Paper No. 8
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 24, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Case CBM2013-00018
`Patent 7,426,481 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`VOLUSION EXHIBIT 1014
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 24, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLUSION, INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. AND
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Case CBM2013-00018
`Patent 7,426,481 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`VOLUSION EXHIBIT 1014
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`
`SUMMARY
`
`Petitioner Volusion, Inc. filed a petition seeking a covered business
`
`method patent review of Patent Owner Versata‟s 7,426,481 patent pursuant to
`
`section 18 of the Leahy-Smith America Invents Act (AIA).1 The Petition
`
`(“Pet.”) challenges all the claims (1-73) of the '481 patent as unpatentable under
`
`35 U.S.C. § 101. Patent Owner filed a preliminary response opposing
`
`institution of the review. Paper No. 6 (“Prelim. Resp.”). We have jurisdiction
`
`under 35 U.S.C. § 324.
`
`The standard for instituting a covered business method patent review is
`
`set forth in 35 U.S.C. § 324(a), which provides as follows:
`
`THRESHOLD --The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`
`We determine that the '481 patent is a covered business method patent.
`
`Petitioner has demonstrated that it is more likely than not that claims 1-73 are
`
`directed to non-statutory subject matter and, thus, unpatentable under 35 U.S.C.
`
`§ 101. Therefore, we institute a covered business method patent review for
`
`claims 1-73 of the '481 patent based upon Petitioner‟s challenge that the claims
`
`are unpatentable under § 101.
`
`
`
`THE CHALLENGED PATENT
`
`The '481 patent relates to a computer system and a database that stores
`
`product configurations and product configuration information. Ex. 1001,
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`
`2
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`Abstract. Received product-related data can include different types of
`
`information such as attribute information and product identifier information.
`
`Id.
`
`Figure 7 is reproduced below.
`
`Figure 7 of the '481 patent is said to be a plan view of a web page
`
`through which a user can access product-related information. Ex. 1001, col. 4,
`
`ll. 4-6. Figure 7 includes a number of hypertext links that enable access to a
`
`
`
`3
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`database of information related to products such as vehicles. A hypertext link
`
`710 accesses a database concerning the makes and models of available vehicles.
`
`Hypertext link 730 accesses the same database, but facilitates searching based
`
`upon the features associated with vehicles in the database. Id. at col. 10, ll. 44-
`
`54.
`
`
`
`Illustrative Claim
`
`50. A method of using a computer system to provide one or
`more product selections to a user in accordance with product
`related data provided by the user, the method comprising:
`receiving the product related data from the user via a data
`processing system;
` identifying products stored in a memory based on two
`different types, (A) and (B), of product identification, wherein the
`memory stores product configuration information for multiple
`products, the product configuration information includes product
`features, and the two different types of product identification
`comprise:
`searching for products in the memory based on
`(A)
`product features included in the product related data if the product
`related data represents the one or more product features; and
`
`identifying one or more products stored in the
`memory that each include the one or more features, if the product
`related data represents the one or more product features; and
`(B)
`identifying one or more products stored in the
`memory that are identified by a product model identifier, if the
`product related data represents the product model identifier; and
`providing identified products to the user for display by the data
`processing system of the user.
`
`
`4
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`
`COVERED BUSINESS METHOD PATENT
`
`Related Litigation
`
`In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it has
`
`been sued for infringement of the '481 patent. Pet. 2. Patent Owner does not
`
`challenge the certification.
`
`
`
`Used in the Practice, Administration, or Management
`of Financial Products or Services
`
`A covered business method patent “claims a method or corresponding
`
`apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service,
`
`except that the term does not include patents for technological inventions.”
`
`AIA § 18(d)(1). The legislative history of the AIA “explains that the definition
`
`of covered business method patent was drafted to encompass patents „claiming
`
`activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.‟” 77 Fed. Reg. 48,735 (Aug. 14, 2012)
`
`(quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)).
