Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 15
`Date Entered: January 9, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`DISPOSITION SERVICES LLC,
`Patent Owner.
`____________
`
`Case CBM2013-00040
`Patent 5,424,944
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`

`

`CBM2013-00040
`Patent 5,424,944
`
`I.
`
`INTRODUCTION
`
`Dell Inc. (“Petitioner”) filed a Petition (Paper 1) seeking covered
`
`business method patent review of claims 1–23 (the “challenged claims”) of
`
`U.S. Patent No. 5,424,944 (Ex. 1001, “the ’944 patent”). Disposition
`
`Services, LLC (“Patent Owner”) filed a Preliminary Response indicating
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`that a statutory disclaimer of claim 7 had been filed and opposing institution
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`of the review of claims 1–6 and 8–23. Paper 6 (“Prelim. Resp.”). On
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`February 5, 2014, we instituted this trial as to claims 1–23 on one ground of
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`unpatentability, 35 U.S.C. § 101 (Paper 7, “Dec. to Inst.”).1 Patent Owner
`
`filed a Patent Owner Response (Paper 12, “PO Resp.”) and Petitioner filed a
`
`Reply (Paper 14, “Pet. Reply”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–6 and 8–23 of the ’944 patent
`
`are unpatentable.
`
`A.
`
`Related Proceeding
`
`The ’944 patent was asserted against Petitioner in Disposition
`
`Services LLC v. Dell Inc., Civil Action No. 12:13-cv-00282-JRG. Pet. 2;
`
`Paper 5, 2.
`
`B.
`
`The ’944 Patent
`
`The ’944 patent “relates to a system and method for the controlled
`
`disposition of selected capital assets.” Ex. 1001, 1:6–7. According to the
`
`1 We indicated that the disclaimer of claim 7 would be considered during the
`trial. Dec. to Inst. 8, n.3. The disclaimer is taken at face value. The
`patentability of claim 7 is, therefore, not discussed further in this decision.
`
`2
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`’944 patent, there was a need for managing various types of dispositions of
`
`surplus or obsolete assets, such as an older model mainframe computer. Id.
`
`1:20–27. It was known in the prior art to provide a surplus asset to an
`
`outside vendor for disassembly. Id. at 1:27–30. However, according to the
`
`’944 patent, such vendors inadvertently or fraudulently mismanaged the
`
`disassembly and disposition of the surplus asset, such that, for example,
`
`parts that should have been kept out of the market were instead sold on a
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`black market. Id. at 1:30–34.
`
`To solve these problems, the ’944 patent discloses a disposition
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`process supported by an interactive multimedia system that combines images
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`of the assets with relevant data, audio records, and disposition instructions.
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`Id. at 1:44–49. The major processes are the transport process, the receipt
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`process, the sort process, the disposition process, and the certification or
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`verification process. Id. at 2:7–10. Figures 1A and 1B are reproduced
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`below:
`
`
`
`
`
`Figures 1A and 1B depict a functional block diagram of the preferred
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`embodiment of the ’944 patent. Id. at 4:10–11. As depicted in Figure 1A,
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`an asset to be disposed of is initially located at customer facility 4 and is first
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`prepared for transport to the disposition facility at transport preparation
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`station 8 that is located either at or proximate customer facility 4. Id. at
`
`3
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`4:22–26. At transport station 8, the asset is loaded onto a transport vehicle,
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`such as an airplane, locomotive, or truck, “[t]he transport vehicle is sealed
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`by means known in the art in order to guard against tampering with or theft
`
`of the asset during transport, and a transport record is created.” Id. at 4:27–
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`32. “After arrival at the disposition facility, the transport vehicle is unsealed
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`at the asset receiving station 12 . . . .” Id. at 4:63–66. After confirmation
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`that the asset has been transported validly, the asset is routed to sort station
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`14. Id. at 5:16–17. Sort station 14 comprises system terminal 108,
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`interactive multimedia device 110, and data capture device 104. Id. at 5:17–
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`22. Disposition facility personnel operate sort station 14 in accordance with
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`instructions previously provided by the customer regarding the desired
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`manner of disposition of the asset, which instructions are displayed on
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`multimedia device 110. Id. at 5:28–32. The asset may be routed to as-is
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`sale station 16, refurbish station 18, dismantle station 20, dysfunction station
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`22, reclaim station 24, destruct station 26, storage station 28, or some
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`combination thereof. Id. at 5:32–36. At the appropriate station, the asset is
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`sold, dismantled, dysfunctioned, reclaimed, destroyed, or stored. Id. at
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`5:36–7:52. In some cases, a record of the action taken is created in database
`
`10. Id. at 5:48–51, 6:45–48, 7:36–40, 7:46–51. “After disposition, the asset,
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`component parts and/or reclaimed materials may be sold in the appropriate
`
`market to a purchaser, returned to the customer, or stored on-site for
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`subsequent disposition.” Id. at 3:65–68.
