Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 24
`Entered: May 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EBAY ENTERPRISE, INC.
`Petitioner
`
`v.
`
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_______________
`
`Case CBM2014-00025
`Patent 7,010,508 B1
`_______________
`
`
`Before SALLY C. MEDLEY, MICHAEL W. KIM, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Review
`37 C.F.R. § 42.108
`
`
`
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`CBM2014-00025
`Patent 7,010,508 B1
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`I.
`
`INTRODUCTION
`
`Background
`A.
`eBay Enterprise, Inc. (“EEI”)1 filed a petition (Paper 1, “Pet.”) to
`institute a review under the transitional program for covered-business-
`method patents of U.S. Patent No. 7,010,508 B1(Ex. C to Ex. 1010, “the
`’508 patent”).2 Patent Owner Lawrence B. Lockwood (“Lockwood”)3 filed
`a Preliminary Response (Paper 12, “Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314.
`The standard for instituting a covered-business-method patent review
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`
`1 The petition names GSI Commerce Solutions, Inc. (“GSI”) as
`Petitioner. See Paper 1, cover page. In a paper filed April 11, 2014,
`Petitioner gave notice that GSI had changed its name to EEI. Paper 16 at 1.
`2 EEI mistakenly identifies the ’508 patent as Ex. 1007. Pet. at 1.
`Instead, Ex. 1007 is U.S. Pat. No. 5,576,951. See Ex. 1007. The ’508 patent
`is in the record as Ex. C to Ex. 1010 (hereinafter “Ex. 1010/C”).
`3 The petition names Landmark Technologies, LLC (“Landmark”) as
`the Patent Owner. Paper 1, cover page. In a paper filed February 21, 2014,
`Mr. Lockwood gave notice that he owns the ’508 patent and that Landmark
`is the licensee of the patent. Paper 14 at 2.
`
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`CBM2014-00025
`Patent 7,010,508 B1
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`
`EEI challenges the patentability of claims 1-17 of the ’508 patent
`under 35 U.S.C. §§ 112 ¶ 2,4 and 103. Taking into account Lockwood’s
`preliminary response, we determine that the information presented in the
`petition demonstrates that it is more likely than not that the challenged
`claims are unpatentable under 35 U.S.C. § 112 ¶ 2. As a result, we are
`unable to reach the alleged grounds of unpatentability based on 35 U.S.C.
`§ 103. Accordingly, pursuant to 35 U.S.C. § 324, we authorize a covered
`business method patent review to be instituted as to claims 1-17 of the ’508
`patent.
`
`Related Proceedings
`B.
`EEI discloses that the ’508 patent is involved in Landmark v. iRobot,
`Case No. 6:13-cv-411, E.D. Tex. 2013, and is the subject of Ex Parte
`Reexamination No. 90/012,671 (“the ’671 Reexam”). Pet. 7. EEI further
`discloses that it has petitioned for covered-business-method patent review of
`a related patent, 5,576,951. Id.; see eBay Enterprise, Inc. and eBay, Inc. v.
`Lockwood, CBM2014-00026 (Papers 1, 20). Lockwood discloses that the
`’508 patent is involved in 16 additional suits that are pending in the Eastern
`District of Texas. See Paper 18 at 2-3 and n.2.5
`
`
`4 Section 4(c) of the America Invents Act. Pub. L. 112-29, 125 Stat.
`284, 329 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶¶ 1-6 as 35 U.S.C.
`§ 112(a)-(f). Because the ’508 patent has a filing date prior to September
`16, 2012, the effective date of the AIA, we refer to the pre-AIA version of
`35 U.S.C. § 112.
`5 Lockwood suggests that we should not institute CBM review
`because EEI failed to inform the Board of all related proceedings as it was
`required to do under 37 C.F.R. § 42.42.8(b)(2). Prelim. Resp. 3-4. Rule
`42.8 requires each party to identify “any other judicial or administrative
`matter that would affect, or be affected by, a decision in the proceeding.”
