`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REGIONS FINANCIAL CORPORATION, ADVANCE AMERICA,
`CASH ADVANCE CENTERS, INC., and CNU ONLINE HOLDINGS, LLC
`F/K/A CASH AMERICA NET HOLDINGS, LLC
`Petitioners
`v.
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`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
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`
`
`Case CBM2014-00012
`Patent 6,625,582
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`PATENT OWNER RETIREMENT CAPITAL ACCESS
`MANAGEMENT COMPANY LLC'S PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
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`

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`TABLE OF CONTENTS
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`I. BACKGROUND OF THE INVENTION ....................................................... 5
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`II. PETITIONERS CANNOT MEET THEIR BURDEN DUE TO
`THEIR FAILURE TO SUBMIT REQUISITE EVIDENCE .................... 6
`
`III. SECTION 101 JURISPRUDENCE ............................................................... 11
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`A. Only Claims That Monopolize An Abstract Idea – Without More –
`Are Unpatentable .................................................................................... 11
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`B. Lack Of Abstractness Does Not Require Proof That Any Limitation
`On The Identified Abstract Concept Is Novel Or Nonobvious ........... 17
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`IV. PETITIONERS CONTEND THE '582 PATENT IMPROPERLY
`PREEMPTS OTHERS FROM "ADVANCING FUNDS BASED
`ON FUTURE CASH FLOW." ................................................................... 18
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`V. PETITIONERS CANNOT SHOW THAT ANY CLAIM IS
`UNPATENTABLE UNDER 35 U.S.C. § 101. ........................................... 18
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`A. The Claims Of The '582 Patent Were Narrowed During Prosecution
`To Cover Less Than The Allegedly Abstract Concept At Issue ......... 18
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`1.
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`2.
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`3.
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`4.
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`Petitioners have admitted that the '582 patent claims do not cover
`every practical application of the supposedly abstract concept ............ 19
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`The Examiner's express finding that limitations of the '582 patent
`claims added to overcome prior art were novel and non-obvious
`precludes a finding here that those same limitations would have
`been routine and conventional .............................................................. 22
`
`The Board's finding in a related proceeding that the without
`encumbering limitation is insufficient because the '582 patent
`supposedly fails to explain how to comply with U.S. laws is
`flawed and irrelevant with respect to these Petitioners ......................... 25
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`Petitioners' contention that the without encumbering and without
`violating legal proscriptions limitations were conventional, routine
`and insignificant is unsupported by any evidence whatsoever ............. 30
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`i
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`B. None Of The '582 Patent Claims Involve Purely Mental Processes
`That Could Be Performed Without The Use Of A Computer ............ 32
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`VI. SECTION 101 IS NOT A PROPER GROUND UPON
`WHICH A COVERED BUSINESS METHOD REVIEW
`MAY BE MAINTAINED ........................................................................... 42
`
`A. There is no authority to cancel any claims of the '582 patent on
`the basis of patent eligibility under Section 101. .................................. 42
`
`B. Challenges to the validity of a patent in CBM Review are
`limited to grounds specified in the Patent Act as "conditions
`for patentability." .................................................................................... 42
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`C. The text of the Patent Act supports the conclusion that Section
`101 is not a "condition for patentability." ............................................ 43
`
`D. The text of the AIA supports the conclusion that Section 101 is
`not a statutorily authorized basis for conducting a CBM Review. ..... 46
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`E. The legislative history of the AIA supports the conclusion that
`Section 101 is not a statutorily authorized basis for conducting
`a CBM Review. ........................................................................................ 47
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`F. The PTAB's conclusion that Section 101 is a valid ground for
`instituting a CBM Review is incorrect. ................................................. 48
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`VII. CONCLUSION ............................................................................................ 50
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`ii
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`CASES  
`
`TABLE OF AUTHORITIES
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) ................................................................. 7, 14
`
`Aristrocrat Techs., Austl. PTY Ltd. v. Int’l Game Tech.,
`543 F.3d 657 (Fed. Cir. 2008) ....................................................................... 50
`
`Bilski v. Kappos,
`130 S.Ct. 3218 (2010) ............................................................................ passim
`
`CLS Bank Int'l v. Alice Corp. Pty. Ltd.,
`717 F.3d 1269 (Fed. Cir. 2013) ............................................................. passim
`
`Cohens v. Virginia,
`19 U.S. 264 (1821) ........................................................................................ 49
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ......................................................... 12, 41, 49
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) ...................................................................... 7, 16, 43, 50
