Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 13
`Entered: March 10, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TRULIA, INC.
`Petitioner,
`
`v.
`
`ZILLOW, LLC
`Patent Owner.
`____________
`
`Case CBM2013-00056
`Patent 7,970,674
`____________
`
`
`
`
`
`Before JAMESON LEE, JOSIAH C. COCKS, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 13
`Entered: March 10, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TRULIA, INC.
`Petitioner,
`
`v.
`
`ZILLOW, LLC
`Patent Owner.
`____________
`
`Case CBM2013-00056
`Patent 7,970,674
`____________
`
`
`
`
`
`Before JAMESON LEE, JOSIAH C. COCKS, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Case CBM2013-00056
`Patent 7,970,674
`
`I.
`
`INTRODUCTION
`
`Trulia, Inc. (“Petitioner”) filed a petition (“Pet.”) requesting a review
`
`of U.S. Patent No. 7,970,674 (Ex. 1001, “the ’674 patent”) under the
`
`transitional program for covered business method patents. Paper 4. Zillow,
`
`Inc. (“Patent Owner”) filed a preliminary response (“Prelim. Resp.”).
`
`Paper 10. The Board has jurisdiction under 35 U.S.C. § 324.1
`
`The standard for instituting a covered business method patent review
`
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`
`THRESHOLD—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Petitioner challenges the patentability of claims 2, 5, 15-25, and 40 of
`
`the ’674 patent under 35 U.S.C. §§ 101, 102, and 103. Taking into account
`
`Patent Owner’s preliminary response, we determine that the information
`
`presented in the petition demonstrates that it is more likely than not that the
`
`challenged claims are unpatentable. Pursuant to 35 U.S.C. § 324, we
`
`authorize a covered business method patent review to be instituted as to
`
`claims 2, 5, 15-25, and 40 of the ’674 patent.
`
`
`
`1 See section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`
`2
`
`
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`Case CBM2013-00056
`Patent 7,970,674
`
`A.
`
`The ’674 Patent
`
`The ’674 Patent states:
`
`[The invention] is directed to the field of electronic commerce
`techniques, and, more particularly, to the field of electronic
`commerce techniques related to real estate.
`
`Ex. 1001, 1:9-12. As explained in the ’674 Patent, it is difficult to determine
`
`accurately the value of real estate properties. The most reliable method for
`
`valuing a home, if it recently was sold, is to regard its selling price as its
`
`value. Ex. 1001, 1:25-26. However, only a small percentage of homes are
`
`sold at any given time. Ex. 1001, 1:26-30. Another widely used approach is
`
`professional appraisal. Ex. 1001, 1:33-34. However, appraisals are
`
`subjective, and they “[are] expensive, can take days or weeks to complete,
`
`and may require physical access to the home by the appraiser.” Ex. 1001,
`
`1:37-44. Moreover, designing automatic valuation systems that only
`
`consider information available from public databases may be inaccurate.
`
`Ex. 1001, 1:45-51. Accordingly, the ’674 Patent discloses an approach
`
`where valuing homes is responsive to owner input, allegedly resulting in a
`
`more accurate, inexpensive, and convenient valuation. Ex, 1001, 1:52-56.
`
`B.
`
`Related Matters
`
`Petitioner and Patent Owner identify the following related district
`
`court proceeding involving the ’674 Patent: Zillow, Inc. v. Trulia, Inc.,
`
`Case No. 2:12-cv-01549 (W.D. Wash.). Pet. 81; Paper 7 at 2. Petitioner and
`
`Patent Owner identify also the following inter partes review before the
`
`3
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`Case CBM2013-00056
`Patent 7,970,674
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`Patent Trial and Appeal Board involving the ’674 patent: IPR2013-00034.
`
`Pet. 81; Paper 7 at 2.
`
`C.
`
`Illustrative Claim
`
`Claims 2 and 15 are the only independent claims challenged, and read
`
`as follows:
`
`A computer readable medium for storing contents
`2.
