UNITED STATES PATENT AND TRADEMARK OFFICE
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`U.S. BANCORP
`Petitioner v.
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`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
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`Case CBM2013-00014
`Patent 6,625,582
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`PATENT OWNER RETIREMENT CAPITAL ACCESS
`MANAGEMENT COMPANY LLC'S RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`U.S. BANCORP
`Petitioner v.
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`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
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`Case CBM2013-00014
`Patent 6,625,582
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`PATENT OWNER RETIREMENT CAPITAL ACCESS
`MANAGEMENT COMPANY LLC'S RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Patent No. 6,625,582
`CBM2013-00014
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ....................................................................................... ii
`TABLE OF AUTHORITIES ................................................................................. v
`I. INTRODUCTION .......................................................................................... 1
`II. STATEMENT OF THE PRECISE RELIEF REQUESTED .................... 4
`III. BACKGROUND OF THE INVENTION .................................................... 4
`IV. U.S. BANCORP CANNOT PREVAIL DUE TO ITS FAILURE
`TO SUBMIT REQUISITE EVIDENCE ................................................. 6
`V. SECTION 101 JURISPRUDENCE ............................................................ 10
`A. Only Claims That Monopolize An Abstract Idea – Without
`More – Are Unpatentable ..................................................................... 10
`B. Lack Of Abstractness Does Not Require Proof That Any Limitation
`On The Identified Abstract Concept Is Novel Or Nonobvious ............ 15
`VI. U.S. BANCORP CONTENDS THE '582 PATENT IMPROPERLY
`FUTURE RETIREMENT PAYMENTS." ............................................ 16
`VII. U.S. BANCORP HAS NOT SHOWN THAT ANY CLAIM IS
`UNPATENTABLE UNDER 35 U.S.C. § 101 ........................................ 16
`A. The Claims Of The '582 Patent Were Narrowed During Prosecution
`To Cover Less Than The Abstract Concept ......................................... 16
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`PREEMPTS OTHERS FROM "ADVANCING FUNDS BASED ON
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`Or Without Violating Legal Proscriptions Limitations Were Merely
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`Specification Of The '582 Patent Does Not Provide Sufficient
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`That The Claims Of The '582 Patent Do Not Monopolize An
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`B. U.S. Bancorp Does Not Even Contend That The Without Encumbering
`Routine Or Conventional Limitations .................................................. 19
`C. The Board's Argument On Behalf Of U.S. Bancorp That The
`Description As To Compliance With U.S. Law Is Irrelevant ............... 20
`D. U.S. Bancorp's Non-Infringement Contentions Also Demonstrate
`Abstract Concept .................................................................................. 26
`E. None Of The '582 Patent Claims Involve Purely Mental Processes That
`Could Be Performed Without The Use Of A Computer ...................... 29
`VIII. SECTION 101 IS NOT A PROPER GROUND UPON
`MAY BE MAINTAINED ........................................................................ 37
`A. Challenges to the validity of a patent in CBM Review are
`patentability." ........................................................................................ 37
`B. The text of the Patent Act supports the conclusion that Section
`101 is not a "condition for patentability." ............................................. 38
`C. The text of the AIA supports the conclusion that Section 101 is
`not a statutorily authorized basis for conducting a CBM Review. ....... 40
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`WHICH A COVERED BUSINESS METHOD REVIEW
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`limited to grounds specified in the Patent Act as "conditions for
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`D. The legislative history of the AIA supports the conclusion
`conducting a CBM Review. .................................................................. 41
`E. The PTAB's previous conclusion that Section 101 is a valid
`ground for instituting a CBM Review is misguided. ............................ 42
`IX. CONCLUSION ............................................................................................ 45
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`that Section 101 is not a statutorily authorized basis for
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`CASES
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`TABLE OF AUTHORITIES
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`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) ................................................................ 6, 12
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`Aristrocrat Techs., Austl. PTY Ltd. v. Int’l Game Tech.,
`543 F.3d 657 (Fed. Cir. 2008) ...................................................................... 44
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`Bilski v. Kappos,
`130 S.Ct. 3218 (2010) .................................................................. 6, 11, 24, 38
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`CLS Bank Int'l v. Alice Corp. Pty. Ltd.,
`717 F.3d 1269 (Fed. Cir. 2013) ............................................................. passim
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`Cohens v. Virginia,
`19 U.S. 264 (1821) ....................................................................................... 43
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`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ........................................................ 10, 36, 44
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`Diamond v. Diehr,
`450 U.S. 175 (1981) ..................................................................... 6, 14, 38, 44
