dicksteinshapiro.com |
`1
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 01/36
`
`
`1
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 01/36
`
`
`
`Claims Directed to Abstract Ideas are
`Unpatentable
`
`• Institution Decision at 11.
`
`dicksteinshapiro.com |
`2
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 02/36
`
`
`
`Alice v. CLS Bank Provides the Standard for
`Patent Eligibility under §101.
`
`• Petitioner’s Reply at 5.
`
`dicksteinshapiro.com |
`3
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 03/36
`
`
`
`‘326 Patent Overview
`
`• ‘326 Patent (Exh. 1001).
`
`dicksteinshapiro.com |
`4
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 04/36
`
`
`
`‘326 Patent Overview – Specification
`
`• ‘326 Patent 1:54-56, 2:1-8; Petition at 11-12.
`
`dicksteinshapiro.com |
`5
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 05/36
`
`
`
`‘326 Patent – Claim 1
`
`• ‘326 Patent, Claim 1.
`
`dicksteinshapiro.com |
`6
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 06/36
`
`
`
`‘326 Patent – Claim 1
`
`• ‘326 Patent, Claim 1.
`
`dicksteinshapiro.com |
`7
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 07/36
`
`
`
`Claim 1 is Directed to an Abstract Idea:
`Alice Step 1
`
`• Petitioner’s Reply at 5.
`
`dicksteinshapiro.com |
`8
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 08/36
`
`
`
`Abstract Idea – Petitioner
`
`• Petition at 22.
`
`dicksteinshapiro.com |
`9
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 09/36
`
`
`
`Abstract Idea – Board
`
`• Institution Decision at 12-13.
`
`• Institution Decision at 19.
`
`dicksteinshapiro.com |
`10
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 10/36
`
`
`
`Patent Owner
`
`• Patent Owner Response at 2.
`
`dicksteinshapiro.com |
`11
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 11/36
`
`
`
`Patent Owner
`
`• Patent Owner Response at 13.
`
`dicksteinshapiro.com |
`12
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 12/36
`
`
`
`Invalidated Abstract Ideas of Supreme Court
`and Federal Circuit Decisions
`
`“managing a stable value protected life insurance
`policy” (Bancorp at 1280-81)
`
`“fraud detection method” (Cybersource at 1376)
`
`“risk hedging” (Bilski at 1321)
`
`“intermediated settlement” (Alice at 2355).
`
`
`• Petitioner’s Reply at 6
`
`dicksteinshapiro.com |
`13
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 13/36
`
`
`
`Claim 1 is Directed to an Abstract Idea:
`Alice Step 2
`
`• Petitioner’s Reply at 5.
`
`dicksteinshapiro.com |
`14
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 14/36
`
`
`
`‘326 Patent Claim 1 – “In a computer system”
`
`• ‘326 Patent, Claim 1.
`
`dicksteinshapiro.com |
`15
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 15/36
`
`
`
`‘326 Patent Claim 1
`
`• ‘326 Patent, Claim 1.
`
`dicksteinshapiro.com |
`16
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 16/36
`
`
`
`‘326 Patent Overview – Specification
`
`• ‘326 Patent 9:37-41; Petition at 9.
`
`• ‘326 Patent 8:40-46; Petition at 9.
`
`dicksteinshapiro.com |
`17
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 17/36
`
`
`
`Alice, Bancorp, and CyberSource
`
`• Alice, 134 S. Ct. at 2359 (“[T]he relevant question is
`whether the claims here do more than simply instruct the
`practitioner to implement the abstract idea of
`intermediated settlement on a generic computer.”)
`• CyberSource, 654 F.3d at 1375 (“[T]he basic character of
`a process claim drawn to an abstract idea is not changed
`by claiming only its performance by computers.”)
`• Bancorp, 687 F.3d at 1279-80 (“Using a computer to
`accelerate an ineligible mental process does not make
`that process patent-eligible.”)
`• Petition at 29; Petitioner’s Reply at 9-10, 10-11.
`
`dicksteinshapiro.com |
`18
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 18/36
`
`
`
`Alice Claims at Issue
`
`• Alice, 134 S. Ct. at 2359-60; Petitioner’s Reply at 11.
`
`dicksteinshapiro.com |
`19
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 19/36
`
`
`
`CyberSource – Exemplary Invalidated Claim
`
`• U.S. Patent 6,029,154 C1 (Exh. 1017), Claim 2;
`Petitioner’s Reply at 11.
`
`dicksteinshapiro.com |
`20
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 20/36
`
`
`
`Bancorp - Exemplary Invalidated Claims
`
`• U.S. Patent 7,249,037 (Exh. 1015), Claims 18 and 19;
`Petitioner’s Reply at 10-11.
