Trials@uspto.gov Paper No. 33
`
`571.272.7822
`Entered: August 22, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`U.S. BANCORP,
`Petitioner,
`
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY,
`Patent Owner.
`____________
`
`Case CBM2013-00014
`Patent 6,625,582 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`
`I. BACKGROUND
`
`On June 22, 2012, Retirement Capital Access Management Company
`
`(“Patent Owner”) and Benefit Funding Systems LLC sued U.S. Bancorp
`
`(“Petitioner”) for infringement of U.S. Patent No. 6,625,582 (“the ’582
`
`patent”) (Ex. 1003) in the District Court for the District of Delaware in
`
`Benefit Funding Systems LLC, et al. v. U.S. Bancorp, Case No 1:12-cv-803-
`
`LPS (D. Del. filed June 22, 2012). See Paper 7, 2.
`
`On March 29, 2013, Petitioner filed a Petition requesting a review of
`
`the ’582 patent under the transitional program for covered business method
`
`patents, asserting that claims 1, 13, 14, 18, 30, and 31 are directed to
`
`unpatentable subject matter under 35 U.S.C. § 101. Paper 4. Patent Owner
`
`filed a Preliminary Response on July 2, 2013. Paper 10. We determined
`
`that Petitioner sufficiently demonstrated it was more likely than not that the
`
`challenged claims were unpatentable, and we instituted a trial on September
`
`20, 2013. Paper 12, Decision to Institute (“Dec.”).
`
`Patent Owner filed a Response on November 20, 2013, arguing that
`
`35 U.S.C. § 101 is not reviewable in a covered business method review and
`
`that the challenged ’582 patent claims are patentable. Paper 19
`
`(“PO Resp.”). Petitioner filed a Reply on January 21, 2014. Paper 23
`
`(“Reply”). Both Patent Owner and Petitioner requested an oral hearing
`
`under 37 C.F.R. § 42.70(a). Paper 24; Paper 26. The oral hearing was held
`
`on April 1, 2014, a transcript of which appears in the record. Record of Oral
`
`Hearing, Paper 32 (“Tr.”).
`
`
`
`
`
`2
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`
`II. THE ’582 PATENT
`
`The ’582 patent generally relates to a method for enabling recipients
`
`of Social Security payments to convert a designated portion of future
`
`payments into currently available financial resources. Ex. 1003, col. 1, ll. 1–
`
`5; 52–56. The patent explains that the beneficiary may access current capital
`
`through a funding source in exchange for payment of a predetermined
`
`portion of the beneficiary’s future retirement benefits. Id. at col. 3, ll. 20–
`
`28. Figure 2 of the ’582 patent, reproduced below, illustrates the steps of the
`
`
`
`method:
`
`
`
`
`
`As shown above in Figure 2, the beneficiary first elects participation in the
`
`program in step 24 and then designates a financial institution to act as the
`
`depository for the beneficiary’s retirement payments and a disbursement
`
`
`
`3
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`agent for such retirement payments in step 26. Id. at col. 5, ll. 34–39. Step
`
`30 involves designating a bank, insurance company, or other source of
`
`capital to be the funding source of current capital provided to the
`
`beneficiary. Id. at col. 5, ll. 43–46. Capital then is paid to the beneficiary
`
`from the funding source in an amount based in part upon the present value of
`
`a designated portion of the beneficiary’s future retirement payments in
`
`step 34. Id. at col. 5, ll. 53–56. Step 36 involves directly depositing a future
`
`retirement benefit into the beneficiary’s deposit account, and then a
`
`predetermined portion of this benefit is disbursed automatically to the
`
`funding source in step 38. Id. at col. 6, ll. 60–65. Step 42 involves a
`
`possible premature termination of participation in the program, in which the
`
`beneficiary may become obligated to reimburse the funding source for any
`
`advance from resources other than the future retirement benefits. Id. at col.
`
`6, ll. 7–12.
