Paper 29
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`COMPANY, INC., EXPEDIA, INC., HOTELS.COM LP, HOTELS.COM
`GP, LLC, HOTWIRE, INC., ORBITZ WORLDWIDE, INC.,
`PRICELINE.COM, INC., TRAVELOCITY.COM LP, and YAHOO! INC.
`Petitioner
`
`v.
`
`METASEARCH SYSTEMS, LLC
`Patent Owner
`____________
`
`Case CBM2014-00001
`Patent 8,326,924 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`COMPANY, INC., EXPEDIA, INC., HOTELS.COM LP, HOTELS.COM
`GP, LLC, HOTWIRE, INC., ORBITZ WORLDWIDE, INC.,
`PRICELINE.COM, INC., TRAVELOCITY.COM LP, and YAHOO! INC.
`Petitioner
`
`v.
`
`METASEARCH SYSTEMS, LLC
`Patent Owner
`____________
`
`Case CBM2014-00001
`Patent 8,326,924 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`SUMMARY
`Petitioner American Express Company et al. filed a petition seeking a
`covered business method (“CBM”) patent review of Patent Owner MetaSearch
`Systems, LLC’s U.S. Patent No. 8,326,924 (“the ’924 patent”) (Ex. 1001)
`pursuant to Section 18 of the Leahy-Smith America Invents Act (“AIA”).1 The
`Petition (Paper 20; “Pet.”) challenges all claims (1-12) of the ’924 patent as
`unpatentable under 35 U.S.C. §§ 101 and 103(a). The parties have filed a joint
`motion to withdraw the Petition’s request for trial as to all claims except for
`claims 2, 6, and 8. Patent Owner filed a preliminary response opposing
`institution of the review. Paper 26 (“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), 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.
`
`We determine that the ’924 patent is a covered business method patent.
`Petitioner has demonstrated that it is more likely than not that claims 2, 6, and
`8 are unpatentable under 35 U.S.C. § 101 as directed to non-statutory subject
`matter and are, in addition, unpatentable under 35 U.S.C. § 103(a). Therefore,
`we institute a covered business method patent review for claims 2, 6, and 8 of
`the ’924 patent based upon Petitioner’s challenge.
`
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`
`2
`
`
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`CBM2014-00001
`Patent 8,326,924 B1
`
`
`JOINT MOTION
`The parties have filed a joint motion, authorized by the Board, to
`withdraw the Petition’s request for trial as to all claims except for claims 2, 6,
`and 8. Papers 24, 25.2 When instituting post-grant (or CBM patent) review, the
`Board may authorize the review to proceed on all or some of the challenged
`claims and on all or some of the grounds of unpatentability asserted for each
`claim. 37 C.F.R. §§ 42.208(a), 42.300(a).
`The joint motion was filed before any preliminary response was due from
`Patent Owner. The Preliminary Response addresses only claims 2, 6, and 8.
`The Board had not instituted trial and had not entered a final decision at the
`time of the motion. In view of the present circumstances, we grant the joint
`motion to withdraw Petitioner’s challenge of all claims except for claims 2, 6,
`and 8. Accordingly, our review of Petitioner’s challenge to patentability will be
`limited to those claims.
`
`
`
`2 The joint motion captions fewer than the ten real parties-in-interest captioned
`in this Decision and identified in the Petition at page 1 and in the Mandatory
`Notice (Paper 2). We presume that the parties are identified properly in this
`Decision’s caption. Petitioner is encouraged to file an updated mandatory
`notice if necessary. See 35 U.S.C. § 322(a)(2) (“the petition identifies all real
`parties in interest”); 37 C.F.R. § 42.8 (identity of each real party-in-interest
`must be filed within 21 days of a change of the information).
`
`
`3
`
`
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`CBM2014-00001
`Patent 8,326,924 B1
`
`
`THE CHALLENGED PATENT
`The ’924 patent describes a method for metasearching3 on the Internet
`that includes causing an advertisement associated with the search to be
`displayed along with the results of the search. Ex. 1001, Abstract.
