`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`DELL INC.
`Petitioner
`
`
`V.
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`
`DISPOSITION SERVICES LLC
`Patent Owner
`
`
`U.S. Patent No. 5,424,944
`Issue date: June 13, 1995
`
`Title: SYSTEM AND METHOD FOR CONTROLLED ASSET
`DISPOSITION
`
`
`Covered Business Method Review No. Unassigned
`
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW UNDER 35
`U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`

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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION .......................................................................................... 1
`
`B.
`
`REQUIRED DISCLOSURES ........................................................................ 2
`A. Mandatory Notices ............................................................................... 2
`1.
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ......................... 2
`2.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .................................. 2
`3.
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ............... 2
`4.
`Service Information (37 C.F.R. § 42.8(b)(4)) ............................ 2
`Filing Date Requirements ..................................................................... 3
`1.
`Compliance with 37 C.F.R. § 42.304 ........................................ 3
`2.
`Certificate of Service on Patent Owner (37 C.F.R. §
`42.205(a)) ................................................................................... 3
`The Filing Fee (37 C.F.R. §§ 42.15(b) and 42.203(a)) .............. 3
`3.
`C. Additional Disclosures ......................................................................... 4
`At Least One Challenged Claim Is Unpatentable (37
`1.
`C.F.R. § 42.208(c)) .................................................................... 4
`Eligibility Based on Time of Filing (37 C.F.R. § 42.303) ......... 4
`Power of Attorney (37 C.F.R. § 42.10(b)) ................................. 4
`A Legible Copy of Every Exhibit in the Exhibit List (37
`C.F.R. § 42.63) ........................................................................... 4
`
`2.
`3.
`4.
`
`
`III. GROUNDS FOR STANDING ....................................................................... 5
`A.
`Eligibility Based on Infringement Suit (37 C.F.R. § 42.302(a)) .......... 5
`B.
`Eligibility Based on Lack of Estoppel (37 C.F.R. § 42.302(b)) .......... 5
`C.
`The ’944 Patent Is a CBM Patent (37 C.F.R. § 42.304(a)) .................. 5
`1.
`Claims 1-23 Meet the Definition of a CBM .............................. 6
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`-i-
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`2.
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`Claims 1-23 Are Not Directed to a “Technological
`Invention” ................................................................................... 9
`
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................. 14
`Claims for Which Review is Requested (37 C.F.R. §
`A.
`42.304(b)(1)) ...................................................................................... 14
`Statutory Grounds of Challenge (37 C.F.R. § 42.304(b)(2)) ............. 14
`Claim Construction (37 C.F.R. § 42.304(b)(3)) ................................. 14
`1.
`Broadest Reasonable Interpretation ......................................... 14
`2. Means-Plus-Function Limitations ............................................ 17
`
`B.
`C.
`
`
`V.
`
`B.
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`CLAIMS 1-23 OF THE ’944 PATENT ARE UNPATENTABLE
`UNDER 35 U.S.C. § 101 ............................................................................. 18
`The Claims Are Directed to an Abstract Idea and Contain No
`A.
`Inventive Concept ............................................................................... 20
`1.
`Claim 1 is directed to a purely abstract idea. ........................... 20
`2.
`Claim 2 adds only conventional, routine elements to the
`abstract idea. ............................................................................. 23
`Claims 3-14 add only conventional, routine elements to
`the abstract idea. ....................................................................... 25
`System claims 15-23 are unpatentable for the same
`reasons as method claims 1-14. ............................................... 27
`The Claims Do Not Satisfy the Machine-or-Transformation
`Test ..................................................................................................... 29
`
`3.
`
`4.
