throbber
Trials@uspto.gov
`571.272.7822
`
` Paper No. 12
` Entered: August 20, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MONSTER WORLDWIDE, INC., INDEED, INC., and
`THELADDERS.COM, INC.,
`Petitioner,
`
`v.
`
`CAREER DESTINATION DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case CBM2014–00070
`Patent No. 8,374,901 B2
`____________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`I. INTRODUCTION
`A. Background
`Indeed, Inc., Monster Worldwide, Inc., and theLadders.com, Inc.
`
`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) on February 12,
`2014 that requests review under the transitional program for covered
`
`

`

`CBM2014–00070
`Patent 8,374,901 B2
`
`business method patents of U.S. Patent No. 8,374,901 B2 (Ex. 1001, “the
`’901 patent”). Career Destination Development, LLC (“Patent Owner”) did
`not file a preliminary response. We have jurisdiction under 35 U.S.C. § 324,
`which provides that a post-grant review may not be instituted “unless . . . the
`information presented in the petition . . . would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.”
`
`Petitioner challenges the patentability of claims 1–33 (“the challenged
`claims”) of the ’901 patent under 35 U.S.C. §§ 112, 102, and 103. We
`determine that the Petition demonstrates that it is more likely than not that
`the challenged claims 1 and 12–33 are unpatentable. Pursuant to 35 U.S.C.
`§ 324, we institute a covered business method patent review of claims 1 and
`12–33 of the ’901 patent.
`
`
`B. Related Matters
`Petitioner and Patent Owner identify three related U.S. District Court
`
`cases, each filed in the District of Kansas: Career Destination Dev., LLC v.
`Monster Worldwide, Inc., No. 2:13-cv-02434 KHV/KGG (D. Kan.); Career
`Destination Dev., LLC v. Indeed, Inc., No. 2:13-cv-02486 JWL/JPO (D.
`Kan.); and Career Destination Dev., LLC v. theLadders.com, Inc., No. 2:13-
`cv-02522 JWL/KGS (D. Kan.). Pet. 1–2; Paper 7, 2.
`
`
`
`2
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`CBM2014–00070
`Patent 8,374,901 B2
`
`
`Further, Petitioner and Patent Owner state that the ’901 patent is the
`subject of another covered business method patent review, CBM2014-
`00069. Pet. 1; Paper 7, 2. In addition, Petitioner states that related U.S.
`Patent No. 7,424,4381 is the subject of CBM2014-00077 and CBM2014-
`00068. Pet. 2.
`
`
`C. The ’901 Patent (Ex. 1001)
`The ’901 patent is titled “Career and Employment Services System
`
`and Apparatus,” and issued February 12, 2013 from Application No.
`12/846,635 filed July 29, 2010. Ex. 1001, 1. Application No. 12/846,635 is
`a divisional of Application No. 10/101,644, filed March 19, 2002. Id.
`
`The ’901 patent discloses a system that matches talent (i.e.,
`employment candidates) with employers based upon information provided
`by each. See id. at col. 5, l. 59 – col. 6, l. 2. Figure 10 is reproduced below.
`
`
`1 The ’901 patent resulted from a divisional of the application that resulted in
`U.S. Patent No. 7,424,438. Ex. 1001, 1.
`
`
`
`
`3
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`CBM2014–00070
`Patent 8,374,901 B2
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`
`
`Figure 10 depicts a flow diagram illustrating an employer-initiated search
`for talent. Id. at col. 7, ll. 14–18. The flow diagram begins with stage 1003
`or stage 1004, where the employer performs a self-search or an automatic
`search of the talent profiles for a specific job. Id. at col. 39, ll. 33–42. The
`employer searches by specifying “a geographic point of reference and at
`least one of several non-geographic search parameters, such as industry,
`occupation, license, language, etc.” Id. at col. 39, ll. 43–46. The system
`returns to the employer “blind” talent profiles that satisfy the employer-
`provided search parameters. Id. at col. 43, ll. 37–44, Fig. 10, stage 1008.
`
`
`
`4
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`CBM2014–00070
`Patent 8,374,901 B2
`
`“Blind” talent profiles do not include talent contact or confidential
`information. Ex. 1001, col. 41, l. 67–col. 42, l. 1; col. 22, ll. 38–52. The
`employer then selects one or more talent profiles, from the resulting talent
`profiles, for further employment inquires. Id. at col. 43, ll. 48–50; Fig. 10,
`stage 1011. The system then determines whether a maximum compensation
`the employer is willing to pay is greater than the minimum compensation the
`talent is willing to accept. Id. at col. 44, ll. 7–10; Fig. 10, stage 1017. If
`maximum compensation and minimum compensation match, the talent is
`contacted to disclose contact information and to provide further information
`and, subsequently, that information is then provided to the employer for a
`fee. See id. at col. 44, ll. 27–29; col. 47, ll. 6–11; Fig. 10, stage 1018; Fig.
`5B. Similar to the above described employer initiated search for talent,
`talent can perform talent initiated searches of employer provided job
`descriptions. See id. at Fig. 4.
`
`Claims 1, 12, and 23 of the ’901 patent are illustrative of the
`challenged claims and are reproduced below:
`1. A method of searching a plurality of candidate profiles
`having respective candidate attributes and threshold
`requirements by a computer system having at least one
`computer comprising at least one processor and storage
`medium within a computer network, said method comprising:
`
`storing candidate attributes received from a candidate in
`a structured format on said at least one storage medium in
`communication with said at least one computer;
`
`receiving by said at least one computer from a
`prospective employer at least one threshold requirement
`selected from said candidate profiles;
`
`identifying at least one candidate profile by said
`computer system based on at least one search parameter
`received from said prospective employer;
`