`
`Illustrative Claim
`2. A process for metasearching on the Internet, wherein the
`steps of the process are performed by a metasearch engine
`executing on a hardware device, the process comprising the steps
`of:
`
`
`(a) receiving a Hypertext Transfer Protocol request from a
`client device for the metasearch engine to send at least one search
`query to a plurality of unique hosts that provide access to
`information to be searched, wherein the Hypertext Transfer
`Protocol request from the client device is associated with at least
`one travel related item that may be ordered from a plurality of
`travel related items that may be ordered;
`
`(b) sending the at least one search query to the plurality of
`unique hosts in response to the Hypertext Transfer Protocol request
`received from the client device;
`
`(c) receiving search results from the plurality of unique hosts
`in response to the at least one search query sent to the plurality of
`unique hosts;
`
`(d) incorporating the received search results into a results list
`and incorporating the results list into a response;
`
`(e) causing at least one advertisement associated with the at
`least one item that may be ordered to be displayed in the response;
`
`
`
`3 A discussion of “metasearching” appears in our claim interpretation section,
`infra.
`
`4
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`CBM2014-00001
`Patent 8,326,924 B1
`
`
`(f) communicating the response from the metasearch engine
`to the client device;
`
`(g) receiving another Hypertext Transfer Protocol request
`from the client device for placing an order for the at least one item;
`
`(h) processing the order.
`
`
`
`COVERED BUSINESS METHOD PATENT
`Related Litigation
`In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it has
`been sued for infringement of the ’924 patent. Pet. 1. Patent Owner does not
`challenge the certification. An identified related case that involves the ’924
`patent is MetaSearch Systems, LLC v. American Express Co., No. 1:12-cv-
`01225-LPS (D. Del. filed Sept. 28, 2012).
`
`
`Used in the Practice, Administration, or Management
`of Financial Products or Services
`A covered business method 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,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1). The legislative history of the AIA “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.’” 77 Fed. Reg. 48,735 (Aug. 14, 2012)
`(quoting 157 CONG. REC. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer)).
`
`5
`
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`
`
`Petitioner submits that the ’924 patent claims recite placing an “order”
`and processing the order, which encompasses an agreement to move money or
`other consideration. Pet. 20. The ’924 patent teaches that “orders” may include
`purchases or payments, and confirmations thereof. Id. at 20-21; Ex. 1001,
`col. 8, ll. 24-28. Petitioner further points out that the ’924 patent specification
`discusses application of the invention to financial markets and financial
`instruments, and that travel-related items, such as airline tickets, are listed as an
`item for which pricing retrieval and analysis may be conducted. Pet. 21-22;
`Ex. 1001, col. 4, ll. 10-14. Moreover, Petitioner notes that “travel-related
`items” may include financial products or services, such as travel insurance,
`payment plans, traveler’s checks, currency exchange services, and credit card
`applications. Pet. 22. Patent Owner responds that “[t]he mere fact that one
`could search for financial products or services does not make the search a
`financial product or service, or data processing associated with a financial
`product or service.” Prelim. Resp. 27-28.
`Based on our review, ’924 patent claim 2, for example, recites more than
`“searching” or “data processing.” Step (g) of the claim recites receiving a
`request from the client device for placing an order. Step (h) of the claim recites
`processing the order. Thus, at least one claim of the patent covers data
`processing or other operations that are financial in nature, incidental to a
`financial activity, or complementary to a financial activity (e.g., ordering an
`item and processing the order for the item).
`
`Not a Technological Invention
`In view of the “technological inventions” exception of AIA § 18(d)(1),
`the legislative history of § 18(d)(1), and the definition of “technological
`
`6
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`
`invention” under 37 C.F.R. § 42.301(b), the Office Patent Trial Practice Guide
`provides the following guidance with respect to claim content that typically
`would 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.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if the 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. 48,763-64 (Aug. 14, 2012).