`
`C.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1, 2, 15, and 16 are independent
`
`claims. Claim 1 is illustrative and is reproduced below:
`
`4
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`A method for verifiably controlling the disposition of an
`1.
`asset, said method comprising the steps of:
`
`(a) creating an asset record uniquely associated with said
`asset;
`
`(b) securely sealing said asset in a tamper-proof transport
`means;
`
`(c) creating a transport record associating said asset with
`said tamper-proof transport means;
`
`(d) transporting said asset from a customer facility to a
`disposition facility;
`
`(e) unsealing said asset from within said tamper-proof
`transport means;
`
`(f) creating a receipt record associating said asset with
`said tamper-proof transport means, said receipt record being
`reconcilable with said transport record;
`
`(g) sorting said asset in accordance with a preselected
`method of disposition; and
`
`(h) disposing of said asset in accordance with said
`preselected method of disposition and creating a disposition
`record uniquely associated with said asset to be maintained for
`customer verification.
`
`D.
`
`Alleged Ground of Unpatentability Instituted for Trial
`
`Petitioner alleges that claims 1–23 of the ’944 patent are unpatentable
`
`under 35 U.S.C. § 101. Patent Owner disclaimed claim 7. Prelim. Resp. 2
`
`(citing Ex. 2001). Accordingly, we analyze the alleged ground of
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`unpatentability with respect to only claims 1–6 and 8–23.
`
`II.
`
`ANALYSIS
`
`A. Standing
`
`We determined, in the Decision to Institute, that the ’944 patent is a
`
`covered business method as defined in § 18(a)(1)(E) of the America Invents
`
`5
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`Act and 37 C.F.R. § 42.301, because at least one claim of the ’944 patent is
`
`directed to a covered business method. Dec. to Inst. 6–13.
`
`B. Claim Construction
`
`The ’944 patent expired on February 2, 2014. “[T]he Board’s review
`
`of the claims of an expired patent is similar to that of a district court’s
`
`review . . . .” In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). The
`
`principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312 (Fed. Cir. 2005) (citations omitted) (words of a claim “‘are generally
`
`given their ordinary and customary meaning’” as understood by a person of
`
`ordinary skill in the art in question at the time of the invention) should be
`
`applied because the expired claims are not subject to amendment.
`
`In the Decision to Institute, we interpreted “tamper-proof transport
`
`means” (independent claims 1 and 2) and “tamper-proof transport means for
`
`securely sealing said asset for transport from a customer facility to a
`
`disposition facility” (independent claims 15 and 16) as a means-plus-
`
`function element invoking 35 U.S.C. § 112 ¶ 6 (now recodified as
`
`35 U.S.C. § 112(f)). Dec. to Inst. 15–16. We determined that the function
`
`of the “tamper-proof transport means” is “securely sealing said asset for
`
`transport from a customer facility to a disposition facility,” and that the
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`structure of the “tamper-proof transport means for securely sealing said asset
`
`for transport from a customer facility to a disposition facility” is a transport
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`vehicle sealed by means known in the art at the time of the ’944 patent. Id.
`
`The parties do not dispute this interpretation in the Patent Owner
`
`Response or in the Reply. We adopt the above claim construction based on
`
`our previous analysis, and see no reason to deviate from that construction for
`
`purposes of this decision.
`
`6
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`C.
`
`Claims 1–6 and 8–23 of the ’944 Patent are Unpatentable as
`Directed to Non-Statutory Subject Matter
`
`Petitioner challenges claims 1–6 and 8–23 of the ’944 patent under 35
`
`U.S.C. § 101, as directed to patent-ineligible subject matter. Pet. 18–32; Pet.
`
`Reply 3–13. Patent Owner disagrees and maintains that its claims are
`
`directed to patent-eligible subject matter because the claims contain
`
`significant, meaningful limitations and do not preempt the abstract idea of
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`handling a customer’s physical item in such a way that the customer can
`
`verify that its handling instructions were followed. PO Resp. 11–20.