`
`Claim 1, illustrates the claimed subject matter and is reproduced
`below:
`
`1. A computerized method for creating a source of
`funds based on present value of future
`retirement payments, comprising the steps of:
`
`
`a. designating an account in a depository for a
`beneficiary
`to
`receive
`future
`retirement
`payments payable to said beneficiary from a
`source of said retirement payments for a
`preselected period of time;
`
`
`b. designating a benefit provider for providing a
`monetary benefit to said beneficiary;
`
`
`c. authorizing said depository to periodically
`disburse a predetermined portion of said
`
`
`
`4
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`retirement payments deposited in said account
`to said benefit provider during said preselected
`period of time;
`
`
`to said
`d. providing said monetary benefit
`beneficiary from said benefit provider based at
`least in part on present value of a designated
`portion of said future retirement payments
`without encumbering said beneficiary's right to
`said future retirement payments and without
`violating legislated proscriptions in the United
`States against alienation of future retirement
`benefits;
`
`
`e. causing said future retirement payments to be
`deposited into said account throughout said
`preselected period of time;
`
`
`f. causing said depository to transfer a portion of
`said retirement payments deposited into said
`account to said benefit provider during said
`preselected period of time; and
`
`
`g.
`
`from
`said benefit provider
`reimbursing
`resources other than said future retirement
`payments if said transfer of a portion of said
`retirement payments from said depository to
`said benefit provider are curtailed prior to said
`end of said preselected period of time, and
`making said retirement payments available for
`the exclusive use of said beneficiary.
`
`
`
`
`
`
`
`5
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`Consistent with the statute and the legislative history of the AIA,1 the
`
`Board will interpret claims using the broadest reasonable construction. See
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012); 37 C.F.R. § 42.100(b). There is a “‘heavy presumption’” that a claim
`
`term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (Internal citation
`
`omitted).
`
`
`
`Patent Owner argues that the “means for causing said future
`
`retirement payments to be deposited into said account” limitation of system
`
`claim 13, and the similar “means for” limitation of system claim 30,2 should
`
`be construed to require an “electronic funds transfer” because “direct deposit
`
`via electronic funds transfer is the structure disclosed in the specification for
`
`causing retirement payments (or Social Security retirement benefits) to be
`
`deposited.” PO Resp. 29 (citing Ex. 1003, col. 5, ll. 18–22) (emphasis in
`
`original). Patent Owner also argues that method claims 1 and 18 should be
`
`construed similarly, and thus the term “deposited” in claims 1 and 18 should
`
`be construed to mean “deposited via direct deposit.” Id. at 30.
`
`Petitioner disagrees, and argues that the claimed invention may be
`
`“performed on pen and paper, as consumers were able to deposit Social
`
`Security or retirement payments long before computers.” Reply 6.
`
`
`1 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
`2 Claim 30 recites “means for causing said future payments of Social
`Security benefits to be deposited into said account during said preselected
`period of time.” (emphasis added).
`
`
`
`6
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`Petitioner further argues that with respect to claim interpretation, the United
`
`States Court of Appeals for the Federal Circuit has “expressly rejected the
`
`contention that if a patent describes only a single embodiment, the claims of
`
`the patent must be construed as being limited to that embodiment.” Id. at 7
`
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)).
`
`
`
`To construe means-plus-function language in a claim, one “must look
`
`to the specification and interpret that language in light of the corresponding
`
`structure, material, or acts described therein, and equivalents thereof, to the
`
`extent that the specification provides such disclosure.” In re Donaldson Co.,
`
`Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to
`
`construe properly the limitations in claims 13 and 30 reciting a “means for
`
`causing said future retirement payments . . . to be deposited into said
`
`account,” the limitations “shall be construed to cover the corresponding
`
`structure, material, or acts described in the specification and equivalents
`
`thereof.” 35 U.S.C. § 112, ¶ 6.3 As noted by Patent Owner (PO Resp. 29),
`
`the corresponding structure within the specification supporting the means-
`
`plus-function limitation states the following: “[b]enefits source 12 of system
`
`10 disburses retirement payments directly to an individual direct deposit
`
`account 14 in a designated depository 16. Preferably, this is accomplished
`
`utilizing the well-known technique of electronic funds transfer.” Ex. 1003,
`
`col. 5, ll. 18–22. Accordingly, we construe “means for causing . . . to be
`
`deposited into said account,” recited in claims 13 and 30, to mean
`
`“disbursing directly to said account utilizing an electronic funds transfer.”