`
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`Patent 7,010,508 B1
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`
`The Claimed Subject Matter
`C.
`The ’508 patent is directed to “terminals used by banking and other
`financial institutions to make their services available at all hours of the day
`from various remote locations.” Ex. 1010/C, 1:22-25. As shown in figure 1,
`the preferred embodiment comprises financial institution 101 linked to a
`plurality of remote self-service terminals 105 and a credit rating service 103.
`Id., 2:27-30; fig. 1. Central processor 104 of financial institution 101
`“periodically sends to the terminals 105 at the various remote sites 102 loan
`rate information and other data pertinent to the loans available from that
`institution.” Id., 3:11-14. Each terminal 105, depicted in figure 2,
`comprises videodisc 114, video screen 118, and data processor 113 that
`controls operation of the terminal. Id., 3:34-36, 39-43, 54-55. A recording
`of an image and sound of a fictitious loan officer is read from videodisc 114
`and appears on video screen 118. Id., 4:7-10. The fictitious bank loan
`officer guides a loan applicant through the application process. Id., 3:55-58;
`fig. 3. The applicant answers questions posed by the fictitious loan officer
`via touch pad 119. Id., 4:14-17; fig. 2. Based on the applicant’s answers,
`the terminal communicates with financial institution 101 (to get a previous
`quote provided to the applicant, if one exists) and credit rating service 103
`(to receive the applicant’s credit rating) to process the loan. Id., 4:22-25, 37-
`48; 5:22-25; figs. 1, 4, 5. The terminal analyzes the applicant’s financial
`
`37 C.F.R. § 42.8(a)(1)-(2), (b)(2). While a failure to comply with an
`applicable rule may be sanctioned (37 C.F.R. § 42.12(a)(1)), we do not
`believe that a sanction, much less dismissal of the petition, is appropriate
`here. Lockwood has not shown that EEI failed to identify a related
`proceeding of which Petitioner was aware. Moreover, we presume that
`Patent Owner has identified all related proceedings that EEI did not identify
`in the petition.
`
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`profile and computes the applicant’s credit worthiness based on the financial
`institution’s criteria, and decides whether or not to grant the loan. Id., 5:28-
`31, 35-41.
`The Specification states that the system depicted in figure 1 “could be
`applied to other forms of transactions in which information has to be
`acquired from a customer then processed to a decision or into the
`performance of a particular task.” Id., 5:59-62. For example, the system
`could be used to prepare and file income tax returns, in which case the
`fictitious person who appears on the video can instruct the applicant how to
`fill out the tax form. Id., 5:63-67. The system could also be used “as a
`trading network between buyers and sellers of securities.” Id., 6:7-8.
`
`Exemplary Claims
`D.
`Independent claims 1, 8, and 16, reproduced below, are illustrative of
`the claimed subject matter:
`1. An automated multimedia system for data processing
`which comprises:
`a computerized installation including a database, means for
`entering data into said database, and a program means for
`storing, processing, updating, and retrieving data items in
`response to coded requests from stations in communication
`with said installation;
`at least one station including a general purpose computer
`and a program applicable to said computer for sending said
`requests to said installation;
`means for communicating data back and forth between said
`installation and said station;
`said station further including:
`a mass memory and means associated therewith for
`storing and retrieving textual and graphical data;
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`Patent 7,010,508 B1
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`a video display and means associated therewith for
`displaying textual and graphical data;
`means for entering information into said computer;
`means
`for programming sequences of
`inquiring
`messages on said video display in accordance with preset
`routines and in response to said information;
`said sequences including instructions to an operator of
`said station for operating said station; and
`means for selectively and interactively presenting to
`said operator
`interrelated
`textual and graphical data
`describing a plurality of transaction options, and for
`selectively retrieving data from said mass memory;
`means for storing information, inquiries, and orders for
`transactions entered by said operator via said means for
`entering information;
`means for transmitting said inquiries and orders to said
`installation via said means for communicating;
`means for receiving data comprising operator-selected
`information and orders from said installation via said means for
`communicating; and
`means for interactively directing the operation of said
`computer, video display, data receiving and transmitting means,
`and mass memory comprising means for holding an operational
`sequencing list, means for processing said operator-entered
`information, inquiries, and orders according to backward-
`chaining and
`forward-chaining
`sequences, and means
`responsive to the status of said computer, display, mass
`memory, and data receiving and transmitting means for
`controlling their operation;
`said means for processing including means for analyzing
`said operator-entered information and means, responsive to said
`means for analyzing, for presenting additional inquiries in
`response to said operator-entered information;
`said computerized installation further including:
`means responsive to items received from said station for
`immediately transmitting selected data retrieved from said
`database to sais station;
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`means responsive to an order received from said station
`for updating data in said database including means for
`correlating to a particular set of data received from said
`station;
`whereby said system can be used by a plurality of
`entities, each using one of said stations, to exchange data,
`and to respond to inquiries and orders instantaneously or
`over a period of time.