`
`Petitioner points out that the '481 patent explicitly states that the
`
`invention relates to “transacting commerce over a network, and, more
`
`particularly, to a method and apparatus for processing information related to
`
`such commercial transactions.” Pet. 8; Ex. 1001, col. 1, ll. 34-36. Patent
`
`Owner alleges that the patent does not claim a method or corresponding
`
`apparatus used in the practice, administration, or management of financial
`
`products or services. Prelim. Resp. 24-27. Patent Owner does not address the
`
`explicit statement in the '481 patent concerning “transacting commerce over a
`
`network” that was pointed out in the Petition. See id.
`
`5
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`
`Claim 50 of the '481 patent recites a method of using a computer system
`
`to provide product selections to a user, which relates to a commercial
`
`transaction, which is itself financial in nature. The steps are not limited in
`
`application to any particular product. We are persuaded that at least one claim
`
`covers data processing or other operations used in the practice, administration,
`
`or management of a financial product (e.g., a credit card, an auto loan, or a
`
`mortgage).
`
`
`
`Not a Technological Invention
`
`In view of the “technological inventions” exception of AIA § 18(d)(1),
`
`the legislative history of § 18(d)(1), and the definition of “technological
`
`invention” under 37 C.F.R. § 42.301(b), the Office Trial Practice Guide
`
`provides the following guidance with respect to claim content that typically
`
`would not render a patent a technological invention:
`
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer readable storage medium, scanners, display
`devices, or databases, or specialized machines, such as ATM or
`point of sale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if the process or method is
`novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`77 Fed. Reg. 157 (Aug. 14, 2012) at 48763-64.
`
`Petitioner submits that the '481 patent is directed to a process or system
`
`that uses known technologies in their customary fashion. Pet. 12. According to
`
`6
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`Petitioner, the inventors do not claim to have invented the use of software
`
`architectures on general purpose computers but only a purportedly novel
`
`process of identifying a product. Id. Petitioner submits further that none of the
`
`claims require any specific or unconventional software. Id. at 13-14.
`
`Patent Owner in response asserts that all of the claims require specific,
`
`novel software. Prelim. Resp. 22. Patent Owner submits that during
`
`prosecution of the patent the identification of a product based on two different
`
`product identification types -- (A) product feature information, and (B) product
`
`model identifier information -- was considered novel and unobvious. Id. at 22-
`
`23.
`
`As Petitioner indicates, the '481 patent states that entities providing
`
`product information have used networking and client/server technology that
`
`became available during the period of ten to fifteen years prior to the invention.
`
`Ex. 1001, col. 1, ll. 46-55. World Wide Web (WWW) browsers and web sites
`
`facilitated the transfer of electronic documents for display on a client‟s
`
`terminal. Id. at col. 1, l. 55 - col. 2, l. 7. The inventors of the '481 patent noted
`
`that, when faced with a large number of comparable products, the consumer
`
`may want to compare such products, as in a side-by-side fashion. Id. at col. 2,
`
`ll. 8-15.
`
`The '481 patent does not purport that the inventors produced some new
`
`advance in computer technology. The asserted novelty of identifying a product
`
`by (A) product feature information and (B) product model identifier
`
`information is not in the software, but in the meaning to a human being of the
`
`data searched for and retrieved by the software. The '481 patent does not
`
`indicate that the inventors discovered a novel way of searching the memory of a
`
`general purpose computer. To the contrary, for example, pre-existing
`
`7
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`phonebook databases were capable of being searched for a subscriber‟s name
`
`and for a phone number to retrieve electronic data from memory and thereby
`
`identify a subscriber. Further, we have considered Patent Owner‟s arguments
`
`that the claimed subject matter as a whole solves a technical problem using a
`
`technical solution. Prelim. Resp. 19-20 and 23. We note, however, that the
`
`“claimed subject matter as a whole” does not refer to the entirety of the '481
`
`patent but to the claimed invention, e.g., that invention set forth by the broad
`
`terms of claim 50. Claim 50 does not require a website or a network to support
`
`a website. In any event, we agree with Petitioner that the '481 patent‟s
`
`suggestion that the invention reduces the need for user interaction, thus
`
`improving a website‟s ability to handle increased traffic, is not a technical
`
`solution to a technical problem. Rather, the solution is based on the recognition
`
`that a user may want to compare products (e.g., side-by-side), which is more of
`
`a problem of how products are presented to a customer, as opposed to being a
`
`technical problem. Prelim. Resp. 23; Ex. 1001, col. 2, ll. 8-19.
