should be given the testimony than its admissibility. See Microfinancial, Inc. v. Premier Holidays Int’l, Inc., 385 F.3d 72, 81 (1st Cir. matter affecting the weight and credibility of the testimony—a question to be resolved by the [factfinder].”). Thus, we deny Petitioner’s motion to exclude paragraphs 59–97 of Exhibit 2027.” slip op. at 45

  Patent outcomesUS 8,060,435 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,060,435
• CQG, Inc. / CQG, LLC et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00047 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–56 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer components; the motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “in all of the independent claims, should be construed as “a visual-based environment that enables an exchange of input and output between a user and a computer.” PO Resp. 15. Patent Owner bases its construction on a set of dictionary definitions for the terms “interface,” “graphical user interface,” and “interactive.” See Ex. 2012 (“interface”); Ex. 2013 (“interactive”); Ex. 2014 (“graphical user interface”); Ex. 2021 (“interactive”). Petitioner contends that Patent Owner is improperly importing limitations into this term. Pet. Reply 1–2. Petitioner argues that the term should be construed as a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the claims recite the second interface receiving input from the user, there is no discussion in the independent claims of displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the specification’s description of the graphical interface that the parties agree is what is attempted to be claimed as the “second interface.” The specification describes the “second interface” as follows: invention, a trader may enter the command using a command-line interface, click on a component of a bid and offer in a market cell, enter the command using a graphical interface, or may click on a piece of data in a data window. After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:8–23. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 9

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying trading commands (and for some claims also price information) and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 25, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “The use of a graphical user interface, a known way for a user to interact with the computer, does not change the generic nature of the computer. Merely reciting a generic computer and generic computer functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice.” slip op. at 27

  • 101 substituteMotion to amend, deniedDenied

    “limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42

  Patent outcomesUS 8,041,626 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 8,041,626
• CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Sep 1, 2017 · CBM2016-00046 · APJ Kevin W Cherry · CBM · Final written decision

  Claims 1–78 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer interfaces; the motion to amend is denied.

  RulingsFinal written decision

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

    “Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 24, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14

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

    “functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 52. Patent Owner argues that “the claimed solution of the ’416 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the implementation is neither conventional nor generic.” Id. at 53. Patent Owner contends that its claims are unlike Electric Power Group because “the ’416 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id.” slip op. at 27

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the terms Patent Owner relies upon for its dictionary definitions is actually recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the independent claims recite the “second interface” receiving input from the user, there is no discussion of the second interface displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the claimed as the “second interface.” The specification describes a second interface as follows: After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:12–24. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 10

  • 101 substituteMotion to amend, deniedDenied

    “The only substantive amendments made to the claims are the addition of an explicit limitation requiring a “pointer device” as providing the input recited in the claims, an explanation that what is selected is the bid price or the bid price and offer price are pre-populated in the second interface. As we discussed above, these limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 40

  Patent outcomesUS 7,890,416 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric Power
  Patents in suitUS 7,890,416
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Feb 17, 2017 · CBM2015-00179 · APJ Sally C Medley · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101 and § 103 over TSE, Togher, Schott, and Cooper, and over Silverman, Togher, Cooper, and Hogan.

