Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
` Paper 13
`
`
`
` Entered: October 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CALLIDUS SOFTWARE, INC.,
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`_______________
`
`CBM2014-00117
`Patent 7,908,304 B2
`_______________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
` Paper 13
`
`
`
` Entered: October 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CALLIDUS SOFTWARE, INC.,
`Petitioner,
`
`v.
`
`VERSATA SOFTWARE, INC. and
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`_______________
`
`CBM2014-00117
`Patent 7,908,304 B2
`_______________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`KEVIN F. TURNER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`
`I. INTRODUCTION
`Callidus Software, Inc. (“Petitioner”) filed a Petition on April 17,
`2014, requesting a covered business method patent review of claims 2–11,
`26–29, 33–41, and 44–46 of U.S. Patent No. 7,908,304 (Ex. 1001, “the ’304
`patent”). Paper 1 (“Pet.”). Petitioner asserts that all of the challenged claims
`are unpatentable under 35 U.S.C. § 101. In response, Versata Development
`Group, Inc. and Versata Software, Inc. (“Patent Owner”) filed a Patent
`Owner Preliminary Response on July 24, 2014. Paper 12 (“Prelim. Resp.”).
` 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.”
`Pursuant to 35 U.S.C. § 324, the Board authorizes a covered business
`method patent review to be instituted as to claims 2–11, 26–29, 33–41, and
`44–46 of the ’304 patent.
`
`A. The ’304 Patent
`The Specification of the ’304 patent describes a method and system
`for managing contracts between manufacturers and distributors of a product.
` One described embodiment provides a system that enables financial services
`companies to track information, provide incentive-based compensation to
`their sales force, and calculate compensation based on certain variables. Ex.
`1001, 4:43–51.
`A Distributor Management System Suite (“DMSS”) comprises
`applications that provide tracking information, “such as contact points,
`payment methods, and organizational hierarchies on all parties in the system,
`managing regulatory information and ensuring that distributors are licensed
`
`
`
`2
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`and appointed to sell the products manufactured by the provider.” Id. at
`4:52–58. The DMSS comprises management modules, a backbone, one or
`more data processing engines, databases, and storage management
`components. Id. at 5:10–13.
`
`
`B. Illustrative Claims
`The challenged claims depend from one of independent claims 1, 12,
`and 32.
`The independent claims 1, 12, and 32 are illustrative of the subject matter
`of the claims at issue, and are reproduced below:
`1.
` A system for managing relationships between a first
`party and a second party comprising:
`
`
`
`at least one processor;
`
`memory coupled to said at least one processor;
`
`said memory comprising a plurality of modules
`configured to manage distributor information;
`
`said plurality of modules comprising a selling agreements
`module configured to generate a selling agreement;
`
`said plurality of modules comprising a commission
`module configured to determine commission amounts
`associated with a sales transaction based on said selling
`agreement;
`
`said plurality of modules comprising a licensing module
`configured to determine if a party associated with said
`sales transaction has a valid license to sell products
`associated with the sales transaction; and
`
`
`
`
`3
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`
`said plurality of modules comprising a payment module
`for determining payment associated with said sales
`transaction to said party in accordance with (i) a
`determination of said commission amounts determined
`by said commission module and (ii) a determination by
`said licensing module of whether said party has a valid
`license to sell the products associated with said sales
`transaction.
`
`12. A system for managing relationships between parties to a
`selling agreement, the system comprising:
`
`
`
`a database source comprising a plurality of data objects
`representative of at least one distributing party, at least
`one selling agreement, and at least one license or
`appointment associated with said at least one distributing
`party; and
`
` a
`
` distributor management engine configured to obtain at
`least one of said plurality of data objects from said
`database source and determine whether said at least one
`distributing party conforms with said at least one selling
`agreement and said at least one license or appointment is
`valid to allow the at least one distributing party to sell
`one or more products of the first party in accordance with
`the selling agreement.