`
`1. Section 101 Subject Matter Eligibility
`
`For claimed subject matter to be patent-eligible, it must fall into one
`
`of four statutory classes set forth in 35 U.S.C. § 101: a process, a machine, a
`
`manufacture, or a composition of matter. The Supreme Court recognizes
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`three categories of subject matter that are ineligible for patent protection:
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`“laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos,
`
`561 U.S. 593, 601 (2010) (internal quotations and citation omitted). A law
`
`of nature or an abstract idea by itself is not patentable; however, a practical
`
`application of the law of nature or abstract idea may be deserving of patent
`
`protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
`
`1289, 1293–94 (2012). To be patentable, however, a claim must do more
`
`than simply state the law of nature or abstract idea and add the words “apply
`
`it.” Id. at 1294 (citation omitted). In Alice Corp. Pty, Ltd. v. CLS Bank Int’l,
`
`134 S. Ct. 2347 (2014), the Supreme Court recently clarified the process for
`
`analyzing claims to determine whether claims are directed to patent-
`
`ineligible subject matter. In Alice, the Supreme Court applied the
`
`framework set forth previously in Mayo, “for distinguishing patents that
`
`claim laws of nature, natural phenomena, and abstract ideas from those that
`
`7
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`CBM2013-00040
`Patent 5,424,944
`
`claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at
`
`2355. The first step in the analysis is to “determine whether the claims at
`
`issue are directed to one of those patent-ineligible concepts.” Id. If they are
`
`directed to a patent-ineligible concept, the second step in the analysis is to
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`consider the elements of the claims “individually and ‘as an ordered
`
`combination’” to determine whether there are additional elements that
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`“‘transform the nature of the claim’ into a patent-eligible application.” Id.
`
`(quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is
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`to “search for an ‘inventive concept’—i.e., 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.’” Id.
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`(alteration in original) (quoting Mayo, 132 S. Ct. at 1294). Further, the
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`“prohibition against patenting abstract ideas ‘cannot be circumvented by
`
`attempting to limit the use of the formula to a particular technological
`
`environment’ or adding ‘insignificant postsolution activity.’” Bilski, 561
`
`U.S. at 610–611 (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
`
`The patents at issue in Alice claimed “a method of exchanging
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`financial obligations between two parties using a third-party intermediary to
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`mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of
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`hedging risk in Bilski—which the Court deemed “a method of organizing
`
`human activity”—Alice’s “concept of intermediated settlement” was held to
`
`be “‘a fundamental economic practice long prevalent in our system of
`
`commerce.’” Alice, 134 S. Ct. at 2356 (citations omitted). Similarly, the
`
`Court found that “[t]he use of a third-party intermediary . . . is also a
`
`building block of the modern economy.” Id. “Thus,” the Court held,
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`“intermediated settlement . . . is an ‘abstract idea’ beyond the scope of
`
`§ 101.” Id.
`
`8
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`2. Claims 1–6 and 8–23 are Unpatentably Abstract
`
`Petitioner contends that the claims are directed to the purely abstract
`
`idea of handling a customer’s physical item in such a way that the customer
`
`can verify that its handling instructions were followed. Pet. 20–29; Pet.
`
`Reply 3–8. Following the framework set out in Alice, we first “determine
`
`whether the claims at issue are directed to one of those patent-ineligible
`
`concepts.” Id. at 2355 (citing Mayo, 132 S. Ct. at 1296–97).
`
`Independent method claim 1 recites the steps of “creating an asset
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`record,” “sealing said asset,” “creating a transport record,” “transporting said
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`asset,” “unsealing said asset,” “creating a receipt record,” “sorting said
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`asset,” and “disposing of said asset.” Like the claims at issue in
`
`Ultramercial, “[t]his ordered combination of steps recites an abstraction—an
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`idea, having no particular concrete or tangible form.” Ultramercial, Inc. v.
`
`Hulu, LLC, No. 2010-1544, 2014 WL 5904902, *4 (Fed. Cir. Nov. 14,
`
`2014). Although the steps of “sealing said asset,” “transporting said asset,”
`
`“unsealing said asset,” “sorting said asset,” and “disposing of said asset” are
`
`performed by a human being, we are not persuaded that these basic and
`
`conventional steps preclude claim 1 from being directed to the abstract idea
`
`of handling a customer’s physical item in such a way that the customer can
`
`verify that its handling instructions were followed. We are persuaded that,
`
`like risk hedging in Bilski and intermediated settlement in Alice, the idea of
`
`handling a customer’s asset in such a way that the customer can verify that
`
`its handling instructions were followed is unpatentably abstract.