`Petitioner submits that the ’924 patent claims are not directed to a
`technological invention but to a metasearch engine that includes only
`technology that was conventional in the 1990s. Pet. 24-27. Patent Owner, on
`the other hand, argues that the ’924 patent is for a “technological invention”
`because it relates to a metasearch engine that can perform the claimed steps.
`Prelim. Resp. 28. Thus, Patent Owner relies on the metasearch engine itself as
`rendering a technological invention.
`According to the evidence that Petitioner provides, metasearch engines
`were conventional technology prior to the invention. In particular, the
`declaration by Dr. Oren Etzioni refers to a supporting exhibit that describes
`“MetaCrawler,” a metasearch engine that Dr. Etzioni avers to have been
`available to the public in February 1998. Ex. 1008 ¶¶ 27-33; Ex. 1013.
`Because we fail to see how at least claim 2 of the ’924 patent recites the use of
`
`7
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`CBM2014-00001
`Patent 8,326,924 B1
`
`any non-prior-art technology, we consider the patent not to be exempt from
`covered business method patent review due to a “technological invention”
`exception.
`
`Conclusion -- A Covered Business Method Patent
`A single claim is sufficient to institute a covered business method patent
`review because section 18(d)(1) of the AIA indicates a patent is eligible for
`review if the subject matter of at least one claim is directed to a covered
`business method. See Transitional Program for Covered Business Method
`Patents – Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (Response
`to Comment 8); see also Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co.,
`IPR2012-00002, Paper 66 (Final Written Decision) (PTAB Jan. 23, 2014). In
`view of the foregoing, we conclude that the presence of at least claim 2
`determines that the ’924 patent is a covered business method patent under AIA
`§ 18(d)(1).
`
`
`CLAIM INTERPRETATION
`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. 48, 697-98 (Aug. 14, 2012). 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)).
`
`8
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`Patent 8,326,924 B1
`
`There is a “heavy presumption” that a claim term carries its ordinary and
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002). The “ordinary and customary meaning” is that which
`the term would have to a person of ordinary skill in the art in question. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`I. Metasearching
`Petitioner submits that the broadest reasonable interpretation of
`“metasearching” is sending a user’s unstructured keyword query or queries to
`plural hosts, as requested by a user, and grouping, sorting, and returning to the
`user the results received from each host. Pet. 29. Patent Owner, on the other
`hand, contends that the broadest reasonable interpretation of the term is sending
`at least one search query to one or more information sources “substantially
`simultaneously.” Prelim. Resp. 12. Patent Owner argues that the definition of
`the term should include “substantially simultaneously” because of client-server
`multitasking or “metasearching” as described in the ’924 patent and because of
`the prosecution history of an earlier application. Id. at 13-14.
`Patent Owner refers to instances in the ’924 patent where the terms
`“substantially simultaneously” and “on-the-fly” are used. Ex. 1001, e.g., col. 2,
`ll. 14-19: “A client-server multitasking system and process are needed, which
`are capable of information and/or service retrieval from the same and/or
`different ones of servers substantially simultaneously and on-the-fly, using the
`same and/or different ones of queries, and sorting, grouping, and/or organizing
`responses therefrom substantially on-the-fly.” The claims, however, do not use
`the term “substantially simultaneously” or “on-the-fly.” Although an inventor
`is free to define the specific terms used to describe the invention, “this must be
`
`9
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`Patent 8,326,924 B1
`
`done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
`F.3d 1475, 1480 (Fed. Cir. 1994).
`To act as its own lexicographer, a patentee must “clearly set
`forth a definition of the disputed claim term” other than its plain
`and ordinary meaning. It is not enough for a patentee to simply
`disclose a single embodiment or use a word in the same manner in
`all embodiments, the patentee must “clearly express an intent” to
`redefine the term.