`
`
`
`Conclusion -- A Covered Business Method Patent
`
`A single claim is sufficient to institute a covered business method patent
`
`review. In view of the foregoing, we conclude that the presence of at least
`
`claim 50 determines that the '481 patent is a covered business method patent
`
`under AIA § 18(d)(1).
`
`
`
`CLAIM INTERPRETATION
`
`During a review before the Board, we construe the claims in accordance
`
`with the broadest reasonable interpretation in light of the specification. 37
`
`C.F.R. § 42.300(b); 77 Fed. Reg. 157 (Aug. 14, 2012) at 48697-98. The claim
`
`8
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`language should be read in light of the specification as it would be interpreted
`
`by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004). The Office must apply the broadest reasonable
`
`meaning to the claim language, taking into account any definitions presented in
`
`the specification. Id. (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)).
`
`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).
`
`The sole challenge in this proceeding is on the basis of non-statutory
`
`subject matter under 35 U.S.C. § 101. Neither party has proposed that any
`
`terms in the claims are in need of construction. We will apply the plain and
`
`ordinary meaning of the words in the claims in the context of the '481 patent as
`
`understood by one of ordinary skill in the art.
`
`
`
`
`
`SECTION 101 CHALLENGE
`
`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 patent review. Patent Owner
`
`asserts that § 101 is not available to challenge patentability in a covered
`
`business method patent review because it is not included in §§ 282(b)(2) or (3).
`
`However, as the Office described in the final rules implementing post-grant
`
`review and covered business method patent review in the Federal Register, the
`
`“grounds available for post-grant review include 35 U.S.C. 101 and 112, with
`
`the exception of compliance with the best mode requirement.” 77 Fed. Reg.
`
`48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with both the
`
`relevant case law and the legislative history. See, e.g., Mayo Collaborative
`
`9
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012) (addressing
`
`invalidity under § 101 when it was raised as a defense to an infringement
`
`claim); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966)
`
`(stating that the 1952 Patent Act “sets out the conditions of patentability in three
`
`sections,” citing 35 U.S.C. §§ 101, 102, and 103); Dealertrack, Inc. v. Huber,
`
`674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012); H.R. Rep. No.112-98, at 47 (2011);
`
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011). We have reviewed Patent
`
`Owner‟s contentions to the contrary but do not find them persuasive.
`
`Moreover, none of the cases cited by Patent Owner address the specific issue of
`
`whether claims can be challenged as being non-statutory in a covered business
`
`method patent review, except for the Board‟s earlier decision in SAP America
`
`Inc. et al. v. Patent of Versata Dev. Gp., Inc., which is contrary to Patent
`
`Owner‟s position. See CBM-2012-00001, Decision on Covered Business
`
`Method Review, Paper No. 36 at 32-36 (PTAB 2013).
`
`
`
`35 U.S.C. § 101 -- Principles of Law
`
`“Whoever invents or discovers any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof, may obtain a patent therefor, subject to the conditions and requirements
`
`of this title.” 35 U.S.C. § 101. Supreme Court precedents provide three
`
`specific exceptions to the broad categories of § 101: laws of nature, physical
`
`phenomena, and abstract ideas. Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010).