`
`
`5
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`CBM2014–00070
`Patent 8,374,901 B2
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`
`comparing said at least one search parameter with said
`
`candidate attributes by said computer system;
`
`determining by said computer system whether at least
`one of said identified candidate profiles matching said at least
`one search parameter meets said threshold requirement, and;
`
`communicating to said prospective employer said at least
`one determined candidate profile.
`
`12. A method of searching a plurality of candidate profiles
`having respective candidate threshold requirements and being
`stored in a computer system having at least one computer
`comprising a processor within a computer network, said method
`comprising:
`
`receiving a request for a search associated with a specific
`job description received from a prospective employer;
`
`identifying at least one candidate profile by said
`computer system based on at least one search parameter;
`
`comparing said job description with at least one of said
`candidate threshold requirements by said computer system
`having at least one computer comprising said processor;
`
`determining by said computer system whether said job
`description matches said at least one candidate threshold
`requirement, and;
`
`communicating to said prospective employer said at least
`one identified candidate profile based upon said search
`parameters.
`
`23. A method of searching a plurality of job descriptions
`having respective employer threshold requirements and being
`stored in a computer system having at least one computer
`comprising at least one processor and storage medium within a
`computer network, said method comprising:
`
`
`
`6
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`CBM2014–00070
`Patent 8,374,901 B2
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`
`identifying at least one job description by said computer
`system based upon at least one search parameter, said at least
`one search parameter received by said computer system;
`storing attributes of at least one candidate profile
`associated with a candidate in said computer system;
`comparing said candidate profile with said at least one
`employer threshold requirement of said identified job
`description by said computer;
`determining whether said candidate profile matches said
`identified job description based on said at least one employer
`threshold requirement, and;
`
`communicating said identified job description to said
`candidate.
`
`
`
`D. Alleged Grounds of Unpatentability
`Petitioner sets forth grounds of unpatentability of the challenged
`
`claims as follows:
`Ground
`§ 112, second paragraph
`§ 112, first paragraph
`§ 102
`
`Prior Art
`n/a
`n/a
`Cooper2
`
`Challenged Claims
`1
`1 and 15
`1, 2, 7–9, 12, 17–20,
`23–25, 28, and 29
`1, 2, 8, 12, 18, 20, 23,
`25, and 29
`3, 4, 10, 11, 15, 16, 21,
`22, 26, 27, and 30–33
`
`§ 102
`
`§ 103
`
`Litvak3
`
`Cooper, Thomas4
`
`
`2 Cooper et al., WO 99/17242 (Apr. 8, 1999) (Ex. 1016).
`3 Litvak et al., WO 00/58866 (Oct. 5, 200) (Ex. 1019).
`4 Thomas et al., WO 00/28438 (May 18, 2000) (Ex. 1020).
`
`
`
`7
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`CBM2014–00070
`Patent 8,374,901 B2
`
`Ground
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`
`
`Prior Art
`Cooper, Pineda5
`
`Cooper, Long6
`Cooper, Coueignoux7
`
`Cooper, Coueignoux,
`Thomas
`Cooper, Coueignoux,
`Long
`Cooper, Coueignoux,
`Pineda
`Cooper, Litvak
`
`Cooper, Litvak,
`Thomas
`Cooper, Litvak, Long
`Cooper, Litvak, Pineda
`
`Challenged Claims
`5, 6, 13, 14, 26, and 27
`
`5–7, 13, 14, 17, and 24
`1, 2, 7–9, 12, 17–20,
`23–25, 28, and 29
`3, 4, 10, 11, 15, 16, 21,
`22, 26, 27, and 30–33
`5–7, 13, 14, 17, and 24
`
`5, 6, 13, 14, 26, and 27
`
`1, 2, 7–9, 12, 17–20,
`23–25, 28, and 29
`3, 4, 10, 11, 15, 16, 21,
`22, 26, 27, and 30–33
`5–7, 13, 14, 17, and 24
`5, 6, 13, 14, 26, and 27
`
`II. ANALYSIS
`A. Requirements for Covered Business Method Patent Review
`Section 18 of the AIA8 provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`
`5 Pineda et al., WO 01/82185 A2 (Apr. 21, 2000) (Ex. 1018).
`6 Long et al., WO 01/61611 A1 (Feb. 16, 2000) (Ex. 1021).
`7 Coueignoux, WO 99/01834 (Jan. 14, 1999) (Ex. 1017).
`
`
`
`8
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`CBM2014–00070
`Patent 8,374,901 B2
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`review to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`37 C.F.R. § 42.302. Petitioner and Patent Owner indicate that each of
`Monster Worldwide, Inc., theLadders.com, Inc., and Indeed, Inc. were sued
`for infringement of the ’901 patent. Pet. 1–2; Paper 7, 2. For reasons
`discussed below, we find that the ’901 patent is eligible for covered business
`method patent review.
`i. Covered Business Method Patent
`A covered business method 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,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1). The “legislative history explains that the definition of
`covered business method patent was drafted to encompass patents ‘claiming
`activities that are financial in nature.’” 77 Fed. Reg. 48,734, 48,735 (Aug.
`14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)). The legislative history indicates that
`“financial product or service” should be interpreted broadly. Id. A patent
`need have only one claim directed to a covered business method to be
`eligible for review. Id. at 48,736 (Response to Comment 8).
`
`First, Petitioner argues that the ’901 patent is a covered business
`method patent because all of the claims encompass an embodiment in which
`the disclosed system is operated as a business where employers pay fees for
`
`
`8 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
`
`
`9
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`