`
`Thorner v. Sony Computer Entm’t. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (citations omitted).
`Patent Owner also points to a portion of the prosecution history of U.S.
`Application No. 09/510,749,4 where the applicant used the term “substantially
`simultaneously” in discussing a preliminary amendment. Prelim. Resp. 14; Ex.
`2002 at 29 (Preliminary Amendment filed Aug. 25, 2003). According to Patent
`Owner, those statements made during prosecution “are relevant and controlling
`as to the scope of the claimed inventions in the ’924 Patent.” Prelim. Resp. 14.
`However, the evidence suggests the exact opposite of what Patent Owner
`submits the evidence to show. Although the applicant did use the term
`“substantially simultaneously” in remarks accompanying the preliminary
`amendment, the claims presented in the preliminary amendment specifically
`recited the language. See Ex. 2002 at 5 (claim 99, step (c)), 16 (claim 128, step
`(c)), 20 (claim 135, step (c)), 24 (claim 142, step (c)). Thus, the applicant, now
`patentee, knew how to limit the claims commensurate with the scope of
`“substantially simultaneously” but chose not to in the claims of the ’924 patent.
`
`
`4 The ’924 patent claims benefit of the earlier filing date of Application No.
`09/510,749 pursuant to 35 U.S.C. § 120.
`
`10
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`
`Patent Owner also submits that “metasearching” should not be limited to
`“unstructured” keyword queries as proposed by Petitioner. Prelim. Resp. 14.
`Petitioner distinguishes an “unstructured” keyword query from a “structured”
`search, which specifies a desired field value (or range of values) for one or
`more fields. Ex. 1008 (Etzioni Decl.) ¶ 11. Dr. Etzioni avers that an
`“unstructured” query includes keyword phrases, Boolean searches, and natural
`language searches. See id. ¶ 19. According to Dr. Etzioni, “structured”
`searches were available in the 1990s on comparison shopping sites. Id. ¶¶ 12-
`15. We agree with Patent Owner that Dr. Etzioni testifies that search engines in
`the prior art could conduct searches based on structured and unstructured
`queries. Prelim. Resp. 15. We disagree, however, with any suggestion that the
`declarant alleged that metasearch engines in the prior art provided the
`capability of “structured” searches. See Ex. 1008 ¶¶ 23-24.
`Petitioner’s proffered interpretation of “metasearching” appears to be
`consistent with Dr. Etzioni’s averments and supporting Exhibit. “MetaCrawler
`sends your queries to several Web search engines, including Lycos, Infoseek,
`WebCrawler, Excite, AltaVista, and Yahoo. MetaCrawler queries the other
`search engines, organizes the results into a uniform format, ranks them by
`relevance, and returns them to the user.” Ex. 1013 at 3. For the purposes of
`this decision, we adopt Petitioner’s construction. On this record, we conclude
`that “metasearching” refers to an unstructured keyword query or queries to
`plural hosts, as requested by a user, and grouping, sorting, and returning to the
`user the results received from each host. Patent Owner has not shown that the
`disclosure of the ’924 patent requires departure from the presumed ordinary and
`customary meaning of the term.
`
`
`11
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`
`II. Results List
`Petitioner submits that the broadest reasonable interpretation of the claim
`phrase “incorporating the received results into a results list” is “including the
`results received from each host into one or more lists, including (when so
`requested) removing duplicates and ranking the results across the hosts by order
`of relevance.” Pet. 34 (emphasis omitted). Patent Owner, on the other hand,
`submits that construction of the entire phrase is unnecessary because one of
`ordinary skill in the art would understand the meaning, with the only term that
`might need construction being “results list.” Prelim. Resp. 21. Patent Owner
`contends that “results list” should be interpreted in accordance with the plain
`and ordinary meaning of the term—simply, “a list of information.” Id. at 21-22.