`
`
`3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’582 patent has a filing date before September 16,
`2012 (effective date), we will refer to the pre-AIA version of § 112.
`
`
`
`7
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`
`Unlike the means-plus function claims, we are not persuaded by
`
`Patent Owner’s argument that the term “deposited” in method claims 1 and
`
`18 should similarly be interpreted to mean “deposited via direct deposit.”
`
`PO Resp. 30–33. Patent Owner fails to point to any support in the
`
`specification of the ’582 patent that would require the construction of the
`
`term “deposited” to mean a direct deposit or electronic funds transfer. If an
`
`inventor acts as his or her own lexicographer, the definition must be set forth
`
`in the specification with reasonable clarity, deliberateness, and precision.
`
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
`
`Cir. 1998). The specification of the ’582 patent does not set forth expressly
`
`a definition of “deposited.” In fact, as cited above, the ’582 patent states that
`
`deposits are “[p]referably” conducted with the “well-known technique of
`
`electronic funds transfer,” but the specification does not limit the term
`
`“deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis
`
`added). Even in cases where the specification describes only a single
`
`embodiment, the claims are not necessarily limited to that embodiment.
`
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`
`2012) (It is not enough that the only embodiment, or all of the embodiments,
`
`contain a particular limitation to limit a claim to that particular limitation.).
`
`Here, the specification itself indicates that electronic deposits are preferable,
`
`but not required. Therefore, we do not adopt Patent Owner’s proposed
`
`construction of “deposited” recited in claims 1 and 18 as limited to
`
`“deposited via direct deposit.”
`
`8
`
`
`
`
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`B. Patent Owner’s Arguments that Section 101 Is Not a Proper
`Ground Upon Which a Covered Business Method Patent
`Review May Be Maintained
`
`Patent Owner argues that covered business method patent review is
`
`limited under the 35 U.S.C. § 282(b) to “conditions for patentability.”
`
`PO Resp. 37–38. Furthermore, Patent Owner argues the determination of
`
`patent eligibility under 35 U.S.C. § 101 is not a condition for patentability,
`
`such as those set forth in 35 U.S.C. §§ 102–103. Id. at 38–44. We disagree.
`
`Under the AIA, any ground that could be raised under 35 U.S.C.
`
`§ 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions
`
`not relevant here) in a covered business method review. See also 35 U.S.C.
`
`§ 321(b); AIA §18(a)(1). The grounds under § 282(b)(2) and (3) are:
`
`(2) Invalidity of the patent or any claim in suit on any ground
`specified in part II as a condition for patentability.
`(3) Invalidity of the patent or any claim in suit for failure to comply
`with—
`(A) any requirement of section 112, except that the failure to
`disclose the best mode shall not be a basis on which any claim of a
`patent may be canceled or held invalid or otherwise unenforceable; or
`(B) any requirement of section 251.
`
`As recognized by the Supreme Court, § 101 is a condition for patentability.
`
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966), the
`
`Supreme Court stated that the 1952 Patent Act “sets out the conditions of
`
`patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The
`
`Supreme Court has also addressed invalidity under § 101 when it was raised
`
`as a defense to an infringement claim under § 282. See Mayo Collaboration
`
`Servs. v. Prometheus Labs, Inc., 132 S.Ct. 1289, 1293 (2012). The Federal
`
`Circuit has also recognized that § 101 is a condition for patentability that can
`
`be raised as an affirmative defense under 35 U.S.C. § 282(b)(2). For
`
`
`
`9
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`example, in Dealertrack, Inc. v. Huber, the majority rejected the dissent’s
`
`contention that §101 is not a “condition for patentability,” stating that “the
`
`‘defenses provided in the statute’ § 282, include not only the conditions of
`
`patentability in §§ 102 and 103, but also those in § 101.” 674 F.3d 1315,
`
`1330 n.3 (Fed. Cir. 2012) (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l
`
`Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)) (“It has long been
`
`understood that the Patent Act sets out the conditions for patentability in
`
`three sections: sections 101, 102, and 103.”).
