Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 28
`Filed: March 23, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`REGIONS FINANCIAL CORPORATION, ADVANCE AMERICA,
`CASH ADVANCE CENTERS, INC., and CNU ONLINE HOLDINGS,
`LLC F/K/A CASH AMERICA NET HOLDINGS, LLC,
`Petitioner,
`
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC,
`Patent Owner.
`
`____________
`
`Case CBM2014-00012
`Patent 6,625,582 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`Paper No. 28
`Filed: March 23, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`REGIONS FINANCIAL CORPORATION, ADVANCE AMERICA,
`CASH ADVANCE CENTERS, INC., and CNU ONLINE HOLDINGS,
`LLC F/K/A CASH AMERICA NET HOLDINGS, LLC,
`Petitioner,
`
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC,
`Patent Owner.
`
`____________
`
`Case CBM2014-00012
`Patent 6,625,582 B2
`____________
`
`
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
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`CBM2014-00012
`Patent 6,625,582 B2
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`I. BACKGROUND
`On June 22, 2012, Retirement Capital Access Management Company
`LLC (“Patent Owner”) sued, among others, Regions Financial Corporation,
`Advance America, Cash Advance Centers, Inc., and CNU Online Holdings,
`LLC F/K/A Cash America Net Holdings, LLC (collectively “Petitioner”) for
`infringement of U.S. Patent No. 6,625,582 B2 (“the ’582 patent”) (Ex. 1003)
`in the District Court for the District of Delaware in lawsuits styled Benefit
`Funding Systems LLC v. Regions Financial Corporation, Case No. 1:12-cv-
`802-LPS (D. Del.) and Benefit Funding Systems LLC v. Advance America,
`Cash Advance Centers, Inc., Case No. 1:12-cv-801-LPS (D. Del.).1 Pet. 1–
`2; Paper 13, 3.
`On March 29, 2013, U.S. Bancorp, also sued by Patent Owner for
`allegedly infringing the ʼ582 patent, filed a petition for review under the
`transitional program for covered business method patents of claims 1, 13,
`14, 18, 30, and 31 (“the challenged claims”) of the ’582 patent. CBM2013-
`00014, Paper 4. Subsequently, on October 14, 2013, Petitioner separately
`filed the petition in this proceeding, requesting a covered business method
`patent review of the same claims of the ’582 patent challenged by U.S.
`Bancorp. Paper 6.2 Both this Petition and the U.S. Bancorp petition assert
`that these claims are directed to unpatentable subject matter under 35 U.S.C.
`§ 101. Patent Owner filed a Preliminary Response on January 16, 2014.
`Paper 15 (“Prelim. Resp.”). We determined that Petitioner sufficiently
`
`1 CNU Online Holdings, LLC F/K/A Cash America Net Holdings, LLC was
`added to the civil action by an amended complaint filed by Retirement
`Capital Access Management Company LLC and Benefit Funding Systems
`LLC on July 3, 2013. Pet. 2.
`2 Petitioners filed a corrected petition on October 24, 2013. Paper 9. We
`refer herein to the corrected petition as the Petition (“Pet.”).
`2
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`demonstrated it was more likely than not that the challenged claims were
`unpatentable, and we instituted a trial on March 25, 2014. Paper 16,
`Decision to Institute (“Dec.”).
`Patent Owner filed a Response on May 27, 2014, arguing that
`35 U.S.C. § 101 is not reviewable in a covered business method patent
`review and that the challenged ’582 patent claims are patentable. Paper 21
`(“PO Resp.”). Petitioner filed a Reply on August 11, 2014. Paper 23
`(“Reply”). Although Petitioner initially requested an oral hearing under
`37 C.F.R. § 42.70(a), it withdrew that request on September 25, 2014. Paper
`25; Paper 27.
`On August 22, 2014, the Patent Trial and Appeal Board (“Board”)
`issued a final decision in CBM2013-00014 in which it determined that
`claims 1, 13, 14, 18, 30, and 31 of the ’582 patent are unpatentable under
`35 U.S.C. § 101. CBM2013-00014, Paper 33 (“CBM2013-00014 Final
`Decision”), 21. As explained below, and for reasons similar to those set
`forth in the CBM2013-00014 Final Decision, we determine that the
`challenged claims of the ’582 patent are unpatentable.