`that causes a computing system to perform a method for
`procuring information about a distinguished property from its
`owner that is usable to refine an automatic valuation of the
`distinguished property, the method comprising:
`displaying at least a portion of information about the
`distinguished property used in the automatic valuation of the
`distinguished property;
`obtaining user input from the owner adjusting at least one
`aspect of information about the distinguished property used in
`the automatic valuation of the distinguished property; and
`displaying to the owner a refined valuation of the
`distinguished property that is based on the adjustment of the
`obtained user input.
`
`15. A method in a computing system for refining an
`automatic valuation of a distinguished home based upon input
`from a user knowledgeable about the distinguished home,
`comprising:
`obtaining user input adjusting at least one aspect of
`information about the distinguished home used in the automatic
`valuation of the distinguished home;
`
`4
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`Case CBM2013-00056
`Patent 7,970,674
`
`automatically determining a refined valuation of the
`distinguished home that is based on the adjustment of the
`obtained user input; and
`presenting the refined valuation of the distinguished
`home.
`
`D.
`
`The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s
`
`contentions of unpatentability of claims 2, 5, 15-25, and 40 of the
`
`’674 patent based on the following specific grounds (Pet. 15-74):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`
`
`Weiss2
`
`Foster3
`Weiss, Foster, Keyes4,
`and Calhoun5
`
`
`
`§ 101
`
`2, 5, 15-25, and 40
`
`§ 102(b)
`
`2, 5, 15-18, 20, 25,
`and 40
`
`§ 102(e)
`
`2, 5, 15-18, 25, and 40
`
`§ 103
`
`19-24
`
`2 U.S. Patent Application Publication 2002/0035520, published
`Mar. 21, 2002 (Ex. 1005) (“Weiss”).
`3 U.S. Patent No. 7,130,810, issued Oct. 31, 2006 (Ex. 1006) (“Foster”);
`prior publication data includes U.S. Patent Application Publication
`2004/0073508, published Apr. 15, 2004.
`4 U.S. Patent No. 7,120,599, issued Oct. 10, 2006 (Ex. 1007) (“Keyes”);
`prior publication data includes U.S. Patent Application Publication
`2001/0044766, published Nov. 22, 2001.
`5 Charles A. Calhoun, Property Valuation Methods and Data in the United
`States, HOUSING FINANCE INTERNAT’L J. 16.2 (2001) (Ex. 1008)
`(“Calhoun”).
`
`5
`
`
`
`Case CBM2013-00056
`Patent 7,970,674
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Lamont6
`
`§ 102(e)
`
`2, 5, 15-18
`
`Lamont and Foster
`
`§ 103
`
`2, 5, 15-18, 20, 25,
`and 40
`
`Lamont, Foster, Keyes,
`and Calhoun
`
`§ 103
`
`19, 21-24
`
`II.
`
`ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability and
`
`Patent Owner’s arguments in its preliminary response to determine whether
`
`Petitioner has met the threshold standard, under 35 U.S.C. § 324(a), for
`
`instituting review.
`
`A.
`
`Claim Construction
`
`
`
`As a step in our analysis for determining whether to institute a review,
`
`we determine the meaning of the claims for purposes of this decision. In a
`
`covered business method patent 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). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`
`
`6 U.S. Patent No. 7,219,078, issued May 15, 2007 (Ex. 1009) (“Lamont”);
`prior publication data includes U.S. Patent Application Publication
`2003/0046099, published Mar. 6, 2003.
`
`6
`
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`Case CBM2013-00056
`Patent 7,970,674
`
`art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
`
`term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). We must be careful not to read a particular embodiment appearing in
`
`the written description into the claim if the claim language is broader than
`
`the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`We construe the terms below in accordance with these principles.
`
`1. “computer readable medium for storing contents that causes a computing
`system to perform a method”
`
`Independent claim 2 recites “[a] computer readable medium for
`
`storing contents that causes a computing system to perform a method.”
`
`According to Petitioner, a broadest reasonable construction of the
`
`aforementioned claim limitation only requires that the computer readable
`
`medium be capable of storing, but need not store, contents that “cause[ ] a
`
`computing system to perform a method.” Pet. 10. Patent Owner asserts that
`
`the aforementioned claim limitation requires the computer readable medium
`
`to store contents that “causes a computing system to perform a method.”