`
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`VI. CONCLUSION ............................................................................................. 32
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`TABLE OF AUTHORITIES
`
`
`CASES
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .................................................................... 14, 15
`
`Page(s)
`
`Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) ........................................... 22, 24, 25, 27, 28, 29
`
`In re Bilski,
`545 F.3d 943 (Fed. Cir. 2008) ............................................................................ 32
`
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) ...................................................................... 18, 19, 29, 32
`
`CLS Bank Int’l v. Alice Corp. Pty, 717 F.3d 1269 (Fed. Cir. 2013) (per
`curiam) (Fed. Cir. 2011) ..................................................................................... 28
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) ........................................................ 22, 24, 27, 31
`
`Dealertrack v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) .......................................................................... 31
`
`Fort Props., Inc. v. Am. Master Lease, LLC,
`671 F.3d 1317 (Fed. Cir. 2012) .......................................................................... 22
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972) ........................................................................................ 18, 24
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ...................................................................... 18, 19, 24, 27
`
`Parker v. Flook,
`437 U.S. 584 (1978) ............................................................................................ 18
`
`In re Trans Texas Holdings Corp.,
`498 F.3d 1290 (Fed. Cir. 2007) .......................................................................... 16
`
`Ultramercial, Inc. v. Hulu, LLC, 107 U.S.P.Q.2d 1193, 2013 U.S. App.
`LEXIS 12715 (Fed. Cir. 2013) .......................................................................... 19
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`-iii-
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`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 15
`
`STATUTES
`
`35 U.S.C. § 101 ................................... 1, 4, 14, 18, 19, 23, 24, 25, 27, 28, 29, 31, 32
`35 U.S.C. §112, 6th paragraph .................................................................................. 17
`
`35 U.S.C. § 112(b) .................................................................................................. 18
`
`35 U.S.C. §112(f) ..................................................................................................... 17
`
`35 U.S.C. § 321 ................................................................................................ 1, 4, 14
`
`35 U.S.C. § 324(a) ..................................................................................................... 4
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`-iv-
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`LIST OF EXHIBITS
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`Dell Exhibit 1001 U.S. Patent No. 5,424,944
`
`Dell Exhibit 1002 Complaint for Patent Infringement, Disposition Services LLC
`v. Dell Inc., Civil Action No. 12:13-cv-00282-JRG (E.D.
`Tex.), filed April 19, 2013
`
`Dell Exhibit 1003 Certificate of Service
`
`Dell Exhibit 1004 Power of Attorney
`
`Dell Exhibit 1005 Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and
`Technological Invention, 77 Fed. Reg. 48734 (August 14,
`2012)
`
`Dell Exhibit 1006
`
`SAP America, Inc. v. Versata Development Grp., Inc.,
`CBM2012-00001, Paper No. 36 (P.T.A.B. January 9, 2013)
`
`Dell Exhibit 1007 Matal, J., A Guide to the Legislative History of the America
`Invents Act: Part II of II, 21 Fed. Cir. Bar. J. No. 4
`
`Dell Exhibit 1008
`
`157 Cong. Rec. S5395 (daily ed. Sept. 8, 2011)
`
`Dell Exhibit 1009 Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug.
`14, 2012)
`
`Dell Exhibit 1010 Applicants’ Amendment mailed October 6, 1994,
`Application Serial No. 08/189,987
`
`Dell Exhibit 1011 Changes to Implement Inter Partes Review Proceedings, Post-
`Grant Review Proceedings, and Transitional Program for
`Covered Business Method Patents, 77 Fed. Reg. 48680 (Aug.
`14, 2012)
`
`Dell Exhibit 1012
`
`Interim Guidance for Determining Subject Matter Eligibility
`for Process Claims in View of Bilski v. Kappos, USPTO,
`(July 27, 2010)
`
`Dell Exhibit 1013
`
`Interthinx, Inc. v. Corelogic Solutions, LLC,
`CBM2012-00007, Paper No. 15 (P.T.A.B. Jan. 31, 2013)
`
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`-v-
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 321 and § 18 of the Leahy-Smith America Invents
`
`Act (“AIA”) and pursuant to 37 C.F.R. § 42.300 et seq., Petitioner Dell Inc.
`
`requests covered business method review of claims 1-23 of U.S. Patent No.
`
`5,424,944 (“the ’944 Patent,” Ex. 1001), which issued on June 13, 1995.
`
`The claims of the ’944 Patent are not patent-eligible under 35 U.S.C. § 101
`
`because they merely claim an abstract business idea—handling a customer’s
`
`physical item in such a way that the customer can verify that its handling
`
`instructions were followed—without adding anything more
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`than routine,
`
`conventional features. In the patent applicants’ own words, “[t]he physical system
`
`and structural basis for each step claimed is comprised of conventional components
`
`well known to one skilled in the art,” such as “a laptop computer.” Moreover, by
`
`its plain language, claim 1 of the patent could be performed by a person using only
`
`a pencil, paper, and a truck.
