Paper 12
`Trials@uspto.gov
`571-272-7822 Entered: July 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SALESFORCE.COM, INC.,
`Petitioner,
`
`v.
`
`APPLICATIONS IN INTERNET TIME LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00168
`Patent 7,356,482 B2
`____________
`
`
`Before LYNNE E. PETTIGREW, MITCHELL G. WEATHERLY, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`I. INTRODUCTION
`Petitioner, Salesforce.com, Inc., filed a Request for Rehearing of our
`Decision (Paper 10, “Dec.”) denying institution of covered business method
`patent review of claims 1–59 of U.S. Patent No. 7,356,482 B2 (Ex. 1001,
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 28, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SALESFORCE.COM, INC.,
`Petitioner,
`
`v.
`
`APPLICATIONS IN INTERNET TIME LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00168
`Patent 7,356,482 B2
`____________
`
`
`Before LYNNE E. PETTIGREW, MITCHELL G. WEATHERLY, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`I. INTRODUCTION
`Petitioner, Salesforce.com, Inc., filed a Request for Rehearing of our
`Decision (Paper 10, “Dec.”) denying institution of covered business method
`patent review of claims 1–59 of U.S. Patent No. 7,356,482 B2 (Ex. 1001,
`
`
`
`CBM2014-00168
`Patent 7,356,482 B2
`
`“the ’482 patent”). Paper 11 (“Req. Reh’g”). In our Decision, we
`determined that the information presented in the Petition did not establish
`that the ’482 patent qualifies as a covered business method patent under
`section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 329 (2011) (“AIA”). Dec. 10.
`For the reasons that follow, Petitioner’s Request for Rehearing is
`denied.
`
`II. ANALYSIS
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id.
`Petitioner contends that our Decision misapprehended the definition
`of “covered business method patent” set forth in section 18(d)(1) of the AIA
`by interpreting the provision to “require a petitioner to demonstrate that a
`patent ‘expressly claims’ a ‘particular relation to the financial services
`sector.’” Req. Reh’g 3. Petitioner also contends that our Decision
`overlooked analysis in the Petition demonstrating that the claims encompass
`“performing data processing or other operations used in the practice,
`administration, or management of a financial product or service,” as set forth
`in section 18(d)(1). Id. at 12–15. We address these arguments in turn.
`First, we disagree with Petitioner’s contention that we interpreted
`section 18(d)(1) to require a showing that a patent “expressly claims” a
`“particular relation to the financial services sector.” See Req. Reh’g 3–5.
`Rather, as an initial step in our analysis of whether the ’482 patent qualifies
`
`2
`
`
`
`CBM2014-00168
`Patent 7,356,482 B2
`
`as a covered business method patent, we considered the language of the
`claims. We observed that none of the challenged claims expressly recites a
`method or apparatus “for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`service.” Dec. 7. We further noted that “the claims on their face are
`directed to technology common in business environments across sectors with
`no particular relat[ionship] to the financial services sector.” Id. (internal
`quotation marks and citation omitted).
`Our analysis, however, did not end there. Contrary to Petitioner’s
`assertion that we considered only the claim language in our analysis, we also
`considered Petitioner’s arguments regarding the specification of the
`’482 patent. Id. at 8–9 (citing Pet. 12 (Paper 2)). Specifically, we
`determined that Petitioner failed to explain how the two portions of the
`disclosure on which it relied “relate[] to the practice, administration, or
`management of a financial product or service, as required by
`section 18(d)(1) of the AIA,” or how they relate to the systems and methods
`recited in the claims. Id. Accordingly, we concluded that Petitioner, relying
`on two isolated passages from the written description, had not shown that the
`’482 patent “claims an activity that is ‘financial in nature, incidental to a
`financial activity or complementary to a financial activity.’” Id. at 9. Thus,
`we did not interpret section 18(d)(1) to require express claiming of financial
`products or services, as Petitioner contends. See Req. Reh’g 3–12. Instead,
`our interpretation was consistent with that applied by the Board in other
`cases cited by Petitioner in the Request for Rehearing. See id. at 8–12.