`CBM2014–00070
`Patent 8,374,901 B2
`
`information on qualified candidates. Pet. 6. Next, Petitioner argues that the
`’901 patent is a covered business method patent because the claims recite
`methods of searching for jobs or employment candidates in specified
`industries, including, as disclosed in the ’901 patent, financial service
`industries. Id. at 6–7 (citing Ex. 1001, col. 12, lines 58–60 (describing a
`“certified public accountant” licensing requirement) and claims 3, 10, 15,
`21, 30, and 32 (reciting an “occupational classification system”)). Petitioner
`argues, therefore, that the claimed methods are at least incidental or
`complementary to the management of a financial institution. Id. at 7.
`
`On this record, we are persuaded by Petitioner that the ’901 patent is a
`covered business method patent. All of the claims of the ’901 patent recite a
`method of searching for employment candidates or jobs which, in a
`preferred embodiment, is performed by a career site for a fee. See Ex. 1001,
`col. 9, ll. 12–35; col. 38, ll. 3–6; col. 43, ll. 48–67; col. 47, ll. 6–37.
`Operating a career site for a fee is an activity that is financial in nature. In
`addition we are persuaded by Petitioner that the ’901 patent is a covered
`business method patent, because the claims encompass searching for
`employment candidates that are certified public accountants. A certified
`public accountant job is a job that involves a financial activity. Thus, we
`determine that the ’901 patent is at least incidental and/or complementary to
`a financial activity, and determine, therefore, that the ’901 patent is a
`covered business method patent.
`ii. Not a Technological Invention
`
`The definition of “covered business method patent” in § 18(d)(1) of
`the AIA does not include patents for “technological inventions.” To
`determine whether a patent is for a technological invention, we consider
`
`
`
`10
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`

