`REGIONS FINANCIAL CORPORATION, ADVANCE AMERICA,
`CASH ADVANCE CENTERS, INC., and CNU ONLINE HOLDINGS, LLC
`F/K/A CASH AMERICA NET HOLDINGS, LLC
`Petitioners
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Case CBM2014-00012
`Patent No. 6,625,582
`
`
`
`
`
`
`
`PETITIONERS’ REPLY
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`
`
`
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`
`TABLE OF CONTENTS
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`
`Page
`
`
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`
`
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`Table of Authorities ................................................................................................................. ii
`
`I.
`
`Statement of Relief Requested ..................................................................................... 1
`
`II.
`
`Preliminary Statement ................................................................................................... 1
`
`III.
`
`Statement Identifying Material Facts in Dispute ...................................................... 3
`
`IV. The Claim Limitations Identified by RCAMC Do Not Limit the Scope of the
`Claims to Less than the Abstract Idea and Thus are Not Directed To
`Patentable Subject Matter Under 35 U.S.C. § 101 .................................................... 3
`
`A. Despite RCAMC’s Assertions, the Claims are Not Eligible Subject Matter
`Under Supreme Court Precedent and Recent Guidelines ................................. 4
`
`B. The “Without Encumbering ….” Limitation Does Not Meaningfully Limit
`the Claims .................................................................................................................. 6
`
`C. The “Computerized Method” or “Computer” Is Not an Integral
`Component Of and Does Not Meaningfully Limit The Claims ...................... 8
`
`D. Other Limitations and Purported Admissions .................................................. 12
`
`V.
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`RCAMC’s Remaining Arguments Are Irrelevant ................................................... 14
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`A. Expert Testimony Is Not Required To Show Claims Are Ineligible ............ 14
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`B. The PTAB Has Authority to Grant CBM Review On Section 101. ............. 15
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`VI. Conclusion .................................................................................................................... 15
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`
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`i
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`

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`
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`CASES
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`
`
`
`TABLE OF AUTHORITIES
`
`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
`
`
`Page(s)
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l et al.,
`134 S.Ct. 2347 (2014) ................................................................................................... passim
`
`Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
`687 F.3d 1266 (Fed. Cir. 2012) ........................................................................10, 11, 12, 13
`
`Comark Commc'ns, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998) ............................................................................................9
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) ......................................................................................9, 11
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ..........................................................................................10
`
`Digitech Image Tech., LLC v. Electronics for Imaging, Inc.,
`2014 WL 3377201 (Fed. Cir. July 11, 2014) ......................................................................3
`
`Lee v. Mike's Novelties, Inc.,
`2013-1049, 2013 WL 6097232 (Fed. Cir. Nov. 21, 2013) .......................................14, 15
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) .....................................................................................................5, 12
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................................9
`
`SiRF Tech., Inc. v. ITC,
`601 F.3d 1319 (Fed. Cir. 2010) ............................................................................................9
`
`SmithKline Beecham Corp. v. Apotex Corp.,
`439 F.3d 1312 (Fed. Cir. 2006) ............................................................................................4
`
`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013) ......................................................................................7, 14
`
`
`
`ii
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`

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`
`
`STATUTES
`
`
`
`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
`
`
`35 U.S.C. § 101.................................................................................................................... passim
`PTAB DECISIONS
`
`Apple, Inc. v. Sightsound Technologies, LLC (CBM2013-00019) ............................................ 11
`
`Fidelity Nat’l Information Svcs, Inc. v. Cashedge, Inc., (CBM2013-00028)................................. 7
`SAP America, Inc. v. Versata Development Group, Inc., (CBM2012-00001) ......................... 15
`PATENTS
`
`U.S. Patent No. 6,625,582................................................................................................. passim
`
`
`
`iii
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`

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`
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`I.
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`
`
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`STATEMENT OF RELIEF REQUESTED
`
`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
`
`
`Petitioners Regions Financial Corporation (“Regions”), Advance America,
`
`Cash Advance Centers, Inc. (“AA”), and CNU Online Holdings (“CNU”)
`
`(collectively, “Petitioners”) respectfully request cancellation of asserted claims 1, 13,
`
`14, 18, 30, and 31 of U.S. Patent No. 6,625,582 (“the ‘582 patent,” Ex. 1003) under 35
`
`U.S.C. § 101 for the reasons set forth herein and in their Petition for CBM Review.