  RulingsFinal written decision

  • BurdenUnpatentable

    “The individual elements of the claims do not transform the nature of the claims into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Contrary to Patent Owner’s argument, the claims simply recite the use of a generic computer with routine and conventional functions. Further, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claims into a patent-eligible application. For all of the above reasons, Petitioner has shown sufficiently that claims 1–15 of the ’056 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We do not agree with Patent Owner that the term “price axis” requires reading into the claim the additional “clarification” that a list of prices that do not contain gaps in between prices is not a price axis. There is nothing in the claim language itself that describes gaps or how data is arranged along the price axis or what contains a price axis. The passages and figures of the ’056 patent that Patent Owner (and Mr. Thomas) directs attention to are examples or embodiments of what is claimed, and do not indicate that Patent Owner disclaimed or limited price axis to consist of a list of prices that contains gaps in between prices. Moreover, Mr. Thomas’ illustration of what constitutes a price axis is conclusory and not supported by record evidence. Ex. 2169 ¶¶ 41–42. He has not directed attention to any evidence in support of his testimony as to what does and does not constitute a price axis as illustrated in 14 paragraph 41 of his declaration. As pointed out by Petitioner, an axis may be represented by scale breaks or logarithmic scales, and thus, need not retain an order of gaps as Patent Owner and Mr. Thomas contend. Pet. Reply 11–12; Ex. 1058, 103–109. We also have considered Patent Owner’s arguments and evidence that remarks made by the then applicant during prosecution of the application that matured into the ’056 patent amount to an express and clear disclaimer of the meaning for price axis. PO Resp. 6–7 (citing Ex. 1002, 178–179; Ex. 2169 ¶ 39). We are not persuaded by such arguments because the comments made during prosecution have not been shown to amount to a disclaimer of having a price axis without gaps in between prices. For example, Patent Owner directs attention to page 178 of Exhibit 1002 from the prosecution file in support of its disclaimer argument. On that page, however, is quoted language from several lines of the claim with an argument just prior stating that Silverman does not describe an axis of prices and all that is contained in the quoted language. Patent Owner has not explained sufficiently why we should construe such general remarks as a disclaimer. We also have reviewed the remarks made by the then applicant that the applied prior art displayed prices for which orders exist, but do not agree that Patent Owner has shown why such comments amount to a clear disclaimer or disavowal of the scope of the term “price axis.” To disavow claim scope, “the specification or prosecution history [must] make clear that the invention does not include a particular feature.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (internal citation, quotation, and alterations omitted).” slip op. at 14

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

    “icon at a location that corresponds to the desired price level along the price axis, the order icon indicating the user’s order at the electronic exchange.” (Emphasis added). Patent Owner argues that an “order icon indicating the user’s order at the electronic exchange” should be interpreted to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.” PO Resp. 9. Petitioner argues that no construction of the phrase is necessary and that Patent Owner’s construction is inconsistent with Figure 3A, which shows the user’s order aggregated with other users. Pet. Reply 12. Petitioner further argues that any icon that indicates a user’s order, whether aggregated with other orders or separate, meets the claim term. Id. We agree with Petitioner. There is nothing in the language of claim 5 that requires indicating the specific user order (separating it out from all other orders) or indicating to the user that it is his order. If an order is placed by a user, resulting in the total quantity of orders placed at that same price to increase, the total number would indicate an increase, and thus, indicate the user’s order. Patent Owner argues that because claim 1 recites bid indicators and offer indicators, an order icon must represent something distinct from the 16 bid/offer indicators. PO Resp. 7–8. But even Patent Owner does not explain why an order icon cannot be one of the offer or bid indicators. Indeed, for the embodiment that Patent Owner directs attention to there is no distinction between offer and bid indicators with order icons (an order icon is one of the indicators). Id. We agree with Petitioner that a person of ordinary skill in the art would have understood the ’056 patent to use “icons” and “indicators” interchangeably. See, e.g., Pet. 18–20. Thus, we disagree with Patent Owner that the “order icon” of claim 5 cannot be one of the offer or bid indicators. For all of the above reasons, we decline to interpret an “order icon indicating the user’s order at the electronic exchange” to mean “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.”” slip op. at 16

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art10, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). 10 The parties’ submissions focus primarily on the degrees, occupations, and experience, as opposed to what the hypothetical person of ordinary skill in the art would have known at the time of the invention. As such, and as the triers of fact, based on the record before us, we do not find such information particularly helpful.” slip op. at 17

  Patent outcomesUS 7,533,056 unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,533,056
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 1, 5, 8, and 10 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded that claims 1, 5, 8, and 10 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 1 recites “code to receive payment validation data . . . for said at least one selected item of multimedia content.” Independent claim 8 recites “code to control access to said selected content data item responsive to the payment validation data.” Claim 5 depends from claim 1 and recites “code to retrieve supplementary data via said wireless interface and output said supplementary data to said user using said display.” Claim 10 depends from claim 8 and recites “said data access terminal is integrated with a mobile communications device and audio/video player.” Furthermore, as discussed above, the ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1201, 1:23–57. The patent specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by Internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored content based on validation of payment. Id.” slip op. at 11