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`Patent 8,374,901 B2
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`“whether the claimed subject matter as a whole recites a technological
`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). Both prongs
`must be satisfied in order for the patent to be excluded as a technological
`invention. 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 the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non–obvious.
`77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012
`Petitioner argues that the ’901 patent is not for a technological
`invention because none of the claims recite a technological feature that is
`novel and unobvious over the prior art. Pet. 8–9. In addition, Petitioner
`argues that the ’901 patent does not solve a technical problem using a
`technical solution, because optimizing employers’ recruiting and hiring
`processes is a business solution to a business problem and not a technical
`solution to a technical problem. Id. at 9–10. Petitioner argues that all of the
`structural elements recited in the claims (e.g., computer, processor, computer
`network) are generic computer parts. Id.
`On this record, we are persuaded by Petitioner that the ’901 patent is
`not for a technological invention. At least independent claims 1, 12, and 23
`do not recite a technological feature that is novel and unobvious over the
`prior art. Independent claims 1, 12, and 23 all recite a method that is
`
`
`
`11
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`

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`Patent 8,374,901 B2
`
`performed using a “computer system,” “computer,” “processor,” “storage
`medium,” and “computer network.” The ’901 patent discloses that such
`elements were conventional and known at the time the ’901 patent was filed.
`See Ex. 1001, col. 8, ll. 3–67. Because both prongs must be satisfied for a
`patent to be excluded from covered business method patent review for being
`a technological invention, we find that the ’901 patent is eligible for a
`covered business method patent review for at least the reason that claims 1,
`12, and 23 fail to recite a technological feature that is novel and unobvious.
`Notwithstanding our determination above, on this record, we are also
`persuaded by Petitioner that the ’901 patent does not solve a technical
`problem using a technical solution. The ’901 patent solves the business
`problem of ineffective and expensive job recruitment and hiring with a
`central career site that charges fees only for employment candidate/employer
`matches. See id. at col. 5, ll. 53–57, col. 9, l. 1– col. 10, l. 9. Independent
`claims 1, 12, and 23 recite methods for matching employment candidates
`and employers. The methods are computer-implemented through the use of
`a “computer system,” “computer,” “processor,” “storage medium,” and
`“computer network.” As discussed above, the ’901 patent discloses that
`such elements were conventional and known at the time the ’901 patent was
`filed. See id. at col. 8, ll. 3–67. We, therefore, find that at least claims 1, 12,
`and 23 do not solve a technical problem using a technical solution, and thus,
`at least these claims do not satisfy the second prong. Accordingly, we find
`that the ’901 patent is eligible for covered business method patent review.
`
`
`
`
`12
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`Patent 8,374,901 B2
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`
`B. Claim Construction
`Consistent with the statute and legislative history of the AIA, the
`Board interprets claims using the broadest reasonable construction in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b).
`At this stage of the proceeding, no express construction is needed in order to
`resolve the issues in our decision.
`
`
`C. Ground Under 35 U.S.C. § 112, Second Paragraph
`Petitioner argues that claim 1 is indefinite under 35 U.S.C. § 112,
`second paragraph9, because it cannot be determined whether the “threshold
`requirement” of claim 1’s receiving step refers to candidate threshold
`requirements or the employer threshold requirements, as described in the
`’901 patent. Pet. 17–18.
`The scope of the claims must be sufficiently definite to inform the
`public of the bounds of the protected invention, i.e., what subject matter is
`covered by the exclusive rights of the patent. Halliburton Energy Servs. v.
`M-I, LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). “[A] patent is invalid for
`indefiniteness if its claims, read in light of the specification delineating the
`patent, and the prosecution history, fail to inform, with reasonable certainty,
`those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
`Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014).
`Claim 1 generally requires a method that searches candidate profiles
`for matches with parameters received from prospective employers. Claim 1
`
`
`9 Because the ’901 patent has an effective filing date before September 16,
`2012, we refer to the pre-AIA version of 35 U.S.C. §§ 112, 102.
`
`
`
`
`13
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`recites candidate profiles that include “threshold requirements” and a step of