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`Gottschalk v. Benson,
`409 U.S. 63 (1972) ........................................................................................ 12
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .............................................................................. 48, 49, 50
`
`In re American Academy of Science Tech Center,
`367 F.3d 1359 (Fed. Cir. 2004) ..................................................................... 35
`
`In re Hamilton,
`882 F.2d 1576 (Fed. Cir. 1989) ....................................................................... 8
`
`In re Pearson,
`494 F.2d 1399 (CCPA 1974) .......................................................................... 8
`
`In re Prater,
`415 F.2d 1393 (CCPA 1969) ........................................................................ 35
`
`
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`iii
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`In the Matter of Cash Am. Int'l, Inc.,
`File No. 2013-CFPB-0008 ............................................................................ 31
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S.Ct. 1289 (2012) ............................................................................ passim
`
`Myspace, Inc. v. GraphOn Corp.,
`672 F.3d 1250 (Fed. Cir. 2012) ..................................................................... 50
`
`Research Corp. Technologies, Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ....................................................................... 29
`
`SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`slip op. CBM2012-00001 (PTAB Jan. 9, 2013) ..................................... 44, 48
`
`SAP America, Inc. v. Versata Development Group, Inc.,
`Case CBM2012-00001 (MPT), 2013 WL 3167735 (June 11, 2013) ...... 10, 15
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`Star Scientific., Inc. v. R.J. Reynolds Tobacco Co.,
`537 F.3d 1357 (Fed.Cir.2008) ....................................................................... 29
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`Tom v. First Am. Credit Union,
`151 F.3d 1289 (10th Cir. 1998) ..................................................................... 31
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`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed.Cir.2013) ................................................................ passim
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`United States v. Telectronics, Inc.,
`857 F.2d 778 (Fed. Cir. 1988) ....................................................................... 29
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`Wright v. United States,
`302 U.S. 583 (1938) ...................................................................................... 49
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`OTHER AUTHORITIES  
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`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) ........................................................ 7
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`35 U.S.C. § 101 ................................................................................................ passim
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`35 U.S.C. § 102 ................................................................................................ passim
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`35 U.S.C. § 103 ................................................................................................ passim
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`35 U.S.C. § 112 ........................................................................................... 29, 33, 43
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`iv
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`35 U.S.C. § 251 ....................................................................................................... 43
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`35 U.S.C. § 282 ........................................................................................... 42, 43, 44
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`35 U.S.C. § 321 ................................................................................................. 42, 44
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`35 U.S.C. § 322 ................................................................................................... 8, 11
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`35 U.S.C. § 326(e) ..................................................................................................... 7
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`H. Rep. 112-98 (June 1, 2011) ................................................................................ 48
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`Leahy-Smith American Invents Act, Pub. L. No. 112-29,
`§ 18(a)(1), 125 Stat. 284 (2011) ...................................................... 7, 8, 46, 47
`
`Manual of Patent Examining Procedure § 2111 ...................................................... 35
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`Social Security Act, the Employee Retirement Income Security Act
`of 1974 ................................................................................................ 5, 27, 31
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`The American Heritage Dictionary of the English Language
`(4th ed. 2000) ................................................................................................. 13
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`REGULATIONS  
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`37 C.F.R. § 42.207(a) ................................................................................................ 1
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`EXHIBITS
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Consent Order, In the Matter of Cash Am. Int'l, Inc., File No.
`2013-CFPB-0008, Consumer Financial Protection Bureau
`Administrative Proceeding
`
`SAP America, Inc. v. Versata Development Group, Inc.,
`CBM2012-00001 (MPT), 2013 WL 3167735 (Patent Tr. &
`App. Bd. June 11, 2013)
`
`SAP America, Inc. v. Versata Development Group, Inc.,
`CBM2012-00001 (MPT), Paper 36, (Patent Tr. & App. Bd.