`
`
`32. A system for managing relationships between a first
`party and a second party comprising:
`
`an interface for obtaining a plurality of business rules
`defining relationships between a product provider and at
`least one distributor;
`
` database source comprising a plurality of data objects
`representative of said at least one distributor, at least one
`selling agreement and at least one license or appointment
`associated with said at least one distributor;
`
` a
`
`
`
`
`
`4
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`
` a
`
` commission engine configured to determine a
`commission amount associated with said at least one
`distributor by evaluating said at least one selling
`agreement data object;
`
` a
`
` plurality of modules comprising, a distributor
`administration module for managing said plurality of data
`objects;
`
`said plurality of modules comprising, a licensing and
`appointment module configured to determine if said at
`least one license or appointment data object associated
`with said at least one distributor is in compliance with a
`set of industry regulations;
`
`said plurality of modules comprising, a selling
`agreements module configured to enable said product
`provider to define and create a selling agreement with
`said at least one distributor; and
`
`said plurality of modules comprising, a payment module
`configured to determine said commission amount to said
`at least one distributor.
`
`
`
`
`C. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 2–11, 26–29, 33–41,
`and 44–46 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 ’304 patent.
`
`D. Related Proceedings
`In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it
`
`
`
`5
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`has been sued for infringement of the ’304 patent. Pet. 6–7. The identified
`related case is Versata Software, Inc. v. Callidus Software, Inc., No. 1:12-cv-
`931-SLR (D. Del.). A covered business method patent review was instituted
`on March 4, 2014 (“Decision on Institution”) involving the same parties, the
`same patent, but different claims. Callidus Software, Inc. v. Versata
`Software, Inc. and Versata Development Group, Inc., Case CBM2013-00054
`(PTAB March 4, 2014) (Paper 19).
`
`E. Covered Business Method Patent
`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.” § 18(d)(1) of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011)
`(“AIA”). To determine whether a patent is for a technological
`invention, we consider “[w]hether 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).
`Petitioner submits arguments and evidence substantially identical to
`those submitted in the Petition for CBM2013-00054 as to whether the ’304
`patent is a covered business method patent. Pet. 9 (“This Section IV.C. is
`substantially the same as Section III.C of the Petition in CBM2013-00054
`(Exh. 1014).”). As it did in its Preliminary Response in case CBM2013-
`00054, Patent Owner does not dispute that its patent claims a method for
`
`
`
`6
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service, and does
`not include a technological invention.
`In the Decision on Institution for CBM2013-00054, we determined
`that the ’304 patent is a covered business method patent under AIA
`§ 18(d)(1). Callidus Software, Inc. v. Versata Software, Inc. and Versata
`Development Group, Inc., Case CBM2013-00054, slip op. at 6–9 (PTAB
`Mar. 4, 2014) (Paper 19). We incorporate our previous analysis from the
`Decision on Institution for CBM2013-00054, and for the reasons provided
`there, we determine that the ’304 patent is a covered business method patent
`under AIA § 18(d)(1).
`
`F. 35 U.S.C. § 325(a)(1)
`Patent Owner urges that the Board decline to institute review of the
`’304 patent because Petitioner is statutorily barred from seeking such
`review. Prelim. Resp. 23–42. Patent Owner argues that 35 U.S.C. §
`325(a)(1) bars Petitioner because Petitioner filed a civil action challenging
`validity of the ’304 patent before the filing of the Petition. Id. Patent
`Owner’s arguments are substantially identical to those made in connection
`with the Patent Owner Preliminary Response in CBM2013-00054 and the
`Patent Owner Rehearing Request filed in the same case. See CBM2013-
`00054, Papers 18 and 22. We previously considered Patent Owner’s
`arguments. In the Decision on Institution for CBM2013-00054, and the
`Decision on Rehearing, we determined that Petitioner is not statutorily
`barred from seeking a covered business method patent review of the ’304
`patent. See Callidus Software, Inc. v. Versata Software, Inc. and Versata
`
`
`
`7
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`Development Group, Inc., Case CBM2013-00054, slip op. at 9–12 (PTAB
`Mar. 4, 2014) (Paper 19)), and the Decision on Rehearing (PTAB Apr. 9,
`2014) (Paper 25). While we recognize that 35 U.S.C. § 325(a)(1) applies to
`covered business method patent reviews,1 the Patent Owner has not
`persuaded us that dismissal without prejudice of a prior civil action
`challenging validity prevents institution of a covered business method patent
`review under 35 U.S.C. § 325(a)(1).
`Accordingly, for purposes of this decision, we incorporate our
`analysis regarding whether Petitioner is barred from seeking a covered
`business method patent review, under 35 U.S.C. § 325(a)(1), from the
`Decision on Institution in CBM2013-00054 (see Callidus Software, Inc. v.