`
`Independent method claim 2 recites the same first eight steps as claim
`
`1, plus an additional step: “(i) storing said transport record, said receipt
`
`record and said disposition record in a database, said database being coupled
`
`to a system process controller, said system process controller being coupled
`
`9
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`CBM2013-00040
`Patent 5,424,944
`
`to a communications network.” Thus, while claim 2, unlike claim 1,
`
`requires “a database,” that is relevant only to the second step of the Mayo
`
`framework. For Mayo step one, we determine that claim 2 is directed to an
`
`unpatentably abstract idea for the same reasons as claim 1.
`
`Claim 3–6 and 8–14 depend from claim 2, and recite an additional
`
`“storing” step (claim 3) or further limit the steps recited in claim 2 (claims
`
`4–6 and 8–14). For purposes of Mayo step one, we determine that these
`
`claims are directed to an unpatentably abstract idea for the same reasons as
`
`independent method claim 2, from which they depend.
`
`Claims 15–23 are system claims that correspond to method claims 1–
`
`14. For purposes of Mayo step one, we determine that these claims are
`
`directed to an unpatentably abstract idea for the same reasons as their
`
`method claim counterparts.
`
`Patent Owner’s Contentions
`
`Patent Owner contends that “Petitioner has failed to prove by clear
`
`and convincing evidence that Claims 1-6 and 8-23 of the ’944 patent are
`
`directed to patent-ineligible subject matter under 35 U.S.C. § 101.” PO
`
`Resp. 1, 20. Petitioner replies that it needs to prove unpatentability only by
`
`a preponderance of the evidence. Pet. Reply 9, n.1. Section 326(e) of Title
`
`35 of the U.S. Code provides “In a post-grant review instituted under this
`
`chapter, the petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence” (emphasis added).
`
`Accordingly, we are not persuaded that Petitioner needs to prove
`
`unpatentability by clear and convincing evidence.
`
`We also are not persuaded by Patent Owner’s contention that the
`
`disposition of the asset is a “necessarily physical and tangible outcome
`
`achieved through the use of a system with specific defined recited structure.”
`
`10
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`CBM2013-00040
`Patent 5,424,944
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`PO Resp. 12. Like the computer in Alice, the fact that the recited “asset”
`
`“‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’
`
`is beside the point” for purposes of the § 101 inquiry. Alice, 134 S. Ct. at
`
`2358-59 (citation omitted). This “connection[] to the physical world” is not
`
`sufficient to transform the otherwise abstract concept of verifiably disposing
`
`of an asset into patentable subject matter. Fort Props., Inc. v. Am. Master
`
`Lease, LLC, 671 F.3d 1317, 1322 (Fed. Cir. 2012).
`
`We also are not persuaded by Patent Owner’s contention that “all of
`
`the modes of disposition recited in Claims 1–6 and 8–12 involve the
`
`physical transformation of the asset . . . .” PO Resp. 12. The “disposing”
`
`step of independent claim 2, for example, encompasses an as-is sale, as
`
`described in the ’944 patent. Ex. 1001, 2:50–65. An as-is sale involves no
`
`physical transformation. For the same reasons, claim 1—which is identical
`
`to claim 2, but lacks its “storing said transport record” limitation—also
`
`encompasses a disposition that involves no physical transformation. At best,
`
`only claims 8–11 and 13, which recite “refurbishing,” “dismantling,”
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`“dysfunctioning,” “reclaiming,” and “destroying,” respectively, could be
`
`said to require a physical transformation of the asset. Even assuming that
`
`they do, however, we agree with Petitioner that these “transformation” steps
`
`are “insignificant extra-solution activity” (Pet. Reply 4–5 (citing Ex. 1010,
`
`11 (“the invention claimed is a system and method for controlling the
`
`verifiable disposition of capital assets, not the actual disposition realized.”
`
`(emphasis added)), and therefore, do not render the claimed subject matter
`
`patent-eligible.