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

    “2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).” slip op. at 13

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “Smartflash has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Smartflash has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · Nov 10, 2016 · CBM2015-00132 · APJ Gregg I Anderson · CBM · Final written decision

  Claims 14, 19, and 22 are unpatentable under § 101 because they claim the abstract idea of conditioning and controlling access to content without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded that claims 14, 19, and 22 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 14 recites “code responsive to said user selection of said selected at least one item of multimedia content to transmit payment data relating to payment for said selected at least one item of multimedia content.” Independent claim 19 is similar and recites “code responsive to said user selection of said selected at least one content data item to transmit payment data relating to payment for said selected at least one content item.” Claim 22 depends from claim 19 and recites “wherein said data access terminal is integrated with a mobile communications device and audio/video player.”” slip op. at 11

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

    “claims are either field of use limitations—limiting the ideas of payment and controlling access to content to payment for retrieving “data” and controlling access to content based on “payment data” and “payment validation data”— or generic computer implementations, which Petitioner argues is insufficient to bring the claims within § 101 patent eligibility. Pet. 25–31. Specifically, Petitioner contends that the challenged claims “recite no more than generic computer elements and functions that were well-known, routine, and conventional to a POSITA at the time of filing.” Reply 6 (citations omitted); see id. at 10–12. Petitioner persuades us that claims 14, 19, and 22 of the ’772 patent do not add an inventive concept sufficient to ensure that the claims in practice amount to significantly more than claims on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Petitioner’s rationale that the additional elements of claims 14, 19, and 22 are field of use limitations and/or are generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 25–31; Reply 4–6.” slip op. at 14

  • ExcludeMotion to exclude, deniedMixed

    “We agree with Petitioner. As noted above, Smartflash, as movant, has the burden to show that these exhibits are inadmissible. Smartflash’s reference to FRE 703 in unavailing because while this rule does not establish the admissibility of the exhibits, it also does not speak to whether these exhibits are inadmissible. Because Mr. Wechselberger attests that he reviewed these exhibits in reaching the opinions he expressed in this case, Smartflash has not shown that they are irrelevant under FRE 401 and 402. Accordingly, we decline to exclude Exhibits 1324, 1329, 1330, 1333, and 1335. We grant the motion as to Exhibit 1305.” slip op. at 30

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 28, 2016 · CBM2015-00037 · APJ Jacqueline Wright Bonilla · CBM · Final written decision

  Claims 52, 62, 67, 70–76, 81, 83–85, and 96 are unpatentable under § 101 because they claim the abstract idea of inventory management using generic computer components.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “degrees in inventory management or similar fields such as supply chain control or logistics” per se, and has “not studied, for a profession, the history of inventory management.” Id. at 34–35 (citing Ex. 2005, 16:14–21, 41:22– 42:3). According to Patent Owner, “Dr. Siegel admits he has no expertise in information management history and only attempted to educate himself in order to prepare his declaration.” Id. at 35. It is clear from Dr. Siegel’s testimony, however, that he has extensive experience in “the use of information technology with business strategy and operations,” has handled professionally “issues related to the integration of information” using computer and software systems, and holds advanced degrees in engineering and computer science. Ex. 1006 ¶¶ 3–11. We are satisfied that Dr. Siegel possesses sufficient qualifications to testify on matters that are relevant to our analysis here, including matters that do not concern the alleged “ancient” history of inventory management. PO Resp. 35. For example, Dr. Siegel testifies that relevant aspects of automated inventory management and VMI were well known before the priority date of the ’538 patent. Ex. 1006 ¶¶ 25–28 (citing Ex. 1018); Ex. 1027 ¶¶ 5–22 (citing Exs. 1020-1022, 1024, 1025). Dr. Siegel also testifies that the ’538 patent specification describes hardware and software that “require only generic computer implementation—not specialized hardware or software.” Ex. 1006 ¶¶ 43–54, 78–79, 89. In addition, Dr. Siegel discusses general concepts of inventory management using a computer and whether certain limitations of the challenged claims can be performed mentally, using pen and paper, or manually, without use of a computer. Id. at ¶¶ 40, 58–66, 80, 90.” slip op. at 23

