Paper 16
` Entered: March 4, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Case CBM2013-00053
`Patent 7,958,024 B2
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
` Entered: March 4, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CALLIDUS SOFTWARE INC.
`Petitioner
`
`v.
`
`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.
`Patent Owner
`____________
`
`Case CBM2013-00053
`Patent 7,958,024 B2
`
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`CBM2013-00053
`Patent 7,958,024 B2
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`
`
`I. BACKGROUND
`Petitioner Callidus Software, Inc. (“Petitioner”) filed a Petition (Paper
`5; “Pet.”) to institute a covered business method patent review of claims 1,
`2, and 35-47 of Patent 7,958,024 (the “’024 Patent”) pursuant to 35 U.S.C.
`§ 321 et seq. Patent Owner Versata Development Group, Inc. and Versata
`Software, Inc. (“Patent Owner”) filed a Preliminary Response (“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):
`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.
`Petitioner challenges claims 1, 2, and 35-47 as unpatentable under 35
`USC § 101. For the reasons that follow, the Board has determined to
`institute a covered business method patent review of claims 1, 2, and 35-47
`of the ’024 Patent.
`
`
`A. The’024 Patent (Ex. 1001)
`The ’024 Patent, entitled “Method and Apparatus for Processing Sales
`Transaction Data,” issued on June 7, 2011, based on U.S. utility application
`09/810,012, filed March 15, 2001. The ’024 Patent issued with claims 1-47,
`with claims 1, 40, 42, and 45 being independent.
`
`The ’024 Patent relates to managing relationships between institutions
`associated with a product or service and the distributors thereof. Ex. 1001
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`at 4:41-44. Based on governmental licensing and regulation, organizations,
`such as life insurances companies, may need to manage the sale and
`distribution of life insurance plans in a way that coincides with the
`regulatory constraints put in place on such sales by government
`organizations. Id. at 4:50-54. Embodiments disclosed in the ‘024 Patent
`allow for license data to be validated prior to distribution of compensation
`to sales agents for the transactions. Id. at 5:9-19. A suite of applications,
`namely a Distributor Management System Suite (DMSS), provide tracking
`information, such as contact points, payment methods, and organizational
`hierarchies on all parties in the system, managing regulatory information
`and ensuring that distributors are licensed and appointed to sell the products
`manufactured by the provider. Id. at 6:26-32.
`
`
`B. Related Matters
`Petitioner certifies that it has been sued for infringement of the ’024
`patent, Pet. 4, with the identified case being Versata Software, Inc. v.
`Callidus Software, Inc., No. 1:12-cv-00931-SLR (D. Del.).
`
`
`
`
`
`C. Exemplary Claim
`Claim 1 of the ’024 Patent is exemplary of the claims at issue:
`1. A method for processing sales transaction data
`comprising:
`using a distributer management system to perform:
`capturing transaction data associated with sales
`performed by a plurality of sales representatives;
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`determining if said sales representatives associated
`with said transaction data are in conformity with a set of
`regulatory conditions applicable to said sales;
`computing a plurality of compensation amounts based
`on said sale transactions data and said set of regulatory
`conditions; and
`executing a payment process to compensate said
`plurality of sales representatives for said sales in
`accordance with said compensation amounts.
`
`
`
`D. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 1, 2, and 35-47 of the
`’024 Patent as failing to recite patentable subject matter under 35 U.S.C.
`§ 101. No other challenges to the patentability of claims of the ’024 Patent
`are asserted in the Petition.
`
`
`II. ANALYSIS
`A. 35 U.S.C. § 325(a)(1)
`Patent Owner urges that the Board decline to institute review of the
`’024 Patent because Petitioner is barred by statute from seeking such review.
`Prelim. Resp. 5. Patent Owner argues that 35 U.S.C. § 325(a)(1) bars
`Petitioner because Petitioner filed a civil action challenging validity of the
`’024 Patent before the filing of the Petition. Id. at 6. Patent Owner includes
`a copy of the complaint filed by Petitioner against Patent Owner seeking
`declaratory judgment that several of Patent Owner’s patents are invalid,
`including the ’024 Patent. Ex. 2001. Patent Owner alleges that Petitioner
`failed to identify the civil action in its Petition, Prelim. Resp. 7, and
`acknowledges that Petitioner voluntarily dismissed that action. Id. at 8.