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`Gottschalk v. Benson,
`409 U.S. 63 (1972) ....................................................................................... 11
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................. 42, 43, 44
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`In re American Academy of Science Tech Center,
` 367 F.3d 1359 (Fed. Cir. 2004) ................................................................... 31
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`In re Hamilton,
`882 F.2d 1576 (Fed. Cir. 1989) ...................................................................... 7
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`In re Pearson,
`494 F.2d 1399 (CCPA 1974) .......................................................................... 7
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`In re Prater,
`415 F.2d 1393 (CCPA 1969) ........................................................................ 31
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`Mayo Collaborative Servs. v. Prometheus Laboratories, Inc.,
`132 S. Ct. 1289 (2012) .......................................................................... passim
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`Myspace, Inc. v. GraphOn Corp.,
`672 F.3d 1250 (Fed. Cir. 2012) .................................................................... 44
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`Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir.
`2010) ............................................................................................................. 24
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`SAP America, Inc. v. Versata Development Group, Inc.,
`Case CBM2012-00001 (MPT), 2013 WL 3167735 (June 11, 2013) ....... 9, 13
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`SAP America, Inc. v. Versata Development Group, Inc.,
`Case CBM2012-00001 (MPT), Patent 6,553,350, (Patent Tr. & App. Bd.
`January 9, 2013) ..................................................................................... 13, 42
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`Star Scientific., Inc. v. R.J. Reynolds Tobacco Co.,
`537 F.3d 1357 (Fed.Cir.2008) ...................................................................... 24
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`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013) ............................................................. passim
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`United States v. Telectronics, Inc.,
`857 F.2d 778 (Fed. Cir. 1988) ...................................................................... 25
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`Wright v. United States,
`302 U.S. 583 (1938) ..................................................................................... 43
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`OTHER AUTHORITIES
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`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) ....................................................... 7
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`35 U.S.C § 103 ................................................................................................. passim
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`35 U.S.C § 112 ............................................................................................ 24, 25, 29
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`35 U.S.C. § 101 ................................................................................................ passim
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`35 U.S.C. § 102 ................................................................................................ passim
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`35 U.S.C. § 282 ........................................................................................... 38, 39, 43
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`35 U.S.C. § 321 ................................................................................................. 37, 39
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`35 U.S.C. § 322 ......................................................................................................... 7
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`35 U.S.C. § 326(e) .................................................................................................... 7
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`H. Rep. 112-98, at p. 54 (June 1, 2011) .................................................................. 42
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`Leahy-Smith American Invents Act,
`Pub. L. No. 112-29, § 18(a)(1), 125 Stat. 284, 331 (2011) ................... passim
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`Manual of Patent Examining Procedure § 2111 ..................................................... 31
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`Social Security Act, the Employee Retirement Income Security Act of 1974 ......... 4
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`The American Heritage Dictionary of the English Language (4th ed. 2000) .......... 11
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`REGULATIONS
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`37 C.F.R. § 42.200 .................................................................................................... 1
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`37 C.F.R. § 42.208 .................................................................................................... 1
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`EXHIBIT LIST
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`The evidence supporting Patent Owner Retirement Capital Access
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`Management Company LLC’s Response is listed below:
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`RCAMC Exhibit 2015: Defendant U.S. Bancorp’s First Supplemental Responses
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`to Plaintiff Benefit Funding Systems LLC’s First Set of Interrogatories (Selected
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`excerpts, only).