`
`Section 18 of the America Invents Act is designed to address patents like the
`
`’944 Patent: business method patents that never should have issued because they
`
`merely append conventional steps, specified at a high level of generality, to
`
`abstract ideas. The ’944 Patent is ripe for review by this Board, and Petitioner
`
`therefore requests that this Petition for Covered Business Method Review of the
`
`’944 Patent be granted.
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`-1-
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`II. REQUIRED DISCLOSURES
`A. Mandatory Notices
`Petitioner sets forth below the Mandatory Notices for its Petition for
`
`Covered Business Method Review as required by 37 C.F.R. § 42.8.
`
`1.
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest for this Petition is Dell Inc. (“Petitioner”), One
`
`Dell Way, Round Rock, Texas 78682.
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`Petitioner has not been a party to any other post-grant review of the
`
`challenged claims. Petitioner notes that the following current proceedings may
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`affect or be affected by a decision in this proceeding:
`
`In the Eastern District of Texas: Disposition Services LLC v. Dell Inc., Civil
`
`Action No. 12:13-cv-00282-JRG (Ex. 1002).
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.304(a)(1) and 42.8(b)(3), Petitioner identifies
`
`Gilbert A. Greene (Reg. No. 48,366) as lead counsel and Sheila C. Kadura (Reg.
`
`No. 70,259) as back-up counsel, both of Fulbright & Jaworski LLP.
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Petitioner identifies the following service information:
`
`Gilbert A. Greene
`Fulbright & Jaworski LLP
`98 San Jacinto Boulevard, Suite 1100
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`-2-
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`Austin, TX 78701
`Phone: 512.474.5201
`Fax: 512.536.4598
`Email: bert.greene@nortonrosefulbright.com
`
`Petitioner hereby consents to electronic service.
`
`Filing Date Requirements
`
`B.
`Petitioner sets forth below the filing date requirements for its Petition for
`
`Covered Business Method Review as required by 37 C.F.R. § 42.206.
`
`1.
`
`Compliance with 37 C.F.R. § 42.304
`
`As explained in Sections III.-V. below, this Petition complies with the
`
`requirements of 37 C.F.R. § 42.304.
`
`2.
`
`Certificate of Service on Patent Owner (37 C.F.R. § 42.205(a))
`
`Petitioner attaches a Certificate of Service (Ex. 1003) certifying that a copy
`
`of the petition and supporting evidence is being served in its entirety on the patent
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`owner at the correspondence address of record for the subject patent, and
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`indicating, pursuant to 37 C.F.R. § 42.6(e)(4)(iii), the date and manner of service
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`and the name and address of every person served.
`
`3.
`
`The Filing Fee (37 C.F.R. §§ 42.15(b) and 42.203(a))
`
`Petitioner is submitting a filing fee of $35,150. This amount consists of a
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`$12,750 payment for the post-grant review request, and a $22,400 payment for the
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`post-institution fees. To the extent that any additional fees are required to
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`complete this Petition, the Patent Office is hereby authorized by the undersigned to
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`charge Deposit Account No. 50-1212.
`
`C. Additional Disclosures
`1.
`At Least One Challenged Claim Is Unpatentable (37 C.F.R. §
`42.208(c))
`
`Claims 1-23 of the ’944 Patent are invalid under 35 U.S.C. § 101. For the
`
`reasons set forth below, it is “more likely than not that at least one of the claims [of
`
`the ’944 Patent] is unpatentable.” 35 U.S.C. § 324(a).
`
`2.
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`Eligibility Based on Time of Filing (37 C.F.R. § 42.303)
`
`This Petition is not filed in a period during which a petition for a post-grant
`
`review of the patent would satisfy the requirements of 35 U.S.C. 321(c).
`
`3.
`
`Power of Attorney (37 C.F.R. § 42.10(b))
`
`A power of attorney (Ex. 1004) is attached.
`
`4.
`
`A Legible Copy of Every Exhibit in the Exhibit List (37 C.F.R.