`We find Patent Owner’s interpretation to be consistent with the required
`broadest reasonable interpretation of the term. Although Petitioner points to
`various descriptions of various operations in the ’924 patent (Pet. 34-35),
`Petitioner has not identified sufficient reason to depart from the plain and
`ordinary meaning of a “results list.” The term “list” is not at issue.
`Accordingly, on this record, we interpret “results list” as a list of information.
`The phrase “incorporating the received results into a results list” means
`incorporating the results into a list of information.
`
`
`SECTION 101 CHALLENGE
`35 U.S.C. § 101 -- Principles of Law
`“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.” 35 U.S.C. § 101. Supreme Court precedents provide three
`
`12
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`
`specific exceptions to the broad categories of § 101: laws of nature, physical
`phenomena, and abstract ideas. Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010).
`In Gottschalk v. Benson, 409 U.S. 63 (1972), the claims were directed to
`a method for converting binary-coded-decimal numerals into pure binary
`numerals for use with a general-purpose digital computer of any type. Benson,
`409 U.S. at 64. The method steps in the body of the claim incorporated
`portions of a computer (a reentrant shift register) into the steps. The question
`before the Court was “whether the method described and claimed [wa]s a
`‘process’ within the meaning of the Patent Act.” Id. The Court characterized
`the claimed invention as “a generalized formulation for programs to solve
`mathematical problems of converting one form of numerical representation to
`another.” Id. at 65. The Court held that the claimed method was directed to
`non-statutory subject matter because “[t]he mathematical formula involved here
`has no substantial practical application except in connection with a digital
`computer, which means that if the judgment below is affirmed, the patent would
`wholly pre-empt the mathematical formula and in practical effect would be a
`patent on the algorithm itself.” Id. at 71-72.
`“To salvage an otherwise patent-ineligible process, a computer must be
`integral to the claimed invention, facilitating the process in a way that a person
`making calculations or computations could not.” Bancorp Servs., L.L.C. v. Sun
`Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012). “[T]he
`relevant inquiry is whether a claim, as a whole, includes meaningful limitations
`restricting it to an application, rather than merely an abstract idea.”
`Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344 (Fed. Cir. 2013). When a
`general-purpose computer is employed only for its most basic function, such as
`the performance of repetitive calculations, such claim recitations do not impose
`
`13
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`meaningful limits on claim scope. Bancorp, 687 F.3d at 1278. When
`insignificant computer-based limitations are set aside from claims that contain
`such limitations, the question under § 101 reduces to an analysis of what
`additional features remain in the claims. Id. at 1279. Using a computer to
`accelerate an ineligible mental process does not make that process patent-
`eligible. Id.
`
`Section 101 Challenge
`The Supreme Court instructs us that the “Court’s precedents establish
`that the machine-or-transformation test is a useful and important clue, an
`investigative tool, for determining whether some claimed inventions are
`processes under § 101.” Bilski v. Kappos, 130 S. Ct. at 3227.5 Petitioner
`submits that the invention of the ’924 patent fails the machine-or-
`transformation test. Pet. 43-46. Patent Owner responds that the claims pass the
`transformation prong of the test. Prelim. Resp. 35-37. In particular, Patent
`Owner alleges that the transformation of search results into a response is a
`transformation of an article to a different state or thing. Id. at 36-37. Patent
`Owner cites, for support, two cases of the Court of Appeals for the Federal
`Circuit, neither of which is helpful for Patent Owner’s position because neither
`holds that transformation of an article rendered the claims patent-eligible: SiRF
`Technology, Inc. v. International Trade Commission, 601 F.3d 1319, 1332 (Fed.
`Cir. 2010), and Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d
`859, 862 (Fed. Cir. 2010).
`
`
`5 Statements that may be read as questioning application of the test in the
`“Information Age” in Part II.B.2 of the opinion were not adopted by a majority
`of the Court. See id. at 3223 n.1.