`
`
`
`II.
`
`
`PRELIMINARY STATEMENT
`
`Petitioners set forth sufficient evidence for the PTAB to find, based on the
`
`claims, specification, and file history, that the asserted claims of the ‘582 patent are
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`not patentable under § 101. Petitioners demonstrated that the claims-at-issue do not
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`include any meaningful, concrete limitations that would limit the claims to a specific
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`application of the abstract idea of advancing funds based on the present value of
`
`future retirement payments. Rather, the claims merely state that the funds are
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`advanced without violating U.S. law. The claimed inventions can be accomplished
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`without a computer, and even if one were needed, do not require specific computer
`
`hardware or software. For these reasons, the Board should find the asserted claims are
`
`not patentable under § 101.
`
`RCAMC’s arguments contradict the proper analysis set forth under the
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`Supreme Court’s recent decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l et al., 134
`
`S.Ct. 2347 (2014) and the “Preliminary Examination Instructions in view of the
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`Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al.,”
`
`1
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`U.S. Patent No. 6,625,582
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`June 25, 2014 (“the Guidelines”). Moreover, despite Petitioners’ arguments that none
`
`
`
`of the limitations save the claims, and demonstrating that several claim limitations are
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`not meaningful, Patent Owner Retirement Capital Access Management Company
`
`LLC’s (“RCAMC’s) Response only contends that two of those limitations – “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” and “computerized
`
`method” – are meaningful enough to render the claims patentable. Therefore, with
`
`respect to the dispositive issue of whether the claims are meaningfully limited, the
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`Board only needs to focus on those two limitations.
`
`RCAMC’s arguments with respect to those limitations fail for a number of
`
`reasons. First, RCAMC argues that the “without encumbering ….” limitation was not
`
`routine or conventional because that limitation was added to overcome prior art
`
`during prosecution. Resp. at 23. However, the fact that the limitation was added to
`
`overcome prior art has no bearing on whether it is a meaningful or significant
`
`limitation, or rather just a routine step. Adding a limitation that requires compliance
`
`with current U.S. law clearly qualifies as routine, and thus, does not render the claim
`
`patentable.
`
`Second, RCAMC argues that the claim term “to be deposited” should be
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`limited to the alleged preferred embodiment to cover only deposits made by
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`“electronic funds transfer” in an attempt to demonstrate that a computer is required
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`2
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`U.S. Patent No. 6,625,582
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`to carry out the alleged invention. Resp. at 35. However, such a claim construction
`
`
`
`ignores the plain language of the claims and fails to give the claims their broadest
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`reasonable interpretation. Regardless, the specification only discloses “known”
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`computer components, thus confirming that the methods can be performed with
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`general purpose computers. See Ex. 1003, Col. 2:30-35. The mere recitation of a
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`generic computer cannot transform an ineligible abstract idea into a patent-eligible
`
`invention. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l et al., 134 S.Ct. 2347, 2358 (2014);
`
`see also Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 2014 WL 3377201 (Fed.
`
`Cir. July 11, 2014); Guidelines.
`
`
`III.
`
`
`STATEMENT IDENTIFYING MATERIAL FACTS IN DISPUTE
`
`Petitioners identify material facts in dispute in Appendix 1.
`
`IV.
`
`
`
` THE CLAIM LIMITATIONS IDENTIFIED BY RCAMC DO NOT LIMIT THE
`SCOPE OF THE CLAIMS TO LESS THAN THE ABSTRACT IDEA AND THUS ARE
`NOT DIRECTED TO PATENTABLE SUBJECT MATTER UNDER 35 U.S.C.