`
`Prelim. Resp. 6-7. Essentially, Petitioner asserts that independent claim 2,
`
`as written, is broad enough to cover a blank disk, while Patent Owner asserts
`
`that one of ordinary skill would have understood that it would be
`
`unreasonable to read independent claim 2 as covering a blank disk without
`
`the appropriate programming for performing the recited method steps. We
`
`agree with Patent Owner. In the overall context of the specification and
`
`7
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`Case CBM2013-00056
`Patent 7,970,674
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`claims, one of ordinary skill would have understood that independent
`
`claim 2 requires a storage medium that includes the appropriate
`
`programming for performing the recited method steps.
`
`2. “owner”
`
`Independent claim 2 recites “obtaining user input from the owner
`
`adjusting at least one aspect of information about the distinguished property
`
`used in the automatic valuation of the distinguished property; displaying to
`
`the owner a refined valuation of the distinguished property that is based on
`
`the adjustment of the obtained user input.” Petitioner asserts that “owner”
`
`does not impart any meaningful structure to the recited computer readable
`
`medium, asserting essentially that “owner” is non-functional, descriptive
`
`material. Pet. 10-11. Patent Owner asserts that “owner” should be given its
`
`ordinary and customer meaning as follows: a person who owns; possessor;
`
`proprietor. Prelim. Resp. 8-9 (citing
`
`http://dictionary.reference.com/browse/owner (retrieved December 16,
`
`2013)). The contentions of Petitioner and Patent Owner do not conflict as to
`
`the definition “owner.” We are persuaded that “owner” should be given its
`
`ordinary and customary meaning, and that Patent Owner’s proffered
`
`dictionary definition is evidence of that ordinary and customary meaning.
`
`We are persuaded also that as used in independent claim 2, “owner” is non-
`
`functional, descriptive material, because whether the recited “user input” is
`
`obtained from the owner or another party does not affect the operation of the
`
`“obtaining” step. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re
`
`Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (holding when descriptive
`
`8
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`Case CBM2013-00056
`Patent 7,970,674
`
`material is not functionally related to the substrate, the descriptive material
`
`will not distinguish the invention from the prior art in terms of patentability).
`
`The same analysis is applicable to recitation of “owner” in the “displaying”
`
`step of independent claim 2.
`
`3. “user knowledgeable about the distinguished home” and “user input”
`
`Independent claim 15 recites “[a] method in a computing system for
`
`refining an automatic valuation of a distinguished home based upon input
`
`from a user knowledgeable about the distinguished home.” Independent
`
`claim 2 recites “obtaining user input from the owner.” Petitioner asserts that
`
`“user knowledgeable about the distinguished home” is only recited in the
`
`preamble of independent claim 15 and should be given no weight. Petitioner
`
`further asserts the following concerning the aforementioned “input from a
`
`user” and “user input” recited in independent claim 2:
`
`The recited [“input from a user” and] “user input” includes
`input from any user, and may broadly include input from an
`owner, agent or other person representing the owner, a
`prospective buyer, an agent or other person representing a
`prospective buyer, or another third party.
`
`Pet. 11-12. Patent Owner asserts that “user knowledgeable about the
`
`distinguished home” should be construed as “the owner or a person with
`
`equivalent knowledge to the owner.” As support, Patent Owner refers to the
`
`’674 patent and prosecution history, and also expressly disclaims any
`
`construction that is broader than “the owner or a person with equivalent
`
`knowledge to the owner.” Prelim. Resp. 9-11.