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`Patent Owner also distinguishes In Vue Sec. Prods. Inc. v. Merch. Techs.,
`Inc., No. IPR2013-00122, Paper No. 17 (PTAB June 27, 2013), where inter
`partes review was instituted although a declaratory judgment action was
`filed by the petitioner, but was involuntarily dismissed by the District Court.
`Id. at 17-20. For the reasons that follow, we do not find Patent Owner’s
`arguments to be persuasive.
`First, we cite 37 C.F.R. § 42.302, which details who may petition for a
`covered business method patent review:
`(a) A petitioner may not file with the Office a petition to
`institute a covered business method patent review of the patent
`unless the petitioner, the petitioner's real party-in-interest, or a
`privy of the petitioner has been sued for infringement of the
`patent or has been charged with infringement under that patent.
`Charged with infringement means a real and substantial
`controversy regarding infringement of a covered business
`method patent exists such that the petitioner would have
`standing to bring a declaratory judgment action in Federal
`court.
`(b) A petitioner may not file a petition to institute a covered
`business method patent review of the patent where the
`petitioner, the petitioner's real party-in-interest, or a privy of the
`petitioner is estopped from challenging the claims on the
`grounds identified in the petition.
`Under the cited rule, Petitioner, in its Petition, indicates that it is not
`estopped from challenging the claims on the grounds identified in the
`Petition, and, therefore, its Petition complies with that rule. Pet. 4.
`Second, Patent Owner argues that “[s]ignificantly, no panel of the
`Board has stated that dismissal without prejudice nullifies the prior, and
`otherwise barring, act of filing (with proper standing) of a civil action
`challenging validity, i.e., the act chosen by Congress as a statutory bar to
`
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`institution.” Prelim. Resp. 22. The Board, however, has determined that
`dismissal without prejudice does not trigger the statutory bar. See
`Cyanotech Corp. v. The Board Of Trustees of the University of Illinois,
`IPR2013-00401, Paper No. 17 at 11-12 (PTAB December 19,
`2013)(“Excluding an action that de jure never existed from the scope of
`§ 315(a)(1) is consistent with both relevant case law and legislative
`history.”) See also Clio v. The Procter and Gamble Co., IPR2013-00438,
`Paper No. 9 at 6-9 (PTAB January 9, 2014). Patent Owner has
`acknowledged that 35 U.S.C. §§ 315(a)(1) and 325(a)(1) are parallel
`provisions, Prelim. Resp. 16, and we are persuaded that it would not be
`appropriate to differentiate their application with respect to dismissed
`declaratory judgment actions. Accordingly, Petitioner’s voluntary dismissal
`of the declaratory judgment action clears the way for consideration of its
`Petition and does not act as a bar.
`Lastly, although Petitioner failed to identify the civil action seeking
`declaratory judgment in its Petition, as noted by Patent Owner, Prelim. Resp.
`7, 37 C.F.R. § 42.8(b)(2) requires only the identification of “judicial or
`administrative matter that would affect, or be affected by, a decision in the
`proceeding.” Given the dismissal without prejudice, that action would not
`be affected by this proceeding, and, as discussed above, there is no effect of
`that action on the instant proceeding. Accordingly, we are not persuaded of
`any deficiency in the Petition because the notice of the declaratory judgment
`action was omitted by Petitioner.
`
`
`B. (1) Financial Product or Service
`A “covered business method patent” is a patent that “claims a method
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`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 Pub. L. 112-29, 125 Stat. 284 (2011)
`§ 18(d)(1); see 37 C.F.R. § 42.301(a). For purposes of determining whether
`a patent is eligible for a covered business method patent review, the focus is
`on the claims. See Transitional Program for Covered Business Method
`Patents—Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48734, 48736 (Aug. 14, 2012) (“CBM
`Rules”). A patent need have only one claim directed to a covered business
`method to be eligible for review. Id.
`In promulgating rules for covered business method patent reviews, the
`Office considered the legislative intent and history behind the AIA’s
`definition of “covered business method patent.” Id. at 48735-36. The
`“legislative history 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.’” Id. (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8,
`2011) (statement of Sen. Schumer)). The legislative history indicates that
`“financial product or service” should be interpreted broadly. Id.