`
`
`II. THE ’582 PATENT
`The ’582 patent generally relates to a method for enabling recipients
`of Social Security payments to convert a designated portion of future
`payments into currently available financial resources. Ex. 1003, col. 1, ll. 1–
`5; 52–56. The patent explains that the beneficiary may access current capital
`through a funding source in exchange for payment of a predetermined
`portion of the beneficiary’s future retirement benefits. Id. at col. 3, ll. 20–
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`28. Figure 2 of the ’582 patent illustrates the steps of the method. Figure 2
`of the ’582 patent is reproduced below:
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`As shown above in Figure 2, the beneficiary first elects participation in the
`program in step 24 and then designates a financial institution to act as the
`depository for the beneficiary’s retirement payments and a disbursement
`agent for such retirement payments in step 26. Id. at col. 5, ll. 34–39.
`Step 30 involves designating a bank, insurance company, or other source of
`capital to be the funding source of current capital provided to the
`beneficiary. Id. at col. 5, ll. 43–46. Capital then is paid to the beneficiary
`from the funding source in an amount based in part upon the present value of
`a designated portion of the beneficiary’s future retirement payments in
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`Patent 6,625,582 B2
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`step 34. Id. at col. 5, ll. 53–56. Step 36 involves directly depositing a future
`retirement benefit into the beneficiary’s deposit account, and then a
`predetermined portion of this benefit is disbursed automatically to the
`funding source in step 38. Id. at col. 5, ll. 60–65. Step 42 involves a
`possible premature termination of participation in the program, in which the
`beneficiary may become obligated to reimburse the funding source for any
`advance from resources other than the future retirement benefits. Id. at col.
`6, ll. 7–12.
`Claim 1, illustrates the claimed subject matter and is reproduced
`below:
`
`1. A computerized method for creating a
`source of funds based on present value
`of future retirement payments,
`comprising the steps of:
`
`a. designating an account in a depository
`for a beneficiary to receive future
`retirement payments payable to said
`beneficiary from a source of said
`retirement payments for a preselected
`period of time;
`
`b. designating a benefit provider for
`providing a monetary benefit to said
`beneficiary;
`
`c. authorizing said depository to
`periodically disburse a predetermined
`portion of said retirement payments
`deposited in said account to said benefit
`provider during said preselected period
`of time;
`
`d. providing said monetary benefit to said
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`beneficiary from said benefit provider
`based at least in part on present value of
`a designated portion of said future
`retirement payments without
`encumbering said beneficiary's right to
`said future retirement payments and
`without violating legislated
`proscriptions in the United States
`against alienation of future retirement
`benefits;
`
`e. causing said future retirement payments
`to be deposited into said account
`throughout said preselected period of
`time;
`
`f. causing said depository to transfer a
`portion of said retirement payments
`deposited into said account to said
`benefit provider during said preselected
`period of time; and
`
`g. reimbursing said benefit provider from
`resources other than said future
`retirement payments if said transfer of a
`portion of said retirement payments
`from said depository to said benefit
`provider are curtailed prior to said end
`of said preselected period of time, and
`making said retirement payments
`available for the exclusive use of said
`beneficiary.
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`III. ANALYSIS
`Claim Construction
`A.
`Consistent with the statute and the legislative history of the AIA,3 the
`Board will interpret claims using the broadest reasonable construction.
`37 C.F.R. § 42.200(b); see In re Cuozzo Speed Techs., LLC, No. 2014-1301,
`2015 WL 448667, at *5–8 (Fed. Cir. Feb. 4, 2015). 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
`art in the context of the entire disclosure. In re Translogic Tech. Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). 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) (citations
`omitted).