`§ 42.63)
`
`A copy of every piece of evidence relied upon or referred to is provided as
`
`an Exhibit (Dell Exhibits 1001-1013), prepared according to the requirements of
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`37 C.F.R. §§ 42.63(c) and 42.63(d). Because all exhibits are written in English, no
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`translations are required. Pursuant to 37 C.F.R. § 42.63(e), an Exhibit List
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`including a brief description of each exhibit is filed herewith.
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`-4-
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`III. GROUNDS FOR STANDING
`Petitioner sets forth below the Grounds for Standing for its Petition for
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`Covered Business Method Review as required by 37 C.F.R. § 42.304(a).
`
`A. Eligibility Based on Infringement Suit (37 C.F.R. § 42.302(a))
`Petitioner is eligible to file this petition because Disposition Services LLC
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`(“Patent Owner”) sued Petitioner for infringement of the ’944 Patent in a litigation
`
`styled Disposition Services LLC v. Dell Inc., Civil Action No. 12:13-cv-00282-
`
`JRG (E.D. Tex. Apr. 19, 2013) (Ex. 1002).1
`
`Eligibility Based on Lack of Estoppel (37 C.F.R. § 42.302(b))
`
`B.
`Petitioner is not estopped from challenging the claims of the ’944 Patent on
`
`the grounds identified in this Petition.
`
`C. The ’944 Patent Is a CBM Patent (37 C.F.R. § 42.304(a))
`The AIA defines a covered business method (“CBM”) patent as “a patent
`
`that 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); see also 37 C.F.R. § 42.301(a).
`
`According to the USPTO, “A patent having one or more claims directed to a
`
`covered business method is a covered business method patent for purposes of the
`
`review, even if the patent includes additional claims.” Ex. 1005, p. 48736. The
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`1 Undersigned counsel represents Petitioner in the referenced litigation.
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`USPTO further stated that “[t]he AIA provides for a challenge to one or more
`
`claims within such a covered business method patent. The AIA does not limit the
`
`claims that may be challenged to those that are directed specifically to the covered
`
`business method.” Id., p. 48709. Therefore, if at least one claim meets the
`
`definition of a CBM and is not directed to a technological invention, the entire
`
`patent is considered a CBM patent, and all claims therein may be challenged.
`
`As explained in detail below, all claims of the ’944 Patent meet the
`
`definition of a CBM, and the claims are not directed to a technological invention.
`
`The ’944 Patent is therefore a CBM patent subject to AIA § 18 review.
`
`1.
`
`Claims 1-23 Meet the Definition of a CBM
`
`The USPTO noted that the AIA’s legislative history demonstrates that
`
`“financial product or service,” as recited in the AIA’s definition of a CBM patent,
`
`should be “interpreted broadly,” encompassing patents “claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.” Ex. 1005, p. 48735. Thus, “‘financial product or service’ is not
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`limited to the products or services of the financial services industry.” Id., p. 48736.
`
`Rather, “[t]he term financial is an adjective that simply means relating to monetary
`
`matters.” Ex. 1006, p. 23. Moreover, the language “practice, administration, or
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`management” is “intended to cover any ancillary activities related to a financial
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`-6-
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`product or service, including . . . marketing, customer interfaces [and] management
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`of data . . . .” Ex. 1007, p. 635-36.
`
`Furthermore, any type of claim contained in a patent can qualify as a CBM.
`
`“The phrase ‘method or corresponding apparatus’ is intended to encompass, but
`
`not be limited to, any type of claim contained in a patent, including, method
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`claims, system claims, apparatus claims . . . and set of instructions on storage
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`media claims.” Id. at p. 638.
`
`All claims of the ’944 Patent meet the definition of a CBM. Each of the
`
`independent method claims (claims 1-2) is directed to “[a] method for verifiably
`
`controlling the disposition of an asset” that includes the step of “disposing of said
`
`asset in accordance with said preselected method of disposition . . . .”2 Ex. 1001,
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`col. 9:35-36 and col. 9:57-58 (emphasis added). Similarly, each of the independent
`
`system claims (claims 15-16) is directed to “[a] method for verifiably controlling
`
`the disposition of an asset” that includes “a sorting station . . . for sorting said asset
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`in accordance with a preselected method of disposition.” Id., col. 11-59:61 and
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`col. 12:13-15 (emphasis added). Among the possible “preselected method[s] of
`
`disposition” described in the specification is “selling the asset on an as-is basis.”