`
`8. An automated multimedia system for data processing for
`delivering information on request to at least one user, which
`comprises:
`at least one computerized station;
`means for accepting and processing an user’s entry
`according
`to backward-chaining
`and
`forward-chaining
`sequences, including:
`means for analyzing and for combining an user’s entry
`with a set of stored data, and
`means, responsive to said means for analyzing and for
`combining, for formulating a query and outputting said
`query to said user; and
`means for delivering information to said user.
`
`
`16. An automated multimedia data processing system which
`comprises:
`at least two computerized stations, each including:
`at least one access means;
`a mass memory and a database stored in said mass memory;
`means for storing, processing, updating, and retrieving data;
`program means for controlling said storing, processing,
`updating, and retrieving data means in response to coded
`requests entered on said access means;
`means, associated with said mass memory, for storing and
`retrieving textual and graphical data;
`means for processing interrelated textual and graphical data
`describing a plurality of transaction operations, and
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`for selectively retrieving data from said mass memory;
`interrelating textual and graphical data stored in said mass
`memory, and accessible through interrelated textual and
`graphical access path means;
`means for accepting and processing said requests according
`to backward-chaining and forward-chaining sequences;
`means responsive to said coded requests for automatically
`displaying selected data;
`means for interactively directing the operation of said
`various means,
`and of said mass memory, said means for directing
`comprising means for holding an operation sequencing list and
`means responsive to the status of said mass memory, and said
`various means, for controlling their operations.
`
`
`
`Prior Art Relied Upon
`E.
`EEI relies upon the following prior-art references:
`U.S. Patent No. 4,359,631 to Lockwood et al., filed Jul. 11, 1980 (“the
`Lockwood patent”) (Ex. 1001);
`Dungan, C., A Model of an Audit Judgment in the Form of an Expert
`System 1-201 (May 23, 1983) (Ph. D. dissertation, University of Illinois)
`(“Dungan”) (Ex. 1002);
`Dzierzanowski, J. et al., GAITSPERT: An Expert System for the
`Evaluation of Abnormal Human Locomotion Arising from Stroke, 32 IEEE
`TRANSACTIONS ON BIOMEDICAL ENGINEERING 935-942 (Nov. 1985)
`(“GAITSPERT”) (Ex. 1003);
`Van Melle, W. et al., THE EMYCIN MANUAL (Stanford Univ. Nov. 9,
`1981) (“EMYCIN”) (Ex. 1004);
`Johnson, H. et al., Expert System for Diesel Electric Locomotive
`Repair, 1 J. FORTH APPL. & RES. 7-16 (Sept. 1983) (“Johnson”) (Ex. 1005);
`Gordon, R., An Interactive Video Information Terminal, 3 1982 IEEE
`GLOBAL TELECOMM. CONF. REC. 1356-1360 (Nov. 29-Dec. 2, 1982)
`(“Gordon”) (Ex. 1006).