`
`In Gottschalk v. Benson, 409 U.S. 63 (1972), the claims were directed to
`
`a method for converting binary-coded-decimal (BCD) numerals into pure
`
`binary numerals for use with a general-purpose digital computer of any type.
`
`Benson, 409 U.S. at 64. The method steps in the body of the claim incorporated
`
`10
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`portions of a computer (a reentrant shift register) into the steps. The question
`
`before the Court was “whether the method described and claimed is a „process‟
`
`within the meaning of the Patent Act.” Id. The Court characterized the claimed
`
`invention as “a generalized formulation for programs to solve mathematical
`
`problems of converting one form of numerical representation to another.” Id. at
`
`65. The Court held that the claimed method was directed to non-statutory
`
`subject matter because “[t]he mathematical formula involved here has no
`
`substantial practical application except in connection with a digital computer,
`
`which means that 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.” Id. at 71-72.
`
`“To salvage an otherwise patent-ineligible process, a computer must be
`
`integral to the claimed invention, facilitating the process in a way that a person
`
`making calculations or computations could not.” Bancorp Servs., L.L.C. v. Sun
`
`Life Assurance Corp., 687 F.3d 1266, 1278 (Fed. Cir. 2012). “[T]he relevant
`
`inquiry is whether a claim, as a whole, includes meaningful limitations
`
`restricting it to an application, rather than merely an abstract idea.”
`
`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344 (Fed. Cir. 2013). When a
`
`general purpose computer is employed only for its most basic function, such as
`
`the performance of repetitive calculations, such claim recitations do not impose
`
`meaningful limits on claim scope. Bancorp, 687 F.3d at 1278. When
`
`insignificant computer-based limitations are set aside from claims that contain
`
`such limitations, the question under § 101 reduces to an analysis of what
`
`additional features remain in the claims. Bancorp, 687 F.3d at 1279. Using a
`
`computer to accelerate an ineligible mental process does not make that process
`
`patent-eligible. Id.
`
`11
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`
`Petitioner’s Challenge
`
`Petitioner submits that the claims of the '481 patent fail to satisfy the
`
`machine-or-transformation test. Pet. 34-41. Patent Owner responds that the
`
`machine-or-transformation test “is not relevant to the claims at issue” because
`
`the invention is “computer-related.” Prelim. Resp. 41. We disagree that the test
`
`is “not relevant” to computer-related inventions. The Supreme Court instructs
`
`us that the “Court‟s precedents establish that the machine-or-transformation test
`
`is a useful and important clue, an investigative tool, for determining whether
`
`some claimed inventions are processes under § 101.” Bilski, 130 S.Ct at 3227.
`
`However, it is not the sole test for deciding whether an invention is a patent-
`
`eligible process. See id.2 Thus, we agree with Patent Owner to the extent that
`
`failure to satisfy the machine-or-transformation test is not dispositive in this
`
`case. However, as a factor in our analysis, we note that Patent Owner has not
`
`shown, or even alleged, that any of the claims of the '481 patent pass the
`
`machine-or-transformation test so as to indicate that the claims may be directed
`
`to statutory subject matter.
`
`Petitioner further submits:
`
`[T]he Federal Circuit has recently held that patent claims are
`unpatentable abstract ideas when the claimed “steps can be
`performed in the human mind, or by a human using a pen and
`paper.” CyberSource Corp. [v. Retail Decisions, Inc.], 654 F.3d
`[1366] at 1372. The steps of the underlying invention of the ‟481
`patent, although claimed as computer-implemented, can be
`performed by a human without a computer. For instance, looking
`at the steps of claim 1, all that is required is receiving product
`selection information from a user, identifying products based on
`
`
`2 Statements relating to application of the test in the “Information Age” in Part
`II.B.2 of the opinion were not adopted by a majority of the Court; see Bilski,
`130 S. Ct. at 3223 n.1.