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

    “Both Petitioner and Patent Owner present constructions for several claim terms. Pet. 19–24; PO Resp. 12–23. For example, Patent Owner asserts that Petitioner misconstrues the term “customer” by defining it as “a buyer (person or organization) that uses the claimed inventory management.” PO Resp. 15; Pet. 19–20. Consistent with the specification of the ’538 patent, we adopt Patent Owner’s construction of “customer” as referring to a “buyer of products via the present invention” (Ex. 1001, 5:52– 56), i.e., a buyer of products using the inventory management system recited in the respective claims.” slip op. at 7

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

    “Patent Owner also presents constructions in relation to other claim terms such as “inventory restocking parameters provided by said customer,” “tracks” or “tracking,” “access” to information according to “assigned permissions or roles,” and “detecting.” PO Resp. 18–23. For many of the reasons stated in Petitioner’s reply to those constructions, we decline Patent Owner’s invitation to import inappropriately “computerized” aspects into those general terms, notwithstanding the fact that the challenged claims elsewhere recite computer components, such as a “computer,” “databases,” and “software.” Reply 23–25; see also Ex. 1001, 3:3–10 (stating that Customer Inventory System 130 allows manual inventory tracking). For purposes of this Decision otherwise, however, we need not expressly construe claim terms further. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “Based on the complete record before us, we determine that claim 67 is directed to the abstract idea of managing inventory in view of information. We are persuaded that managing inventory in view of collected and analyzed customer inventory, cost information, restocking information provided by a customer, as recited in claim 67, describes the basic concept of inventory management, i.e., a “fundamental economic practice.” Alice, 134 S. Ct. at 2356. The method of claim 67 is sufficiently similar in this regard to the method of hedging against financial risk at issue in Bilski, 130 S.Ct. 3218 (2010), and the idea of intermediated settlement at issue in Alice, 134 S. Ct. at 2356–57 (discussing Bilski). See also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract idea at the heart of a system claim to be “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” (citation omitted)).” slip op. at 22

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 6,996,538
• Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCAll claims unpatentable
  PTAB · May 26, 2016 · CBM2015-00033 · APJ Matthew R Clements · CBM · Final written decision

  Claims 25, 26, 30, and 32 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

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

    “We are persuaded that claims 25, 26, 30, and 32 are drawn to the abstract idea of conditioning and controlling access to content based on, for example, payment. Specifically, independent claim 25 recites “code to receive payment validation data . . . for said selected at least one item of multimedia content.” Independent claim 30 recites “code to receive payment validation data . . . for said selected at least one content data item.” Claim 26 depends from claim 25 and recites “code to present said second selected one or more items of retrieved multimedia content to a user via said display if access is permitted.” Claim 32 depends from claim 30 and recites “said data access terminal is integrated with a mobile communications device and audio/video player.” Furthermore, as discussed above, the ’772 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1401, 1:23–57. The specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by Internet users who may not even realize that it is pirated. Id. The ’772 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:61–2:3. The ’772 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on validation of payment. Id.” slip op. at 11

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

    “computer elements and functions that were well-known, routine, and conventional to a POSITA at the time of filing.” Reply 6 (citations omitted); see id. at 13–14. Apple persuades us that claims 25, 26, 30, and 32 of the ’772 patent do not add an inventive concept sufficient to ensure that the claims in practice amount to significantly more than claims on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt Apple’s rationale that the additional elements of claims 25, 26, 30, and 32 are field of use limitations and/or generic features of a computer that do not bring these claims within § 101 patent eligibility. Pet. 24–29; Reply 4–6.” slip op. at 14

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “We are persuaded by Apple that Exhibit 1402 is offered not for the truth of the matter asserted (i.e., the content of the ’772 patent), but as evidence of how Smartflash has characterized the ’772 patent. Thus, Smartflash has not persuaded us that Exhibit 1402 is evidence of the content of a writing or that it is cumulative to the ’772 patent. Furthermore, Smartflash has not persuaded us that Exhibit 1402 is irrelevant, at least because its characterization of the ’772 patent in prior proceedings is relevant to the credibility of its characterization of the ’772 patent in this proceeding. Smartflash contends that Exhibit 1402 does not contradict its characterization of the ’772 patent in this proceeding such that the credibility of Smartflash’s characterization is an issue. Paper 32, 3. Smartflash’s argument misses the point because the credibility of Smartflash’s characterization is for us to decide, and we have to consider the document at issue in making that determination. Further, as Apple notes (Paper 31, 2), Smartflash’s characterization of the ’772 patent in prior proceedings is relevant to Smartflash’s contention in this proceeding that the ’772 patent does not satisfy the “financial in nature” requirement for a covered business method patent review (Prelim. Resp. 5–11). Accordingly, we decline to exclude Exhibit 1402.” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Smartflash has not articulated a persuasive reason for excluding Mr. Wechselberger’s Declaration. Smartflash has not cited any authority requiring an expert to recite or apply the “preponderance of the evidence” standard in order for the expert opinion to be accorded weight. Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Apple has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702.” slip op. at 32