`
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`Patent 7,010,508 B1
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`
`Asserted Grounds of Unpatentability
`F.
`EEI contends that claims 1-17 of the ’508 patent are unpatentable on
`the following grounds: (1) indefinite under 35 U.S.C. § 112 ¶ 2; and (2)
`obvious under 35 U.S.C. § 103 based on the following combinations:
`Reference[s]
`Claims Challenged
`Lockwood, Johnson, EMYCIN
`1-17
`Lockwood, Dungan, Gordon, and
`1-17
`EMYCIN
`Lockwood, GAITSPERT, Gordon,
`and EMYCIN
`
`
`
`1-17
`
`II. ANALYSIS
`
`A.
`
`Standing Under the Transitional Program for
`Reviewing Covered Business Methods
`The parties dispute whether EEI has standing to seek review of the
`’508 patent under the transitional program for reviewing covered-business-
`method (“CBM”) patents. “[T]he starting point for a standing determination
`for a litigant before an administrative agency . . . is the statute that confers
`standing before that agency.” Ritchie v. Simpson, 170 F.3d 1092, 1095 (Fed.
`Cir. 1999). In this case, the starting point is AIA § 18, which creates the
`transitional CBM-patent-review program. This section states in relevant
`part: “A person may not file a petition for a transitional proceeding with
`respect to a covered business method patent unless the person or the
`person’s real party in interest or privy has been sued for infringement of the
`patent or has been charged with infringement under the patent.” AIA
`§ 18(a)(1)(B). This requirement is repeated in 37 C.F.R. § 42.302(a), which
`further defines “charged with infringement” to mean that “a real and
`substantial controversy regarding infringement of a covered business method
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`Patent 7,010,508 B1
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`patent exists such that the petitioner would have standing to bring a
`declaratory judgment action in Federal court.” 37 C.F.R. § 42.302.
`EEI asserts that it has been “charged with infringement” under this
`rule because Lockwood sued EEI’s customer, iRobot, for infringement of
`the ’508 patent based on iRobot’s use of EEI systems and software, and EEI
`is obligated to indemnify iRobot if infringement is found. Pet. 2-3. EEI
`argues that its indemnification obligation confers on it declaratory-judgment
`standing, and therefore, under rule 42.302, standing to petition for CBM
`review of the ’508 patent. Id. (citing Arris Group, Inc. v. British Telecomm.
`PLC, No. 2010-1292 at 10 (Fed. Cir. 2011).
`Lockwood disputes that EEI has standing. First, Lockwood argues
`that the petition “failed to provide evidence of an indemnification contract or
`any connection between the iRobot litigation and GSI’s systems and
`software.” Prelim. Resp. 8. Second, Lockwood disputes EEI’s contention
`that having an obligation to indemnify iRobot automatically confers standing
`to EEI. Id. at 9-12.
`After the petition and preliminary response were filed, EEI moved to
`submit briefing, along with the declaration of EEI’s patent counsel, Howard
`I. Sherman, to provide clarification regarding EEI’s obligation to indemnify
`iRobot. Paper 20 at 2. EEI asserts that while it only had to “certify” in the
`petition that it had standing, it wishes to provide Mr. Sherman’s declaration
`to clarify the record. Id. at 2-3. Lockwood opposes the motion. Paper 22.
`According to Lockwood, Rule 42.304(a) requires that a CBM petition
`“demonstrate” standing rather than merely provide certification of standing.
`Id. at 2. Lockwood further argues that EEI’s late submission of the Sherman
`Declaration is not permitted by the rules. Id. at 3-4. Finally, Lockwood
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`argues that the dismissal of the iRobot suit after the petition was filed
`removes any standing that EEI may have had. Id. at 5-7.