`
`The legislative history of the AIA also makes it clear that Congress
`
`intended the Office to consider challenges brought under § 101 for post-
`
`grant reviews. For example, with certain exceptions not relevant here, the
`
`covered business method patent review program employs the same standards
`
`and procedures as the post grant review program. AIA § 18(a)(1). The
`
`specified purpose of the covered business method review program was to
`
`allow the Office to revisit business method patents post-Bilski and evaluate
`
`whether the patents were too abstract to be patentable under § 101. See 157
`
`Cong. Rec. S1367 (daily ed. Mar. 8, 2011). Accordingly, we are not
`
`persuaded by Patent Owner’s argument that 35 U.S.C. § 101 is not a proper
`
`ground upon which a covered business method patent review may be
`
`maintained.
`
`C.
`
`35 U.S.C. § 101 Patentability Analysis
`
`
`
`1. Overview
`
`Section 101 of the Patent Act defines subject matter eligibility and the
`
`Supreme Court has “long held that this provision contains an important
`
`implicit exception: Laws of nature, natural phenomena, and abstract ideas
`
`are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347,
`
`
`
`10
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics,
`
`Inc., 133 S.Ct. 2107, 2116 (2013) (internal quotation marks and brackets
`
`omitted)). “The ‘abstract ideas’ category embodies the longstanding rule
`
`that ‘[a]n idea of itself is not patentable.’” Alice Corp., 134 S.Ct. at 2355
`
`(citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (quotations omitted)).
`
`In Alice Corp., the Supreme Court emphasized the “Mayo
`
`framework,” which provides “a framework for distinguishing patents that
`
`claim laws of nature, natural phenomena, and abstract ideas from those that
`
`claim patent-eligible applications of those concepts.” Id. (citing Mayo, 132
`
`S.Ct. at 1298). Under the Mayo framework, “[w]e must first determine
`
`whether the claims at issue are directed to a patent-ineligible concept.” Id.
`
`Next, “we consider the elements of each claim both individually and ‘as an
`
`ordered combination’ to determine whether the additional elements
`
`‘transform the nature of the claim’ into a patent-eligible application.” Id.
`
`(citing Mayo, 132 S.Ct. at 1297–1298). To be patentable, a claim must do
`
`more than simply state the law of nature or abstract idea and add the words
`
`“apply it.” Mayo, 132 S.Ct. at 1294; Benson, 409 U.S. at 67. Furthermore,
`
`“the mere recitation of a generic computer cannot transform a patent-
`
`ineligible abstract idea into a patent-eligible invention.” Alice Corp., 134
`
`S.Ct. at 2358. “Thus, if a patent’s recitation of a computer amounts to a
`
`mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that
`
`addition cannot impart patent eligibility.” Id. (internal citation omitted).
`
`A challenged claim, properly construed, must incorporate enough
`
`meaningful limitations to ensure that it claims more than just an abstract idea
`
`and not just a mere “‘drafting effort designed to monopolize the [abstract
`
`idea].’” Alice Corp., 135 S.Ct. at 2357 (quoting Mayo, 132 S.Ct. at 1297).
`
`
`
`11
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`“Simply appending conventional steps, specified at a high level of
`
`generality,” is not “enough” for patent eligibility. Id. (quoting Mayo, 132
`
`S.Ct. at 1292). Thus, we analyze the claims to determine whether the claims
`
`embody a patent-eligible application of an abstract idea or merely nothing
`
`more than the abstract idea itself.
`
`2. Claims 1, 13, 14, 18, 30, and 31 are not meaningfully
`limited under 35 U.S.C. § 101
`
`Petitioner challenges claims 1, 13, 14, 18, 30, and 31 as unpatentable
`
`under 35 U.S.C. § 101. Pet. 8. Patent Owner disagrees, and argues, inter
`
`alia, that the claims are not directed to an abstract idea because they include
`
`meaningful limitations that “cover less than the identified abstract concept.”
`
`PO Resp. 16.
