Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 16
`Date Entered: December 23, 2013
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METAVANTE CORPORATION and
`FIDELITY NATIONAL INFORMATION SERVICES, INC.
`Petitioner
`
`v.
`
`CHECKFREE CORPORATION
`Patent Owner
`____________
`
`Case CBM2013-00032
`Patent 7,792,749
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, BARRY L. GROSSMAN, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Petitioner Exhibit 1015 p.1
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`Case CBM2013-00032
`Patent 7,792,749
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`BACKGROUND
`
`Pursuant to 35 U.S.C. § 321 and section of 18 of the Leahy-Smith America
`Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“AIA”), Metavante
`Corporation and Fidelity National Information Services, Inc. (collectively,
`Petitioner) request that the Patent Trial and Appeal Board initiate a covered
`business method patent review to review claims 1-60 (the challenged claims) of
`U.S. Patent 7,792,749 B2 (the ´749 Patent). Checkfree Corporation (Patent
`Owner) filed a Patent Owner’s Preliminary Response on September 30, 2013.
`Paper No. 11. We have jurisdiction under 35 U.S.C. § 324. The standard for
`instituting a covered business method patent review is the same as that for a post-
`grant review. AIA § 18(a)(1). The standard for instituting post-grant review is set
`forth in 35 U.S.C. § 324(a), which provides:
`
`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 [35 U.S.C. §] 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.
`
`
`Petitioner contends that, pursuant to 37 C.F.R. §§ 42.301 and 42.304(a), the
`´749 Patent meets the definition of a covered business method patent and does not
`qualify as a technological invention. Pet. 2-7. Petitioner further contends that
`claims 1-60 fail to comply with the patentable subject matter requirements of
`35 U.S.C. § 101. Pet. 7-21. Petitioner does not propose any other challenges to the
`claims of the ´749 Patent in this proceeding.
`We institute covered business method patent review on Petitioner’s
`challenge to claims 1-60 of the ´749 Patent as unpatentable under 35 U.S.C. § 101.
`
`
`
`2
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`Petitioner Exhibit 1015 p.2
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`PENDING LITIGATION
`A person may not file a petition under the transitional program for covered
`
`business method patents unless the person or the person’s real party in interest or
`privy has been sued for infringement or has been charged with infringement under
`that patent. AIA §18 (a)(1)(B). Petitioner represents that it has been sued for
`infringing the ´749 Patent in CheckFree Corporation v. Metavante Corp., No.
`3:12-cv-00015 (M.D. Fla.). Pet. 1.
`
`THE ´749 PATENT (EXHIBIT 1001)
`The system and method of processing bill payment information described in
`the ´749 Patent includes a bill presentment and payment network in which a large
`number of payee and payer user stations communicate over the Internet (or other
`network) with a central clearinghouse station. Ex. 1001, col. 3, ll. 59-60; col. 4, ll.
`5-8; col. 9, ll. 4-35. Each of the user stations can communicate with the central
`clearinghouse station, although only certain users are registered to present or pay
`bills electronically via the network. Id. at col. 9, ll. 31-35. The central
`clearinghouse generates and directs the storage of billing information in
`association with registered and unregistered user identifiers, as may be desired by a
`registered user. Id. at col. 11, ll. 52-56. If a payee’s bills are payable
`electronically, a processor directs notice of that capability be transmitted to the
`payer, either through electronic media or by mail. Id. at col. 4, ll. 36-46. A
`database associated with the central clearinghouse stores information, i.e., a
`payee-pick-list, identifying the payees whom a registered user payer intends to pay
`electronically. Id. at col. 4, ll. 47-50; col. 16, ll. 49-67. Each of the payee-pick
`lists, which can include payees who are registered users and unregistered users, is
`
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`3
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`Petitioner Exhibit 1015 p.3
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`associated with a different payer and can include payee identification and related
`account information. Id. at col. 16, ll. 65-67; col. 4, ll. 58-62.
`
`ILLUSTRATIVE CLAIM
`
`1. A method comprising:
` executing computer-implemented instructions performed by one or more
`processors for:
`receiving, by a bill presentment and payment central clearinghouse, a request
`that is not associated with electronic bill presentment, the request comprising
`information identifying a payee of a payor, and the request comprising one
`of (i) a payment request or (ii) a request to add the payee to a pick list
`associated with the payor, wherein the payor has not previously activated
`electronic bill presentment from the payee through the clearinghouse;
`accessing, from at least one database by the clearinghouse utilizing at least a
`portion of the received information identifying the payee, stored billing
`information;
`identifying, by the clearinghouse from the accessed billing information, a bill
`presentment information associated with the payee;
`generating, by
`the clearinghouse, a notification of
`presentment information associated with the payee; and
`transmitting, by the clearinghouse to the payor, the generated notification.