`Turning to Petitioner’s second contention, we are not persuaded that
`our Decision overlooked any analysis in the Petition as to whether the claims
`
`3
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`CBM2014-00168
`Patent 7,356,482 B2
`
`encompass “performing data processing or other operations used in the
`practice, administration, or management of a financial product or service.”
`See Req. Reh’g 12–15. Petitioner’s entire argument regarding whether the
`’482 patent satisfies the “financial product or service” requirement of
`section 18(d)(1) consumed only two pages of text in the Petition. See
`Pet. 11–13. As discussed in the Decision, Petitioner’s argument was limited
`to citing two passages from the written description and asserting that the
`’482 patent was classified in Class 705. See Dec. 8–10 (citing Pet. 11–13).
`Petitioner argues that we overlooked analysis in the Petition
`demonstrating that the claims of the ’482 patent, including claim 1, are
`directed to a change management layer for monitoring and detecting changes
`pertinent to the operation of a business, that such changes include regulatory
`changes, and that the specification discloses embodiments directed to
`managing changes in financial and securities regulations and managing other
`changes affecting a business’s finance department. Req. Reh’g 13–15
`(citing Pet. 4, 8–14, 18). As is evident from Petitioner’s citations to pages in
`different portions of the Petition, however, the Petition did not present a
`coherent argument explaining how the two appearances of the word
`“finance” in the written description demonstrate that the claims are directed
`to an apparatus “for performing data processing or other operations used in
`the practice, administration, or management of a financial product or
`service” or an activity that is “financial in nature, incidental to a financial
`activity or complementary to a financial activity.” See Dec. 9. With its
`belated attempt to piece together an argument from various sections of the
`Petition directed to other issues, Petitioner has not demonstrated that we
`
`4
`
`
`
`CBM2014-00168
`Patent 7,356,482 B2
`
`overlooked any analysis in the Petition addressing the “financial product or
`service” requirement of section 18(d)(1).
`
`III. REQUEST FOR EXPANDED PANEL
`Based on its contention that our interpretation of section 18(d)(1) of
`the AIA conflicts with previous Board decisions, Petitioner “suggests that an
`expanded panel rehear and address the foundational interpretation issues
`raised” in its Request for Rehearing. Req. Reh’g 2. Whether to expand the
`panel in a covered business method patent review matter “involves
`consideration of whether the issue is one of conflict with an authoritative
`decision of our reviewing courts or a precedential decision of the Board, or
`whether the issue raises a conflict regarding a contrary legal interpretation of
`a statute or regulation.” See AOL Inc. v. Coho Licensing LLC, Case
`IPR2014-00771, slip op. at 3 (PTAB Mar. 24, 2015) (Paper 12)
`(informative) (setting forth the standard for considering a suggestion of
`panel expansion in an inter partes review matter). As explained above,
`Petitioner’s assertion that a conflict exists regarding the interpretation of
`section 18(d)(1) is based on a misunderstanding of how we interpreted and
`applied section 18(d)(1) in our Decision. Thus, Petitioner’s suggestion for
`panel expansion based on an alleged conflict is unpersuasive.
`Moreover, a panel does not have authority to expand a panel; only the
`Chief Judge, acting on behalf of the Director, may act to expand a panel.
`See Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op.
`at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20). In this case, the suggestion to
`expand the panel has been considered, but not adopted.
`
`5
`
`
`
`CBM2014-00168
`Patent 7,356,482 B2
`
`IV. ORDER
`
`Accordingly, it is:
` ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`FOR PETITIONER:
`Kevin P.B. Johnson
`Edward J. DeFranco
`Quinn Emanuel Urquhart & Sullivan, LLP
`kevinjohnson@quinnemanuel.com
`SFDC_CBM@quinnemanuel.com
`
`FOR PATENT OWNER:
`Steven Sereboff
`M. Kala Sarvaiya
`SoCal IP Law Group LLP
`ssereboff@socalip.com
`ksarvaiya@socalip.com
`
`
`6
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