`Petitioner argues that the ‘024 Patent explicitly states that the
`invention can be used when selling certain products such as financial
`instruments. Pet. 5-6; Ex. 1001 Abstract and 4:28-35. The ’024 Patent also
`discusses problems relating to compensating distributors in the financial
`services business and in the financial services sector, and relating to selling
`certain financial instruments. Pet. 6; Ex. 1001 at 1:23, 4:20, and 6:47.
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`Claim 1 of the ’024 Patent recites a method for processing sales
`transaction data including determining whether sales representatives
`associated with the transaction are in conformity with regulatory conditions
`applicable to the sales and executing a payment process to compensate those
`sales representatives based on sale transactions data and the regulatory
`conditions. The steps are not limited in application to any particular
`product.
`Thus, at least one claim covers data processing or other operations
`that are financial in nature, incidental to a financial activity, or
`complementary to a financial activity (e.g., sales of financial instruments and
`determining compensation of the sales agents).
`Claim 1 thus defines a “financial service” within the meaning of AIA
`§ 18(d)(1) and equally within the legislative history associated with this
`statute.
`
`
`B.(2) Technological Invention
`The definition of “covered business method patent” in Section
`18(d)(1) of the AIA does not include patents for “technological inventions.”
`To determine whether a patent is for a technological invention, we consider
`“whether the claimed subject 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). The following
`claim drafting techniques, for example, typically do not render a patent a
`“technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`
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`software, memory, computer-readable storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(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 the normal,
`expected, or predictable result of that combination.
`77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).
`
`Petitioner, in its Petition, asserts that the claims of the ’024 Patent fail
`to recite any technological feature that is novel and unobvious over the prior
`art. Pet. 9. Petitioner argues that the ’024 Patent does not disclose any
`particular computer system, or even a general purpose computer. Pet. 11.
`Indeed, the specification of the ’024 Patent describes that the invention is
`related to the field of computer technology, Ex. 1001 at 1:6-8, but does not
`provide specifics of hardware or software configurations. Moreover, the
`specification of the ’024 Patent describes modules and engines understood to
`include software, but no specific software computer program is disclosed.
`Id. at 6:33-36. General purpose computers and generic software programs
`were known in the art at the time of the invention, and we agree with the
`Petitioner that the patent does not claim any technological improvement of
`those devices. Accordingly, Petitioner has shown that the claims fail to
`recite any technological feature that is novel and unobvious over the prior
`art.
`A single claim is sufficient to institute a covered business method
`
`patent review. In view of the foregoing, we conclude that the presence of
`claim 1 means that the ’024 Patent is a covered business method patent
`under AIA § 18(d)(1).
`
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`C. Claim Construction
`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 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)).
`The following claim construction applies.
`
`
`Distributer Management System
`Claim 1 recites “distributer management system” and Petitioner
`asserts that the broadest reasonable construction of the term is “software for
`managing information about a sales force.” Pet. 22. Petitioner cites sections
`of the specification of the ’024 Patent that describes the system. Pet. 22-24.
`Patent Owner argues that such an interpretation “is a transparent attempt to
`take terminology that is concrete on its face and, instead, repackage as an
`abstraction (software per se).” Prelim. Resp. 26. Patent Owner argues that
`the constructions fails to consider the components and modules described
`that make up the system and is under-inclusive in scope. Id. We disagree
`with Patent Owner. The components described in the specification that
`comprise the distributor management system, namely “information
`infrastructure,” “applications,” “engines,” and “a database,” would be
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`understood by ordinarily skilled artisans as software. No software exists in a
`vacuum in that it requires something to execute it. As discussed above, the
`specification of the ’024 Patent does not provide specifics of hardware or
`software configurations. Accordingly, we are persuaded that defining a
`“distributer management system” as “software for managing information
`about a sales force” does not unduly limit the scope of that claim limitation.
`
`Regulatory Conditions Applicable to/ Associated with said Sales
`Claim 1 recites “regulatory conditions applicable to said sales,” with
`the other independent claims reciting similar limitations. Petitioner asserts
`that the limitation should be understood as “any internal or external
`constraint, regulation, requirement, policy or objective with which a sales
`representative must comply to receive compensation[s] for said sales.” Pet.