`
`Patent Owner argues that the “means for causing said future
`retirement payments to be deposited into said account” limitation of system
`claim 13, and the similar “means for” limitation of system claim 30,4 should
`be construed to require an “electronic funds transfer” because “direct deposit
`via electronic funds transfer is the structure disclosed in the specification for
`causing retirement payments (or Social Security retirement benefits) to be
`deposited.” PO Resp. 35 (citing Ex. 1003, col. 5, ll. 18–22). Patent Owner
`also argues that method claims 1 and 18 should be construed similarly, and
`
`
`3 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
`4 Claim 30 recites “means for causing said future payments of Social
`Security benefits to be deposited into said account during said preselected
`period of time.” (emphasis added).
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`the term “deposited” in claims 1 and 18 should be construed to mean
`“deposited via direct deposit.” Id. at 35, n.17.
`Petitioner disagrees, and argues that the claimed invention may be
`“performed on pen and paper, as consumers were able to deposit Social
`Security or retirement payments long before computers.” Reply 8 (citation
`omitted). Petitioner further argues that with respect to claim interpretation,
`the United States Court of Appeals for the Federal Circuit has “expressly
`rejected the contention that if a patent describes only a single embodiment,
`the claims of the patent must be construed as being limited to that
`embodiment.” Id. at 9 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323
`(Fed. Cir. 2005)).
`
`To construe means-plus-function language in a claim, one “must look
`to the specification and interpret that language in light of the corresponding
`structure, material, or acts described therein, and equivalents thereof, to the
`extent that the specification provides such disclosure.” In re Donaldson Co.,
`16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to
`construe properly the limitations in claims 13 and 30 reciting “means for
`causing said . . . payments . . . to be deposited into said account,” the
`limitations “shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents thereof.”
`35 U.S.C. § 112, ¶ 6.5
`
`As noted by Patent Owner (PO Resp. 34–35), the corresponding
`structure within the specification supporting the means-plus-function
`limitation is described as follows: “[b]enefits source 12 of system 10
`
`5 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’582 patent has a filing date before September 16,
`2012 (effective date), we will refer to the pre-AIA version of § 112.
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`disburses retirement payments directly to an individual direct deposit
`account 14 in a designated depository 16. Preferably, this is accomplished
`utilizing the well-known technique of electronic funds transfer.” PO Resp.
`34–35 (quoting Ex. 1003, col. 5, ll. 18–22). Accordingly, we construe
`“means for causing . . . to be deposited into said account,” recited in claims
`13 and 30, to require “disbursing directly to said account utilizing an
`electronic funds transfer.”
`
`For method claims 1 and 18, however, we are not persuaded by Patent
`Owner’s argument that the term “deposited” should similarly be interpreted
`to mean “deposited via direct deposit.” PO Resp. 35–39. More particularly,
`claims 1 and 18 do not contain means-plus-function limitations, like claims
`13 and 30, that must be construed according to the corresponding structure
`within the specification. Furthermore, Patent Owner fails to point to any
`support in the specification of the ’582 patent that would require the
`construction of the term “deposited” to mean a direct deposit or electronic
`funds transfer. If an inventor acts as his or her own lexicographer, the
`definition must be set forth in the specification “with reasonable clarity,
`deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per
`Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (citations omitted). The
`specification of the ’582 patent does not set forth expressly a definition of
`“deposited.” In fact, as noted above, the ’582 patent states that deposits are
`“[p]referably” conducted with the “well-known technique of electronic
`funds transfer.” The specification does not limit the term “deposited” to this
`implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added).
`
`Even in cases where the specification describes only a single
`embodiment, the claims are not necessarily limited to that embodiment.
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`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (It is not enough that the only embodiment, or all of the embodiments,
`contain a particular limitation to limit a claim to that particular limitation.).
`Here, the specification itself indicates that electronic deposits are preferable,
`but not required. Therefore, we do not adopt Patent Owner’s proposed
`construction of “deposited” recited in claims 1 and 18 as limited to
`“deposited via direct deposit.”
`
`
`B. Patent Owner’s Arguments that Section 101 Is Not a Proper
`Ground Upon Which a Covered Business Method Patent
`Review May Be Maintained
`Patent Owner argues that covered business method patent review is
`limited under the 35 U.S.C. § 282(b) to “conditions for patentability.”