`Versata Software, Inc. and Versata Development Group, Inc., Case
`CBM2013-00054, slip op. at 9–12 (PTAB Mar. 4, 2014) (Paper 19)), and the
`Decision on Rehearing ((PTAB Apr. 9, 2014) (Paper 25)), and determine
`that Petitioner is not barred.
`
`II. ANALYSIS
`
`A. Claim Construction
`In a covered business method patent review, claim terms in an
`unexpired patent are given their broadest reasonable construction in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b).
`Under the broadest reasonable construction standard, claim terms are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`
`
`1 See SecureBuy, LLC v. CardinalCommerce Corp., Case CBM2014-00035,
`(PTAB Apr. 25, 2014) (Paper 12).
`
`
`
`8
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`In the CBM2013-00054 Decision on Institution, we construed certain
`claim terms for independent claims 1, 12, and 32—claims that are not
`challenged here. The claims challenged in this proceeding, however, depend
`either directly or indirectly from one of independent claims 1, 12, and 32,
`and, therefore, the construction for independent claims 1, 12, and 32 is
`relevant to challenged claims 2–11, 26–29, 33–41, and 44–46. Petitioner
`does not dispute our constructions made in CBM2013-00054. Pet. 21–22.
`Patent Owner agrees with some of our previous constructions, but disagrees
`with others. Prelim. Resp. 12–13.
`Trial briefing is coming to an end in CBM2013-00054 and the parties
`have advanced their positions with respect to claim construction; however,
`we have not made a final determination as to claim construction. In order to
`maintain consistency between CBM2013-00054 and this proceeding, we
`construe certain claim terms for claims 1, 12, and 32 the same as we did in
`the Decision on Institution for CBM2013-00054, despite Patent Owner
`urging a different construction for the terms “selling agreement” and
`“interface.”
`Accordingly, for purposes of this decision, we incorporate our
`analysis regarding the terms construed in CBM2013-00054 (see Callidus
`Software, Inc. v. Versata Software, Inc. and Versata Development Group,
`Inc., Case CBM2013-00054, slip op. at 12–18 (PTAB Mar. 4, 2014) (Paper
`19)).
`
`
`
`9
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`
`module
`
`modules
`to generate a selling
`agreement/to define and
`create a selling agreement
`engine
`
`Those terms and their meanings are summarized here:
`Claim Term
`Construction
`a software application that performs a
`stated function
`software applications that perform a
`stated function
`to create a customized selling
`agreement contract comprising
`templates or reusable components
`software that processes data for a stated
`function
`software, and may include hardware,
`through which engines, modules, and
`databases can exchange information
`browser-based gateway for a user to
`manage the DMSS applications
`
`backbone
`
`interface
`
`
`Commission Engine
`Claim 7, which depends indirectly from claim 1, and independent
`claim 32 each recite “a commission engine.” Patent Owner argues that the
`broadest reasonable interpretation of a commission engine is “‘an engine
`that takes two inputs, a commission model and a set of transactions, and
`generates ledger items (that correspond to payments) as output.’” Prelim.
`Resp. 14. We did not construe the meaning of the term “commission
`engine” in connection with the CBM2013-00054 Decision on Institution.
`Patent Owner argues that it acted as its own lexicographer by
`specifically defining the term “commission engine” in the Specification of
`the ’304 patent. Prelim. Resp. 14–15, citing Ex. 1001, 7:1–17. We have
`reviewed the passage to which Patent Owner directs our attention, but do not
`find this passage to support the argument made. In particular, we determine
`
`
`
`10
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`that Patent Owner did not define the term “commission engine” in the
`Specification of the ’304 patent with reasonable clarity, deliberateness, and
`precision. Paulsen, 30 F.3d at 1480. The passage is preceded by an
`explanation that the description is with respect to one embodiment of the
`invention. Ex. 1001, 6:66–67. There are no words in connection with the
`passage that indicate that the passage is a definition for “commission
`engine” and not just an example of what a commission engine does. Patent
`Owner’s proposed construction goes beyond the plain and ordinary meaning
`of the term by adding elements from the Specification into the term.
`Per the chart above, we construe the term “engine” to mean software
`that processes data for a stated function. The term “commission” before the
`word engine is the stated function. Accordingly, for purposes of the
`decision the term “commission engine” means “software that processes data
`for determining commission or payment.”