`“receiving by said at least one computer from a prospective employer at
`least one threshold requirement selected from said candidate profiles.” In
`other words, claim 1 recites two threshold requirements: one threshold
`requirement that is included in the candidate profile (“first claimed threshold
`requirement”) and one threshold requirement that is both received from a
`prospective employer and selected from the candidate profiles (“second
`claimed threshold requirement”). The method also recites a step of
`“determining . . . whether at least one of said identified candidate profiles
`matching said at least one search parameter meets said threshold
`requirement” (emphasis added). This determining step doesn’t specify
`whether “said threshold requirement” refers to the first claimed threshold
`requirement or the second claimed threshold requirement. Regardless of
`whether “said threshold requirement” refers to either the first or second
`claimed threshold requirement, claim 1 is ambiguous because it is illogical
`to match a candidate profile by a threshold requirement already included in
`the candidate profiles or selected from the candidate profiles, particularly, in
`a method of searching for candidate profiles that meet employer’s
`requirements. See Pet. 18–19. Further, the ’901 patent’s disclosure sheds no
`light on this ambiguity. The ’901 patent describes candidate profiles
`containing candidate threshold requirements and employer provided
`employer threshold requirements, but does not describe matching candidate
`threshold requirements included in candidate profiles or selected from
`candidate profiles. The ’901 patent, in contradiction to the method of
`claim 1, discloses that candidate threshold requirements are not known to the
`employer. Ex. 1001, col. 22, ll. 47–52.
`
`
`
`14
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`
`On this record and for these reasons, we determine that Petitioner
`demonstrates that claim 1 is more likely than not indefinite under 35 U.S.C.
`§ 112, second paragraph.
`
`
`D. Grounds Under 35 U.S.C. § 112, First Paragraph
`Petitioner argues that claims 1 and 15 fail to comply with the written
`description requirement of 35 U.S.C. § 112, first paragraph. Pet. 19–22, 52-
`55.
`
`i. Claim 1
`Claim 1 recites “receiving by said at least one computer from a
`
`prospective employer at least one threshold requirement selected from said
`candidate profile.” Petitioner argues that, regardless of the ambiguity
`discussed above, the ’901 patent fails to provide written description support
`for an employer selecting a threshold requirement from a candidate profile.
`Pet. 19–22.
`The written description requirement of 35 U.S.C. § 112, first
`paragraph, requires that “the disclosure of the application relied upon
`reasonably convey[] to those skilled in the art that the inventor had
`possession of the claimed subject matter as of the filing date.” Ariad
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). One
`shows “possession” by descriptive means such as words, structures, figures,
`diagrams, and formulas that set forth fully the claimed invention. Lockwood
`v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
`Although the ’901 patent discloses employer threshold requirements
`and candidate threshold requirements (e.g., Ex. 1001, col. 10, ll. 37–45,
`col. 42, ll. 45–51, col. 44, ll. 21–29), the ’901 patent does not include any
`
`
`
`15
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`description of an employer selecting the employer threshold requirement
`from a candidate profile or accessing the candidate threshold requirement
`from the candidate profile. In contrast, the ’901 patent discloses that
`candidate threshold requirements are not provided to the employer. Id. at
`col. 22, ll. 47–52.
`On this record and for these reasons, we determine that Petitioner has
`demonstrated that it is more likely than not that claim 1 fails to comply with
`the written description requirement of 35 U.S.C. § 112, first paragraph.
`ii. Claim 15
`Claim 15, which depends from independent claim 12, recites “said at
`
`least one candidate threshold requirement is received by said employer.”
`For the same reasons as discussed above, Petitioner argues that the ’901
`patent fails to provide written description support for an employer receiving
`a candidate threshold requirement. Pet. 21–22. On this record, and for the
`same reasons as discussed above, we determine that Petitioner has
`demonstrated that it is more likely than not that claim 15 fails to comply
`with the written description requirement of 35 U.S.C. § 112, first paragraph.
`
`E. Grounds Under 35 U.S.C. §§ 102, 103
`i. Claims 1-11
`A determination of anticipation and obviousness over prior art begins
`
`with claim construction. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`Cir. 1998). Not every such patentability analysis, however, necessarily ends
`with a determination with respect to the prior art. The language used in a
`claim to define the scope of coverage, read in light of the specification, may
`be indefinite and fail to indicate the scope of the claimed invention. See,
`
`
`
`16
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`