`January 9, 2013)
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`Exhibit 2004
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`U.S. Patent No. 5,933,815
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`Exhibit 2005
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`Office Action dated March 13, 2002
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`Exhibit 2006
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`Applicants’ Response to Office Action dated December 11,
`2002
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`Exhibit 2007
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`Notice of Allowability
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`Exhibit 2008
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`USB Institution Decision
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`Exhibit 2009
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`RCAMC Response to US Bancorp’s CBM Review, Case
`CBM2013-00014
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`Exhibit 2010
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`Regions Supplemental Responses to Interrogatories
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`Exhibit 2011
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`Applicants’ Response to Office Action dated June 10, 2002
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`vi
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`Exhibit 2012
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`US Bancorp’s First Supplemental Responses to Interrogatories
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`Exhibit 2013
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`Privacy Policy at CashNetUSA
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`vii
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`Pursuant to 37 C.F.R. § 42.207(a), Patent Owner, Retirement Capital Access
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`Management Company LLC ("RCAMC" or "Patent Owner"), submits this
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`Preliminary Response in opposition to Regions Financial Corporation ("Regions"),
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`Advance America, Cash Advance Centers, Inc. ("Advance America"), and CNU
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`Online Holdings, LLC f/k/a Cash America Net Holdings, LLC ("CNU")
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`(collectively, “Petitioners”) Petition for Covered Business Method Patent Review of
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`U.S. Patent No. 6,625,582 ("the '582 Patent") ("Petition").
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`INTRODUCTION
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`Petitioners contend the claims of the '582 patent at issue are invalid pursuant
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`to 35 U.S.C. § 101 because they are directed to ineligible subject matter—a mere
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`abstract concept. Petitioners have identified no evidence to support their conclusory
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`arguments that limitations in the claims at issue would have been routine and
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`conventional at the relevant time. Based on this record and the law relating thereto,
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`the Board must find in favor of Patent Owner.
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`“[A]ll inventions at some level embody ... [an] abstract idea,” and dissecting
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`from a claim all of its concrete limitations is one step closer towards “eviscerat[ing]
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`patent law.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289,
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`1293 (2012). Indeed, “[A]ny claim can be stripped down, simplified, generalized,
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`or paraphrased to remove all of its concrete limitations, until at its core, something
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`that could be characterized as an abstract idea is revealed. A court cannot go
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`1
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`hunting for abstractions by ignoring the concrete, palpable, tangible limitations of
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`the invention the patentee actually claims.” Ultramercial, Inc. v. Hulu, LLC, 722
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`F.3d 1335, 1344 (Fed.Cir. 2013) (Ultramercial II). Thus, any claim that is not so
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`manifestly abstract as to preempt a fundamental concept or idea is patent eligible.
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`Petitioners offer no evidence in support of their position that the claims of the
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`'582 patent are directed to unpatentable, abstract ideas under 35 U.S.C. § 101. For
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`this reason alone, the Board should decline to institute review. It is Petitioners'
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`burden, not anyone else's, to prove by a preponderance of evidence that each of the
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`challenged claims of the '582 Patent is directed to an unpatentable, abstract idea
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`under 35 U.S.C. § 101.1
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`Petitioners contend that the claims of the '582 patent amount to a monopoly
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`on the abstract concept of "advancing funds based on future cash flow." They argue
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`all of the claim limitations are so insignificant, conventional, or routine that each of
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`the claims effectively covers the abstract concept itself. They do so by improperly
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`ignoring the claim limitations, and without identifying any evidence, such as
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`relevant expert opinion testimony, that the concrete, narrowing limitations would
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`have been routine and conventional at the relevant time. Yet, analyzing whether
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`something was conventional or routine involves analyzing facts. Likewise, any
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`inquiry into the scope of preemption—how much of the field is tied up by the
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`1 Petitioners do not contend that any claim of the '582 patent fails to fit within one
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`2
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`claim—by definition will involve historic facts: identifying the field, the available
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`alternatives, and the preemptive impact in that field. Petitioners' reliance on the
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`'582 patent itself to attempt to make the required showing is plainly insufficient and
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`wrong. Petitioners cannot and do not meet their burden of proof.