`§ 101
`
`RCAMC’s arguments fail under Supreme Court precedent and under the recently
`
`issued Guidelines. Moreover, in addition to the other limitations of the claims,
`
`Petitioners demonstrated that the “without encumbering said beneficiary’s right to
`
`said future retirement payments…,” “computerized method,” and “future retirement
`
`payments” were not meaningful, substantive limitations that cause the claims to cover
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`less than the identified abstract concept of advancing funds based on the present
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`value of future retirement payments. Pet. at 35-45. In response, RCAMC only
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`3
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`U.S. Patent No. 6,625,582
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`contends that two of those limitations – “without encumbering said beneficiary’s right
`
`
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`to said future retirement payments….” and “computerized method” (via its argument
`
`regarding “to be deposited”) – are meaningful enough to render the claims patentable.
`
`RCAMC therefore waived any argument that “future retirement payments” or any
`
`other limitations of the claim render the claims patentable. See, e.g., SmithKline Beecham
`
`Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006)(“arguments not raised in
`
`the opening brief are waived”).
`
`Finally, contrary to RCAMC’s assertions, ample evidence exists, including the
`
`patent claims themselves, the specification, and the file history, for the Board to
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`conclude that the patent claims no more than the abstract idea of providing a benefit
`
`based on the present value of future retirement payments. Indeed, the Board, in
`
`granting the Petition, already determined that sufficient evidence existed such that the
`
`challenged claims are unpatentable under 35 U.S.C. § 101. See Paper 16 at 2, 11-17.
`
`A. Despite RCAMC’s Assertions, the Claims are Not Eligible Subject
`Matter Under Supreme Court Precedent and Recent Guidelines
`
`RCAMC’s arguments that the asserted claims are patent-eligible subject matter
`
`
`
`under § 101 directly contradict the Supreme Court’s recent decision in Alice and the
`
`Guidelines. Resp. at 19-43.
`
`In Alice, the claims were directed to a computerized scheme for mitigating
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`settlement risk. This required facilitating the exchange of financial obligations between
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`two parties using a computer system as a third-party intermediary. 134 S.Ct. at 2352.
`
`4
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`U.S. Patent No. 6,625,582
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`The claims involved, e.g., (1) creating “shadow” credit and debit records (i.e., account
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`
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`ledgers), (2) obtaining a start-of-day balance for each credit and debit record, (3)
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`updating the records in real time and allowing “only those transactions for which the
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`parties’ updated records indicate sufficient resources to satisfy mutual obligations.”
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`Id.
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`The Court held that the claims were drawn to a patent-ineligible concept – the
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`“abstract idea of intermediated settlement.” Id. at 2357. The Court then concluded
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`that the method claims, which merely required “generic computer implementation,
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`fail[ed] to transform that abstract idea into a patent-eligible invention.” Id. The Court
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`held that “the use of a computer to obtain data, adjust account balances, and issue
`
`automated instructions; all of these computer functions are ‘well-understood, routine,
`
`conventional activities’ previously known in the industry.” Id. at 2359 (citing Mayo
`
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Under this
`
`analysis, the Court held that the claims were not patent-eligible subject matter under
`
`35 U.S.C. §101.
`
`The same principle applies here. The asserted claims are directed to the abstract
`
`idea of advancing funds based on the present value of future retirement payments.
`
`Under the Supreme Court’s analyses,
`
`looking at the claimed
`
`limitations
`
`in
`
`combination (see Pet. at 10, 36), the claims “amount to ‘nothing significantly more’
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`5
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`U.S. Patent No. 6,625,582
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`than an instruction to apply the abstract idea.” Id. at 2360. Thus, just like the claims in
`
`
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`Alice, the asserted claims are not patent-eligible subject matter under § 101.
`
`RCAMC’s arguments also contradict the recently issued Guidelines. The
`
`Guidelines’ two-part test is: (1) whether the claim is directed to an abstract idea, e.g.,
`
`“fundamental economic practices,” and if so, (2) whether a claim element(s) ensures
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`that the claim amounts to significantly more than the abstract idea itself. Guidelines
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`at 2-3. If part (2) fails, the claims are not patent-eligible under § 101.
`
`Such is the case here. The claims are directed to an abstract idea of advancing
`
`funds based on the present value of future retirement payments, a fundamental
`
`economic practice, and, pursuant to the Supreme Court and Guidelines, the other
`
`limitations, discussed further below, do not transform the abstract idea into patent-
`
`eligible subject matter.