`
`9
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`Case CBM2013-00056
`Patent 7,970,674
`
`Turning first to “user input,” we agree with Petitioner that “user”
`
`should be construed as any user, and may broadly include an owner, agent or
`
`other person representing the owner, a prospective buyer, an agent or other
`
`person representing a prospective buyer, or another third party. The
`
`’674 patent discloses that the “owner or another user” is the person who
`
`would use the “software facility for automatically determining a current
`
`value for a home or other property.” Ex. 1001, 2:57-59. The ’674 patent
`
`also discloses that “a wide variety of users may use the facility, including the
`
`owner, an agent or other person representing the owner, a prospective buyer,
`
`an agent or other person representing prospective buyer, or another third
`
`party.” Ex. 1001, 2:59, 64-67. By using the phrases “a wider variety of
`
`users” and “or another third party,” the ’674 patent contemplates any person
`
`as a “user” from which input is obtained. We disagree with Petitioner,
`
`however, that “user knowledgeable about the distinguished home” should
`
`not be given any weight, such that “user input” is not limited to being
`
`obtained from “a user knowledgeable about the distinguished home.” The
`
`preamble of independent claim 15 recites “[a] method in a computing system
`
`for refining an automatic valuation of a distinguished home based upon input
`
`from a user knowledgeable about the distinguished home” (emphasis
`
`added), which uses the same claim terms as “user input,” only transposed.
`
`Given the use of the same claim terms and the similar context in which they
`
`are used, one of ordinary skill would understand that the earlier recitation of
`
`“input from a user knowledgeable about the distinguished home” provides
`
`context to the later recitation of “user input.” Bicon, Inc. v. Straumann Co.,
`
`10
`
`
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`Case CBM2013-00056
`Patent 7,970,674
`
`441 F.3d 945, 952 (Fed. Cir. 2006) (“[W]hether to treat a preamble as a
`
`claim limitation is determined on the facts of each case in light of the claim
`
`as a whole and the invention described in the patent.”) Accordingly, we
`
`modify Petitioner’s proposed construction, and construe “user input” as
`
`“input from any user knowledgeable about the distinguished home, which
`
`may broadly include an owner, agent or other person representing the owner,
`
`a prospective buyer, an agent or other person representing a prospective
`
`buyer, or another third party.”
`
`Turning to “user knowledgeable about the distinguished home,” we
`
`disagree with Patent Owner that the aforementioned claim limitation should
`
`be construed as “the owner or a person with equivalent knowledge to the
`
`owner.” Patent Owner’s position is unpersuasive because (1) some owners
`
`may not be “knowledgeable about the distinguished home,” and (2) not all
`
`owners share the same level of knowledge about their respective homes.
`
`The knowledge of an owner varies from owner to owner and is incapable of
`
`serving as an objectively determinable level of knowledge.
`
`Patent Owner asserts that several portions of the ’674 patent support
`
`its proposed construction. Patent Owner’s assertions are inapposite. While
`
`the cited portions of the ’674 patent do disclose receiving input from an
`
`owner, independent claim 15 explicitly recites “user.” The use of the term
`
`“owner” in the context of claim 2 indicates that “user” is not limited to
`
`“owner.”
`
`11
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`Case CBM2013-00056
`Patent 7,970,674
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`4. “valuation”
`
`Independent claim 2 recites “displaying to the owner a refined
`
`valuation of the distinguished property that is based on the adjustment of the
`
`obtained user input.” Independent claim 15 recites “automatically
`
`determining a refined valuation of the distinguished home that is based on
`
`the adjustment of the obtained user input.” Neither party provides a
`
`proposed construction of “valuation,” and the specification does not provide
`
`a definition of “valuation.” Random House Dictionary defines “valuation”
`
`as “an estimated value or worth.” Dictionary.com Unabridged, Random
`
`House, Inc. http://dictionary.reference.com/browse/valuation (accessed:
`
`January 02, 2014). Random House Dictionary defines “value” as “monetary
`
`or material worth, as in commerce or trade: This piece of land has greatly
`
`increased in value.” Dictionary.com Unabridged, Random House, Inc.
`
`http://dictionary.reference.com/browse/value (accessed: January 02, 2014)
`
`(emphasis original). We construe “valuation” as “an estimated monetary or
`
`material worth.” The disclosure of the ’674 patent is consistent with this
`
`construction, as the ’674 patent exclusively refers to “valuation” in monetary
`
`terms, such as comparing a “valuation” to a “selling price.” Ex. 1001, 9:45-
`
`48; 10:46-51; 11:10-13, 34-38; 12:39-60; 13:37-39; 14:8-11, 31-36.