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`
`e.g., In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d
`859, 862–63 (CCPA 1962). As previously discussed, the scope of claim 1
`cannot be determined without speculation. Consequently, the differences
`between the claimed invention and the prior art cannot be determined. In
`this circumstance, the analysis begins and ends with the claims, and we do
`not attempt to apply the prior art to the claims. In re Wilson, 424 F.2d at
`1385; In re Steele, 305 F.2d at 862–63; accord United Carbon Co. v. Binney
`& Smith Co., 317 U.S. 228, 237 (1942) (indefiniteness moots consideration
`of prior art issues).
`
`Because we cannot determine the scope of claim 1, as discussed
`above, and the scope of claims 2–11, dependent thereon, we cannot
`determine whether Petitioner has demonstrated that claims 1-11 are more
`likely than not unpatentable over the asserted grounds under 35 U.S.C. §§
`102, 103. See 37 C.F.R. § 42.208(c).
`ii. Anticipation of Claims 12, 17–20, 23–25, 28, and 29 by
`Cooper
`
`Petitioner argues that claims 12, 17–20, 23–25, 28, and 29 are
`anticipated under 35 U.S.C. § 102(b) by Cooper. Pet. 26-31. “A claim is
`anticipated only if each and every element as set forth in the claim is found,
`either expressly or inherently described, in a single prior art reference.”
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
`1987).
`
`a. Independent claims 12 and 23
`Petitioner argues that Cooper’s recruiting system anticipated claims
`12 and 23. Pet. 26–27, 28–30. Cooper is titled “On-line Recruiting System
`
`
`
`17
`
`

`

`CBM2014–00070
`Patent 8,374,901 B2
`
`with Improved Candidate and Position.” Ex. 1016, 110. Cooper describes
`electronic, network based, recruiting system 100 that facilitates entry,
`retrieval, and matching of data regarding employment candidates and job
`openings. Id. at 2. Recruiting system 100 includes database 112, which
`includes both job profiles 120 and candidate profiles 120. Id. at 7–8. Job
`profiles 120 are created by hiring manager 106 and contain information
`describing an open position. Id. at 7, 17. Candidate profiles 120 are created
`by a candidate (i.e., applicant 108) and contain information describing the
`candidate, such as compensation. Id at 18, 12. Figures 8 A and 8 B are
`reproduced below
`
`
`10 In this Decision, we refer to the original pagination of Cooper and not the
`page numbers inserted by Petitioner.
`
`
`
`18
`
`

`

`CBM2014–00070
`Patent 8,374,901 B2
`
`
`
`
`Figures 8A and 8B depict a flow chart illustrating an automatic
`matching operation embodiment. Id. at 6. Figure 8A and Figure 8B
`describe a method of comparing an open job profile (see id. at Fig. 8A, step
`802) with a subset of applicant (i.e., candidate) profiles that match certain
`parameters of the open job profile (see id. at Fig. 8A, step 804–808). Id. at
`20–21. The job profile is then compared with candidate profiles to
`determine whether the profile matches certain criteria, such as salary range
`(i.e., threshold requirements) (Fig. 8A, step 818). See id. at 21; Fig. 8A–8B,
`steps 810–842. Candidates and hiring managers are notified of resulting
`matches. Id. at 21–22; Fig. 8B, steps 848, 852. Cooper describes that the
`same method is used to match candidate profiles with job profiles. See id. at
`19. Upon review of Petitioner’s evidence and analysis, we are persuaded
`that Cooper describes all of the steps recited by claims 12 and 23, and we
`
`
`
`19
`
`