`
`B. The “Without Encumbering ….” Limitation Does Not Meaningfully
`Limit the Claims
`
`RCAMC argues that because the ‘582 patent claims were amended during
`
`
`
`prosecution to overcome prior art to include the limitation of “providing a 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,’” the claims cover less than the abstract “concept of
`
`advancing funds based on future cash flow, [i.e., retirement payments.]” Resp. at 24-
`
`25. However, that claim limitation is the type of insignificant limitation that does not
`
`6
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`meaningfully limit a claim for Section 101 purposes. Ultramercial, Inc. v. Hulu, LLC, 722
`
`
`
`F.3d 1335, 1346 (Fed. Cir. 2013) (a claim “will not be limited meaningfully if it
`
`contains only insignificant or token pre- or post-solution activity—such as identifying
`
`a relevant audience, a category of use, field of use, or technological environment”).
`
`In the Background section of the ‘582 patent, the inventors acknowledge that,
`
`at the time the ‘582 patent was filed, there existed “legislated proscriptions in the
`
`United States against assigning or otherwise alienating future retirement benefits.” Ex.
`
`1003, Col. 1:35-37. Thus by including the “without encumbering” future retirement
`
`payments limitation, the ‘582 patent merely claims providing a benefit based on the
`
`present value of future payments “while complying with the United States laws and
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`regulations governing the assignment of future Social Security or other retirement
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`benefits.” Id. at Col. 1:43-49. Of course, the ‘582 patent does not identify any specific
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`laws and regulations, let alone how to setup a system that complies with those laws
`
`and regulations.
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`Accordingly, claiming that an invention that does not violate U.S. law is not a
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`meaningful claim limitation, because at most, only theoretical, illegal methods of
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`advancing future retirement benefits are excluded from the abstract concept. No
`
`practical implementations of providing benefits based on future retirement payments
`
`are excluded, rendering the claimed invention unpatentable. See Ultramercial, 722 F.3d
`
`at 1345 (“if a claim covers all practical applications of an abstract idea, it is not
`
`7
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`

`

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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`meaningfully limited”); Fidelity Nat’l Information Svcs, Inc. v. Cashedge, Inc., CBM2013-
`
`00028, Paper 15 at 13 (in granting CBM review, the Board concluded that reliance on
`
`“a legal concept or abstraction that does not convert otherwise ineligible subject
`
`matter to patent eligible subject matter.”)
`
`RCAMC also argues that compliance with U.S. law is not routine based on two
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`instances over the past 16 years wherein financial institutions had to pay U.S.
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`government fines for their purported failures to comply with U.S. laws. Resp. at 27.
`
`RCAMC’s argument here is frivolous and absurd. To state the obvious, RCAMC
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`ignores the multitudes of transactions handled by banks each year, including those of
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`Petitioners, that routinely comply with U.S. law.
`
`C. The “Computerized Method” or “Computer” Is Not an Integral
`Component Of and Does Not Meaningfully Limit The Claims
`
`RCAMC’s argument that a computer is “necessary to cause the direct deposit
`
`
`
`of future retirement and Social Security payments” (Resp. at 42) does not render the
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`‘582 patent claims patentable. RCAMC is attempting to improperly limit the claims
`
`(which do not recite a computer except for the preamble of each claim, as explained
`
`by Petitioners) to an embodiment disclosed in the specification, and regardless, that
`
`embodiment relies on known computer technology. When the ‘582 patent claims are
`
`given their broadest reasonable interpretation, it is clear that the claimed invention is
`
`directed to a process that can be performed on pen and paper, as consumers were
`
`able to deposit Social Security or retirement payments long before computers. See
`
`8
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`

`

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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (holding
`
`
`
`method for verifying credit card transaction patent-ineligible because the “method
`
`steps can be performed in the human mind, or by a human using a pen and paper.”)