`
`B.
`
`Standing
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`reviews to persons or their privies who have been sued or charged with
`
`infringement of a “covered business method patent,” which does not include
`12
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`Case CBM2013-00056
`Patent 7,970,674
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`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`
`also 37 C.F.R. §§ 42.301, 42.302. The parties disagree as to whether the
`
`’674 patent is a covered business method patent under section 18(d)(1) of
`
`the AIA and 37 C.F.R. § 42.301.
`
`1.
`
`Financial Product or Service
`
`Our inquiry is controlled by whether at least one claim of the patent
`
`“claims a method or corresponding apparatus for performing data processing
`
`or other operations used in the practice, administration, or management of a
`
`financial product or service.” 37 C.F.R. § 42.301(a) (Definition of a covered
`
`business method patent). Petitioner asserts that the ’674 patent is a covered
`
`business method patent, because the claimed subject matter is directed to
`
`“real estate valuations,” which are financial in nature. Pet. 4-6. In response,
`
`Patent Owner asserts that the challenged claims are directed to refining
`
`valuations, which are not (1) financial products, or (2) financial. Prelim.
`
`Resp. 20-22. We agree with Petitioner.
`
`We determine that the subject matter of claim 19 meets the definition
`
`of a covered business method patent. Specifically, claim 19 depends from
`
`independent claim 15, which recites “automatically determining a refined
`
`valuation of the distinguished home that is based on the adjustment of the
`
`obtained user input.” As set forth above, we construe “valuation” as “an
`
`estimated monetary or material worth,” which is financial in nature.
`
`Additionally, dependent claim 19 uses a geographically-specific home
`
`valuation model to determine automatically the refined valuation of
`
`independent claim 15, and recites “wherein the geographically-specific
`
`13
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`home valuation model is a linear regression model constructed from
`
`information about recent sales of homes near the distinguished home.”
`
`Thus, the valuation of independent claim 15 is related to “recent sales of
`
`homes,” which indicates further that at least one claim of the ’674 patent is
`
`financial in nature.
`
`Patent Owner asserts that the challenged claims are not directed to
`
`financial products, which are defined as “agreement[s] between two parties
`
`stipulating movements of money or other consideration now or in the
`
`future.” Patent Owner’s assertions are misplaced. Patents considered
`
`covered business method patents also may include claims directed to “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.” 37 C.F.R. § 42.301(a) (emphasis added). Independent
`
`claim 15, from which claim 19 depends, recites “determining a refined
`
`valuation of the distinguished home,” which is a financial service that would
`
`be related to a future sale of a home. This tie to home sales is further
`
`supported by dependent claim 19, which indicates that the recited “refined
`
`valuation” is related to “recent sales of homes.”
`
`Patent Owner asserts further that the challenged claims are not
`
`“financial,” which is defined as “pertaining to monetary receipts and
`
`expenditures; pertaining or relating to money matters; pecuniary: financial
`
`operations” and “of or pertaining to those commonly engaged in dealing
`
`with money and credit.” Prelim. Resp. 21 (citing Dictionary.com
`
`Unabridged. Random House, Inc.
`
`14
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`Case CBM2013-00056
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`http://dictionary.reference.com/browse/Financial (accessed:
`
`December 16, 2013)). We are not persuaded. Independent claim 15 recites
`
`“valuation,” which we construe as “an estimated monetary or material
`
`worth.” Dependent claim 19 indicates that the recited “valuation” is related
`
`to “recent sales of homes.” Thus, independent claim 15 and dependent
`
`claim 19 “pertain[] or relat[e] to money matters,” as set forth in the
`
`aforementioned definition of “financial.”
`
`With respect to the parties’ assertions concerning classification, a
`
`determination of whether a patent is a covered business method patent
`
`eligible for review is determined by application of 35 U.S.C. § 324(a) and
`
`37 C.F.R. § 42.301, not by the classification of the patent.
`
`2.