`24. While Patent Owner argues that the construction relies on terms not
`sourced from the specification and excludes specific examples, Prelim.
`Resp. 27-28, we cannot agree. We conclude that the specific examples cited
`by Patent Owner would fall under the broad but reasonable construction
`espoused. Accordingly, we adopt Petitioner’s construction for purposes of
`this decision.
`
`Executing a Payment Process
`Claim 1 recites “executing a payment process,” with independent
`claims 40, 42, and 45 reciting equivalent limitations. Petitioner asserts that
`the limitation should be interpreted as “distributing payment,” citing
`examples in the specification of the ’024 Patent to support that construction.
`Pet. 26. Patent Owner argues that the construction leaves out aspects of an
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`executed payment process and alleges that Petitioner is attempting to skew
`the term to a “more disembodied abstraction.” Prelim. Resp. 28-29. We
`disagree with Patent Owner that the proposed construction ignores aspects
`described, and we are persuaded that “distributing payment” broadly but
`reasonably defines the limitations in the claims.
`
`Generating a Selling Agreement
`Dependent claims 2, 41, 44, and 47 recite “generating a selling
`agreement,” or a similar limitation. Petitioner proposes a construction of
`“generating a selling agreement” to mean “creating a selling agreement
`contract comprising templates or reusable components.” Pet. 27-28.
`Petitioner directs attention to the specification of the ’024 Patent,
`specifically examples of the type of information that can be found in a
`selling agreement or contract: “A selling contract defines a hierarchy of sales
`people that can sell products under that contract and it defines what products
`can be sold under that agreement. The selling contract also specifies
`commission schedules and identifies which sales people participate under a
`particular commission schedule.” Ex. 1001, 3:48-53. Petitioner further
`explains that the selling agreement is generated from contract kits. The
`specification describes that the agreements are put together from contract
`kits and that a contract kit contains a set of commission schedules (also
`referred to as compensation components) that can be used within an
`agreement. Id. at 7:45-55. Each agreement is created from one contract kit,
`and when the agreement is created a user can select the components from the
`kit to include in the agreement. Id. at 9:37-39.
`
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`Patent Owner argues that Petitioner’s construction is not a reasonable
`interpretation because “reusable components” and “templates” are
`mentioned sparingly in the specification and only in the background section,
`and Petitioner’s discussion ignores the more general discussion of generating
`a selling agreement. Prelim. Resp. 27; Ex. 1001 at 16:44-51. Because either
`construction would result in the same analysis for purposes of the 101
`analysis, we adopt Petitioner’s construction. Therefore, “generating a
`selling agreement” means “to create a selling agreement contract comprising
`templates or reusable components.”
`
`
`D. 35 U.S.C. § 101 Ground of Unpatentability
`Petitioner contends that claims 1, 2, and 35-47 are directed to non-
`statutory subject matter under 35 U.S.C. § 101. Pet. 29-63. Patent Owner
`presents no arguments with respect to the § 101 ground of unpatentability.
`Prelim. Resp. Upon reviewing Petitioner’s analysis and supporting
`evidence, we determine that Petitioner has established that claims 1, 2, and
`35-47 are directed, more likely than not, to non-statutory subject matter
`under § 101.
`Section 101 of Title 35, United States Code, provides that:
`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.
`
`The Supreme Court recognizes three exceptions to these statutory
`classes: laws of nature, natural phenomena, and abstract ideas. Bilski v.
`Kappos, 130 S. Ct. 3218, 3220 (2010). Although an abstract idea by itself is
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`not patentable, a practical application of an abstract idea may be deserving
`of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289, 1293-94 (2012); Bilski, 130 S. Ct. at 3230; Diamond v.