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`RCAMC Exhibit 2016: Regulators to Restrict Big Banks' Payday Lending, Deal
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`Book 1, The New York Times Company, 2013 WLNR 9953554 (April 23, 2013).
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`RCAMC Exhibit 2017: Regions Financial Corporation, et al. v. Retirement
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`Capital Access Management Company LLC, Petition for Covered Business
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`Method Patent Review, No. CBM2014-00012, Patent No. 6,625,582.
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`Pursuant to 37 C.F.R. § 42.200(a), Patent Owner, Retirement Capital Access
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`Management Company LLC ("RCAMC" or "Patent Owner"), submits this
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`Response in opposition to the Petition for Post-Grant Review of U.S. Patent No.
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`6,625,582 ("the '582 patent") filed by U.S. Bancorp ("Petitioner") and the Board's
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`Decision – Institution of Covered Business Method Patent Review 37 C.F.R. §
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`42.208 (Paper 12) ("Institution Decision").
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`I.
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`INTRODUCTION
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`U.S. Bancorp contends that the claims of the '582 patent in this covered
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`business methods review are invalid pursuant to 35 U.S.C. § 101 as they are
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`directed to ineligible subject matter—a mere abstract concept. Based on the clear
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`facts of this case and the law relating thereto, the Board should find in favor of
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`Patent Owner.
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`“[A]ll inventions at some level embody ... [an] abstract idea,” and dissecting
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`from a claim all of its concrete limitations is one step closer towards “eviscerat [ing]
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`patent law.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289,
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`1293 (2012). Indeed, “[A]ny claim can be stripped down, simplified, generalized,
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`or paraphrased to remove all of its concrete limitations, until at its core, something
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`that could be characterized as an abstract idea is revealed. A court cannot go
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`hunting for abstractions by ignoring the concrete, palpable, tangible limitations of
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`the invention the patentee actually claims.” Ultramercial, Inc. v. Hulu, LLC, 722
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`F.3d 1335, 1344 (Fed.Cir. 2013) (Ultramercial II). Thus, any claim that is not so
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`manifestly abstract as to preempt a fundamental concept or idea is patent eligible.
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`It is U.S. Bancorp's burden, not anyone else's, to prove by a preponderance of
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`evidence that each of the challenged claims of the '582 Patent is directed to an
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`unpatentable, abstract idea under 35 U.S.C. § 101.1 U.S. Bancorp contends that the
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`claims amount to a monopoly on the abstract concept of "advancing funds based on
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`future retirement payments." It argues that all of the claim limitations are so
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`insignificant, conventional, or routine that each of the claims effectively covers the
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`abstract concept itself. It does so by improperly dissecting the claims, and without
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`any evidence other than the ’582 patent itself, which is plainly insufficient and
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`wrong. U.S. Bancorp has failed to meet its burden of proof.
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`The claims of the '582 Patent encompass significantly less than the identified
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`abstract idea of advancing funds based on future retirement payments. Indeed, each
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`of the challenged claims of the '582 Patent includes significant, inventive
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`limitations, including, for example, limitations that funds are advanced without
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`encumbering the beneficiary's right to the future retirement payments and without
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`violating legislative proscriptions in the United States against alienation of future
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`retirement benefits. The Patent and Trademark Office determined that this claim
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`limitation was both novel and nonobvious, and U.S. Bancorp does not point to even
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`1 U.S. Bancorp does not contend that any claim of the '582 patent fails to fit within
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`a scintilla of evidence that this limitation, or any other claim limitation, was routine
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`or conventional.
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`Indeed, U.S. Bancorp does even actually argue that any of these limitations
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`would have been or are routine or conventional. Instead, it improperly argues that
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`some of them were not "new" or were already "known. Yet, it is now well settled
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`law that a limitation that was known is not thereby routine or conventional.
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`Novelty under § 102 and nonobviousness and § 103 are treated separate from
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`subject matter eligibility under § 101.
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` Further, U.S. Bancorp could never show that, in practice, the claims cover
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`the abstract concept itself. For example, in related litigation, U.S. Bancorp
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`contends it is practicing the identified abstract concept of advancing funds based on
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`future retirement payments while simultaneously arguing, based on unambiguous
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`factual representations, that it is not infringing the '582 Patent. For this reason, U.S.