`
`12
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`
`this information, and displaying the identified products (Ex. 1001,
`Col. 22:13-33). These steps could easily be done by, for instance,
`[ ] a vehicle sales person who gathers information about desired
`features from the customer, searches available vehicles with those
`desired features, and then provides pictures, information, or
`samples of the matching vehicles to the customer.
`
`Pet. 27. Patent Owner responds that “[t]his argument completely ignores many
`
`of the required uses of computers set forth in the claims.” Prelim. Resp. 41.
`
`We reject Patent Owner‟s mischaracterization of the Petition. Petitioner
`
`demonstrates by example that the claims of the '481 patent embrace an abstract
`
`idea that is not patent-eligible under § 101. Patent Owner disagrees with how
`
`the abstract idea may be expressed (id. at 37-38), but does not dispute that the
`
`claimed invention includes an abstract idea. The claims embrace the abstract
`
`idea of identifying products; adding more abstraction to the basic abstract idea
`
`(e.g., identifying products based on user input) does nothing to make the basic
`
`idea less abstract.
`
`In any event, patent eligibility, in Patent Owner‟s view, rests on the
`
`claims‟ computer-related recitations. Patent Owner suggests that the claims are
`
`eligible for patent because “several of the claim limitations plainly require the
`
`use of computers.” Prelim. Resp. 40. “For example, the „receiv[ing] the
`
`product related data from the user via a data processing system‟ and the
`
`„display[ing] by the data processing system of the user‟ limitations in every
`
`single claim of the ‟481 patent. See ’481patent, claims 1, 26, 50 and 70
`
`(emphasis added).” Id. However, receiving data electronically and displaying
`
`data for human beings are things that general purpose computers were made for,
`
`and do. While we agree that the claims “require the use of computers,” the
`
`recitations are not meaningful limitations on the scope of the claims. Similarly,
`
`13
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`Patent Owner points to a “narrowing” step or element of the challenged claims
`
`with respect to “identifying products in the memory based on two different
`
`types of product identification, (A) one or more product features and (B) a
`
`product model identifier. See ’481 patent, claims 1, 26, 50, 70 (emphasis
`
`added).” Id. at 39. However, retrieving data from memory based on search
`
`criteria is another thing that general purpose computers do. Cf. Mayo
`
`Collaboration Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1298 (2012)
`
`(purely “conventional or obvious” limitations are “normally not sufficient to
`
`transform an unpatentable law of nature into a patent-eligible application of
`
`such a law.”).
`
`That the data for product identification might be deemed to represent
`
`particular items does not change the underlying structure or function of the
`
`machine. The search and retrieval of data from memory is substantially the
`
`same process, regardless that different sets of search and target data might
`
`represent different things to human users. In short, search and retrieval of
`
`electronic data from conventional computer memory in a conventional way is
`
`not a “new use of a known machine” (Prelim. Resp. 35). Nor does reciting the
`
`use of a computer to execute an algorithm that can be performed entirely in the
`
`human mind create a new machine. See Cybersource, 654 F.3d at 1375 (“[W]e
`
`have never suggested that simply reciting the use of a computer to execute an
`
`algorithm that can be performed entirely in the human mind falls within the
`
`Alappat rule.”).
`
`
`
`Method Claims 50-69
`
`Patent Owner cites Ultramercial, apparently, as standing for the
`
`proposition that anything more than a mere reference to a general purpose
`
`14
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`computer in a method claim renders the claim statutory. Prelim. Resp. 38-39.
`
`However, in Ultramercial the invention was limited to a particular computer-
`
`based method for monetizing copyrighted products over the Internet, which
`
`included offering free access to media products on the condition that the
`
`consumer viewed advertising. Ultramercial, 722 F.3d at 1350. As such, the
`
`patent did not “simply claim the age-old idea that advertising can serve as
`
`currency.” Id. Patent Owner has not pointed to any comparable restrictions in
`
`scope in, for example, the steps of receiving, identifying, searching, and
`
`providing as set forth in method claim 50, all of which can be performed in
`
`conventional ways by a general purpose computer. Moreover, Patent Owner‟s
`
`reading of Ultramercial, if understood to suggest that adding recitations of
`
`general purpose digital computer structure or function to a claim renders the
`
`claim statutory without further inquiry, would be at odds with earlier precedents
`
`of the Supreme Court and the Federal Circuit. See, e.g., Benson, 409 U.S. at
`
`64-65; Bancorp, 687 F.3d at 1278.