`
`B. 35 U.S.C. § 101 Ground of Unpatentability
`Petitioner contends that claims 2–11, 26–29, 33–41, and 44–46 of the
`’304 patent are directed to non-statutory subject matter under 35 U.S.C.
`§ 101. Pet. 28–80. Patent Owner presents no arguments with respect to the
`§ 101 ground of unpatentability. See generally Prelim. Resp. Upon
`reviewing Petitioner’s analysis and supporting evidence, we determine that
`Petitioner has established that claims 2–11, 26–29, 33–41, and 44–46 more
`likely than not are directed to non-statutory subject matter under § 101.
`Section 101 of Title 35, United States Code, provides that: “Whoever
`invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may
`
`
`
`11
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`obtain a patent therefor, subject to the conditions and requirements of this
`title.”
`The Supreme Court recognizes three exceptions to these statutory
`classes: laws of nature, natural phenomena, and abstract ideas. Alice Corp.
`Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014); Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012).
` Although an abstract idea by itself is not patentable, a practical application
`of an abstract idea may be deserving of patent protection. Alice, 132 S.Ct. at
`2355. We must consider “the elements of each claim both individually and
`‘as an ordered combination’ to determine whether the additional elements
`‘transform the nature of the claim’ into a patent-eligible application.” Id.
`(citing Mayo, 132 S.Ct. at 1298.) The claim must contain elements or a
`combination of elements that are “sufficient to ensure that the patent in
`practice amounts to significantly more than a patent upon the [abstract idea]
`itself.” Id. (citing Mayo, 132 S.Ct. at 1294.)
`Petitioner submits arguments and evidence substantially identical to
`those submitted in the Petition for CBM2013-00054 regarding whether
`independent claims 1, 12, and 32 are directed to non-statutory subject matter
`under 35 U.S.C. § 101. Pet. 30–43, 46–57, and 64–70. The claims
`challenged in this proceeding depend either directly or indirectly from one of
`independent claims 1, 12, and 32. Whether independent claims 1, 12, and 32
`are directed to non-statutory subject matter under 35 U.S.C. § 101 is relevant
`to determining if challenged claims 2–11, 26–29, 33–41, and 44–46 also are
`directed to non-statutory subject matter under 35 U.S.C. § 101.
`In the CBM2013-00054 Decision on Institution, we determined that
`Petitioner had demonstrated that it was more likely than not that independent
`
`
`
`12
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`claims 1, 12, and 32 are directed to non-statutory subject matter under 35
`U.S.C. § 101. Callidus Software, Inc. v. Versata Software, Inc. and Versata
`Development Group, Inc., Case CBM2013-00054, slip op. at 18–26 (PTAB
`Mar. 4, 2014) (Paper 19). We recognize that since the time we instituted
`trial in CBM2013-00054, and after Petitioner filed the Petition in this case,
`the Supreme Court issued its decision in Alice, 134 S.Ct. at 2354. Under the
`framework articulated in Alice, 134 S. Ct. at 2355-2359, we still conclude
`that Petitioner has met the threshold of § 324 and demonstrated that the
`claims are more likely than not directed to non-patent eligible subject matter.
` Accordingly, we incorporate our previous analysis from the CBM2013-
`00054 Decision on Institution, and for the reasons provided there, on this
`record, we are persuaded that independent claims 1, 12, and 32, from which
`all of the challenged claims depend, are directed to non-statutory subject
`matter under 35 U.S.C. § 101. In the CBM2013-00054 Decision on
`Institution, we were persuaded that Petitioner has shown that it is more
`likely than not that (1) claim 12 recites the abstract idea of validating a
`distributor to begin selling products; and (2) claims 1 and 32 recite the
`abstract idea of determining compensation for a validated distributor. We
`also were persuaded that Petitioner has shown that it is more likely than not
`that no additional limitations in any of those three claims tie down the claims
`so that they do not cover the full abstract idea itself in each of the claims.
`See Callidus Software, Inc. v. Versata Software, Inc. and Versata
`Development Group, Inc., Case CBM2013-00054, slip op. at 18–26 (PTAB
`March 4, 2014) (Paper 19).