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`Bancorp cannot credibly argue that the claims of the '582 Patent amount to a
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`monopoly on the abstract concept itself.
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`In short, U.S. Bancorp has not and cannot meet its burden of proof.
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`II.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`RCAMC respectfully requests that the Board issue judgment that: (1) 35
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`U.S.C. § 101 is not a proper ground of review; or (2) claims 1, 13, 14, 18, 30, and
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`31 of the '582 patent are patent eligible under 35 U.S.C. § 101.
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`III. BACKGROUND OF THE INVENTION
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`At the time of the claimed invention of the '582 patent, the inventors, who are
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`RCAMC's sole owners, recognized that the fast growing ranks of retirement age
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`individuals were, for various reasons, finding Social Security benefits or other
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`retirement benefits, or the anticipated timing of receipts therefrom, often to be
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`inadequate to meet their present and future financial needs, expectations, and
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`objectives. However, considering the then existing and current legislated
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`proscriptions in the United States against assigning or otherwise alienating future
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`retirement benefits (e.g., as set forth in the Social Security Act, the Employee
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`Retirement Income Security Act of 1974, as amended ("ERISA"), and the United
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`States tax laws), Social Security benefits or other retirement benefits were not
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`generally seen as an adequate source of current capital, particularly to support
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`financing based upon future receipts. Thus, the inventors recognized a need for a
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`financial program that allows a beneficiary of Social Security benefits or other
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`retirement benefits to access, in a convenient, automated, and automatic manner,
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`present value of future retirement benefits to meet current financial objectives while
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`complying with the United States laws and regulations governing the assignment of
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`future Social Security or other retirement benefits. ('582 patent, Col. 1, ll. 23-49).
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`The inventors therefore conceived a system and method for a beneficiary of
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`Social Security payments or other retirement payments to access present value of
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`future benefits to meet current financial and other objectives. In the system and
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`method pertaining to the claims at issue in this covered business method review, a
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`financial institution is designated to be a direct depository and a disbursement agent
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`for disbursing predetermined portions of a beneficiary's retirement payments to a
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`funding source in exchange for access to capital by the beneficiary in an amount at
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`least in part based on present value of a designated portion of future retirement
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`payments. In the event that the beneficiary revokes participation, or such benefits
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`are otherwise curtailed, before the funding source is reimbursed, the funding source
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`may seek reimbursement of a specified amount relating to the capital it made
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`available to the beneficiary, but not from subsequent retirement payments. In the
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`event that the beneficiary dies prior to reimbursement, the funding source is
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`precluded from looking to a surviving spouse's share of remaining retirement
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`payments, or from the beneficiary's estate, for reimbursement of any sustained loss.
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`('582 patent, Abstract).
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`IV. U.S. BANCORP CANNOT PREVAIL DUE TO ITS FAILURE TO
`SUBMIT REQUISITE EVIDENCE
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`The test for abstractness consists of two steps: (1) identify the abstract
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`concept; (2) evaluate whether the claims contain additional substantive non-routine,
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`non-conventional limitations that narrow, confine, or otherwise tie down the claim
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`so that, in practical terms, it does not cover the full abstract idea itself. Accenture
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`Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir.
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`2013); Ultramercial, II, 722 F.3d at 1355 (concurring opinion of Lourie, J.); CLS
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`Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282-83 (Fed. Cir. 2013) (Lourie,
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`Dyk, Prost, Reyna and Wallach, JJ., plurality opinion) (“CLS Bank II”) (citing
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`Prometheus, 132 S. Ct. at 1300; Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010);
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`Diamond v. Diehr, 450 U.S. 175, 187 (1981)). The analysis under § 101 "is rife
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`with factual issues." Ultramercial II at 1339. "Almost by definition, analyzing
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`whether something was 'conventional' or 'routine' involves analyzing facts." Id.