`Diehr, 450 U.S. 175, 187 (1981). In making this determination, the claim
`must be considered as a whole, as it is “inappropriate to dissect the claims
`into old and new elements and then to ignore the presence of the old
`elements in the analysis.” Diehr, 450 U.S. at 176. Nonetheless, to be
`patent-eligible, a claim cannot simply state the abstract idea and add the
`words “apply it.” See Mayo, 132 S. Ct. at 1294. The claim must incorporate
`enough meaningful limitations to ensure that it claims more than just an
`abstract idea and is not merely a “drafting effort designed to monopolize the
`[abstract idea] itself.” See id. at 1297. A scientific principle cannot be made
`patentable by limiting its use “to a particular technological environment” or
`by adding “insignificant post-solution activity.” See Bilski, 130 S. Ct. at
`3230; Diehr, 450 U.S. at 191-92; Parker v. Flook, 437 U.S. 584, 595 n.18
`(1978).
`
`Claim 1
`Petitioner argues that claim 1 contains nothing more than the abstract
`idea of computing compensation for sales representatives that conform to a
`set of regulatory conditions. Pet. 31. Petitioner argues that nowhere does
`claim 1 recite a particular way or algorithm to perform the conformity
`determination, and that likewise, there is no particular way or algorithm for
`computing compensation based on “sale transactions data.” Id. at 32.
`Petitioner relies on the testimony of two declarants, with extensive
`experience in either the insurance or financial industry, to support
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`Petitioner’s assertion that computing compensation for sales representatives
`that conforms with a set of regulatory conditions was well known prior to
`the date of the invention and was known to be accomplished by hand. Pet.
`40-43. In particular, the testimony is submitted to demonstrate that
`insurance and financial services companies have had (for several years prior
`to the claimed invention) systems in place for screening out transactions
`ineligible for commission by checking licensing, without the use of a
`computer. Ex. 1011, ¶¶ 25, 31-32; Ex. 1012, ¶¶ 17, 21, 25. We have
`reviewed the supporting evidence and conclude that that evidence supports
`Petitioner’s assertions that the claim 1 functional limitations (“purely mental
`process”) were known in the art to be performed without the use of a
`computer prior to the date of the invention.
`We also have considered Petitioner’s arguments that claim 1 fails the
`machine-or-transformation test. Pet. 44-49. Although not dispositive, the
`machine-or-transformation test is a useful and “important clue [or] an
`investigative tool” for determining whether a claimed invention is patent-
`eligible under § 101. Bilski v. Kappos, 130 S. Ct. at 3227. We agree that
`claim 1 is not tied to any particular machine for practicing the system. Nor
`does claim 1 transform or reduce an article into a different state or thing,
`because claim 1, at best, is limited to gathering data and making a
`determination based on the gathered data.
`We agree with Petitioner that the information provided, if not
`rebutted, demonstrates it is more likely than not that claim 1 recites the
`abstract idea of computing compensation for sales representatives that
`conform to a set of regulatory conditions. Moreover, we are persuaded by
`the information provided by Petitioner that the remaining steps of claim 1 do
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`not narrow the broad range of the claims so that it does not cover the abstract
`idea itself. Pet. 32-33. Claim 1 recites using a distributer management
`system to perform specific steps, which we have discussed above to be
`software. Claim 1 also recites that transaction data associated with sales
`performed by a plurality of sales representatives are captured, and a
`determination is made whether the sales representatives associated with said
`transaction data are in conformity with a set of regulatory conditions
`applicable to said sales. Multiple compensation amounts are computed
`based on the data and the conditions, and payment is distributed in
`accordance with those amounts. These steps do not impose meaningful
`limits on the challenged claim’s scope.
`On this record, we conclude that Petitioner has demonstrated that it is
`more likely than not that claim 1 is directed to non-statutory subject matter
`and, thus, unpatentable under 35 U.S.C. § 101.
`
`Claims 40, 42, and 45
`Petitioner contends that independent claims 40, 42, and 45 are
`unpatentable for the same reasons as method claim 1. Pet. 49-56. Claim 40
`is drafted in means-plus-function form, where each of the four means has a
`function that identically corresponds to one of the four method steps recited
`in claim 1. Pet. 49-50. Similarly, claim 42 recites a computer readable
`medium comprising computer readable code embodied therein executable by
`a processor to perform the steps recited in claim 1. Pet. 52-53. Lastly, claim
`45 recites a system with a processor and a memory, where the memory
`includes computer readable code executable by the processor to perform the
`method steps of claim 1. Pet. 54-55. We are persuaded that claims 40, 42,
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`and 45 are more likely than not directed to non-statutory subject matter for
`the same reasons discussed above for claim 1.