`
`
`2 As explained below in Section V.A.1., in the context of the ’944 Patent, “asset”
`generally refers to a physical item—such as “a mainframe computer”—that is
`owned by a customer, and “disposition” generally refers to the handling of the
`physical item according to the customer’s instructions, such as selling the item,
`refurbishing it, etc. See, e.g., Ex. 1001, col. 1:20-25 and col. 1:57 to col. 2:6.
`-7-
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`Id., col. 1:57-60 (emphasis added). Moreover, claim 7 (which depends from claim
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`2) explicitly recites the steps of “creating a marketing record pertaining to said
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`asset,” “selling the asset in as-is condition,” and “creating a sale record of said
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`sale.” Id., col. 10:34-37 (emphasis added). The specification states that the
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`“marketing record” recited in claim 7 can be “used in an electronic bidding
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`process,” which “creates for the customer the initialization of its financial control
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`process.” Id., col. 2:52-62. The specification further describes how, using the
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`“marketing record,” “[t]he sale is advertised to potential buyers” and “an auction or
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`other type of sale of the product is carried out accordingly.” Id., col. 5:47-56.
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`Because all claims of the ’944 Patent are directed to activities that are “financial in
`
`nature” and “relat[e] to money matters,” all claims of the ’944 Patent meet the
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`definition of a CBM. See Ex. 1005, p. 48735; Ex. 1006, p. 23.
`
`Moreover, the USPTO class to which the ’944 Patent was assigned strongly
`
`indicates that it qualifies as a CBM patent. The patent was assigned to Class 364,
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`which was abolished in 1997 and combined with Class 395 to form Class 705.3
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`According to the USPTO, “patents subject to covered business method patent
`
`review are anticipated to be typically classifiable in Class 705.” Ex. 1005, p.
`
`48739; see also Ex. 1008, p. S5410 (“Originally, class 705 was used as the
`
`template for the definition of business method patents in section 18. However,
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`3 See http://www.uspto.gov/patents/resources/methods/afmdpm/class705.jsp#start
`(last visited July 5, 2013).
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`after the bill passed the Senate, it became clear that some offending business
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`method patents are issued in other sections.”). The fact that the ’944 Patent was
`
`assigned to the predecessor of the class for which CBM review was specifically
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`created further supports the conclusion that the ’944 Patent claims meet the
`
`definition of a CBM.
`
`2.
`
`Claims 1-23 Are Not Directed to a “Technological Invention”
`
`To determine whether a claim is directed to a technological invention, “the
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`following will be considered on a case-by-case basis: whether the claimed subject
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`matter as a whole recites a technological feature that is novel and unobvious over
`
`the prior art; and solves a technical problem using a technical solution.” 37 C.F.R.
`
`§ 42.301(b) (emphasis added). Both prongs of the test must be met. Ex. 1005, p.
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`48736 (explaining that such a conjunctive test represents “the best policy choice”).
`
`According to the USPTO, claims that contain the following language or
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`structure are likely not directed to a technological invention under 37 C.F.R. §
`
`42.301(b):
`
`(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 an ATM or point of sale device.
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`-9-
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`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or
`method is novel and non-obvious.
`
`(c) Combining prior art structures to achieve a normal,
`expected, or predictable result of that combination.
`
`Ex. 1009, p. 48763-64.
`
`Regarding the first prong of the “technological invention” test, the ’944
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`Patent claims do not recite a “technological feature” that is novel and nonobvious.
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`Independent claims 1 and 15 do not mention any “technologies” whatsoever. In
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`fact, as explained below in Section V.A.1., the plain language of at least claim 1
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`reveals that all steps of the method could be performed manually using only a
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`pencil, paper, and a truck. The only elements that might arguably be
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`“technologies” recited in the other claims are the following:
`
`“technology” mentioned in claims
`“database”
`“system process controller”
`“communications network”
`“multimedia device” /
`“interactive multimedia device”
`“system terminal”
`“image capture device”
`“data capture device”
`“remote computer”
`
`Ex. 1001, col. 9:17 to col 14:16.