`

`CBM2014–00070
`Patent 8,374,901 B2
`
`determine that Petitioner has demonstrated that claims 12 and 23 are more
`likely than not anticipated under 35 U.S.C. § 102(b) by Cooper.
`b. Dependent Claims 17 and 24
`Petitioner argues that Cooper’s recruiting system anticipates claims 17
`and 24. Pet. 27, 30. Claims 17 and 24 depend from claims 12 and 23,
`respectively. Claims 17 and 24 recite receiving a request for an interview
`from an employer/candidate, transmitting the request to the
`candidate/employer, and receiving a request-acceptance indication from the
`candidate/employer. Cooper describes that hiring managers and candidates
`can communicate via recruiting system 101 to apply for jobs and set up
`interviews. Ex. 1016, 9–11, 13, Fig. 4A. Upon review of Petitioner’s
`evidence and analysis, we are persuaded that Cooper describes the additional
`limitations of claims 17 and 24, and we determine that Petitioner has
`demonstrated that claims 17 and 24 are more likely than not anticipated
`under 35 U.S.C. § 102(b) by Cooper.
`c. Dependent claims 18 and 25
`Petitioner argues that Cooper’s recruiting system anticipates claims 18
`and 25. Pet. 28, 30–31. Claim 18 recites “permitting said prospective
`employer to modify said at least one job description in response to said
`threshold determination.” Claim 25 recites “permitting said candidate to
`modify said at least one search parameter.” Cooper describes that a hiring
`manager can edit a job profile to arrive at the best candidates. Ex. 1016, 7,
`10. Cooper also describes that candidates can edit their candidate profile.
`Id. at 9. Upon review of Petitioner’s evidence and analysis, we are
`persuaded that Cooper describes the additional limitations of claims 18 and
`
`
`
`20
`
`

`

`CBM2014–00070
`Patent 8,374,901 B2
`
`25, and we determine that Petitioner has demonstrated that claims 18 and 25
`are more likely than not anticipated under 35 U.S.C. § 102(b) by Cooper.
`d. Dependent claims 19 and 28
`Petitioner argues that Cooper’s recruiting system anticipates claims 19
`and 28. Pet. 28, 31. Claims 19 and 28 recite that the search is automatically
`performed. Cooper describes automatic searching of job profiles and
`candidate profiles. See e.g., Ex. 1016, 10, 16. Upon review of Petitioner’s
`evidence and analysis, we are persuaded that Cooper describes the additional
`limitations of claims 19 and 28, and we determine that claims 19 and 28 are
`more likely than not anticipated under 35 U.S.C. § 102(b) by Cooper.
`e. Dependent claims 20 and 29
`Petitioner argues that Cooper’s recruiting system anticipates claims 20
`and 29. Pet. 28, 31. Claims 20 and 29 require that the threshold requirement
`is provided by the candidate and employer, respectively. Cooper describes
`that both candidate profiles and job profiles include criteria, such as salary.
`See e.g., Ex. 1016, 8, 17, 12, 22. Upon review of Petitioner’s evidence and
`analysis, we are persuaded that Cooper describes the steps recited in claims
`20 and 29, and we determine that Petitioner has demonstrated that claims 20
`and 29 are more likely than not anticipated under 35 U.S.C. § 102(b) by
`Cooper.
`iii. Obviousness of Claims 15, 16, 21, 22, 26, 27, and 30–33 over Cooper
`and Thomas
`Petitioner argues that claims 15, 16, 21, 22, 26, 27, and 30–33 are
`
`unpatentable under 35 U.S.C. § 103(a) over Cooper and Thomas. Pet. 59–
`65.
`
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`
`
`
`21
`
`

`

`CBM2014–00070
`Patent 8,374,901 B2
`
`
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art, (2) any differences
`between the claimed subject matter and the prior art, and (3) the level of skill
`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
`U.S. at 407 (“While the sequence of these questions might be reordered in
`any particular case, the [Graham] factors continue to define the inquiry that
`controls.”)

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