`
`In accordance with the Supreme Court’s “framework for
`
`distinguishing patents that claim . . . abstract ideas from those that claim
`
`patent-eligible applications of those concepts,” we must first “determine
`
`whether the claims at issue are directed to one of those patent-ineligible
`
`concepts.” Alice Corp., 132 S.Ct. at 2355. In Alice Corp., the Supreme
`
`Court determined that the claims at issue were “drawn to the concept of
`
`intermediated settlement,” i.e., the use of a third party to mitigate settlement
`
`risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk
`
`hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of
`
`intermediated settlement is ‘a fundamental economic practice long prevalent
`
`in our system of commerce.’” Alice Corp., 132 S.Ct. at 2356 (citations
`
`omitted). With respect to the first step of the “Mayo framework,” the
`
`Supreme Court concluded in Alice Corp. that “there is no meaningful
`
`distinction between the concept of risk hedging in Bilski and the concept of
`
`
`
`12
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`intermediated settlement” in Alice Corp. and that “[b]oth are squarely within
`
`the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 132
`
`S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are
`
`directed to the abstract concept of advancing funds based on future
`
`retirement payments. Reply 4. Patent Owner does not disagree. Tr. 40
`
`(Patent Owner’s counsel stated at the oral hearing that Patent Owner is
`
`“happy to accept what [Petitioner] claim[s] is the abstract concept.”).
`
`Similar to the concept of intermediated settlement in Alice Corp. and the
`
`concept of risk hedging in Bilski, we find that the concept of advancing
`
`funds based on future retirement payments is an economic practice long
`
`prevalent in our system of commerce and squarely within the realm of
`
`abstract ideas.
`
`Step two of the Supreme Court’s “Mayo framework” requires that we
`
`consider the elements of the claim and determine whether there is an
`
`“element or combination of elements that is ‘sufficient to ensure that the
`
`patent in practice amounts to significantly more than a patent upon the
`
`[ineligible concept] itself.’” Alice Corp., 132 S.Ct. at 2355 (quoting Mayo,
`
`132 S.Ct. at 1294). Patent Owner states that claim 1 requires providing a
`
`monetary benefit “without encumbering said beneficiary’s right to said
`
`future retirement payments and without violating legislated proscriptions in
`
`the United States against alienation of future retirement benefits,” and argues
`
`that these are meaningful and substantive limitations that cause the claims to
`
`cover less than the identified abstract concept. PO Resp. 16. Patent Owner
`
`presents similar arguments with respect to the similar limitations recited in
`
`independent claims 13, 18, and 30. Id.
`
`
`
`13
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`Petitioner disagrees and argues that the “without encumbering”
`
`recitation in each claim requires only that the transaction be lawful, and,
`
`thus, only theoretical illegal methods of advancing future retirement benefits
`
`are excluded from the abstract concept. Reply 5. We agree. Requiring that
`
`a transaction be lawful is a routine and conventional practice in business
`
`transactions. The Supreme Court has provided guidance that “simply
`
`appending conventional steps, specified at a high level of generality, to laws
`
`of nature, natural phenomena, and abstract ideas cannot make those laws,
`
`phenomena, and ideas patentable.” Mayo, 132 S.Ct. at 1300. Furthermore,
`
`the argued limitation in claim 1 is recited at a high level of generality, as
`
`neither the claims themselves nor the specification provide any guidance as
`
`to how the “without encumbering” step is performed. Therefore, we
`
`determine the “without encumbering” limitation is a conventional and highly
`
`generalized step that does not meaningfully limit the claims beyond the
`
`abstract idea.
`
`We note that the preamble for claims 1 and 18 both recite a
`
`“computerized method.”4 “[A] preamble does not limit claim scope if it
`
`‘merely states the purpose or intended use of an invention.’” Digitech Image
`
`Technologies, LLC v. Electronics for Imaging, Inc., Case No. 2013-1600,
`
`2014 WL 3377201 at *5 (Fed. Cir. 2014) (affirming a finding that the
`
`recitation of a “digital image reproduction system” in the preamble of the
`
`claims did not limit the claims and that the claims were directed to a patent
`
`
`4 The preamble of claim 1 recites: “A computerized method for creating a
`source of funds based on present value of future retirement payments.” The
`preamble of claim 18 recites: “A computerized method for creating a source
`of funds based on present value of future Social Security retirement
`benefits.”
`
`
`
`14
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`ineligible abstract idea) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d
`
`945, 952 (Fed.Cir.2006)). Here, the recitation of “computerized method” in
`
`the preamble of claims 1 and 18 merely states the intended use of the
`
`claimed invention and does not provide any antecedent basis for limitations
`
`in the body of the claim. Catalina Mktg. Intl., Inc. v. Coolsavings.com, Inc.,
`
`289 F.3d 801, 808 (Fed. Cir. 2002) (preamble is not limiting “where a
`
`patentee defines a structurally complete invention in the claim body and uses
`
`the preamble only to state a purpose or intended use for the invention.”)