`
`Exclusion for Technological Inventions
`
`The definition of “covered business method patent” in Section 18 of
`
`the AIA expressly excludes patents for “technological inventions.” AIA
`
`§18(d)(1). 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,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`15
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`Case CBM2013-00056
`Patent 7,970,674
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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 the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64
`
`(Aug. 14, 2012).
`
`Petitioner asserts that the ’674 patent is not directed to a technological
`
`invention, because independent claim 15 recites generically known
`
`technologies, such as computing systems and computer readable mediums,
`
`that are not novel or non-obvious. Pet. 6-8. Patent Owner disagrees.
`
`Prelim. Resp. 16-20. We agree with Petitioner.
`
`Patent Owner asserts that every challenged claim, including
`
`independent claim 15, recites a technological feature. Patent Owner’s
`
`assertion is inapposite. The presence of a technological feature alone does
`
`not establish a technological invention. The considerations to find a
`
`technological invention are whether the alleged technical feature is novel
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`and unobvious over the prior art and solves a technical problem using a
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`technical solution. 37 C.F.R. § 42.301(b).
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`Patent Owner then asserts that independent claim 15 solves a technical
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`problem using a technical solution. In that regard, the Patent Owner states:
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`“[T]he technical problem [and solution] of generating property valuations
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`belongs within the purview of technical experts having substantial education
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`and/or experience with valuation systems and is not left to lay or non-
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`technical persons.” Prelim. Resp. 18. We disagree. The ’674 patent is
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`directed to solving shortcomings to conventional approaches to valuing
`
`homes by adding owner input. Ex. 1001, 1:52-56. While the
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`aforementioned problem and solution could involve technology, valuing
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`homes without sufficient user or owner input alone does not present a
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`technical problem, and adding user or owner input alone does not present a
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`technical solution.
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`Patent Owner further asserts that independent claim 15 recites a
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`technological feature that is novel and unobvious, because “the Examiner
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`agreed that the receipt of input from a home’s owner in a process for
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`refining valuations rendered the claims novel and unobvious.” Prelim.
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`Resp. 17. Patent Owner’s assertion is inapposite. The proper focus is not on
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`whether the claim as a whole is novel and unobvious, but on whether the
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`technological feature alone is novel and unobvious. To that end, we are not
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`persuaded that entering user input to refine a previously determined
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`valuation is even a technological feature.
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`C. Claims 2, 5, 15-25, and 40 – Non-Statutory Subject Matter
`
`Petitioner asserts that claims 2, 5, 15-25, and 40 of the ’674 patent are
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`unpatentable under 35 U.S.C. § 101, because they are directed to non-
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`statutory subject matter. Specifically, Petitioner asserts that the challenged
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`claims (1) are directed to an abstract idea, (2) add no meaningful limitations
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`to an abstract idea, and (3) fail the machine-or-transformation test. Pet. 12-
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`19. Patent Owner counters by asserting that (1) the challenged claims are
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`not directed to a “fundamental tool of discovery” or “fundamental principle”
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`that preempts all uses of an abstract idea, and (2) the challenged claims are
`17
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`tied to a particular machine or apparatus. Prelim. Resp. 26-37. We are
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`persuaded by Petitioner’s assertions that claims 2, 5, 15-25, and 40 of the
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`’674 patent are, more likely than not, unpatentable under 35 U.S.C. § 101.
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`Pet. 12-19.
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`1.
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`“machine-or-transformation test”
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`Section 101 defines the subject matter that may be patented under the
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`Patent Act. Bilski v. Kappos, 138 S. Ct. 3218, 3225 (2010). A “process”
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`may be considered patentable subject matter if (1) it is tied to a particular
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`machine or apparatus, or (2) it transforms a particular article into a different
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`state or thing, also known as the “machine-or-transformation” test. Id. at
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`3224. Petitioner applies the “machine-or-transformation” test to claims 2, 5,
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`15-25, and 40. For example, Petitioner asserts that when the machine-or-
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`transformation test is applied to independent claim 15, the only machine
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`recited is a “computing system” in the preamble, and the only explicit
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`invocation of the computing system in the body of independent claim 15 is
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`in the step of “automatically determining a refined valuation.” According to
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`Petitioner, this is a general purpose computer tied to one method step, which
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`is insufficient to confer patent eligibility on independent claim 15.