`
`identified bill
`
`the
`
`BASIS OF PETITION
`Petitioner challenges the patentability of claims 1-60 as failing to recite
`patentable subject matter under 35 U.S.C. § 101. The Petition does not assert any
`other challenges to the patentability of the claims of the ´749 Patent.
`
`CLAIM CONSTRUCTION
`In a covered business method patent review, a claim is given its broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.300(b).
`Petitioner does not propose any specific construction for any of the terms
`used in the claims of the ´749 Patent. Pet. 7-8.
`
`
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`4
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`Petitioner Exhibit 1015 p.4
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`Patent Owner argues that a “bill presentment and payment central
`clearinghouse” in claim 1 is a specialized computer system, i.e., one that enables
`customers to both receive and pay bills electronically through the use of specially
`programmed computers that can receive, process, and respond to data transmitted
`in specific formats via specialized networks in an electronic bill presentment and
`payment (EBPP) system. Prelim. Resp. 10. Claim 1 does not recite such
`limitations on the clearinghouse. Although the claims are interpreted in light of the
`specification, limitations from the specification should not be read into the claims.
`In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). It is improper to read a
`limitation from a specification into a claim, and a claim is not limited to any
`embodiment disclosed in the specification, absent a demonstrated clear intention to
`limit the claim scope. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904-
`908 (Fed. Cir. 2004). Applying the broadest reasonable interpretation to the
`claims under consideration, there is no indication that the claim scope is limited in
`the manner argued by Patent Owner. Claim 1 recites that a computer executes
`instructions performed by one or more processors. Those instructions direct the
`clearinghouse to carry out the steps specifically recited in claim 1 set forth above.
`There is no need for further construction of the bill presentment and payment
`central clearinghouse, because claim 1 adequately defines it in terms of the
`functions the clearinghouse performs.
`Patent Owner contends that the ´749 Patent defines “billing information” as
`a data construct within an EBPP system. Id. at 12. As Patent Owner recognizes in
`the context of claim 1, however, stored billing information identifies bill
`presentment information associated with a payee. Id. at 13. Claim 1 does not limit
`the billing information to a data construct, or to data that is obtained in any
`
`
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`5
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`Petitioner Exhibit 1015 p.5
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`particular way or from any particular source, as proposed by Patent Owner. Id. at
`12-14.
`Patent Owner proposes a construction for the term “payee-pick-list.” Id. at
`14. We construe the term “payee-pick-list” or “pick-list” to mean a list identifying
`the payees whom a registered user payer intends to pay electronically. Ex. 1001,
`col. 4, ll. 47-50; col. 16, ll. 49-67.
`
`THE ´749 PATENT IS NOT A PATENT FOR A TECHNOLOGICAL
`INVENTION
`
`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.
`37 C.F.R. § 42.301(a). A covered business method patent “does not include
`patents for technological inventions.” Id. A technological invention is determined
`by considering whether the claimed subject matter as a whole recites a technical
`feature that is novel and unobvious over the prior art, and solves a technical
`problem using a technical solution. 37 C.F.R. § 42.301(b).
`Patent Owner contends that the technical requirements of electronic payment
`networks, and consumer expectations that systems would work in a familiar
`manner, presented technical challenges to developing an electronic bill payment
`and presentment (EBPP) system that required more than simply automating
`existing paper based systems. Prelim. Resp. 5. According to Patent Owner, the
`claims of the ´749 Patent define particular programmed computer and networking
`systems that automatically and selectively generate and transmit notifications to
`users concerning the availability of electronic bill presentment for particular
`billers. Id. at 7. The system uses databases containing user and merchant
`information, such as lists of merchants a user pays and the billing capabilities of
`
`
`
`6
`
`Petitioner Exhibit 1015 p.6
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`merchants. Id. Patent Owner argues that by determining the availability of such
`services when a user is interacting with the EBPP, the technology provides timely,
`user-friendly, electronic bill presentment information to each system user. Id. at 8.