`
`(quotations omitted). Therefore, we determine that use of “computerized
`
`method” in the preamble of claims 1 and 18 does not meaningfully limit the
`
`claims.
`
`Petitioner argues that the challenged claims can be performed using
`
`pen and paper. Pet. 33; Reply 6. Patent Owner argues that the claims of the
`
`’582 patent are not directed towards purely mental processes because the
`
`claims require the use of a computer. PO Resp. 29. More particularly,
`
`Patent Owner argues that a computer is integral to the claims, and must be
`
`viewed in light of the other substantive limitations including creating a
`
`source of funds based on future retirement payments, such as Social
`
`Security. Id. at 36. Patent Owner further argues that the computer required
`
`by the claims is not a general purpose computer because the electronic funds
`
`transfer requires programming a computer with particular software.
`
`Id. at 35.
`
`Petitioner counters that Patent Owner’s arguments improperly attempt
`
`to import limitations from the specification into the claims. Reply 6.
`
`Petitioner further argues that even if method claims 1 and 18 were construed
`
`to be limited to direct deposits, such a reading only would require a
`
`
`
`15
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`computer as an obvious mechanism to increase efficiency. Id. at 7 (citing
`
`Bancorp Servs., L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266, 1279 (Fed.
`
`Cir. 2012)).
`
`With respect to method claims 1 and 18, as noted above, we decline to
`
`construe “deposited” as requiring “direct deposit” or any computerized
`
`implementation. Furthermore, we determine that the steps of method claims
`
`1 and 18 could be performed as a series of verbal transactions exchanging
`
`physical money or via pen and paper. In CyberSource Corp. v. Retail
`
`Decisions, Inc., 654 F.3d 1366, 1372, 1373 (Fed. Cir. 2011), the Federal
`
`Circuit determined that the method claims there, directed to fraud
`
`determination, “can be performed in the human mind, or by a human using a
`
`pen and paper” and “a method that can be performed by human thought
`
`alone is merely an abstract idea and is not patent-eligible under § 101.”
`
`Additionally, we conclude that the “deposited” limitation of claims 1
`
`and 18 does not provide a meaningful limitation to the abstract idea.
`
`Nonetheless, even if the “deposited” limitation of method claims 1 and 18 of
`
`the ’582 patent were read to require a computer, the use of a computer to
`
`perform direct deposit with electronic funds transfer “simply performs more
`
`efficiently what could otherwise be accomplished manually.” Bancorp, 687
`
`F.3d at 1279. Contrary to Patent Owner’s assertions that the ʼ582 patent
`
`invention requires specialized hardware and software, the ’582 patent states
`
`that the “present invention utilizes known computer capabilities and
`
`electronic communications links to effect the automated implementation of
`
`various aspects of the inventive financial program, for example, to carry out
`
`the electronic transfer of funds into and out of the individual deposit account
`
`of a program participant.” Ex. 1003, col. 2, ll. 30–35 (emphasis added). As
`
`
`
`16
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`the Supreme Court held in Gottschalk v. Benson, 409 U.S. 63 (1972), claims
`
`do not become patent-eligible under § 101 simply for reciting a known,
`
`general purpose computer. See id. at 67 (invalidating as patent-ineligible
`
`claimed processes that “can be carried out in existing computers long in use,
`
`no new machinery being necessary,” or “can also be performed without a
`
`computer.”). In Alice Corp., the Supreme Court determined that “the claims
`
`at issue amount to ‘nothing significantly more’ than an instruction to apply
`
`the abstract idea of intermediated settlement using some unspecified, generic
`
`computer.” Alice Corp., 132 S.Ct. at 2360 (quoting Mayo, 132 S.Ct. at
`
`1298). Similarly, we conclude that even if we were to construe the
`
`“deposited” limitation of claims 1 and 18 to require a computer, the claims
`
`amount to nothing significantly more than an instruction to apply the
`
`abstract idea of advancing funds based on future retirement payments using
`
`an unspecified, generic computer. Accordingly, we conclude that claims 1
`
`and 18 do not add meaningful limitations beyond the recited abstract idea.