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`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013)
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`(citing Bilski, 138 S. Ct. at 3227) (stating “the mere reference to a general
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`purpose computer will not save a method claim from being deemed too
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`abstract to be patent eligible”).
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`Patent Owner asserts that the method steps of independent claim 15
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`are tied intricately to a specific programmed computer. We disagree. The
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`relevant question is whether the recited “computing system” is a general
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`purpose computer, which would not confer patent eligibility, or a special
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`purpose computer, which likely would. Id. (“This inquiry focuses on
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`whether the claims tie the otherwise abstract idea to a specific way of doing
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`something with a computer, or a specific computer for doing something; if
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`so, they likely will be patent eligible. On the other hand, claims directed to
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`nothing more than the idea of doing that thing on a computer are likely to
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`face larger problems.”) We determine that these claims are closer to the
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`general purpose computer in DealerTrack, where the Federal Circuit
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`concluded that “adding a ‘computer-aided’ limitation to a claim covering an
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`abstract concept, without more, is insufficient to render [a] patent claim
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`eligible” where the claims “are silent as to how a computer aids the method,
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`the extent to which a computer aids the method, or the significance of a
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`computer to the performance of the method.” DealerTrack v. Huber, 674
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`F.3d 1315, 1333 (Fed. Cir. 2012). Here, independent claim 15 merely
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`recites that the refined valuation is “automatically determin[ed],” without
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`explaining as to what extent the recited computing system is involved in the
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`process, which is insufficient specificity to confer patent eligibility under the
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`machine-or-transformation test.
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`The same analysis is applicable to method claims 16-25 and 40, which
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`ultimately depend from independent claim 15. Claims 2 and 5 recite a
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`computer readable medium; however, the body of each of these claims
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`recites method steps. Similar to our analysis above for independent claim
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`15, we determine that the computer readable medium of claims 2 and 5 is
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`not a particular machine, and thus is also insufficient to confer patent
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`eligibility under the machine-or-transformation test.
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`2.
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`“preempt an abstract idea”
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`Petitioner asserts that the subject matter of claims 2, 5, 15-25, and 40
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`is abstract ideas. This is relevant, because we are mindful that although the
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`machine-or-transformation test may be a useful and important clue or
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`investigative tool, it is not the sole test for deciding whether an invention is a
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`patent-eligible “process” under § 101. Bilski, 138 S. Ct. at 3221. Instead,
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`the Supreme Court has instructed that the key to evaluating patent eligible
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`subject matter is recognizing the prohibition on the patenting of abstract
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`ideas, and determining specifically whether a claim would preempt use of an
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`abstract idea, thus effectively granting patentee a monopoly over the abstract
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`idea. Id. at 3231. See also Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)
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`(“It is conceded that one may not patent an idea. But in practical effect that
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`would be the result if the formula for converting BCD numerals to pure
`
`binary numerals were patented in this case. The mathematical formula
`
`involved here has no substantial practical application except in connection
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`with a digital computer, which means that if the judgment below is affirmed,
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`the patent would wholly pre-empt the mathematical formula and in practical
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`effect would be a patent on the algorithm itself.”) Additionally, the Supreme
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`Court has held that attempting to limit an abstract idea to one field of use, or
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`adding token post-solution components to the abstract idea, does not make
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`the abstract idea patentable. Bilski, 138 S. Ct. at 3230-31 (citing Parker v.
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`Flook, 437 U.S. 584, 590 (1978)).
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`When this analysis is applied to independent claim 15, we determine
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`that independent claim 15 recites an automatically determining step that is
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`directed to the abstract idea of refining a home valuation, based on input
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`from a user knowledgeable about the distinguished home that, at best, limits
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`the abstract idea to a computer environment. Such a limitation, however, is
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`a mere field of use limitation insufficient to confer patent eligibility to an
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`otherwise abstract idea. I
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