`PO Resp. 42. Furthermore, Patent Owner argues the determination of patent
`eligibility under 35 U.S.C. § 101 is not a condition for patentability, such as
`those set forth in 35 U.S.C. §§ 102–103. Id. at 43–47. This argument was
`raised in the Preliminary Response and discussed at length in our Decision
`to Institute. We disagree with Patent Owner that § 101 is not a proper
`ground for maintaining a covered business method patent review.
`As we previously stated, under the AIA, any ground that could be
`raised under 35 U.S.C. § 282(b)(2) or (3) can be raised in a post-grant
`review or (with exceptions not relevant here) in a covered business method
`patent review. See also 35 U.S.C. § 321(b); AIA §18(a)(1). The grounds
`under § 282(b)(2) and (3) are:
`(2) Invalidity of the patent or any claim in suit on any ground
`specified in part II as a condition for patentability.
`(3) Invalidity of the patent or any claim in suit for failure to comply
`with—
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`(A) any requirement of section 112, except that the failure to
`disclose the best mode shall not be a basis on which any claim of a
`patent may be canceled or held invalid or otherwise unenforceable; or
`(B) any requirement of section 251.
`As recognized by the Supreme Court, § 101 is a condition for patentability.
`In Graham v. John Deere Co., 383 U.S. 1, 12 (1966), the Supreme Court
`states that the 1952 Patent Act “sets out the conditions of patentability in
`three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The Supreme Court
`has also addressed invalidity under § 101 when it was raised as a defense to
`an infringement claim under § 282. See Mayo Collaboration Servs. v.
`Prometheus Labs, Inc., 132 S.Ct. 1289, 1293 (2012). The Federal Circuit
`also has recognized that § 101 is a condition for patentability that can be
`raised as an affirmative defense under 35 U.S.C. § 282(b)(2). For example,
`in Dealertrack, Inc. v. Huber, the majority rejected the dissent’s contention
`that §101 is not a “condition for patentability,” stating that “the ‘defenses
`provided in the statute,’ § 282, include not only the ‘conditions of
`patentability’ in §§ 102 and 103, but also those in § 101.” 674 F.3d 1315,
`1330 n.3 (Fed. Cir. 2012) (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l
`Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)) (“It has long been
`understood that the Patent Act sets out the conditions for patentability in
`three sections: sections 101, 102, and 103.”) (citations omitted).
`The legislative history of the AIA also makes it clear that Congress
`intended the United States Patent and Trademark Office (“Office”) to
`consider challenges brought under § 101 for post-grant reviews. For
`example, with certain exceptions not relevant here, the covered business
`method patent review program employs the same standards and procedures
`as the post grant review program. AIA § 18(a)(1). The specified purpose of
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`the covered business method patent review program is to allow the Office to
`revisit business method patents post-Bilski and evaluate whether the patents
`were too abstract to be patentable under § 101. See 157 Cong. Rec. S1367
`(daily ed. Mar. 8, 2011). Accordingly, we are not persuaded by Patent
`Owner’s argument that 35 U.S.C. § 101 is not a proper ground upon which a
`covered business method patent review may be maintained.
`
`35 U.S.C. § 101 Patentability Analysis
`C.
`
`1. Overview
`Section 101 of the Patent Act defines subject matter eligibility and the
`Supreme Court has “long held that this provision contains an important
`implicit exception: Laws of nature, natural phenomena, and abstract ideas
`are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347,
`2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics,
`Inc., 133 S.Ct. 2107, 2116 (2013) (internal quotation marks and brackets
`omitted)). “The ‘abstract ideas’ category embodies the longstanding rule
`that ‘[a]n idea of itself is not patentable.’” Alice, 134 S.Ct. at 2355 (citing
`Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (quotations omitted)).