`
`In any event, Patent Owner does not dispute that the method set forth in
`
`claims 50-69 embraces an abstract idea. We are not persuaded by Patent
`
`Owner‟s response that the relied-upon recitations that relate to a general
`
`purpose computer serve as meaningful limitations on the scope of the claims.
`
`The references to a computer in the claims impose scant limitations on the
`
`machine. The machine must be able to receive data in electronic form, search
`
`for and retrieve data from memory, and provide the retrieved data for display to
`
`a human being. The recitation of computer functions in the claims does not
`
`confine the preemptive effect of the claims because the underlying method has
`
`“no substantial practical application except in connection with a digital
`
`computer.” Benson, 409 U.S. at 71.
`
`15
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`
`
`
`System Claims 1-25
`
`We have determined that, more likely than not, the method claims are
`
`directed to non-statutory subject matter. We compare the substantive
`
`limitations of the method claims and the system claims to see if the system
`
`claims offer a “meaningful limitation” to the abstract method claims. Accenture
`
`Global Services, GMBH v. Guidewire Software, Inc., 2013 WL 4749919, at *5
`
`(Fed. Cir. Sep. 5, 2013) (citing CLS Bank Int'l. v. Alice Corp., 717 F.3d 1269
`
`(Fed.Cir. 2013) (en banc)).
`
`Claim 1 purports to be directed to a “computer system” that comprises at
`
`least a processor and a memory coupled to the processor. 3 A processor and a
`
`memory constitute two essential and basic components of a generic computer.
`
`The claim further provides that code is stored in the memory, the code
`
`executable by the processor to implement substantially the same steps set forth
`
`in method claim 50. Patent Owner has not demonstrated that any “narrowing”
`
`step or element of the challenged claims is sufficient to tie the abstract idea to a
`
`particular machine, or otherwise serve as a meaningful limitation on the
`
`claimed subject matter. The dependent claims (2-25) require no more than
`
`software directed to the basic general computer functions of searching for and
`
`retrieving electronic data, in order to implement the abstract idea contained in
`
`the method claims on a general purpose computer. Indeed, the specification of
`
`the '481 patent confirms that nothing more than a general purpose computer is
`
`needed to implement the invention.
`
`
`3 The claim recites “a processor coupled to the memory and the database.”
`However, no memory and no database are recited previously in the claim to
`provide antecedent for that “memory” and that “database.”
`
`16
`
`
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`CBM2013-00018
`Patent 7,426,481 B1
`
`
`The operation of a computer system such as that shown in FIG. 2 is
`readily known in the art and is not discussed in detail in this
`application. . . . Additionally, computer system 10 may be any
`kind of computing device, and so includes personal data assistants
`(PDAs), network appliance, X-window terminal or other such
`computing device.
`
`Ex. 1001, col. 7, ll. 1-10 (italic emphasis added).
`
`
`
`Computer Readable Medium Claims 26-49
`
`“Regardless of what statutory category („process, machine, manufacture,
`
`or composition of matter,‟ 35 U.S.C. § 101) a claim‟s language is crafted to
`
`literally invoke, we look to the underlying invention for patent-eligibility
`
`purposes.” Cybersource, 654 F.3d at 1374. “As the Supreme Court has
`
`explained, the form of the claims should not trump basic issues of
`
`patentability.” Bancorp, 687 F.3d at 1277 (citing Flook, 437 U.S. at 593).