`
`We also are not persuaded by Patent Owner’s argument that the
`
`claims are not directed to “method[s] of organizing human activity,” that
`
`constitute “longstanding commercial practice” and/or “fundamental
`
`11
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`CBM2013-00040
`Patent 5,424,944
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`economic practice long prevalent in our system of commerce” because they
`
`require a physical transformation and were not taught in the prior art. PO
`
`Resp. 12–13. The categories identified in Alice are exemplary, not
`
`exhaustive. Alice, 134 S. Ct. at 2357 (“we need not labor to delimit the
`
`precise contours of the ‘abstract ideas’ category in this case”). As discussed
`
`above, many of the claims do not require a physical transformation of the
`
`asset and, even for those that do, the recited dispositions were characterized
`
`by patentee during prosecution as not part of the invention. Ex. 1010, 11
`
`(“the invention claimed is a system and method for controlling the verifiable
`
`disposition of capital assets, not the actual disposition realized.” (Emphasis
`
`omitted, italics added)). Even assuming that the methods and systems are
`
`not taught in the prior art, that is not dispositive because even a novel and
`
`nonobvious claim directed to a purely abstract idea is patent ineligible.
`
`Mayo, 132 S. Ct. at 1304.
`
`Finally, we are not persuaded by Patent Owner’s argument that the
`
`claims of the ’944 patent are designed to solve a technological problem of
`
`verifiably controlling the disposition of surplus or obsolete assets. PO Resp.
`
`12, 14–15. Patent Owner concludes that “the claimed invention comprises
`
`several significant structure elements that, in combination, comprise a
`
`technological feature, forming a technical solution . . . which a person could
`
`not complete with a pencil, paper, and a truck . . .” (PO Resp. 14), but
`
`provides insufficient analysis to support that conclusion. For example,
`
`Patent Owner does not identify which limitations are the alleged “significant
`
`structural elements,” and does not explain which steps a person could not
`
`complete with a pencil, paper, and truck.
`
`12
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`CBM2013-00040
`Patent 5,424,944
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`Accordingly, we analyze the challenged claims to determine whether
`
`they incorporate sufficient meaningful limitations to ensure that the claims
`
`are more than just an abstract idea. Mayo, 132 S. Ct. at 1297.
`
`3. The Challenged Claims Do Not Contain Significant
`Meaningful Limitations Beyond the Abstract Idea
`
`Petitioner asserts that the claims of the ’944 patent do not add any
`
`inventive concept to the abstract idea of handling a customer’s physical item
`
`in such a way that the customer can verify that its handling instructions were
`
`followed. Pet. 20–32; Pet. Reply 8–13. Specifically, Petitioner notes that
`
`(1) claim 1 requires no computer; and (2) claims 2–23 recite generic
`
`hardware used for no more than its most basic function and described during
`
`prosecution as “conventional components well known to one skilled in the
`
`art.” Pet. 25 (citing Ex. 1010, 13) (emphasis original); see id. at 20–29.
`
`Patent Owner disagrees, and contends that (1) the claims, as a whole,
`
`recite a novel and non-obvious technical feature; and (2) “the features and
`
`components claimed by the ’944 patent comprise meaningful
`
`limitations . . . ” whose functions are not “insignificant pre- or post-solution
`
`activity . . . .” Prelim. Resp. 24.
`
`We find Petitioner’s argument persuasive, even in light of Patent
`
`Owner’s counterarguments, because the claims of the ’944 patent do not add
`
`any inventive concept to the abstract idea of handling a customer’s physical
`
`item in such a way that the customer can verify that its handling instructions
`
`were followed. Even assuming that the claims are novel and nonobvious, as
`
`Patent Owner contends, a claim is not rendered patent-eligible merely
`
`because it is novel and nonobvious over the prior art at the time of the
`
`invention. Mayo, 132 S. Ct. 1304.
`
`13
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`CBM2013-00040
`Patent 5,424,944
`
`As Petitioner points out, claim 1 does not require a computer. Several
`
`steps, however, require a human being. We are not persuaded that these
`
`basic and conventional steps performed by a human being place meaningful
`
`limitations on the abstract idea specified in claim 1.
`
`Claim 2 requires “a database.” However, “[t]he introduction of a
`
`computer into the claims does not alter the analysis at Mayo step two.”
`
`Alice, 134 S.Ct. at 2357. Like the claims at issue in Alice, the function
`
`performed by the computer in claim 2 is purely conventional. “[W]holly
`
`generic computer implementation is not generally the sort of ‘additional
`
`feature[e]’ that provides ‘any practical assurance that the process is more
`
`than a drafting effort designed to monopolize the [abstract idea] itself.” Id.
`
`at 2358 (quoting Mayo, 132 S.Ct. at 1297). Thus, the storing of records in a
`
`database is not a meaningful limitation on the recited method of verifiably
`
`controlling the disposition of an asset. Such storing is, at most, insignificant
`
`extra-solution activity that cannot save subject matter from patent
`
`ineligibility. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion
`
`that post-solution activity, no matter how conventional or obvious in itself,
`
`can transform an unpatentable principle into a patentable process exalts form
`
`over substance.”).