  Patent outcomesUS 8,336,772 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 8,336,772
• Informatica Corporation v. Protegrity CorporationAll claims unpatentable
  PTAB · May 9, 2016 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 33–60 are unpatentable under § 101; the motion to amend is denied as to substitute claims 61–68 and granted as to cancellation of claims 1–32.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Patent Owner’s Request to Cancel Claims 1–32 In the Patent Owner’s Response and the Motion to Amend, Patent Owner requests cancellation of claims 1–32 of the ’281 patent. PO Resp. 2– 3; Mot. Amend 1. Patent Owner’s request to cancel these claims is not contingent on the claims being determined to be unpatentable or on the entry of the proposed substitute claims. Patent Owner’s request to cancel claims 1–32 is granted and we need not address these claims further. Paper 23. Patent Owner, subsequently, filed the Motion to Amend as Exhibit 2098. See Paper 43.” slip op. at 3

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

    “Vehicular Techs. Corp. v. Titan Wheel Int'l, 141 F.3d 1084, 1088 (Fed. Cir. 1998) (citing Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 619–20 (Fed. Cir. 1995)). Independent claim 33 recites “[a] computer-implemented data processing method” that includes, among other steps, a step of “maintaining a database comprising a plurality of data portions.” Ex. 1001, 13:38–41. Similarly, independent claim 47 recites “[a] computer system” that includes, among other elements, “a database storing a plurality of data portions.” Id. at 14:47–48. As can be seen from the above, claims 33 and 47 recite that the database comprises or stores data portions. Neither of claims 33 and 47, nor any claims dependent, therefrom, recite that the database performs any other function, such as producing a compelling calling to the data protection catalogue to retrieve the data processing rules. See id. at 13:38–16:29. Indeed, unlike the parent ’201 patent, none of the claims of the ’281 patent recite a compelling calling at all. See id.; Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Notably, independent claim 8 of the parent ’201 patent recite an apparatus having a database that stores data to be protected. Ex. 1004, Ex Parte Reexamination Certificate 1:24–51 (amended claim 8). Claim 8 of the parent ’201 patent was amended during reexamination to recite that the apparatus, not the database, controls the user’s processing of the data according to the data processing rules, and the apparatus, not the database, also produces the compelling calling to the data element protection catalogue. Id. at Ex Parte Reexamination Certificate 1:41–51. The words of the claims of the ’281 patent, thus, are consistent with Petitioner’s proposed construction as the broadest reasonable construction.” slip op. at 10

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

    “v. Other Proposed Constructions Petitioner also proposed a construction of “encryption/encrypted” and “separate data protection table.” Pet. 15–18. Patent Owner also proposed a construction of “data element type.” PO Resp. 27–28. For the purposes of our review of the claims of the ’281 patent, however, no explicit construction of any other claim term is needed.” slip op. at 18

  • BurdenInstitution denied meritsDecided for petitioner

    “A party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a). In SecureBuy, LLC, the Board determined the 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy, LLC, CBM2014-00035 (PTAB April 25, 2014) (Paper 12). Here, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and 7 On May 4, 2015, Petitioner, via email, informed the Board of a clerical typographical error on page 11 of the Petition. The sentence starting with “[i]n the prior cases, petitioner was sued . . .” should be read as “[i]n the prior cases, petitioner was not sued . . . .” legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21). “The dismissal of an action without prejudice leaves the parties as though the action had never been brought.” Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)).” slip op. at 19

  Patent outcomesUS 8,402,281 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 8,402,281

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.