`Claims 26–29 and 41
`Claims 26–29 and 41 either depend directly or indirectly from
`
`
`
`13
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`independent claim 12. We are persuaded that claims 26–29 and 41 are more
`likely than not directed to non-statutory subject matter. Claim 26 recites “a
`selling agreements module configured to enable said institution to define and
`create a business contract with said at least one distributing party.” Claim 27
`depends from claim 26 and further recites that the “selling agreements
`module manages a set of business rules governing how components are
`combined into said at least one selling agreement associated with each of
`said at least one distributing party.” Claims 28, 29, and 41 relate to a debt
`management module that is (1) configured to enable the institution to
`manage advances and repayments (claim 28); and (2) utilized to define and
`manage a set of payment rules defining parameters for paying a distributing
`party (claims 29 and 41).
`Petitioner argues that claims 26–29 and 41 add nothing more than
`basic computer functions that perform rudimentary data manipulations. Pet.
`43–44. We are persuaded by Petitioner’s arguments. The Specification of
`the ’304 patent does not disclose a particular way for managing, enabling, or
`defining and managing data objects and rules, nor does the Specification
`provide or disclose any particular algorithms or rules for performing the
`recited functions of dependent claims 26–29 and 41. Petitioner has shown
`that it is more likely than not that claims 26–29 and 41 recite no additional
`substantive limitations so that the claims do not cover the full abstract idea
`of claim 12.
`Claims 2–11
`Claims 2–11 either depend directly or indirectly from independent
`claim 1. We are persuaded that claims 2–11 are more likely than not
`directed to non-statutory subject matter. Claim 2 depends from claim 1 and
`
`
`
`14
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`recites that the licensing module of claim 1 is “further configured to
`determine if a party associated with said sales transaction comprises a valid
`appointment.” Petitioner argues that claim 2 does not add limitations such to
`cause claim 2 to be directed to something other than the abstract idea of
`independent claim 1. Pet. 58. We are persuaded by the argument. Claim 2
`further recites the functional language of determining if a party associated
`with a sales transaction comprises a valid appointment. The Specification of
`the ’304 patent does not disclose a particular way, or any particular
`algorithms or rules for the recited determining function of dependent claim
`2.
`
`Petitioner argues that claims 3, 6, and 7 add nothing more than basic
`computer functions that perform rudimentary data manipulations. Pet. 59.
`We are persuaded by the argument. Claim 3, for example, depends from
`claim 1 and recites that the “plurality of modules further comprises a
`distributor administration module configured to manage information
`associated with a plurality of distributors.” Claim 6 depends from claim 5
`and recites an additional “configuration engine to determine which of said
`compensation components and said document components to include.”
`Claim 7 depends from claim 6 and recites accessing “a commission engine
`to determine said commission amounts.”
`Dependent claims 3, 6, and 7 are directed to manipulating data or data
`objects. The Specification of the ’304 patent does not disclose a particular
`way for managing, processing, or determining data or data objects, nor does
`the Specification provide or disclose any particular algorithms or rules for
`performing the recited functions of dependent claims 3, 6, and 7. Petitioner
`has shown that it is more likely than not that claims 3, 6, and 7 recite no
`
`
`
`15
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`additional substantive limitations so that the claims do not cover the full
`abstract idea of claim 12.
`Claim 4 depends from claim 1 and recites “wherein said selling
`agreement comprises compensation components.” Claim 5 depends from
`claim 4 and recites “wherein said selling agreement comprises document
`components.” Petitioner argues that neither the “compensation components”
`nor the “document components” is hardware, and both are merely part of the
`selling agreement as recited in claim 1. As such, Petitioner argues,
`dependent claims 4 and 5 fail to tie down the abstract idea of claim 1. Pet.
`59–60. Petitioner has shown that it is more likely than not that claims 4 and
`5 recite no additional substantive limitations so that the claims do not cover
`the full abstract idea of claim 12.
`Petitioner argues that claims 8–11 merely provide further species of
`an abstract idea. Pet. 62. Claim 8, for example, depends from claim 1 and
`recites “wherein said selling agreement comprises a binding contract
`between an institution having at least one product and a distributor.”
`Petitioner argues that the “species” type limitations in claims 8–11 are
`themselves as abstract as the terms they attempt to limit (from claim 1). Id.
`at 63. Petitioner has shown that it is more likely than not that claims 8–11
`do nothing more than recite narrower forms of the abstract idea recited in
`claim 1 and are not patent eligible.