`In Alice, the Supreme Court emphasized that the “Mayo framework”
`provides “a framework for distinguishing patents that claim laws of nature,
`natural phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts.” Id. (citing Mayo, 132 S.Ct. at 1298). Under
`the Mayo framework, “[w]e must first determine whether the claims at issue
`are directed to a patent-ineligible concept.” Id. Next, “we consider the
`elements of each claim both individually and ‘as an ordered combination’ to
`determine whether the additional elements ‘transform the nature of the
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`claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S.Ct. at
`1297–98). To be patentable, a claim must do more than simply state the law
`of nature or abstract idea and add the words “apply it.” Mayo, 132 S.Ct. at
`1294; Benson, 409 U.S. at 67. Furthermore, “the mere recitation of a
`generic computer cannot transform a patent-ineligible abstract idea into a
`patent-eligible invention.” Alice, 134 S.Ct. at 2358. “Thus, if a patent’s
`recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an
`abstract idea ‘on . . . a computer,’ that addition cannot impart patent
`eligibility.” Id. (internal citation omitted).
`A challenged claim, properly construed, must incorporate enough
`meaningful limitations to ensure that it claims more than just an abstract idea
`and not just a mere “‘drafting effort designed to monopolize the [abstract
`idea].’” Alice, 134 S.Ct. at 2357 (quoting Mayo, 132 S.Ct. at 1297).
`“Simply appending conventional steps, specified at a high level of
`generality,” is not “enough” for patent eligibility. Id. (quoting Mayo,
`132 S.Ct. at 1292). Thus, we analyze the claims to determine whether the
`claims embody a patent-eligible application of an abstract idea or merely
`nothing more than the abstract idea itself.
`
`2. Claims 1, 13, 14, 18, 30, and 31 are not meaningfully
`limited under 35 U.S.C. § 101
`Petitioner challenges claims 1, 13, 14, 18, 30, and 31 as unpatentable
`under 35 U.S.C. § 101. Pet. 10. Patent Owner disagrees, and argues, inter
`alia, that the claims are not directed to an abstract idea because they include
`meaningful limitations that “cover significantly less than the identified
`abstract concept.” PO Resp. 19.
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`In accordance with the Supreme Court’s “framework for
`distinguishing patents that claim . . . abstract ideas from those that claim
`patent-eligible applications of those concepts,” we must first “determine
`whether the claims at issue are directed to one of those patent-ineligible
`concepts.” Alice, 134 S.Ct. at 2355. In Alice, the Supreme Court
`determined that the claims at issue were “drawn to the concept of
`intermediated settlement,” i.e., the use of a third party to mitigate settlement
`risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk
`hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of
`intermediated settlement is ‘a fundamental economic practice long prevalent
`in our system of commerce.’” Alice, 134 S.Ct. at 2356 (citations omitted).
`With respect to the first step of the “Mayo framework,” the Supreme
`Court concluded in Alice that “there is no meaningful distinction between
`the concept of risk hedging in Bilski and the concept of intermediated
`settlement” in Alice and that “[b]oth are squarely within the realm of
`‘abstract ideas’ as we have used that term.” Alice, 134 S.Ct. at 2357. Here,
`Petitioner argues that Patent Owner’s claims are directed to the abstract
`concept of advancing funds based on future retirement payments. Reply 4.
`Patent Owner does not dispute this. In the related case, CBM2013-00014,
`Patent Owner’s counsel stated at the oral hearing that Patent Owner is
`“happy to accept what they claim is the abstract concept” with respect to the
`challenged claims of the ’582 patent. CBM2013-00014, Paper 32 (Oral
`Hearing Transcript), 40; see CBM2013-00014 Final Decision, 13. Similar to
`the concept of intermediated settlement in Alice and the concept of risk
`hedging in Bilski, we find that the concept of advancing funds based on
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`future retirement payments is an economic practice long prevalent in our
`system of commerce and squarely within the realm of abstract ideas.
`Step two of the Supreme Court’s “Mayo framework” requires that we
`consider the elements of the claim and determine whether there is an
`“element or combination of elements that is ‘sufficient to ensure that the
`patent in practice amounts to significantly more than a patent upon the
`[ineligible concept] itself.’” Alice, 134 S.Ct. at 2355 (quoting Mayo, 132
`S.Ct. at 1294). Patent Owner states that claim 1 requires providing a
`monetary benefit “without encumbering said beneficiary’s right to said
`future retirement payments and without violating legislated proscriptions in
`the United States against alienation of future retirement benefits.” Patent
`Owner argues that these are meaningful and substantive limitations that
`cause the claims to cover less than the identified abstract concept. PO
`Resp. 24. Patent Owner presents similar arguments with respect to the
`similar limitations recited in independent claims 13, 18, and 30. Id.