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`"Likewise, any inquiry into the scope of preemption—how much of the field is 'tied
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`up' by the claim—by definition will involve historic facts: identifying the 'field,' the
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`available alternatives, and the preemptive impact in that field." Id.
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`By statute, U.S. Bancorp—rather than the Patent Office or the patent
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`owner—is burdened with proving by a preponderance of the evidence that a
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`proposition of invalidity is true. Leahy-Smith American Invents Act, Pub. L. No.
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`112-29, § 18(a)(1), 125 Stat. 284, 331 (2011) (hereinafter "AIA Section 18(a)(1)");
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`35 U.S.C. § 326(e); 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
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`Sen. Kyl. that "the petitioner, rather than the Office, bears the burden of showing
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`unpatentability"). By statute, moreover, U.S. Bancorp is required to have identified
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`in its petition, in writing and with particularity:
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`the evidence that supports the grounds for the challenge to each
`claim, including—(A) copies of patents and printed publications
`that the petitioner relies upon in support of the petition; and (B)
`affidavits or declarations of supporting evidence and opinions, if
`the petitioner relies on other factual evidence or on expert
`opinions . . .
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`AIA Section 18(a)(1); 35 U.S.C. § 322.
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`The only evidence identified in U.S. Bancorp's Petition is the following: (1)
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`the '582 patent itself (Exhibit 1003); (2) patent owner's December 26, 2001 response
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`to office action (Exhibit 1005); (3) patent owner's initial claim chart to Petitioner
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`(Exhibit 1009); and (4) the document entitled, "A Guide for Checking Account
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`Advance" (Exhibit 1010). No other evidence may be considered, and, to be clear,
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`arguments of counsel cannot take the place of objective evidence. See In re
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`Hamilton, 882 F.2d 1576, 1581-82 (Fed. Cir. 1989); In re Pearson, 494 F.2d 1399,
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`1405 (CCPA 1974).
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`As a matter of law, the above-identified evidence is insufficient for U.S.
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`Bancorp to satisfy its burden of proof. There is no dispute that every claim in the
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`'582 patent at issue contains substantive limitations on what U.S. Bancorp has
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`identified as the involved abstract concept. And, there is no evidence whatsoever
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`from which a finding can be made that all of the substantive limitations to each
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`claim would have been routine or conventional. In point of fact, the only evidence
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`cited anywhere in U.S. Bancorp's six pages of attorney argument that the
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`claims are invalid is the '582 patent itself. (Pet. 30-36). The '582 patent is not
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`evidence of whether each of the indisputably substantive limitations on the abstract
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`concept would have been routine or convention. The only other thing U.S.
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`Bancorp can point to is attorney argument, which is tantamount to no evidence at
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`all. Under the circumstances of this case, therefore, this petitioner cannot meet its
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`burden of proving its proposition of invalidity.
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`A single example will suffice to demonstrate the significance of U.S.
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`Bancorp's failure. One of the critical aspects of the invention of the ’582 patent is
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`the limitation that the benefit provider be reimbursed from resources other than
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`future retirement or Social Security payments in the event transfer of those benefits
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`from the depository to the benefit provider are curtailed, such as a result of the
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`beneficiary's own choice to revoke participation. The entirety of U.S. Bancorp's
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`"argument" directed to this limitation is the following:
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`The last limitation of claim 1 recites reimbursing the benfit provider from
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`another source if the future retirement payments are curtailed. Thus, none of the
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`steps of claim 1 recite anything other than the abstract concept of providing funds
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`based on the present value of future payments.
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`It is apparent from this text that U.S. Bancorp has not met its burden of
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`proving that this last limitation is routine or conventional. The same is true with
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`regard to the other claim limitations.
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`The fact that U.S. Bancorp cannot meet its burden is further underscored by
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`the Board's following statement in its only final decision on the merits of a covered
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`business method review to date: "We credit the testimony of Dr. Siegel over that of
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`Dr. Liebich and find that the additionally claimed steps of storing, retrieving,
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`sorting, eliminating and receiving are well-known, routine, and conventional steps."