`Claim 1 recites a method that comprises executing computer-implemented
`instructions to carry out certain steps. These steps include (i) receiving at a central
`clearinghouse a request not associated with electronic bill presentment, the request
`being either a payment request or a request to add the payee to the payer’s “pick-
`-list,” (ii) the clearinghouse accessing the payee’s stored billing information from a
`database, (iii) the clearinghouse using the accessed billing information to identify
`the payee’s bill presentment information, (iv) the clearinghouse generating a
`notification of the bill presentment information, and (v) the clearinghouse
`transmitting the bill presentment information to the payer. Figures 10, 12 and 14
`show the operations performed by a central station clearinghouse processor. The
`sequence of events recited in claim 1 is not a technical solution to a technical
`problem. The steps performed by the clearinghouse are not technical in nature.
`These steps concern looking up the payee’s bill presentment information and
`transmitting that information to the payer. The steps in claim 1 do not recite
`technical improvements to technical aspects of database lookup or message
`transmission techniques. Therefore, we are not persuaded by Patent Owner’s
`arguments that the claims are ineligible for covered business method review
`because they recite a technical solution to a technical problem.
`
`§ 101 SUBJECT MATTER ELIGIBILITY
`Claim 1 recites a method in which a central clearinghouse generates and
`transmits to a payer a notification of bill presentment information determined from
`accessing a database of stored billing information. Claims 20 and 40 recite a
`system and a computer program product with elements corresponding to those of
`
`
`
`7
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`Petitioner Exhibit 1015 p.7
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`claim 1. Patent Owner contends claims 20 and 40 recite patentable subject matter
`for the same reasons as claim 1. Prelim. Resp. 34-36. Patent Owner states that the
`claims are not directed to an abstract concept because they define inventions
`inherently limited to EBPP systems that generate user-specific notifications in
`response to two specific types of requests within that system from specific sets of
`users. Id. at 29-30. According to Patent Owner, the bill payment and presentment
`central clearinghouse in claim 1 is a specific machine, id. at 27-28; each of the five
`steps in claim 1 defines specific structures that tie the claimed process to an EBPP
`system, id. at 20; and claims 20 and 40 relate to a particular computer system
`programmed to run EBPP software, id. at 35-36. Patent Owner also contends that
`the billing information and bill presentment information are particular data
`structures that the EBPP must maintain. Id. at 21. Patent Owner further notes that
`the inventor believed the innovation was not in the underlying hardware, operating
`system or networks, but in high level software to be implemented on a particular
`machine, i.e., an EBPP system. Id. at 26-28.
`Petitioner contends that sending a notification to a user at the time of bill
`presentment, e.g., in order to encourage the user to add a vendor to the user’s
`electronic payment pick-list, is an abstract advertising concept that can be
`performed manually and that the use of a computer is a computerized embodiment
`of that abstract concept. Pet. 13-14. Citing Dealertrack, Inc. v. Huber, 674 F.3d
`1315, 1333 (Fed. Cir. 2012), Petitioner further argues that the clearinghouse
`limitation is a preemptive abstraction. Pet. at 14. Patent Owner responds that the
`limitations in claim 1, i.e., generating user specific notifications in response to two
`specific types of requests within the system from a specific set of users, do not
`encompass advertising a product or service to consumers, but are directed to
`interactions with users within a specific EBPP system. Prelim. Resp. 30.
`
`
`
`8
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`Petitioner Exhibit 1015 p.8
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`The fact that a claim relies on a method that is implemented on a computer
`or is directed to a computer-readable medium that causes a computer to implement
`certain steps are not per se indicators of patentability. Rather, a challenged claim,
`properly construed, must incorporate enough meaningful limitations to ensure that
`it claims more than just an abstract idea and is not a mere “drafting effort designed
`to monopolize [an abstract idea] itself.” Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 S. Ct. 1289, 1297 (2012). In order for a machine to impose a
`meaningful limitation on the scope of a method claim, 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. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
`Our focus is on the language of the claims. Claim 1 recites the step of
`executing computer-implemented instructions performed by one or more
`processors. The remaining limitations of claim 1 recite functions performed in
`carrying out the instructions, e.g., receiving a request, accessing stored billing
`information, identifying bill presentment information, generating a notification and
`transmitting the notification. It is possible that claim 1 is not directed to all
`methods of advertising the ability of a system to process bills electronically.
`However, claim 1 is directed to responding to a received “request that is not
`associated with electronic bill presentment.” The request includes essential payee
`and payer information and is either a payment request or a request to add the payee
`to the user’s list of payees. The responsive notification transmitted to the payer
`includes essential payee bill presentment information accessed from a database.
`The specification states that the notification can be transmitted by traditional mail.