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`The claims of the '582 Patent encompass significantly less than the identified
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`abstract idea of advancing funds based on future retirement payments. Indeed, each
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`of the challenged claims of the '582 Patent includes significant, inventive
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`limitations, including, for example, limitations that funds are advanced without
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`encumbering the beneficiary's right to the future retirement payments and without
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`violating legislative proscriptions in the United States against alienation of future
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`retirement benefits. The Patent and Trademark Office determined that this claim
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`limitation was both novel and nonobvious, and Petitioners do not point to even a
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`scintilla of evidence that this limitation, or any other claim limitation, was routine
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`or conventional.2 The examiner's original finding that these limitations were neither
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`disclosed nor even suggested in the prior art is unrebutted by Petitioners. A finding
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`that Petitioners are more likely than not to meet their burden of proving these
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`limitations were routine and convention is, therefore, precluded.
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`2 Nor could they, as they have failed to submit any such evidence in support of
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`their Petition.
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`3
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` Further, Petitioners could never show that, in practice, the claims cover an
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`abstract concept itself. For example, as will be established below, in related
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`litigation, at least one of these Petitioners contends that it is practicing the identified
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`abstract concept of advancing funds based on future retirement payments while
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`simultaneously arguing, based on unambiguous factual representations, that is not
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`infringing the '582 Patent. It is axiomatic that a party practicing the abstract
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`concept at issue must necessarily infringe a patent that allegedly subsumes that
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`abstract concept. For this reason, Petitioners cannot credibly argue that the claims
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`of the '582 Patent amount to a monopoly on the abstract concept itself.
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`Finally, the inventive solution requires electronic communication links, such
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`as ACH technology, to be implemented in order for the designated account in the
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`depository to receive the future retirement payments directly from the benefit
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`source. The claims of the '582 patent require computer implementation, including
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`to perform steps such as depositing, that could never be performed purely in one's
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`mind.
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`In short, Petitioners have not and cannot meet their burden of proving that the
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`claims of the '582 patent amount to a monopoly on an abstract concept, much less
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`prove now—as they must—that they are likely to do so.
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`4
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`I.
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`BACKGROUND OF THE INVENTION
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`At the time of the claimed invention of the '582 patent, the inventors, who are
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`RCAMC's sole owners, recognized that the fast growing ranks of retirement age
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`individuals were, for various reasons3, finding Social Security benefits or other
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`retirement benefits, or the anticipated timing of receipts therefrom, often were
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`inadequate to meet their present and future financial needs, expectations, and
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`objectives. In light of legislated proscriptions in the United States against assigning
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`or otherwise alienating future retirement benefits (e.g., as set forth in the Social
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`Security Act, the Employee Retirement Income Security Act of 1974, as amended
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`("ERISA"), and the United States tax laws), Social Security benefits or other
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`retirement benefits were not generally seen as an adequate source of current capital,
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`particularly to support financing based upon future receipts. Thus, the inventors
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`recognized a need for a financial program that allows a beneficiary of Social
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`Security benefits or other retirement benefits to access, in a convenient, automated,
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`and automatic manner, present value of future retirement benefits to meet current
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`financial objectives while complying with the United States laws and regulations
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`governing the assignment of future Social Security or other retirement benefits.
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`('582 patent, Col. 1, ll. 23-49).
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`3 E.g., people living longer.
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`5
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`The inventors therefore conceived a system and method for a beneficiary of
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`Social Security payments or other retirement payments to access present value of
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`future benefits to meet current financial and other objectives. In the system and
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`method pertaining to the claims at issue here, a financial institution is designated to
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`be a direct depository of benefits directly from the source of such benefits, such as
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`the U.S. government (i.e., not to receive the benefits from the beneficiary), and a
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`disbursement agent for disbursing predetermined portions of a beneficiary's
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`retirement payments to a funding source in exchange for access to capital by the
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`beneficiary in an amount at least in part based on present value of a designated
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`portion of future retirement payments. In the event that the beneficiary revokes
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`participation, or such benefits are otherwise curtailed, before the funding source is
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`reimbursed, the funding source may seek reimbursement of a specified amount
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`relating to the capital it made available to the beneficiary, but not from subsequent
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`retirement payments. In the event that the beneficiary dies prior to reimbursement,
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`the funding source is precluded from looking to a surviving spouse's share of
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`remaining retirement payments, or from the beneficiary's estate, for reimbursement
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`of any sustained loss. ('582 patent, Abstract).