`
`RCAMC asserts that deposit only means direct deposit, and that direct deposits
`
`are limited to electronic fund transfers, in an effort to read a computer limitation into
`
`the ‘582 claims. See Resp. at 35. First, RCAMC’s argument violates the basic tenet of
`
`claim construction that “limitations from the specification are not to be read into the
`
`claims” and should be disregarded. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d
`
`1182, 1186 (Fed. Cir. 1998). 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.” Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). If RCAMC wished to limit its claims to
`
`direct deposits, it could have done so. It did not so limit the claims.
`
`Second, even if the claims were limited to direct deposits, such a claim would
`
`still not render the claims patent eligible. For a computer to impose a meaningful limit
`
`on the scope of a claim, and therefore impart patent eligibility, “it must play a
`
`significant part in permitting the claimed method to be performed, rather than
`
`function solely as an obvious mechanism for permitting a solution to be achieved
`
`more quickly.” SiRF Tech., Inc. v. ITC, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Using
`
`direct deposit to facilitate depositing of future retirement payments is an obvious
`
`9
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`mechanism for permitting manual depositing to be achieved more quickly. See Bancorp
`
`
`
`Servs., L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1279 (Fed. Cir. 2012)
`
`(finding claims patent-ineligible where recited computer “simply performs more
`
`efficiently what could otherwise be accomplished manually.”).
`
`In addition, using a computer to enable direct deposit does not play a
`
`significant part in permitting the claimed method to be performed. The beneficiary
`
`could manually deposit retirement payments, instead of using direct deposit. Indeed,
`
`the specification confirms that the use of a computer is optional and for the sake of
`
`efficiency, as the “existing computer capabilities” are used only “[d]esirably, and
`
`where appropriate” to perform the claimed invention. Ex. 1003, Col. 5:1-5. The
`
`specification also refers to “existing” computer components and “well-known”
`
`deposit techniques. Id. at Col. 5:1-22. As held by the Supreme Court, merely
`
`performing the claimed method using known software on existing hardware (i.e., a
`
`generic computer) does not render a claim patent-eligible. See Alice, 134 S.Ct. 2347, at
`
`2358 (“[T]he mere recitation of a generic computer cannot transform a patent-
`
`ineligible abstract idea into a patent-eligible invention.”); see also Dealertrack, Inc. v.
`
`Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012) (finding claims covering a software
`
`implementation of “a clearinghouse process using any existing or future-devised
`
`machinery” patent-ineligible);
`
`10
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`RCAMC further argues that system claims 13, 14, 30, and 31 require a
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`
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`computer because they recite several means-plus-function limitations, whose only
`
`corresponding structure disclosed in the specification is a computer. Resp. at 29-30,
`
`35-36. Yet even if the means-plus-function limitations in those claims are construed to
`
`require a computer, the use of a computer does not place any meaningful limitation
`
`on the scope of the claims. The specification states that any “existing computer
`
`capabilities” can be used to perform the claimed invention (Ex. 1003, Col. 5:1-5), and
`
`the system claims are then directed to a system for performing the claimed method of
`
`providing benefits based on the present value of future benefits. See CyberSource, 654
`
`F.3d at 1375 (“[T]he incidental use of a computer to perform the mental process of
`
`[the method claims] does not impose a sufficiently meaningful limit on the claim's
`
`scope.”); Bancorp, 687 F.3d at 1278 (“[T]he fact that the required calculations could be
`
`performed more efficiently via a computer does not materially alter the patent
`
`eligibility of the claimed subject matter.”); id. at 1279 (“[T]he management of the life
`
`insurance policy . . . is ‘integral to each of [the] claims at issue,’ not the computer
`
`machinery that may be used to accomplish it.”).1
`
`
`The PTAB’s recent decision not to institute CBM Review in Apple, Inc. v.
`1
`
`Sightsound Technologies, LLC (CBM2013-00019) on Section 101 grounds provides an
`
`instructive contrast. There, the PTAB found that the specific manner in which the
`
`recited hardware stores and transmits a digital audio signal “represent[s] meaningful
`
`11
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`Further, the Supreme Court, the Federal Circuit, and the USPTO have held
`
`
`
`that corresponding system and method claims should be treated the same for Section
`
`101 purposes. See Alice Corp., 134 S.Ct. at 2360 (“[T]he system claims are no different
`
`from the method claims[, which] recite the abstract idea implemented on a generic
`
`computer.”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
`
`(2012) (cautioning against a patent eligibility analysis that “depend[s] simply on the
`
`draftsman's art”); Bancorp, 687 F.3d at 1277 (affirming treatment of “the asserted
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`system and medium claims as no different from the asserted method claims for patent
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`eligibility purposes.”); Guidelines at 2.