`
`
`14
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`
`With respect to transformation of an article to a different state or thing,
`the Federal Circuit stated, in the case of In re Bilski, 545 F.3d 943 (Fed. Cir.
`2008) (en banc), aff’d on other grounds sub nom. Bilski v. Kappos, 130 S. Ct.
`3218, that “‘X-ray attenuation data [in In re Abele]6 clearly represented physical
`and tangible objects.’” Bilski, 545 F.3d at 962-63. “The Federal Circuit further
`noted that ‘the electronic transformation of the data itself into a visual depiction
`in Abele was sufficient’ to render the process in Abele ‘patent-eligible’ under 35
`U.S.C. § 101.” Id. at 963. In Abele, the Court determined that the “X-ray
`attenuation data” were available only when an X-ray beam was produced by a
`computerized axial tomography (CAT) scanner, passed through an object, and
`detected upon its exit. The “X-ray attenuation data,” thus, were used in an
`algorithm that improved a conventional CAT-scan process, comparable to the
`improved process for curing synthetic rubber in the Supreme Court case of
`Diamond v. Diehr, 450 U.S. 175 (1981). See Abele, 684 F.2d at 907-09. The
`“transformation” of search results into a response as set forth by the ’924 patent
`claims, however, is more similar to a non-statutory claim in Abele, which
`constituted calculating and displaying values. See id. at 908. Searching,
`retrieving, and organizing data do not represent a type of “transformation” that
`has been determined sufficient to render a claimed method statutory by the
`Supreme Court or by the Federal Circuit. See, e.g., CyberSource Corp. v. Retail
`Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (mere collection and
`organization of data regarding credit card numbers and Internet addresses is
`insufficient to meet the transformation prong of the test).
`
`
`6 684 F.2d 902 (CCPA 1982), abrogated by In re Bilski, 545 F.3d at 958-59.
`
`15
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`
`We note, however, that failure to satisfy the machine-or-transformation
`test is not dispositive in the § 101 inquiry. Id. Petitioner submits, further, that
`the ’924 patent claims are directed to an abstract marketing idea. Pet. 37-42.
`Patent Owner argues that the alleged abstract idea of placing keyword
`ads on a metasearch site and allowing users to place orders for an item is
`limited by the claim language. In particular, Patent Owner submits that claims
`2 and 8 are “meaningfully limited” because the selected advertisement is
`“associated with the at least one item to be ordered.” Claim 6 is “limited” such
`that the selected advertisement is “associated with a portion of the Hypertext
`Transfer Protocol.” Prelim. Resp. 31. According to Patent Owner:
`These claim limitations are meaningful because they exclude
`other ways to associate an advertisement to a metasearch. For
`instance, the claims do not cover basing the advertisement on the
`location of the user submitting the search, on the time the search
`query was submitted, on user preferences, or browsing history.
`The fact that there are multiple, practical implementations of the
`abstract idea argued by Petitioners demonstrates that these
`limitations are meaningful.
`
`
`Id. at 31-32.
`We are not persuaded that the claim limitations are “meaningful” due to
`excluding, allegedly, other ways to associate an advertisement to a metasearch.
`The claims contain no such exclusion. The claims do not preclude, for
`example, additionally basing the selected advertisement on the location of the
`user submitting the search, on the time the search query was submitted, on user
`preferences, or on browsing history. Likewise, Patent Owner does not explain
`sufficiently why the advertising-related claim recitations should be deemed
`“meaningful” limitations due to different advertising that may be selected based
`on the words in a query. Id. at 32.
`
`16
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`Patent Owner further submits that the claims contain limitations that are
`“meaningful” like the limitations found in the claims in Ultramercial. Id. at 33.