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`II.
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`PETITIONERS CANNOT MEET THEIR BURDEN DUE TO THEIR
`FAILURE TO SUBMIT REQUISITE EVIDENCE
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`The test for abstractness consists of two steps: (1) identify the abstract
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`concept; and (2) evaluate whether the claims contain additional substantive non-
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`6
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`routine, non-conventional limitations that narrow, confine, or otherwise tie down
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`the claim so that, in practical terms, it does not cover the full abstract idea itself.
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`Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341
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`(Fed. Cir. 2013); Ultramercial II, 722 F.3d at 1355 (concurring opinion of Lourie,
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`J.); CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282-83 (Fed. Cir. 2013)
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`(Lourie, Dyk, Prost, Reyna and Wallach, JJ., plurality opinion) (“CLS Bank II”)
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`(citing Prometheus, 132 S. Ct. at 1300; Bilski v. Kappos, 130 S.Ct. 3218, 3231
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`(2010); Diamond v. Diehr, 450 U.S. 175, 187 (1981)). The analysis under § 101 "is
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`rife with factual issues." Ultramercial II at 1339. "Almost by definition, analyzing
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`whether something was 'conventional' or 'routine' involves analyzing facts." Id.
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`"Likewise, any inquiry into the scope of preemption—how much of the field is 'tied
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`up' by the claim—by definition will involve historic facts: identifying the 'field,' the
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`available alternatives, and the preemptive impact in that field." Id.
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`By statute, Petitioners—rather than the Patent Office or the patent owner—is
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`burdened with proving by a preponderance of the evidence that a proposition of
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`invalidity is true. Leahy-Smith American Invents Act, Pub. L. No. 112-29, §
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`18(a)(1), 125 Stat. 284, 331 (2011) (hereinafter "AIA Section 18(a)(1)"); 35 U.S.C.
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`§ 326(e); 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl that
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`"the petitioner,
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`rather
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`than
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`the Office, bears
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`the burden of showing
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`7
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`unpatentability"). By statute, moreover, Petitioners are required to have identified
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`in their petition, in writing and with particularity:
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`the evidence that supports the grounds for the challenge to each
`claim, including—(A) copies of patents and printed publications
`that the petitioner relies upon in support of the petition; and (B)
`affidavits or declarations of supporting evidence and opinions, if
`the petitioner relies on other factual evidence or on expert
`opinions . . .
`
`AIA Section 18(a)(1); 35 U.S.C. § 322.
`
`The only evidence identified in Petitioners' Petition is the following: (1) the
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`'582 patent (Exhibit 1003); (2) Patent Owner's December 26, 2001 response to
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`office action (Exhibit 1005); (3) Patent Owner's original complaint against
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`Petitioner Regions (Exhibit 1009); (4) Patent Owner's first amended complaint
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`against Petitioners Advance America and CNU (Exhibit 1010); (5) a document
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`entitled, "A Quick Guide to Regions Ready Advance" (Exhibit 1011); and (6) a
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`document entitled, "Payday Loans from Advance America" (Exhibit 1012). No
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`other evidence may be considered, and, to be clear, arguments of counsel cannot
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`take the place of objective evidence. See In re Hamilton, 882 F.2d 1576, 1581-82
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`(Fed. Cir. 1989); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). The only one
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`of these items cited in Petitioners' argument that the claims of the '582 patent are
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`invalid is Exhibit 1003—the '582 patent itself. In other words, a finding that the
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`8
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`'582 patent is invalid could only ever be based on the '582 patent itself, nothing
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`more; all else is conjecture.