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`claims where mentioned
`2-5, 7-11, 13-14, 16-17
`2-14, 16-20, 22-23
`2, 4-14, 16, 18-20, 22-23
`6, 12, 20, 22
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`6, 12, 19-20, 22-23
`18-19, 23
`18-20, 22-23
`18
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`These elements are merely generic technology components that are well-
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`known in the art, as confirmed by the specification’s description of the elements:
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`“communications network”
`“multimedia device” /
`“interactive multimedia device”
`
`“image capture device”
`
`“technology” mentioned in claims description in specification
`“database”
`“Any database software capable of storing
`records appropriate to the specific needs of
`the user may, however, be implemented.”
`Col. 8:1-3.
`“a local area network (LAN)” Col. 5:3.
`“The multimedia device 110 comprises a
`touch screen monitor and provides image,
`text and/or audio instructions to the user
`and accepts touch screen inputs as desired.
`In
`the
`preferred
`embodiment,
`the
`multimedia device 110 is an APPLE
`MACINTOSH QUADRA 800 computer.”
`Col. 5:22-27.
`“The image capture device 102 in the
`preferred embodiment is a digital camera,
`but may also be any means to capture an
`image of the asset prior to transport.” Col.
`4:37-40.
`is a
`“The data capture device 104
`keyboard in the preferred embodiment for
`manual entry of data, but may also be a
`bar code scanner or the like.” Col. 4:40-
`42.
`“The remote computer 106 is preferably a
`laptop computer, but may also be a stand-
`alone PC or the like.” Col. 4:42-44.
`
`“data capture device”
`
`“remote computer”
`
`Ex. 1001 (pinpoint citations as noted).
`
`The prosecution history confirms that the claims recite nothing more than
`
`conventional components that are well-known in the art. In response to an
`
`enablement rejection of the original claims, the applicants replaced those claims
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`with the current claims and stated that “[t]he physical system and structural basis
`
`for each step claimed is comprised of conventional components well known to one
`
`skilled in the art . . . .” Ex. 1010, p. 13 (emphasis added).
`
`For these reasons, the first prong of the “technological invention” test is not
`
`met. See, e.g., Ex. 1009, p. 48764 (“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,” or reciting “use of known prior art technology to
`
`accomplish a process or method, even if that process or method is novel and
`
`nonobvious” will “not typically render a patent a technological invention.”); Ex.
`
`1013, p. 18 (“[T]he mere recitation that the method is computer implemented or
`
`that the process is automated, using known techniques such as storing information,
`
`does not preclude the patent from qualifying as a covered business method
`
`patent.”).
`
`With respect to the second prong of the “technological invention” test, the
`
`’944 Patent claims do not solve a “technical problem using a technical solution.”
`
`According to the specification, the prior art problem to be solved involved the use
`
`of outside vendors to handle the disposition and disassembly of surplus or obsolete
`
`products, which often resulted in the vendors inadvertently or fraudulently
`
`mismanaging the disposition and disassembly of the products. Ex. 1001, col. 1:26-
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`32. The claimed invention allegedly provides “a system and method for the
`
`controlled disposition of assets which overcomes the problems of the prior art.”
`
`Id., col. 1:38-41.
`
`Based on the ’944 Patent’s own description, the problem allegedly solved by
`
`the invention is not a technical problem—it is a business problem. But even if the
`
`problem could be characterized as a technical problem, the invention claimed in
`
`the ’944 Patent is not a technical solution. The patent does not claim any technical
`
`improvement, such as an improvement in imaging, database, or computer
`
`technology. In fact, as discussed above, claim 1 does not even require the use of a
`
`computer or any other technology components, and the other claims merely recite
`
`generic technology components that the patent applicants admitted are well-known
`
`in the art. References to known technology, including a “database,” do not result
`
`in a claim being directed to a technological invention. Ex. 1009, p. 48764.
`
`Moreover, “abstract business concepts and their implementation, whether in
`
`computers or otherwise,” are not included in the definition of “technological
`
`inventions.” Ex. 1007 at 634.