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`D. Other Limitations and Purported Admissions
`
`RCAMC also argues that Petitioners did not address whether the following two
`
`limitations were significant and/or would have been routine and conventional at the
`
`relevant time: (1) “providing said monetary benefit to said beneficiary from said
`
`benefit provider based at least in part on present value of a designated portion of said
`
`retirement payments …” , and (2) “reimbursed from resources other than future
`
`retirement or Social Security payments in the event transfer of those benefits … are
`
`
`limitations on the scope of the claim that take it beyond the abstract concept of selling
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`music.” See CBM2013-00019, Paper 17 at 18-19. Here, the claims “involve the mere
`
`performance of calculations that any general purpose computer can do” and involve
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`“steps that can be performed by a human (e.g., using a pen and paper).” Id. at 21.
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`12
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`curtailed.” Resp. at 21, 22. Not surprisingly, RCAMC does not contend that these or
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`any other limitations are meaningful. Rather, in arguing that Petitioners did not
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`address them, RCAMC contends that Petitioners are foreclosed from making such
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`arguments because of Regions’ non-infringement contentions and alleged admissions
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`related thereto. Resp. at 20-22 (“non-infringement contentions alone foreclose a
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`finding that Petitioners have met their burden of proving [patent ineligibility]”).
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`RCAMC is factually and legally incorrect.
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`First, whether or not Regions’ accused service falls within the scope of the
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`claims is irrelevant under a §101 analysis. Bancorp, 687 F.3d at 1280 (“alternative
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`assertion of noninfringement does not detract from its affirmative defense of
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`invalidity under § 101.”)
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`Second, Petitioners had specifically argued that these limitations along with
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`others are “little more that the ‘disembodied concept’ of providing funds based on the
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`present value of future retirement payments.” Pet. at 26. That is, the first limitation
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`above (“providing said monetary benefit… based at least in part on present value of a
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`designated portion of said retirement payments …”) is merely the abstract idea stated
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`with a few more words. The second limitation (“reimbursed from resources other
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`than future retirement or Social Security payments”), as indicated by the patentees
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`during prosecution, ties into and is related to the “without encumbering …”
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`limitation, discussed above. Ex. 2015 at 15-16 (“The [without encumbering] features
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`… are concerned with preventing future retirement payments and the beneficiary’s
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`estate relating thereto from becoming a source of reimbursement to the benefit
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`provider in the event that the payments to the benefit provider are prematurely
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`curtailed…”) Accordingly, for the same reasons discussed above for the “without
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`encumbering…” limitation, the “reimbursed from resources other than future
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`retirement or Social Security payments” limitation does not impart patent eligibility.
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`Ultramercial, 722 F.3d at 1346.
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`RCAMC also incorrectly states that Regions contends, based on its non-
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`infringement contentions, that “a practical alternative to RCAMC’s claim exists” and
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`that there “exists non-infringing alternatives to the ‘582 patent’s implementation of
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`the abstract concept of advancing funds based on [future retirement payments].”
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`Resp. at 21. However, Regions’ general description of its own accused service is in no
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`way a representation or an admission that its accused service is limited to the abstract
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`idea of advancing future retirement benefits.
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`V.
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`RCAMC’S REMAINING ARGUMENTS ARE IRRELEVANT
`A. Expert Testimony Is Not Required To Show Claims Are Ineligible
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`RCAMC argues that Petitioners failed to meet their burden of establishing
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`patent-ineligibility because they did not submit any expert testimony on the issue.
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`Resp. at 12. However, “[e]xpert testimony is not necessary in patent cases involving
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`technology that is ‘easily understandable,’” such as the technology at issue here. Lee v.