`
`Unlike method claims 1 and 18, claims 13 and 30 are system claims
`
`that include the means-plus-function limitation of “means for causing . . . to
`
`be deposited into said account.” As discussed above, we construe these
`
`means limitations to require “disbursing directly to said account utilizing an
`
`electronic funds transfer.” In Alice Corp., the Supreme Court concluded that
`
`the system claims were not patentable for substantially the same reasons as
`
`the method claims because “system claims recite a handful of generic
`
`computer components configured to implement the same idea” as the
`
`method claims. Alice Corp., 132 S.Ct. at 2360. The Supreme Court has
`
`warned that a “draftsman’s art” should not trump the prohibitions against
`
`
`
`17
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`patenting abstract ideas. See Alice Corp., 132 S.Ct. at 2359 (citing Mayo,
`
`132 S.Ct. at 1294 (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))).
`
`We determine that system claims 13 and 30 are directed to the same
`
`abstract idea as method claims 1 and 18. Furthermore, the means-plus
`
`function limitations merely require “utilizing the well-known technique of
`
`electronic funds transfer.” Ex. 1003, col. 5, ll. 21–22 (emphasis added).
`
`Accordingly, as to these claims, we conclude that the use of a computer in a
`
`generalized fashion to increase efficiency does not meaningfully limit an
`
`otherwise abstract claim. See, e.g., id.; Gottschalk, 409 U.S. at 67; Bancorp,
`
`687 F.3d at 1279. Dependent claims 14 and 31, which recite “wherein the
`
`benefit provider is a source of capital,” also do not meaningfully limit the
`
`claims.
`
`Patent Owner argues that Petitioner has not provided sufficient factual
`
`evidence to support unpatentability and that a § 101 analysis requires factual
`
`inquiries into the nature of the invention. PO Resp. 6–10. Patent Owner
`
`further argues that Petitioner fails to provide expert testimony to support its
`
`challenge. Id. Patent Owner contends that the only evidence pointed to by
`
`Petitioner is the ’582 patent itself, which “is not evidence of whether each of
`
`the indisputably substantive limitations on the abstract concept would have
`
`been routine or convention[al].” Id. at 8.
`
`Petitioner counters that the ’582 patent describes easily
`
`understandable technology and, in such cases, expert testimony is not
`
`required. Reply 11 (citing Lee v. Mike’s Novelties, Inc., 543 Fed. Appx.
`
`1010, 1015 (Fed. Cir. 2013) (“Expert testimony is not necessary in patent
`
`cases involving technology that is ‘easily understandable.’”) (internal
`
`citation omitted)). Petitioner further argues, in addition to the non-technical
`
`
`
`18
`
`

`
`CBM2013-00014
`Patent 6,625,582 B2
`
`
`nature of the claims, expert testimony is not required to determine “whether
`
`claims recite a computer limitation that provides a meaningful limitation.”
`
`Id.
`
`We agree with Petitioner. Neither the claims nor the specification
`
`provide complex technological implementations or modifications of these
`
`technologies. In fact, the ’582 patent describes implementing electronic
`
`funds transfer and direct deposit by “utiliz[ing] existing computer
`
`capabilities” and “utilizing the well-known technique of electronic funds
`
`transfer.” Ex. 1003, col. 5, l. 2; col. 5, ll. 21–22 (emphasis added).
`
`Furthermore, the “without encumbering” limitation encompasses an easily
`
`understood concept and recites no specific technological mechanism for
`
`achieving its result.
`
`Patent Owner further argues Petitioner has not provided any evidence
`
`that the “without encumbering” limitation was routine or conventional.
`
`PO Resp. 19–20. Patent Owner argues that because the record does not
`
`contain such evidence, we have no basis to find that the “without
`
`encumbering” limitation was insignificant, conventional, or routine. Id. at
`
`19. We are not persuaded by Patent Owner’s argument because, as noted
`
`above, extrinsic or expert evidence may not be required for simple or easily
`
`understandable limitations like the “without encumbering limitation.” The
`
`“without encumbering” limitation can generally be described as “complying
`
`with the United