`Claims 33–40 and 44–46
`Claims 33–40 and 44–46 either depend directly or indirectly from
`independent claim 32. We are persuaded that claims 33–40 and 44–46 are
`more likely than not directed to non-statutory subject matter. Petitioner
`argues that claims 33, 35, and 44, each of which depend directly from
`
`
`
`16
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`independent claim 32, add nothing more than basic data-gathering steps to
`“fetch,” “provide access to,” and “transport” various data. Id. at 71–72.
`Based on the record before us, Petitioner has shown that claims 33,
`35, and 44 are directed to data gathering steps, such as obtaining, fetching,
`and accessing data that cannot confer patent eligibility to an otherwise
`unpatentable claim. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
`1366, 1372 (Fed. Cir. 2011).
`Petitioner argues that claim 34 adds nothing more than basic computer
`functions that perform rudimentary data manipulations. Pet. 73. Claim 34
`recites “a workflow process engine configured to process workflow events,
`said workflow process events determined by said business rules.”
`Dependent claim 34 is directed to manipulating data or data objects. The
`Specification of the ’304 patent does not disclose a particular way for
`processing data or data objects, nor does the Specification provide or
`disclose any particular algorithms or rules for performing the recited
`function of dependent claim 34. Petitioner has shown that it is more likely
`than not that claim 34 recites no additional substantive limitations so that the
`claim does not cover the full abstract idea of claim 32.
`Petitioner argues that claims 36 and 37 add only insignificant post-
`solution activity to the abstract idea of claim 32, such as generating a
`plurality of reports that adds nothing to the abstract idea of claim 32, citing
`Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010). We are persuaded that the
`recited functions of these claims are directed to insignificant post-solution
`activities (e.g., using the data acquired and manipulating that data to
`generate reports) that add nothing to the abstract idea recited in claim 32.
`Petitioner argues that claims 38 and 46 merely provide further species
`
`
`
`17
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`of an abstract idea. Pet. 75. Claim 38, for example, depends from claim 32
`and recites “wherein said selling agreement comprises a contract between
`said product provider and said at least one distributor.” Claim 46 depends
`from claim 32 and recites “wherein said product provider comprises a
`financial services institution.” Petitioner argues that the “species” type
`limitations in claims 38 and 46 are themselves as abstract as the terms they
`attempt to limit (from claim 32). Id. at 76. Petitioner has shown that it is
`more likely than not that claims 38 and 46 do nothing more than recite
`narrower forms of the abstract idea recited in claim 32 and are not patent
`eligible.
`Petitioner argues that claims 39 and 40 add only rudimentary data
`manipulations to the abstract idea of claim 32 and that dependent claim 45
`adds basic computer functions and data manipulations to the abstract idea of
`claim 32. Id. at 77–80. We have reviewed these claims and Petitioner’s
`arguments and determine that Petitioner has shown that it is more likely than
`not that claims 39, 40, and 45 recite no additional substantive limitations so
`that the claims do not cover the full abstract idea of claim 32.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that it is more likely than not that
`Petitioner would prevail in establishing unpatentability of claims 2–11, 26–
`29, 33–41, and 44–46 of the ’304 patent.
`The Board has not made a final determination on the patentability of
`any challenged claim.
`
`
`
`18
`
`
`
`CBM2014-00117
`Patent 7,908,304 B2
`
`
`IV. ORDER
`
`It is:
`ORDERED that pursuant to 35 U.S.C. § 324(a) and § 18(a) of the
`AIA, a covered business method patent review is hereby instituted as to
`claims 2–11, 26–29, 33–41, and 44–46 of the ’304 patent;
`FURTHER ORDERED that the trial is limited to § 101 and no other
`grounds are authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(d) and
`37 C.F.R. § 42.4, the trial commences on the entry date of this decision, and
`notice is hereby given of the institution of a trial.
`
`PETITIONER:
`
`Deborah E. Fishman
`Michael S. Tonkinson
`Assad H. Rajani
`DICKSTEIN SHAPIRO LLP
`fishmand@dicksteinshapiro.com
`tonkinsonm@dicksteinshapiro.com
`rajania@dicksteinshapiro.com
`
`
`PATENT OWNER:
`
`Kent B. Chambers
`David O’Brien
`John Russell Emerson
`TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
`kchambers@tcchlaw.com
`david.obrien.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`
`
`
`19
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