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`As a matter of law, the above-identified evidence is insufficient for
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`Petitioners to satisfy their burden of proof. There is no dispute that every claim in
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`the '582 patent at issue contains substantive limitations on what Petitioners have
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`identified as the involved abstract concept. And, there is no evidence whatsoever
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`from which a finding can be made that any, much less all, of the substantive
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`limitations to each claim would have been routine or conventional. In point of
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`fact, the only document cited in Petitioners' attorney argument that the claims
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`are invalid is the '582 patent itself. (Pet. 35-36). There are no admissions in the
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`'582 patent that could be used to satisfy Petitioners' burden of proving that
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`limitations were routine and conventional. It is equivalent to no evidence. The
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`only other thing Petitioners can point to is attorney argument, which is tantamount
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`to no evidence at all. Under the circumstances of this case, therefore, these
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`Petitioners cannot meet their burden of proving their proposition of invalidity.
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`A single example will suffice to demonstrate the significance of Petitioners'
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`failure. One of the critical aspects of the invention of the '582 patent is the
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`limitation that the benefit provider be reimbursed from resources other than future
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`retirement or Social Security payments in the event transfer of those benefits from
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`the depository to the benefit provider is curtailed, such as a result of the
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`9
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`beneficiary's own choice to revoke participation. This limitation was added to
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`overcome the Patent Office's rejection of the then pending claims in the application
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`that issued as the '582 patent. (Applicants' June 10, 2002 Response to Office Action
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`(Exh. 2011) at 15-16 and Appendix thereto). Yet, Petitioners do not even contend
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`that this limitation was conventional and routine, much less identify any supporting
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`evidence. Moreover, Petitioner Regions expressly and unambiguously contends in
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`the underlying patent litigation that it does not infringe on grounds that it does not
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`practice this limitation. Petitioner Regions' Supplemental Responses to Plaintiff
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`Benefit Funding Systems LLC's First Set of Interrogatories, First Supplemental
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`Response to Interrogatory No. 3 (Exh. 2010) at 5-8). Based on this record, it is
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`frivolous to argue that all of the limitations on the identified abstract concept are
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`routine and conventional. For this straightforward reason alone, the petition for
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`covered business method review should be denied.
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`The fact that Petitioners cannot meet their burden is underscored by the
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`Board's following statement in its final decision on the merits of another covered
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`business method review: "We credit the testimony of Dr. Siegel over that of Dr.
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`Liebich and find that the additionally claimed steps of storing, retrieving, sorting,
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`eliminating and receiving are well-known, routine, and conventional steps." SAP
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`America, Inc. v. Versata Development Group, Inc., Case CBM2012-00001 (MPT),
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`2013 WL 3167735, *19 (June 11, 2013) (Exh. 2002). There is no expert testimony
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`10
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`before the Board here, as Petitioners chose not to submit any. While Patent Owner
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`does not argue for a bright-line rule that expert testimony is required to be
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`submitted in connection with every petition for covered business method review4, it
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`is evident that such testimony or other evidence submitted pursuant to § 322 was
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`required in view of this record.
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`Petitioner's request for covered business method review should be denied for
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`the simple reason that the '582 patent by itself could never be sufficient evidence for
`
`Petitioners to satisfy their statutory burden of proof here. A finding that Petitioners
`
`are more likely than not to meet their burden, therefore, is foreclosed. The petition
`
`for covered business method review must be denied.
`
`III. SECTION 101 JURISPRUDENCE
`A. Only Claims That Monopolize An Abstract Idea – Without More
`– Are Unpatentable
`
`In determining whether patent claims preempt an abstract idea, "it is
`
`important at the outset to identify and define whatever fundamental concept appears
`
`wrapped up in the claim so that the subsequent analytical steps can proceed on
`
`consistent footing." CLS II, 717 F.3d at 1282. Once the abstract idea is identified,
`
`the claims must next be evaluated to determine whether they "contain additional
`
`
`4 For example, determinations of validity under 35 U.S.C. § 102 clearly are capable
`
`of being resolving in many instances without the need for expert testimony.
`
`
`
`11
`
`

`

`substantive limitations that narrow, confine, or otherwise tie down the claim[s] so
`
`that, in practical terms, [they do] not cover the full abstract idea itself."