`To the extent that Rule 42.304(a) requires that a petitioner provide
`evidence of standing with the petition and no later, we exercise our
`discretion under Rule 42.5(b) and waive that requirement. First, we
`acknowledge that our Office Patent Trial Practice Guide is equivocal on
`what is required of a CBM petition in this regard. Specifically, the Practice
`Guide states that among the specific requirements for petitions for all AIA
`proceedings, including CBM proceedings, “[a] petitioner must certify that
`the patent or application is available for review and that the petitioner is not
`barred or estopped from seeking the proceeding.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48763 (Aug. 14, 2012). It is not
`unreasonable for a petitioner to rely on this characterization and believe that
`certification alone is sufficient. Second, we believe that considering EEI’s
`evidence now, rather than denying the petition as to EEI and having it file a
`new petition merely to provide the same evidence, is a more efficient use of
`Board and litigant resources. Accordingly, we will consider the Sherman
`Declaration.
`“[W]here a patent holder accuses customers of direct infringement
`based on the sale or use of a supplier’s equipment, the supplier has standing
`to commence a declaratory judgment action if . . . the supplier is obligated to
`indemnify its customers from infringement liability.” Arris Group, Inc. v.
`British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011).6 We credit
`the Sherman Declaration, and find that at the time the Petition was filed, EEI
`
`6 We have considered Patent Owner’s arguments against applying
`Arris in this case, Prelim. Resp. 11-13, and find them unpersuasive.
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`was obligated to indemnify iRobot. The subsequent dismissal of the iRobot
`suit is irrelevant, as the requirements of Rule 42.302(a) need be met only at
`the time of filing. See 37 C.F.R. § 42.302(a) (“A petitioner may not file with
`the Office a petition to institute a covered business method patent review . . .
`unless the petitioner . . . has been charged with infringement.”). Moreover,
`we are not persuaded by Lockwood’s argument that dismissal of the iRobot
`suit extinguishes EEI’s standing because it eliminates any Article III case or
`controversy between the parties. Paper 22 at 6-7. Article III case-or-
`controversy considerations do not apply to administrative proceedings.
`Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir.
`2012).
`
`B. Whether the ’508 Patent is a Covered Business Method
`Patent or a Patent for a Technological Invention
`The parties also dispute whether the ’508 patent is a “covered
`business method patent,” as defined in the AIA and 37 C.F.R. § 42.301.
`A “covered business method patent” is a patent that “claims a method
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).
`Lockwood does not dispute, at least at this preliminary stage, that the
`’508 patent claims “a method or corresponding apparatus for performing
`data processing or other operations used in the practice, administration, or
`management of a financial product or service.” Based on the current record,
`we agree with EEI that the ’508 patent relates to a financial product or
`service as required by AIA § 18(d)(1) and 37 C.F.R. § 42.301. Thus, the
`
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`specific issue presented is whether the ’508 patent claims a technological
`invention.
`Whether a patent is for a technological invention under AIA
`§ 18(d)(1) is determined by considering, on a case-by-case basis: (1)
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art;” and (2) whether the
`claimed subject matter as a whole “solves a technical problem using a
`technical solution.” 37 C.F.R. § 42.301(b). The following claim drafting
`techniques, for example, typically do not render a patent a “technological
`invention”:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners,
`display devices or databases, or specialized machines, such
`as an ATM or point-of-sale device;
`(b) Reciting
`to
`technology
`the use of known prior-art
`accomplish a process or method, even if that process or
`method is novel and non-obvious;
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64
`(Aug. 14, 2012).
`Because a patent need have only one claim directed to a covered
`business method to be eligible for review,7 we focus our inquiry on claim 8.
`Claim 8 is drawn to an “automated multimedia system for data processing
`
`7 See Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012)
`(Comment 8).