`Ex. 1001, col. 4, ll. 41-43. Thus, claim 1 is directed to the abstract concept of
`providing a user essential information needed for electronic bill payment. Claim 1
`
`
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`9
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`Petitioner Exhibit 1015 p.9
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`does not recite providing any particular information, other than presentment
`information associated with a payee. Claim 1 does not recite any particular EBPP
`system and is not limited to any particular computer. As we discussed in our claim
`construction above, claim 1 does not limit the clearinghouse to a specialized
`computer. Claim 1 is silent as to how the computer has any significance to
`performing the method, and therefore, does not recite patent eligible subject
`matter. See Dealertrack, 674 F.3d at 1333. Thus, we are persuaded that Petitioner
`has demonstrated it is more likely than not that claim 1 is unpatentable under 35
`U.S.C. § 101, and we institute a trial on that basis.
`Patent Owner contends claims 20 and 40 recite patentable subject matter for
`the same reasons as claim 1. Prelim. Resp. 34-36. Our analysis of claims 20 and
`40 is similar to that of claim 1. Thus, we are similarly persuaded that Petitioner
`has demonstrated it is more likely than not that claims 20 and 40 are unpatentable
`under 35 U.S.C. § 101, and we institute a trial on that basis.
`Claim 2, which depends from claim 1, recites that the step of identifying the
`payee bill presentment information involves matching a portion of the received
`information identifying a payee to the billing information and subsequently
`determining that the bill presentment information is available. Claims 21 and 41
`recite a system and a computer program product with elements corresponding to
`those of claim 2. Patent Owner refers to these two steps as constituting an
`algorithm for use by the EBPP that cannot be performed manually. Prelim. Resp.
`38. The inventor testified that a human being cannot implement such a system
`without a computer. Id. at 27. As discussed above, however, the claim is not
`limited to any particular EBPP system. Thus, we are persuaded that Petitioner has
`demonstrated it is more likely than not that claims 2, 21, and 41 are unpatentable
`under 35 U.S.C. § 101, and we institute a trial on that basis.
`
`
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`10
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`Petitioner Exhibit 1015 p.10
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` Claim 3, which depends from claim 1, recites that identifying the payee bill
`presentment information involves identifying an indication that the payee is an
`electronic biller, which is capable of electronic bill presentment to the payer
`through the clearinghouse. Claims 22 and 42 recite a system and a computer
`program product with elements corresponding to those of claim 3. We are not
`persuaded by Patent Owner’s argument that the limitations in claims 3, 22, and 42
`further describe processes that must be executed by a specific EBPP system.
`Prelim. Resp. at 39. Claims 3, 22, and 42 recite identifying some indicator of
`payee functional capability, i.e., the ability to process bill payment electronically,
`and do not add limitations to a particular machine. Thus, we are persuaded that
`Petitioner has demonstrated it is more likely than not that claims 3, 22, and 42 are
`unpatentable under 35 U.S.C. § 101, and we institute a trial on that basis.
`Claim 4, which depends from claim 3, recites executing computer
`instructions for receiving the payee’s request to activate electronic bill presentment
`of bills for the payer through the clearinghouse and, in response, initiating
`activation of the requested electronic bill presentment. Claims 23 and 43 recite a
`system and a computer program product with elements corresponding to those of
`claim 4. Patent Owner argues that the ability to activate electronic billing requires
`the steps to be performed within the particular EBPP system defined by the claim.
`Id. at 40. As discussed above, however, we are not persuaded that the claims are
`limited to any specific EBPP system. A computer implementation is not itself
`determinative of patentability. Therefore, we institute a trial based on Petitioner’s
`challenges to claims 4, 23, and 43 under 35 U.S.C. § 101.
` Claim 5 depends from claim 4 and recites that initiation of activation
`includes the clearinghouse transmitting a notification of the payee’s request for
`electronic bill presentment. Claims 24 and 44 recite a system and a computer
`
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`11
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`Petitioner Exhibit 1015 p.11
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`program product with elements corresponding to those of claim 5. Claims 24 and
`44 are not limited to any particular transmission mode and do not tie the claim to a
`particular EBPP system, as Patent Owner contends. Prelim. Resp. 41. The mode
`of notification transmission, whether electronic or by traditional mail, does not
`change the characterization of transmitting the message as an abstract concept.
`Therefore, we institute a trial based on Petitioner’s challenges to claims 5, 24, and
`44 under 35 U.S.C. § 101.