`Petitioner disagrees and argues that the “without encumbering”
`recitation in each claim requires only that the transaction be lawful; thus,
`only theoretically illegal methods of advancing future retirement benefits are
`excluded from the abstract concept. Reply 7–8. We agree with Petitioners’
`analysis that this limitation is not meaningful in the context of Alice.
`Requiring that a transaction be lawful is a routine and conventional
`practice in business transactions. The Supreme Court has provided guidance
`that “simply appending conventional steps, specified at a high level of
`generality, to laws of nature, natural phenomena, and abstract ideas cannot
`make those laws, phenomena, and ideas patentable.” Mayo, 132 S.Ct. at
`1300. For example, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
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`(Fed. Cir. 2014) (“Ultramercial III”), the Federal Circuit determined that
`additional steps such as updating an activity log and the use of the Internet,
`“do not transform the abstract idea that they recite into patent-eligible
`subject matter because the claims simply instruct the practitioner to
`implement the abstract idea with routine, conventional activity.” Here, we
`are persuaded that the argued “without encumbering” limitation in claim 1 is
`recited at a high level of generality, as neither the claims themselves nor the
`specification provides any guidance as to how the “without encumbering”
`step is performed. Therefore, we determine the “without encumbering”
`limitation is a conventional and highly generalized step that does not
`meaningfully limit the claims beyond the abstract idea.
`We note that the preambles to claims 1 and 18 each recite a
`“computerized method.”6 We are not persuaded that these recitations are
`meaningful limitations to the claims. “[A] preamble does not limit claim
`scope if it ‘merely states the purpose or intended use of an invention.’”
`Digitech Image Techs, LLC v. Elects for Imaging, Inc., 758 F.3d 1344, 1351
`(Fed. Cir. 2014) (affirming a finding that the recitation of a “digital image
`reproduction system” in the preamble of the claims did not limit the claims
`and that the claims were directed to a patent-ineligible abstract idea)
`(quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed.Cir.2006)).
`Here, the recitation of “computerized method” in the preamble of claims 1
`and 18 merely states the intended use of the claimed invention. It does not
`
`
`6 The preamble of claim 1 recites: “A computerized method for creating a
`source of funds based on present value of future retirement payments.” The
`preamble of claim 18 recites: “A computerized method for creating a source
`of funds based on present value of future Social Security retirement
`benefits.”
`
`
`
`16
`
`
`
`CBM2014-00012
`Patent 6,625,582 B2
`
`
`provide an antecedent basis for limitations in the body of the claim. For
`these reasons, it is not limiting. Catalina Mktg. Int’l., Inc. v.
`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (preamble is not
`limiting “where a patentee defines a structurally complete invention in the
`claim body and uses the preamble only to state a purpose or intended use for
`the invention.”) (quotation omitted). Therefore, we determine that presence
`of “computerized method” in the preambles of claims 1 and 18 does not
`meaningfully limit the claims.
`Petitioner argues that the challenged claims can be performed using
`pen and paper. Pet. 48; Reply 8. Patent Owner responds that the claims are
`not directed towards purely mental processes, because they require the use
`of a computer. PO Resp. 34–42. More particularly, Patent Owner argues
`that a computer limitation is “integral to the challenged claims” and must be
`considered, especially in light of the other substantive limitations including
`creating a source of funds based on future retirement payments such as
`Social Security. Id. at 42. Patent Owner further argues that the computer
`required by the claims is not a general purpose computer because the
`electronic funds transfer requires programming a computer with particular
`software. Id. at 41.
`Petitioner counters that Patent Owner’s arguments improperly attempt
`to import limitations from the specification into the claims. Reply 8.