`“Allowing the determination of patent eligibility to ‘depend simply on
`the draftsman’s art . . . would ill serve the principles underlying the
`prohibition against patents for ‘ideas’ or phenomena of nature.’” CLS Bank
`Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (per
`curiam) (quoting Parker, 437 U.S. at 593). Like the system claims at issue
`in CLS Bank, the means-plus function and computer-based limitations
`recited in claims 40, 42, and 45 cannot support any meaningful distinction
`from the related method claim 1. We, therefore, conclude that claims 40, 42,
`and 45 are equivalent to the method of claim 1 for § 101 purposes.
`
`Dependent Claims 2, 35-39, 41, 43, 44, 46, and 47
`We agree with Petitioner that, on this record, each of the dependent
`claims fails to impose meaningful limitations on the scope of its base claim
`to change the above analysis. Pet. 57-63. The steps or functions that require
`computer hardware or software -- that is, more than mental steps -- again,
`require at most a general purpose computer performing conventional tasks.
`In order for a machine to impose a meaningful limitation on the scope of a
`method claim, it must play a significant part in permitting the claimed
`method to be performed, rather than function solely as an obvious
`mechanism for permitting a solution to be achieved more quickly, such as
`utilization of a computer for performing calculations. SiRF Tech., Inc. v.
`Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
`Claims 2, 41, 44, and 47 recite generating or to generate “a selling
`agreement to define a relationship between an institution and a distributor,”
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`CBM2013-00053
`Patent 7,958,024 B2
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`where the sales representatives work for distributor and the institution is the
`source of the products sold. As Petitioner argues, the fact that information is
`already captured and used by the system to validate the credentials of the
`sales representatives and the composition of an agreement, reducing the
`information to a written form, does not render the abstract idea patentable.
`Pet. 59. Using a general purpose computer only for its basic, conventional
`uses such as providing another representation of existing data does not
`impose meaningful limits on claim scope. Bancorp Servs., L.L.C. v. Sun
`Life Assurance Corp., 687 F.3d 1266, 1278 (Fed. Cir. 2012). We agree with
`Petitioner that this amounts to insignificant post-solution activity that does
`not make the claims patent eligible. Pet. 59.
`Claims 35 and 361 recite “generating a plurality of reports about said”
`at least one sales representative or said sale transaction data, respectively.
`As Petitioner argues, the recitations merely create a written report reflecting
`information that has already been captured and used by the recited method
`of claim 1. We agree with Petitioner that this amounts to no more than
`insignificant post-solution activity and cannot confer patent eligibility.
`Claims 37, 43, and 46 specify that the set of regulatory conditions
`applied are “regulatory constraints put in place by government
`organizations.” We agree with Petitioner that limiting the claims to a
`particular species or specific field of use does not make the claims
`patentable. Pet. 62. See Bilski, 130 S. Ct. at 3231.
`
`1 As Petitioner notes, claims 35 and 38 are identically worded, as well as
`claims 36 and 39 being identically worded. Pet. 60. Having identically
`worded claims dependent from the same base claim usually raises the issue
`of double-patenting, but we need not decide that issue given the conclusion
`that those claims are also directed to non-statutory subject matter.
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`On this record, we conclude that Petitioner has met its burden in
`showing that, more likely than not, the dependent claims are directed to non-
`statutory subject matter and, thus, unpatentable under 35 U.S.C. § 101.
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that it is more likely than not that
`Petitioner will prevail in establishing the unpatentability of claims 1, 2, and
`35-47 of the ’024 Patent under 35 U.S.C. § 101 as being directed to non-
`statutory subject matter.
`The Board has not made a final determination on the patentability of
`any challenged claim.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business
`method patent review of the ’024 Patent is hereby instituted as to claims 1,
`2, and 35-47 of the ’024 Patent;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(a), a covered
`business method patent review of the ’024 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; and
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`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 1:00 PM Eastern Time on March 27, 2014. The parties are
`directed to the Office Patent 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 entered concurrently herewith and any
`motions the parties anticipate filing during the trial.
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`For Petitioner:
`Deborah
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