`
`Claim 3 recites an additional “storing” step, while claims 4–14 further
`
`limit the steps recited in claim 2. We agree with Petitioner that these
`
`limitations are no more than generic, conventional components well-known
`
`to those skilled in the art and used for their most basic function. Pet. Reply
`
`10–12. As such, these limitations are no more meaningful than the “storing”
`
`limitation recited in claim 2. These limitations are, at most, insignificant
`
`extra-solution activity that cannot save subject matter from patent
`
`ineligibility. Parker, 437 U.S. at 590.
`
`14
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`

`CBM2013-00040
`Patent 5,424,944
`
`Claims 15–23 are system claims that correspond to method claims 1–
`
`14. While independent claims 15 and 16 recite a “system” instead of a
`
`method, they “are no different from the method claims in substance.” Alice
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`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2360. Like the system claims
`
`at issue in Alice, the computer-based limitations recited in the system claims
`
`are merely “a handful of generic computer components configured to
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`implement the same idea” as their method claim counterparts. Id. Claim 15,
`
`for example, merely recites a means for the “securely sealing” step of claim
`
`1, and stations for the “creating a transport record,” “creating a receipt
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`record,” “sorting,” and “disposing” steps of claim 1. Such limitations are
`
`not actually limiting in the sense required under § 101. Id. Claim 16 recites
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`the same first five limitations of system claim 15, and recites three additional
`
`limitations: “(f) a database for storing said transport record, said receipt
`
`record and said disposition record; (g) a system process controller coupled to
`
`said database; and (h) a communications network for transmitting data
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`between said transport station, said receiving station, said sorting station,
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`said disposition stations and said system process controller.” The recited
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`“database,” “system process controller,” and “communications network” are
`
`merely conventional components being used for no more than their most
`
`basic functions—storing and transmitting. Like the “communications
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`controller” and “data storage unit” recited in the system claims of Alice,
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`nearly every computer will include a “database,” “system process
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`controller,” and “communications network” capable of performing the basic
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`calculation, storage, and transmission functions required by the method
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`claims. Alice, 134 S. Ct. at 2360. As a result, none of the hardware recited
`
`by the system claims “‘offers a meaningful limitation beyond generally
`
`linking ‘the use of the [method] to a particular technological environment,’
`
`15
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`that is, implementation via computers.’” Id. (quoting CLS Bank v. Alice
`
`Corp. Pty. Ltd., 717 F.3d, 1269, 1291 (Fed. Cir. 2013). Using a computer
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`“for no more than its most basic function—making calculations or
`
`computations—fails to circumvent the prohibition against patenting abstract
`
`ideas and mental processes.” Bancorp Servs., L.L.C. v. Sun Life Assurance
`
`Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Such storing
`
`and transmitting is, at most, insignificant extra-solution activity that cannot
`
`save subject matter from patent ineligibility. See Parker, 437 U.S. at 590
`
`(“The notion that post-solution activity, no matter how conventional or
`
`obvious in itself, can transform an unpatentable principle into a patentable
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`process exalts form over substance.”).
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`Accordingly, we are not persuaded that the elements of each of claims
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`1–6 and 8–23, considered individually or as an ordered combination,
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`transform the nature of the claim into patent-eligible subject matter.
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`III.
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`CONCLUSION
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`We conclude that Petitioner has proven, by a preponderance of the
`
`evidence, that claims 1–6 and 8–23 of the ’944 patent are unpatentable under
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`35 U.S.C. § 101.
`
`IV.
`
`ORDER
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`Accordingly, it is
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`ORDERED that claims 1–6 and 8–23 of the ’944 patent are held
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`unpatentable; and
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`FURTHER ORDERED that because this is a final written decision,
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`parties to the proceeding seeking judicial review of the decision must
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`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`16
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`

`

`CBM2013-00040
`Patent 5,424,944
`
`For Petitioner:
`
`A. Greene, Esq.
`Shelia Kadura
`FULBRIGHT & JAWORSKI LLP
`bert.greene@nortonrosefulbright.com
`shelia.kadura@nortonrosefulbright.com
`
`
`For Patent Owner:
`
`Kenneth F. Floreck, Esq.
`FLORECK & ENDRES PLLC
`kflorek@feiplaw.com
`
`Matthew Solow
`FLORECK & ENDRES PLLC
`docket@feiplaw.com
`
`
`
`
`
`
`17
`
`