`Petitioner further argues that even if method claims 1 and 18 were construed
`to be limited to direct deposits, such a reading only would require a
`computer as an obvious mechanism to increase efficiency. Id. at 9–10
`(citing Bancorp Servs., L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266, 1279
`(Fed. Cir. 2012)).
`
`
`
`17
`
`
`
`CBM2014-00012
`Patent 6,625,582 B2
`
`
`With respect to method claims 1 and 18, as noted above, we construe
`“deposited” as not requiring “direct deposit” or any computerized
`implementation. Furthermore, we determine that the steps of claims 1 and
`18 could be performed as a series of verbal transactions exchanging physical
`money or via pen and paper. In CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366, 1372, 1373 (Fed. Cir. 2011), the Federal Circuit determined
`that the method claims there, directed to fraud determination, “can be
`performed in the human mind, or by a human using a pen and paper” and “a
`method that can be performed by human thought alone is merely an abstract
`idea and is not patent-eligible under § 101.”
`Additionally, we conclude that the “deposited” recitation of claims 1
`and 18 does not provide a meaningful limitation to the abstract idea.
`Nonetheless, even if the “deposited” recitation were read to require a
`computer, the use of a computer to perform direct deposit with electronic
`funds transfer is not sufficiently limiting because it “simply performs more
`efficiently what could otherwise be accomplished manually.” Bancorp, 687
`F.3d at 1279 (citation omitted).
`Contrary to Patent Owner’s assertions that the ʼ582 patent invention
`requires specialized hardware and software, the ’582 patent states that the
`“present invention utilizes known computer capabilities and electronic
`communications links to effect the automated implementation of various
`aspects of the inventive financial program, for example, to carry out the
`electronic transfer of funds into and out of the individual deposit account of
`a program participant.” Ex. 1003, col. 2, ll. 30–35 (emphasis added). As the
`Supreme Court held in Benson, claims do not become patent-eligible under
`§ 101 simply for reciting a known, general purpose computer. See Benson,
`
`
`
`18
`
`
`
`CBM2014-00012
`Patent 6,625,582 B2
`
`
`409 U.S. at 67 (invalidating as patent-ineligible claimed processes that “can
`be carried out in existing computers long in use, no new machinery being
`necessary,” or “can also be performed without a computer.”).
`Furthermore, “the use of the Internet is not sufficient to save
`otherwise abstract claims from ineligibility under § 101.” Ultramercial III,
`772 F.3d at 716 (citing CyberSource, 654 F.3d at 1370). In Alice, the
`Supreme Court determined that “the claims at issue amount to ‘nothing
`significantly more’ than an instruction to apply the abstract idea of
`intermediated settlement using some unspecified, generic computer.” Alice,
`134 S.Ct. at 2360 (quoting Mayo, 132 S.Ct. at 1298). Similarly, we
`conclude that even if we were to construe the “deposited” limitation of
`claims 1 and 18 to require a computer, the claims amount to nothing
`significantly more than an instruction to apply the abstract idea of advancing
`funds based on future retirement payments using an unspecified, generic
`computer. Accordingly, we conclude that claims 1 and 18 do not add
`meaningful limitations beyond the recited abstract idea and therefore are not
`patentable subject matter under §101.
`Claims 13 and 30 are system claims that include the limitation of
`“means for causing . . . to be deposited into said account.” As discussed
`above, we construe these means-plus-function limitations to require
`“disbursing directly to said account utilizing an electronic funds transfer.”
`In Alice, the Supreme Court concluded that the system claims were
`not patentable for substantially the same reasons as the method claims. The
`Court concluded that was so because the “system claims recite a handful of
`generic computer components configured to implement the same idea” as
`the method claims. Alice, 134 S.Ct. at 2360. Similarly, in Planet Bingo,
`
`
`
`19
`
`
`
`CBM2014-00012
`Patent 6,625,582 B2
`
`
`LLC v. VKGS LLC, 576 F. App’x 1005, 1007 (Fed. Cir. 2014), the Federal
`Circuit analyzed method and system claims directed to managing the game
`of bingo and concluded that “the system claims re
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