`
`Because claims 1-23 of the ’944 Patent, which are directed to the abstract
`
`business concept of handling a customer’s physical item in such a way that the
`
`customer can verify that its handling instructions were followed, do not recite a
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`technological feature that is novel and unobvious over the prior art, and do not
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`
`
`
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`solve a technical problem with a technical solution, the claims are not directed to a
`
`technological invention within the meaning of AIA § 18. All claims of the ’944
`
`Patent are thus encompassed by the AIA’s definition of a CBM.
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`Petitioner sets forth below the precise relief requested for each claim
`
`challenged in its Petition for Covered Business Method Review as required by 37
`
`C.F.R. § 42.304(b).
`
`A. Claims for Which Review is Requested (37 C.F.R. § 42.304(b)(1))
`Petitioner requests review under 35 U.S.C. § 321 and AIA § 18 of claims 1-
`
`23 of the ’944 Patent, and the cancellation of these claims as unpatentable.
`
`Statutory Grounds of Challenge (37 C.F.R. § 42.304(b)(2))
`
`B.
`Petitioner requests that claims 1-23 be cancelled as unpatentable under 35
`
`U.S.C. § 101 because they are not directed to patent-eligible subject matter. The
`
`claim construction, reasons for unpatentability, and specific evidence supporting
`
`this request are set forth in detail below.
`
`C. Claim Construction (37 C.F.R. § 42.304(b)(3))
`1.
`Broadest Reasonable Interpretation
`
`In the context of a CBM review, a claim in an unexpired patent “shall be
`
`given its broadest reasonable construction in light of the specification of the patent
`
`in which it appears.” 37 C.F.R. § 42.300(b); see also In re Am. Acad. of Sci. Tech
`
`
`
`
`
`-14-
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`

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`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The “broadest reasonable
`
`construction” means that “the words of the claim will be given their plain meaning
`
`unless the plain meaning is inconsistent with the specification.” Ex. 1011, p.
`
`48699 (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). “In the absence of a
`
`special definition in the specification, a claim term is presumed to take on its
`
`ordinary and customary meaning, a meaning that the term would have to a person
`
`of ordinary skill in the art.” Id., pp. 48699-700 (citing In re Am. Acad. of Sci. Tech
`
`Ctr., 367 F.3d 1364).
`
`As set forth in the USPTO’s Office Patent Trial Practice Guide, a party to a
`
`CBM review may provide “a simple statement that the claim terms are to be given
`
`their broadest reasonable interpretation [“BRI”], as understood by one of ordinary
`
`skill in the art and consistent with the disclosure.” Ex. 1009, p. 48764. As the
`
`USPTO has further stated, “[P]etitioners are not required to define every claim
`
`term, but rather merely provide a statement that the claim terms are presumed to
`
`take on their ordinary and customary meaning, and point out any claim term that
`
`has a special meaning and the definition in the specification.” Id., p. 48700.
`
` Accordingly, because the ’944 Patent has not yet expired,4 Petitioner hereby
`
`provides its “simple statement” that the claim terms should be given their BRI for
`
`
`4 The ’944 Patent expires on February 2, 2014.
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`the purposes of this proceeding (but for the purposes of this proceeding only5). For
`
`all but one of the claim terms in the ’944 Patent, the BRI is the ordinary and
`
`customary meaning of the term. However, for the term “preselected method of
`
`disposition,” a special meaning is imparted by the specification.
`
`While the ordinary and customary meaning of “preselected method of
`
`disposition” is not necessarily limited to a method that was preselected by the
`
`customer (as opposed to being preselected by the service provider or some other
`
`entity), it is clear from the specification that, in the context of this patent and these
`
`claims, it is the customer who must preselect the method of disposition. This is
`
`evident from the following passages from the “Summary of the Invention” section
`
`of the specification (all emphasis is added):
`
`• In the present invention, the method of disposition which is
`preselected may be one or any desired combination of certain
`options, which options include . . . refurbishing the asset in
`accordance with predetermined customer instructions and
`creating a refurbishment record thereof, dismantling the asset
`into an assembly of parts in accordance with predetermined
`
`
`5 Petitioner advocates the broadest reasonable interpretation for the claim terms of
`the ’944 Patent for the purposes of this CBM review only. Claim construction is
`analyzed