`In Ultramercial, however, the invention was limited to a particular computer-
`based method for monetizing copyrighted products over the Internet, which
`included offering free access to media products on the condition that the
`consumer viewed advertising. Ultramercial, 722 F.3d at 1350. As such, the
`patent did not “simply claim the age-old idea that advertising can serve as
`currency.” Id. Patent Owner does not point to any comparable restrictions in
`scope in, for example, the steps of receiving (Hypertext Transfer Protocol)
`requests, sending, incorporating, causing, communicating, and processing as set
`forth in claim 2, each of which can be performed in conventional ways by
`general purpose computers. Moreover, Patent Owner’s reading of
`Ultramercial, if understood to suggest that adding recitations of general purpose
`digital computer structure or function to a claim renders the claim statutory
`without further inquiry, would be at odds with earlier precedents of the
`Supreme Court and the Federal Circuit. See, e.g., Benson, 409 U.S. at 64-65;
`Bancorp, 687 F.3d at 1278.
`Similarly, Patent Owner’s reliance on the Board’s decision not to
`institute trial on § 101 grounds in Apple, Inc. v. Sightsound Technologies, LLC,
`CBM2013-00019, Paper 17 (PTAB Oct. 8, 2013), is unpersuasive. In that case,
`the claims were limited to transmitting and storing a digital audio signal—i.e., a
`digital representation of sound waves. Id. at 8, 18-19. The signal was stored in
`a particular memory, transmitted with a particular device over a particular
`medium, received with a particular device, and stored in a second memory. As
`such, the Board held that the claim as a whole did not recite merely transferring
`money from one party to another to buy music and then transmitting the music
`
`17
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`purchased with that money. Id. at 18-19. In this case, the claims before us (2,
`6, and 8) do not recite any specific combination of computer components, at
`specific locations, that interact in a specific way to accomplish the steps of the
`method. The claims do not recite any particular computer components at any
`specific location(s), any particular components for transmitting signals (such as
`a transmitter), any particular mechanism for transferring the signals (such as a
`transmission line), or any particular components for receiving signals (such as a
`receiver). The recitation of computer functions in the claims does not confine
`the preemptive effect of the claims because the underlying method has “no
`substantial practical application except in connection with a digital computer.”
`Benson, 409 U.S. at 71. The conventional computer operations, such as
`receiving data, sending data, searching for data, and processing data, do not
`transform the abstract idea into a patent-eligible application of the idea. Cf.
`Mayo Collaboration Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1298
`(2012) (purely “conventional or obvious” limitations are “normally not
`sufficient to transform an unpatentable law of nature into a patent-eligible
`application of such a law”).
`
`Conclusion — Non-Statutory Subject Matter
`On this record, we conclude that Petitioner has demonstrated that it is
`more likely than not that claims 2, 6, and 8 are unpatentable under 35 U.S.C.
`§ 101 as being directed to non-statutory subject matter.
`
`
`18
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`SECTION 103(a) CHALLENGE
`
`Prior Art
`Mamma.com Web site captured by Internet Archives (May 5, 1998). (Ex.
`1005) (“Mamma.com”)7
`
`Uwe M. Borghoff et al., Constraint-based Information Gathering for a
`Network Publication System, Proc. PAAM ’96, Apr. 22-24, 1996 (Ex. 1006)
`
`Uwe M. Borghoff et al., Agent-Based Document Retrieval for the
`European Physicists: A Project Overview, Proc. 2nd Int’l Conf. on the Practical
`Application of Intelligent Agents & Multi-Agent Tech. (PAAM ’97), Apr. 21-
`23, 1997 (Ex. 1007)8
`
`Proposed Section 103(a) Grounds
`Petitioner submits that claims 2, 6, and 8 are unpatentable under 35
`U.S.C. § 103(a) over Knowledge Broker and Mamma.com. Petitioner further
`challenges the claims under 35 U.S.C. § 103(a) over U.S. Application No.
`09/510,749 (an application to which the ’924 patent claims priority under 35
`U.S.C. § 120), PCT WO 01/63406 A1 (a published PCT applic
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