`Claim 6 depends from claim 1 and recites that identifying the payee’s bill
`presentment information includes identifying an indication that an electronic bill
`from the payee to the payer is available through the clearinghouse. Claims 25 and
`45 recite a system and a computer program product with elements corresponding to
`those of claim 6. Patent Owner argues that this limitation adds to patent eligibility
`because it requires the EBPP to maintain data structures that have no purpose
`outside an electronic bill payment system, i.e., to indicate to each payer whether a
`payee has made a new electronic bill payment available. Id. at 41. However, the
`claim is limited to an indication of the availability of electronic bill payment and
`does not recite a specific data structure or include a limitation in which the
`computer is a meaningful limitation. Therefore, we institute a trial based on
`Petitioner’s challenges to claims 6, 25, and 45 under 35 U.S.C. § 101.
`Claim 7 recites executing computer instructions for the clearinghouse to
`receive a request for the bill from the payer and to transmit to the payer
`information associated with the electronic bill. Claims 26 and 46 recite a system
`and a computer program product with elements corresponding to those of claim 7.
`Patent Owner contends that these functional limitations require the EBPP to be
`able to serve the electronic bill to the consumer at the same time it notifies the user
`about the availability of electronic bill presentment. Id. at 42. While we agree
`
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`12
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`Petitioner Exhibit 1015 p.12
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`with Patent Owner’s contention that an electronic bill must be served
`electronically, id., we are not persuaded that this limitation recites a meaningful
`limitation on the scope of the method or a specific machine. See SiRF Tech., 601
`F.3d at 1333. Therefore, we institute a trial based on Petitioner’s challenges to
`claims 7, 26, and 46 under 35 U.S.C. § 101.
`Claim 8, which depends from claim 7, recites the clearinghouse transmitting
`to the payee a notification of the payer’s request to receive the electronic bill.
`Claims 27 and 47 recite a system and a computer program product with elements
`corresponding to those of claim 8. This limitation merely adds another recipient of
`the notification and does not recite a meaningful limitation on the scope of the
`method or a specific machine. Therefore, we institute a trial based on Petitioner’s
`challenges to claims 8, 27, and 47 under 35 U.S.C. § 101.
`Claim 9, which depends from claim 7, recites the clearinghouse receiving a
`request to pay the electronic bill and remitting payment. Claims 28 and 48 recite a
`system and a computer program product with elements corresponding to those of
`claim 9. Patent Owner contends that this limitation adds a tangible result feature to
`the claims and would require specialized software. Prelim. Resp. 44. As discussed
`above, the claims are not limited to any particular EBPP system. These claims do
`not recite any specialized software. Reciting a tangible result is not sufficient to
`establish patentable subject matter. In re Bilski, 545 F.3d 943, 959 (Fed. Cir.
`2008), aff’d sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010). Reciting the
`function of remitting payment does not add any meaningful limitation to the scope
`of the claims from which claims 9, 28, and 48 depend. Therefore, we institute a
`trial based on Petitioner’s challenges to claims 9, 28, and 48 under 35 U.S.C.
`§ 101.
`
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`13
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`Petitioner Exhibit 1015 p.13
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`Claim 10, which depends from claim 1, recites that the information
`identifying the payee includes first information and includes the additional step of
`the clearinghouse identifying second payee identification information, wherein the
`clearinghouse transmits the notification to the payer with the second information
`identifying the payee. Claims 29 and 49 recite a system and a computer program
`product with elements corresponding to those of claim 10. As Patent Owner notes,
`claims 10, 29, and 49 require maintaining additional information about each payee.
`Prelim. Resp. 45. We are not persuaded, however, that maintaining “additional”
`payee information that is subsequently sent to the payer changes the abstract nature
`of the claims as discussed above. Therefore, we institute a trial based on
`Petitioner’s challenges to claims 10, 29, and 49 under 35 U.S.C. § 101.
`Claim 11, which depends from claim 1, recites the additional step of the
`clearinghouse storing the payee identification information in a database and that
`the step of the clearinghouse identifying bill presentment information can occur
`before or after storing the payee identification information. Claims 30 and 50
`recite a system and a computer program product with elements corresponding to
`those of claim 11. We are not persuaded that reciting that the payee information is
`stored in a database and that the presentment information can be identified before
`or after the information is stored meaningfully limits the scope of the claim or ties
`the claims to a particular EBPP system, as argued by Patent Owner. Prelim. Resp.
`46. Therefore, we institute a trial based on Petitioner’s challenges to claims 11, 30,
`and 50 under 35 U.S.C. § 101.