`
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`for delivering information on request to at least one user,” and recites, inter
`alia, a “computerized station” and several limitations written in means-plus-
`function format, the corresponding structure of which would need to be
`discerned from the written description. The written description, in turn,
`indicates that the invention may be implemented using the self-service
`terminals disclosed in the Lockwood patent. See 1:34-43. The Lockwood
`patent issued on Nov. 16, 1982, before the earliest possible effective filing
`date of the ’508 patent, May 24, 1984.8 Ex. 1001, cover page. On the
`record before us, therefore, we determine that to the extent that claim 1
`recites technology via its mean-plus-function claim limitations, it recites
`technology that existed before the earliest possible effective filing data of the
`’508 patent. Accordingly, on the present record, we determine that the
`subject matter of claim 1, as a whole, does not recite “a technological feature
`that is novel and unobvious over the prior art,” and is therefore not a
`technological invention. Pet. 5.
`Lockwood responds that “the Petition’s obviousness analysis is fatally
`flawed and does not show that the claims were ‘well known in the art.’”
`Prelim. Resp. at 13. This argument is not persuasive because our
`determination above does not rely on the petition’s obviousness analysis, but
`rather on the ’508 patent’s disclosure. Lockwood also argues that the ’508
`patent is a pioneering patent (because more than 1000 subsequent patents
`have cited “a Lockwood patent as prior art”), and therefore the ’508 patent
`“fall[s] into the technological exception.” Id. at 14-18. But Lockwood
`provides no support for the notion that a pioneer patent is necessarily one
`
`8 For purposes of this decision we need not, and do not, determine
`whether the ’508 patent is entitled to this priority date.
`
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`that claims a technological invention, and such notion is not self-evident to
`us. Therefore, we are not persuaded by this argument.
`
`C. Definiteness, 35 U.S.C. § 112 ¶ 2
`EEI asserts that claims 1-17 of the ’508 patent are indefinite under
`35 U.S.C. § 112 ¶ 2. Specifically, EEI asserts that the following limitations
`in claim 1 are means-plus-function claim limitations, and that the written
`description does not disclose structure that performs the functions they
`recite: (1) “means for selectively and interactively presenting to said
`operator interrelated textual and graphical data describing a plurality of
`transaction options;” and (2) “means for processing said operator-entered
`information, inquiries, and orders according to backward-chaining and
`forward-chaining sequences.” Pet. 21. EEI also asserts that “remaining
`independent claims 8 and 16 also include the ‘backward-chaining and
`forward-chaining sequences’9 limitations and claim 16 further includes
`reference to ‘interrelated textual and graphical data.’”10 Id. at 21 n.8. We
`therefore consider these means-plus-function limitations in conjunction with
`the claim 1 limitations.
`The limitations at issue recite the term “means,” which creates a
`rebuttable presumption that they are written in means-plus-function format
`
`
`9 Claim 8 recites “means for accepting and processing an user’s entry
`according to backward-chaining and forward-chaining sequences.”
`Ex. 1010/C, 7:51-53. Claim 16 recites “means for accepting and processing
`said requests according to backward-chaining and forward-chaining
`sequences.” Id., 8:44-46.
`10 Claim 16 recites “means for processing interrelated textual and
`graphical data describing a plurality of transaction options.” Ex. 1010/C,
`8:37-38
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`under 35 U.S.C. § 112 ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256,
`1259 (Fed. Cir. 2008). The presumption may be rebutted if the limitation
`recites structure that performs the specified function. Personalized Media
`Communications, LLC v. International Trade Com'n, 161 F.3d 696, 704
`(Fed. Cir. 1998). None of these limitations appears to recite any structure.
`Moreover, Lockwood does not dispute EEI’s contention that they are means-
`plus-function limitations. Accordingly, we will interpret them in accordance
`with 35 U.S.C. § 112 ¶ 6.
`Under 35 U.S.C. § 112 ¶ 6, “[a]n element in a claim for a combination
`may be expressed as a means or step for performing a specified function
`without the recital of structure, material, or acts in support thereof.” Id. But
`the scope of a claim containing such a means-plus-function limitation is
`limited to “the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” Id. Construing a claim under 35
`U.S.C. § 112 ¶ 6 is thus a two-step process. The first step is identifying the
`particular function recited. Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d
`1327, 1333 (Fed. Cir. 2004) (citation omitted). The second step is
`identifying, in the specification, the structure that corresponds to that
`function. Id. at 1334. “Under this second step, structure disclosed in the
`specification is corresponding structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim.” In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)
`(internal quotation omitted) (emphasis added). Failure to disclose structure
`that performs the claimed function renders the claim invalid for
`indefiniteness under 35 U.S.C. § 112 ¶ 2. Aristocrat Tech. Aus. Pty Ltd. v.