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`Mike's Novelties, Inc., 2013-1049, 2013 WL 6097232, at *4 (Fed. Cir. Nov. 21, 2013).
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`Indeed, in granting Petitioners’ CBM Petition, the PTAB correctly noted that
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`“RCAMC’s claims do not solve a technical problem using a technical solution,” and
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`they “lack a novel and unobvious technological feature.” Paper 16 at 8. In view of the
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`non-technical nature of the claims, there is no need for explanatory expert testimony.
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`Lee, 2013 WL 6097232, at *4.
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`Moreover, as discussed above, no expert testimony is needed to determine that
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`the limitations relied on by RCAMC fail to meaningfully limit the scope of the claims.
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`Nor is expert testimony required to determine whether claims recite a computer
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`limitation that provides a meaningful limitation. The PTAB is competent to make
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`such determinations based on the claim language and the ‘582 patent specification.
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`B. The PTAB Has Authority to Grant CBM Review On Section 101.
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`RCAMC argues that the PTAB lacks authority to grant CBM Review on
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`Section 101 grounds. Resp. at 43. RCAMC is wrong. Section 101 is a proper ground
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`for challenging claims under CBM Review. See, e.g., SAP America, Inc. v. Versata
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`Development Group, Inc., CBM2012-00001, Paper 36 at 32-36.
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`VI.
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` CONCLUSION
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`For the reasons set forth above and in their Petition, Petitioners respectfully
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`requests that the PTAB find claims 1, 13, 14, 18, 30, and 31 of the ‘582 patent invalid
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`under 35 U.S.C. § 101.
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`Dated:
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`August 11, 2014
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`By:
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`/John M Caracappa Reg No 43532/
`John Caracappa (Lead Counsel)
`Reg. No. 43,532
`Harold Fox (Back-up Counsel)
`Reg. No. 41,498
`Gretchen Miller (Back-up Counsel)
`Reg. No. 65,091
`STEPTOE & JOHNSON LLP
`1330 Connecticut Ave., N.W.
`Washington, D.C. 20036
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`Christopher J. Chan (Back-up Counsel)
`Reg. No. 44,070
`Mia K. Fiedler (Back-up Counsel)
`Reg. No. 64,885
`SUTHERLAND ASBILL & BRENNAN LLP
`999 Peachtree Street, NE, Suite 2300
`Atlanta, GA 30309
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`Mark T. Deming (Back-up Counsel)
`Reg. No. 69,263
`POLSINELLI PC
`161 N. Clark Street
`Suite 4200
`Chicago, IL 60601
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`Attorneys for Regions Financial Corporation, Advance America,
`Cash Advance Centers, Inc., and CNU Online Holdings, LLC F/K/A Cash
`America Net Holdings, LLC
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`CERTIFICATE OF SERVICE
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`I hereby certify that on August 11, 2014, the foregoing PETITIONERS’
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`REPLY, was served via email to the following:
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`Casey L. Griffith
`Austin S. Champion
`KLEMCHUK KUBASTA LLP
`8150 North Central Expwy., 10th Floor
`Dallas, Texas 75206
`casey.griffith@kk-llp.com
`sita.desai@kk-llp.com
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`
`
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` By: /John M Caracappa Reg No 43532/
`John Caracappa
`Reg. No. 43,532
`Steptoe & Johnson LLP
`1330 Connecticut Avenue, NW
`Washington, DC 20036-1795
`Telephone: 202-429-3000
`Facsimile: 202-429-3902
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`Date: August 11, 2014
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`Case No. CBM2014-00012
`U.S. Patent No. 6,625,582
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`APPENDIX 1
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`STATEMENT IDENTIFYING MATERIAL FACTS IN DISPUTE
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`This Appendix identifies statements of material fact alleged by RCAMC in its
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`Response and disputed by Petitioners, as required by 37 C.F.R. § 42.23. By providing
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`this required statement, Petitioners do not admit, and expressly deny, that all alleged
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`statements are statements of fact, or that all are material.
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`1.
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`“Petitioners contend that the claims amount to a monopoly on the
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`abstract concept of ‘advancing funds based on future retirement payments.’ They
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`argue that all of the claim limitations are so insignificant, conv