`
`dicksteinshapiro.com |
`21
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 21/36
`
`
`
`Dependent Claims 2-4, 9-14, and 16-17
`
`• Petition at 42, 46.
`
`dicksteinshapiro.com |
`22
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 22/36
`
`
`
`Dependent Claims 5, 9, 15, and 20
`
`• Petition at 48.
`
`dicksteinshapiro.com |
`23
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 23/36
`
`
`
`Dependent Claim 7
`
`• Petition at 50.
`
`dicksteinshapiro.com |
`24
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 24/36
`
`
`
`Dependent Claims 6, 8, 18, 19, and 21
`
`• Petition at 54.
`
`dicksteinshapiro.com |
`25
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 25/36
`
`
`
`Standing
`
`dicksteinshapiro.com |
`26
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 26/36
`
`
`
`The Board has Already Determined that
`Callidus has Standing
`
`• Institution Decision at 6-7; see also Decision on Request
`for Rehearing, Paper No. 27 at 2-6.
`
`dicksteinshapiro.com |
`27
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 27/36
`
`
`
`Dismissal Without Prejudice
`
`• Decision on Request for Rehearing, Paper No. 27 at 3-4.
`
`dicksteinshapiro.com |
`28
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 28/36
`
`
`
`America Invents Act §18(a)(1)
`
`• AIA §18(a)(1): Petitioner’s Reply at 12-13.
`
`dicksteinshapiro.com |
`29
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 29/36
`
`
`
`37 C.F.R. §42.300(a) and §42.201
`
`• 37 C.F.R. §42.300(a); Petitioner’s Reply at 12-13.
`
`
`
`
`
`
`
`• 37 C.F.R. §42.201; Petitioner’s Reply at 12-13.
`
`
`dicksteinshapiro.com |
`30
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 30/36
`
`
`
`USPTO Rulemaking
`
`• Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered Business
`Method Patents, 77 Fed. Reg. 48680, at 48693 (Exh. 1008 at 23);
`Petitioner’s Reply at 13.
`
`
`
`
`
`
`•
`
`Id. at 48692 (Exh. 1008 at 19); Petitioner’s Reply at 13
`
`dicksteinshapiro.com |
`31
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 31/36
`
`
`
`Compare 35 U.S.C. §321(a)
`with AIA §18(a)(1)(B)
`
`• 35 U.S.C. §321(a); Petitioner’s Reply at 13-14.
`
`
`
`
`
`• AIA §18(a)(1)(B); Petitioner’s Reply at 13-14.
`
`dicksteinshapiro.com |
`32
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 32/36
`
`
`
`Compare 35 U.S.C. §321(b)
`with AIA §18(a)(1)(C)
`
`• 35 U.S.C. §321(b)
`
`
`
`
`
`
`
`
`• AIA §18(a)(1)(C)
`
`dicksteinshapiro.com |
`33
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 33/36
`
`
`
`SecureBuy is Distinguishable
`
`• Decision Denying Institution, SecureBuy v. Cardinalcommerce,
`CBM2014-00035, Paper No. 12, (P.T.A.B. Apr. 25, 2014) ;
`Petitioner’s Reply at 14-15
`
`
`• Docket Report in SecureBuy (Exh. 1018) at 6; Petitioner’s Reply
`at 14-15.
`
`• Docket Report in SecureBuy (Exh. 1019) at 23; Petitioner’s Reply
`at 14-15.
`
`dicksteinshapiro.com |
`34
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 34/36
`
`
`
`35 U.S.C. §325(a)(3) Counterclaim
`
`• 35 U.S.C. §325(a)(3); Petitioner’s Reply at 15.
`
`
`
`
`
`• Complaint for Declaratory Judgment of Non-
`Infringement and Invalidity (Exh. 2001) at ¶ 9;
`Petitioner’s Reply at 15.
`
`dicksteinshapiro.com |
`35
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 35/36
`
`
`
`35 U.S.C. §325(a)(3) Counterclaim
`
`• Versata's Notice of Subsequent Events (Exh. 1020) at 1;
`Petitioner’s Reply at 15.
`
`
`
`
`•
`
`11/5/2012 Email from C. Civins to D. Fishman (Exh. 1021);
`Petitioner’s Reply at 15.
`
`
`• 5/17/2013 Email from C. Civins to D. Fishman (Exh. 1022);
`Petitioner’s Reply at 15.
`
`dicksteinshapiro.com |
`36
`© 2014 Dickstein Shapiro LLP. All Rights Reserved.
`
`Exhibit 1026 36/36
`
`
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