`
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`Int’l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008) (citing In re
`Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)).
`“In cases involving a computer-implemented invention in which the
`inventor has invoked means-plus-function claiming, [the Federal Circuit] has
`consistently required that the structure disclosed in the specification be more
`than simply a general purpose computer or microprocessor.” Aristocrat, 521
`F.3d at 1333. This is because “general purpose computers can be
`programmed to perform very different tasks in very different ways,” so that
`simply disclosing a computer as the structure that performs the claimed
`function does not limit the scope of the claim as required by § 112 ¶ 6. Id.
`Therefore, in a means-plus-function claim “in which the disclosed structure
`is a computer, or microprocessor, programmed to carry out an algorithm, the
`disclosed structure is not the general purpose computer, but rather the
`special purpose computer programmed to perform the disclosed algorithm.”
`Id. (internal quotation omitted). In other words, “[T]he corresponding
`structure for a § 112 ¶ 6 claim for a computer-implemented function is the
`algorithm disclosed in the specification.” Id. (quoting Harris Corp. v.
`Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005). With the above in
`mind, we address each limitation in turn.
`1.
`means for selectively and interactively presenting to said
`operator [or processing [claim 16]] interrelated textual
`and graphical data describing a plurality of transaction
`options
`EEI asserts that claims 1-17 are indefinite because there is no
`structural support for the claim 1 limitation “means for selectively and
`interactively presenting to said operator interrelated textual and graphical
`data describing a plurality of transaction options,” or the claim 16 limitation
`
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`“means for processing interrelated textual and graphical data describing a
`plurality of transaction options.” Prelim. Resp. 21-23. The function that
`these limitations recite is “selectively and interactively presenting to said
`operator” (claim 1), or “processing” (claim 16), “interrelated textual and
`graphical data describing a plurality of transaction options.” According to
`EEI, “there is no description or teaching in the ’508 Patent as to what is
`meant by interrelated textual and graphical data.” Pet. 22-23. Further,
`referring to a July 7, 1997 Response to a Non-Final Office Action (“July 7,
`1997 Response,” Ex. 2007), EEI asserts that Lockwood identified the data
`that is “periodically sent to the terminals” as the claimed textual data, and
`identified the fictitious loan officer, the image of which is stored on
`videodisc 114 of terminal 105, as both the graphical data and the vehicle for
`“selectively and interactively presenting to said operator interrelated textual
`and graphical data” to the operator. Pet. 22-23 (citing Ex. 2007 at 8). EEI
`argues that while videodisc 114 is controlled by data processor 113,
`there are no algorithms disclosed nor any other teaching in the ’508
`Patent of how to program either the data processor 113 or the
`videodisc 114 to ‘selectively and interactively’ present to an operator
`interrelated textual and graphical data describing a plurality of
`transaction options, as required by the means language of claim 1.
`
`Id. (emphasis in original).
`
`
`Lockwood argues that the specification discloses structure that
`corresponds to the this function “in prose and through the use of flow
`diagrams.” Prelim. Resp. 37. Lockwood states, in this regard:
`For example, “[t]he central processor 104 of the financial
`institution 101 periodically sends to the terminals 105 . . . loan
`rate information and other data pertinent to the loans available
`
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`18
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`. . .” “That information is stored in the various terminals and
`can be reviewed by an applicant in need of a loan.” Regarding
`the fictitious loan officer, “[t]he operation of the terminal is
`controlled by a data processor 113,” and “[o]nce the system is
`activated 125 the recording of an image and sound of a
`fictitious loan officer is read from the videodisc 114 and
`appears on the video