`
`Ultramercial II, 722 F.3d at 1355 (quoting CLS Bank II). Any otherwise patentable
`
`invention that is "not so manifestly abstract as to preempt a fundamental concept or
`
`idea is patent eligible." Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331 (Fed. Cir.
`
`2012) (emphasis in original).
`
`The purpose underlying "abstract concept" jurisprudence is to ensure that a
`
`party does not patent the abstract concept itself. The Supreme Court and Federal
`
`Circuit have consistently approached the abstract-concept analysis with the goal of
`
`preventing a patent owner from obtaining a monopoly on or preempting others from
`
`practicing an abstract idea:
`
`"The mathematical formula involved here has no substantial
`practical application except
`in connection with a digital
`computer, which means that it 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."
`Gottschalk v. Benson, 409 U.S. 63, 72 (1972) (emphasis added).
`
`"Allowing petitioners to patent risk hedging would pre-empt use
`of this approach in all fields, and would effectively grant a
`monopoly over an abstract idea." Bilski v. Kappos, 130 S.Ct.
`3218, 3231 (2010) (emphasis added).
`
`
`
`12
`
`

`

`that claims should not be
`is
`"[T]he animating concern
`coextensive with a natural law, natural phenomenon, or abstract
`idea." CLS Bank II, 717 F.3d at 1281 (emphasis added).5
`
`"What matters is whether a claim threatens to subsume the full
`scope of a fundamental concept, and when those concerns arise,
`we must look for meaningful limitations that prevent the claim as
`a whole from covering the concept's every practical application."
`Id. (emphasis added).
`
`"With the pertinent abstract idea identified, the balance of the
`claim can be evaluated to determine whether it contains
`additional substantive limitations that narrow, confine, or
`otherwise tie down the claim so that, in practical terms, it does
`not cover the full abstract idea itself." Id. at 1282 (emphasis
`added).
`
`"[A] claim is not patent eligible only if, instead of claiming an
`application of an abstract idea, the claim is instead to the abstract
`idea itself. The inquiry . . . is to determine on which side of the
`line the claim falls: does the claim cover only an abstract idea,
`or instead does the claim cover an application of an abstract
`
`
`5 These words were presumably chosen carefully. Accepting that fact, it is notable
`
`that the term "coextensive" is defined as, "Having the same limits, boundaries, or
`
`scope." The American Heritage Dictionary of the English Language (4th ed. 2000)
`
`(emphasis added).
`
`
`
`13
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`

`

`idea?" Ultramercial II, 722 F.3d at 1343 (opinion of Rader, C.J.)
`(emphasis added).
`
`"Pre-emption is only a subject matter eligibility problem when a
`claim pre-empts all practical uses of an abstract idea." Id. at
`1346 (emphasis added).
`
`"It is not the breadth or narrowness of the abstract idea that is
`relevant, but whether the claim covers every practical application
`of that abstract idea." Id. (emphasis added).
`
`"Having identified the abstract idea of the claim, we proceed
`with a preemption analysis to determine whether 'additional
`substantive limitations . . . narrow, confine, or otherwise tie
`down the claim so that, in practical terms, it does not cover the
`full abstract idea itself.'" Accenture, 728 F.3d at 1345 (emphasis
`added) (quoting CLS Bank II).
`
`The Board itself has acknowledged this policy as follows:
`
`Standing alone, an abstract idea does not represent patent-
`eligible subject matter. Accordingly, we must further analyze
`Versata's claims to determine whether they incorporate sufficient
`meaningful limitations to ensure that the claims are more than
`just an abstract idea and not just a mere drafting effort designed
`to monopolize the abstract idea itself.
`
`
`
`14
`
`

`

`SAP America, Inc. v. Versata Development Group, Inc., Case CBM2012-00001
`
`(MPT), 2013 WL 3167735, *15 (Patent Tr. & App. Bd. June 11, 2013) (emphasis
`
`added) (citing Prometheus, 132 S. Ct. at 1297) (Exh. 2002).6
`
`In other words, it is well settled that "the Supreme Court's foundat