`
`Claim 26 recites a computer readable physical medium (CRM)
`
`comprising product configuration information and code executable by a
`
`processor to perform substantially the same steps recited in non-statutory
`
`method claim 50. No “narrowing” step or element alleged by Patent Owner
`
`(Prelim. Resp. 39) serves as a meaningful limit on the scope of the subject
`
`matter of any of the CRM claims, for substantially the same reasons as
`
`discussed in our review of the method claims.
`
`There is an additional reason why the CRM claims are not patent-
`
`eligible. According to the '481 patent, the computer readable media may
`
`include physical, non-transitory media such as optical or magnetic disk media.
`
`Ex. 1001, col. 15, ll. 52 - 63. However, the computer readable media may also
`
`be embodied as “data transmission media including computer network, point-
`
`17
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`to-point telecommunication, and carrier wave transmission media.” Id. The
`
`broadest reasonable interpretation of the CRM claims covers forms of
`
`transitory, propagating signals, which are non-statutory subject matter. “The
`
`four categories [of § 101] together describe the exclusive reach of patentable
`
`subject matter. If a claim covers material not found in any of the four statutory
`
`categories, that claim falls outside the plainly expressed scope of § 101 even if
`
`the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
`
`1354 (Fed. Cir. 2007). Transitory, propagating signals are not statutory subject
`
`matter. See Nuijten, 500 F.3d at 1351.4
`
`
`
`Apparatus Claims 70-73
`
`Petitioner submits that claims 70-73 recite an “apparatus” capable of
`
`performing the same method that underlies all of the claims. Pet. 33. Although
`
`the claims are in “means plus function” form, Patent Owner does not rely on
`
`any particular corresponding structure in the '481 patent disclosure to show that
`
`the claims are limited to statutory subject matter.
`
`Our conclusion with respect to the apparatus claims is similar to that with
`
`respect to “system” claims 1-25. As the specification of the '481 patent teaches,
`
`nothing more than a general purpose computer is needed to implement the
`
`
`4 Base claim 26 of the CRM claims recites a computer readable physical
`medium. According to the prosecution history of the ‟481 patent, the Examiner
`suggested the “physical” modifier to distinguish over a “pure signal.”
`Examiner Interview Summary Record, mailed May 8, 2008. However, the
`Federal Circuit determined that electronic or optical signal transmissions were
`physical entities, but claims that covered embodiments of such signals were not
`directed to statutory subject matter because of the transitory nature of the
`signals. See Nuijten, 500 F.3d at 1352-53.
`
`18
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`abstract idea embraced by the invention. Ex. 1001, e.g., col. 7, ll. 1-10 (“may
`
`be any kind of computing device”).
`
`
`
`Conclusion -- Non-Statutory Subject Matter
`
`In view of the foregoing, Petitioner has demonstrated that it is more
`
`likely than not that claims 1-73 are unpatentable under 35 U.S.C. § 101 as being
`
`directed to non-statutory subject matter.
`
`
`
`ORDER
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that the petition is granted as to claims 1-73 of the
`
`'481patent.
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(a), a covered
`
`business method patent review of the '481 patent is hereby instituted
`
`commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 324(d)
`
`and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
`FURTHER ORDERED that the trial is limited to § 101 and no other
`
`grounds are authorized.
`
`FURTHER ORDERED that an initial conference call with the Board is
`
`scheduled for 2 PM Eastern Time on November 12, 2013. The parties are
`
`directed to the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug.
`
`14, 2012) for guidance in preparing for the initial conference call. The parties
`
`should come prepared to discuss any proposed changes to the Scheduling Order
`
`herewith and any motions the parties anticipate filing during the trial.
`
`
`
`19
`
`
`
`CBM2013-00018
`Patent 7,426,481 B1
`
`For PETITIONER
`
`
`Keith Broyles
`keith.broyles@alston.com
`
`Jason Cooper
`jason.cooper@a
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