`Claim 12, which depends from claim 1, recites the clearinghouse receiving
`second bill information associated with the payee’s bills, identifying, from the
`information, a payee’s electronic bill that is available for the payer through the
`clearinghouse, and transmitting to the payer a notification of the electronic bill’s
`
`
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`14
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`Petitioner Exhibit 1015 p.14
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`availability. Claims 31 and 51 recite a system and a computer program product
`with elements corresponding to those of claim 12. Patent Owner characterizes this
`limitation as a process for determining which electronic bill from a payee is active
`for a payer. Id. at 46. Determining which bill is active alone, however, does not
`limit the scope of the corresponding claims meaningfully. Therefore, we institute a
`trial based on Petitioner’s challenges to claims 12, 31, and 51 under 35 U.S.C.
`§ 101.
`Claim 13 depends from claim 12 and recites that the second bill information
`is received after receipt of the information identifying the payee. Claims 32 and 52
`recite a system and a computer program product with elements corresponding to
`those of claim 13. The receipt of second information after the information
`identifying the payee merely describes a logical sequence of receiving information
`and does not limit the scope of the corresponding claims meaningfully. Therefore,
`we institute a trial based on Petitioner’s challenges to claims 13, 32, and 52 under
`35 U.S.C. § 101.
`Claim 14, which depends from claim 1, recites that the identified bill
`presentment information comprises a first notification and adds the steps of the
`clearinghouse determining payer identification information, utilizing a portion of
`that payer identification information to access stored electronic billing information
`for the payer, identifying for the payer an electronic bill available to the payer
`through the clearinghouse, generating a second notification of a second bill
`presentment information, and transmitting the second notification. Claims 33 and
`53 recite a system and a computer program product with elements corresponding to
`those of claim 14. These limitations recite features discussed individually above.
`Alone or in combination, we are not persuaded that these features meaningfully
`
`
`
`15
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`Petitioner Exhibit 1015 p.15
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`Case CBM2013-00032
`Patent 7,792,749
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`limit the scope of the corresponding claims. Therefore, we institute a trial based
`on Petitioner’s challenges to claims 14, 33, and 53 under 35 U.S.C. § 101.
`Claim 15, which depends from claim 14, recites that the electronic bill is a
`bill of a second payee different from the first payee. Claims 34 and 54 recite a
`system and a computer program product with elements corresponding to those of
`claim 15. The identity of the payee does not limit the scope of the corresponding
`claims meaningfully. We reach a similar conclusion with respect to claims 16, 35,
`and 55, which recite that the second payee is an electronic biller capable of
`electronic bill presentment through the clearinghouse. Therefore, we institute a
`trial based on Petitioner’s challenges to claims 15, 16, 34, 35, 54, and 55 under 35
`U.S.C. § 101.
`Claim 17, depends from claim 16 and recites that the second notification
`comprises an indication that the second payee’s electronic bill is available through
`the clearinghouse. Claims 36 and 56 recite a system and a computer program
`product with elements corresponding to those of claim 17. Claim 18 depends from
`claim 1 and recites storing in the payer’s pick list an indication of the payee’s
`identification. Claims 37 and 57 recite a system and a computer program product
`with elements corresponding to those of claim 18. These limitations recite storing
`indications of features associated with the payee, i.e., bill availability and payee
`identification. We are not persuaded that the recited features are meaningful
`limitations of the scope of the claims. Therefore, we institute a trial based on
`Petitioner’s challenges to claims 17, 18, 36, 37, 56, and 57 under 35 U.S.C. § 101.
`Claim 19, which depends from claim 18, recites that the payer’s pick list
`comprises multiple payees identified by the payer and further recites the
`clearinghouse transmitting to the payer a pick list presentation that includes the
`generated notification of the bill presentment information. Claims 38 and 58 recite
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`16
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`Petitioner Exhibit 1015 p.16
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`Case CBM2013-00032
`Patent 7,792,749
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`a system and a computer program product with elements corresponding to those of
`claim 19. The identification of multiple payees does not appear to be a meaningful
`limitation on the scope of the claim, as any system would be expected to have
`multiple payees. Claim 39 depends from claim 38 and recites only that the
`presentation includes bill presentment information. The addition of bill
`presentment information to the notification recited in claim 38 does not contribute
`patentable subject matter to the claim. Therefore, we institute a trial based on
`Petitioner’s challenges to claims 19, 38, 39, and 58 under 35 U.S.C. § 101.
`Independent method claim 59 is similar to claim 1. Like claim 1, claim 59
`recites receiving a request including information identifying the payee. Unlike
`claim 1, claim 59 does not limit the received request to one of a payme