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`SAP America, Inc. v. Versata Development Group, Inc., Case CBM2012-00001
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`(MPT), 2013 WL 3167735, *19 (June 11, 2013). There is no expert testimony
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`before the Board here, as U.S. Bancorp chose not to submit any. While RCAMC
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`does not argue for a bright-line rule that expert testimony is required to be
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`submitted in connection with every petition for covered business method review2, it
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`is evident that such testimony or other evidence submitted pursuant to § 322 was
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`necessary in this instance.
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`2 For example, determinations of validity under 35 U.S.C. § 102 clearly are capable
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`of being resolving in many instances without the need for expert testimony.
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`U.S. Bancorp's petition should be denied for the simple reason that the '582
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`patent by itself is not sufficient evidence for U.S. Bancorp to satisfy its statutory
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`burden of proof. The validity of the claims of the '582 patent should be affirmed.
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`V.
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`SECTION 101 JURISPRUDENCE
`A. Only Claims That Monopolize An Abstract Idea – Without More
`– Are Unpatentable
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`In determining whether patent claims preempt an abstract idea, "it is
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`important at the outset to identify and define whatever fundamental concept appears
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`wrapped up in the claim so that the subsequent analytical steps can proceed on
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`consistent footing." CLS II, 717 F.3d at 1282. Once the abstract idea is identified,
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`the claims must next be evaluated to determine whether they "contain additional
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`substantive limitations that narrow, confine, or otherwise tie down the claim[s] so
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`that, in practical terms, [they do] not cover the full abstract idea itself."
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`Ultramercial II, 722 F.3d at 1355 (quoting CLS Bank II). Any otherwise patentable
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`invention that is "not so manifestly abstract as to preempt a fundamental concept or
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`idea is patent eligible." Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331 (Fed. Cir.
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`2012) (emphasis in original).
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`The purpose underlying "abstract concept" jurisprudence is to ensure that a
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`party does not patent the abstract concept itself. The Supreme Court and Federal
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`Circuit have consistently approached the abstract-concept analysis with the goal of
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`preventing a patent owner from obtaining a monopoly on or preempting others from
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`practicing an abstract idea:
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`"The mathematical formula involved here has no substantial
`practical application except
`in connection with a digital
`computer, which means that it if the judgment below is affirmed,
`the patent would wholly pre-empt the mathematical formula and
`in practical effect would be a patent on the algorithm itself."
`Gottschalk v. Benson, 409 U.S. 63, 72 (1972) (emphasis added).
`
`"Allowing petitioners to patent risk hedging would pre-empt use
`of this approach in all fields, and would effectively grant a
`monopoly over an abstract idea." Bilski v. Kappos, 130 S.Ct.
`3218, 3231 (2010) (emphasis added).
`
`that claims should not be
`is
`"[T]he animating concern
`coextensive with a natural law, natural phenomenon, or abstract
`idea." CLS Bank II, 717 F.3d at 1281 (emphasis added).3
`
`"What matters is whether a claim threatens to subsume the full
`scope of a fundamental concept, and when those concerns arise,
`we must look for meaningful limitations that prevent the claim as
`a whole from covering the concept's every practical application."
`Id. (emphasis added).
`
`3 These words were presumably chosen carefully. Accepting that fact, it is notable
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`that the term "coextensive" is defined as, "Having the same limits, boundaries, or
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`scope." The American Heritage Dictionary of the English Language (4th ed. 2000)
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`(emphasis added).
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`"With the pertinent abstract idea identified, the balance of the
`claim can be evaluated to determine whether it contains
`additional substantive limitations that narrow, confine, or
`otherwise tie down the claim so that, in practical terms, it does
`not cover the full abstract idea itself." Id. at 1282 (emphasis
`added).
`
`"[A] claim is not patent eligible only if, instead of claiming an
`application of an abstract idea, the claim is instead to the abstract
`idea itself. The inquiry . . . is to determine on which side of the
`line the claim falls: does the claim cover only an abstract idea,
`or instead does the claim cover an application of an abstract
`idea?" Ultramercial II, 722 F.3d at 1343 (opinion of Rader, C.J.)
`(emphasis added).
`
`"Pre-emption is only a subject matter eligibility problem when a
`claim pre-empts all practical uses of an abstract idea." Id. at
`1346 (emphasis added).
`
`"It is not the breadth or narrowness of the abstract idea that is
`relevant, but whether the claim covers every practical application
`of that abstract idea." Id. (emphasis added).
`
`"Having identified the abstract idea of the claim, we proceed
`with a preemption analysis to determine whether 'additional
`substantive limitations . . . narrow, confine, or otherwise tie
`down the claim so that, in practical terms, it does not cover the
`full abstract idea itself.'" Accenture, 728 F.3d at 1345 (emphasis
`added) (quoting CLS Bank II).
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`The Board itself has acknowledged this policy as follows:
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`Standing alone, an abstract idea does not represent patent-
`eligible subject matter. Accordingly, we must further analyze
`Versata's claims to determine whether they incorporate sufficient
`meaningful limitations to ensure that the claims are more than
`just an abstract idea and not just a mere drafting effort designed
`to monopolize the abstract idea itself.
`
`SAP America, Inc. v. Versata Development Group, Inc., Case CBM2012-00001
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`(MPT), 2013 WL 3167735, *15 (Patent Tr. & App. Bd. June 11, 2013) (emphasis
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`added) (citing Prometheus, 132 S. Ct. at 1297).4
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`In other words, it is well settled that "the Supreme Court's foundational § 101
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`jurisprudence . . . turns primarily on the practical likelihood of a claim preempting a
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`fundamental concept." CLS Bank II, 717 F.3d at 1277 (opinion of Lourie, J.).
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`"Preemption is only a subject matter eligibility problem when a claim preempts all
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`practical uses of an abstract idea." Id. at 1300 (opinion of Rader, C.J.). As a result,
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`4 In its decision to grant SAP's petition for CBM review, the Board stated that it is
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`charged to "analyze a claim to determine whether the claim embodies a specific,
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`practical application of an abstract idea, or merely nothing more than the abstract
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`idea itself." SAP America, Inc. v. Versata Development Group, Inc., Case
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`CBM2012-00001 (MPT), Patent 6,553,350, (Patent Tr. & App. Bd. January 9,
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`2013), Paper 36 at 30 (emphasis added).
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`a patent claim cannot be cancelled as abstract under section 101 unless as a practical
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`matter it completely monopolizes the abstract idea itself.5
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`To be clear, "a claim may be premised on an abstract idea and, indeed, the
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`abstract idea may be of central importance to the invention—the question for patent
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`eligibility is whether the claim contains limitations that meaningfully tie that
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`abstract idea to an actual application of that idea through meaningful limitations."
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`Ultramercial II at 1344. A claim is "limited meaningfully when, in addition to the
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`abstract idea, the claim recites added limitations which are essential to the
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`invention", i.e.:
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`In those instances, the added limitations do more than recite pre-
`or post-solution activity, they are central to the solution itself.
`And, in such circumstances, the abstract idea is not wholly
`preempted; it is only preempted when practiced in conjunction
`with the other necessary elements of the claimed invention.
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`Id. at 1347 (citing Diamond v. Diehr, 450 U.S. 175, 187 (1981)).
`
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`5 If the claim does not pose any risk of preempting an abstract idea, then the
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`answer to the preliminary question is negative, and no further consideration of the
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`§ 101 issue is even necessary.
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`B.
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`Lack Of Abstractness Does Not Require Proof That Any
`Limitation On The Identified Abstract Concept Is Novel Or
`Nonobvious
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`"The requirement for substantive claim limitations beyond the mere recitation
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`of a disembodied fundamental concept has 'sometimes' been referred to as an
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`'inventive concept.'" CLS Bank II, 717 F.3d at 1282. However, the determination
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`of an inventive concept is not "to be confused with novelty or nonobviousness
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`analyses, which consider whether particular steps or physical components together
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`constitute a new or nonobvious invention."
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