CBM Review of U.S. Patent No. 7,356,482
`
`
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`salesforce.com, inc.,
`Petitioner,
`v.
`Applications In Internet Time LLC,
`Patent Owner.
`______________________
`
`Case CBM: 2014-00168
`Patent U.S. 7,356,482
`______________________
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW OF
`
`U.S. PATENT NO. 7,356,482
`
`35 U.S.C. § 321 AND
`§ 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`04554.00001/6097744.2
`
`

`

`CBM Review of U.S. Patent No. 7,356,482
`
`
`
`TABLE OF CONTENTS
`
`
`EXHIBIT LIST .......................................................................................................... 1
`
`Page
`
`I.
`
`PRELIMINARY STATEMENT AND INTRODUCTION ............................ 3
`
`II. MANDATORY NOTICES ............................................................................. 7
`
`III. OVERVIEW .................................................................................................... 8
`
`A.
`
`B.
`
`The ‘482 Patent ..................................................................................... 8
`
`Summary of Argument ........................................................................ 10
`
`IV. Grounds for Standing (37 C.F.R. § 304(a)) ................................................... 11
`
`A.
`
`B.
`
`The ‘482 Patent is directed to a covered business method. ................ 11
`
`The ‘482 Patent does not claim a “Technological Invention” ............ 13
`
`1.
`
`2.
`
`The claims of the ‘482 Patent do not recite a
`technological feature that is novel and unobvious over
`the prior art ................................................................................ 15
`
`The claims of the ‘482 Patent do not solve a technical
`problem using a technical solution ........................................... 17
`
`C.
`
`Petitioner has standing and is not estopped (37 C.F.R. § 42.302) ...... 20
`
`V.
`
`Claim Construction ........................................................................................ 20
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“application” ........................................................................................ 21
`
`“dynamically generating” / “dynamically generate” .......................... 21
`
`“physical designs” ............................................................................... 22
`
`“physical structures”............................................................................ 22
`
`“logical designs” .................................................................................. 23
`
`VI. Person of Skill in the Art and State of the Art ............................................... 24
`
`04554.00001/6097744.2
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`CBM Review of U.S. Patent No. 7,356,482
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`TABLE OF CONTENTS
`(Continued)
`
`
`VII. Statement of Relief Requested (37 C.F.R. § 42.22(a)) .................................. 24
`
`VIII. Identification of Challenge (37 C.F.R. § 42.304(b)) ..................................... 24
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Indefiniteness (Section 112 ¶ 2) .......................................................... 25
`
`Anticipated/Obvious (Section 102 and 103): Peters .......................... 32
`
`Section 102 and 103: Gordon ............................................................. 39
`
`Section 102 and 103: Haverstock ....................................................... 46
`
`Section 102 and 103: Pad++ .............................................................. 51
`
`IX. Conclusion ..................................................................................................... 55
`
`
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`CBM Review of U.S. Patent No. 7,356,482
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`
`EXHIBIT LIST
`
`Description
`Exhibit
`SFDC 1001 U.S. Patent No. 7,356,482 to Frankland et al.
`
`SFDC 1002 Publicly available file history of U.S. Patent No. 7,356,482
`
`SFDC 1003 Kathleen Peters, “The Design of A Change Notification Server
`for Clients Of a Passive Object-Oriented Database Management
`System” (July 1992)
`
`SFDC 1004 U.S. Patent No. 6,243,717 to Gordon et al.
`
`SFDC 1005 U.S. Patent No. 6,064,977 to Haverstock et al.
`
`SFDC 1006 Benjamin B. Bederson, James D. Hollan, Ken Perlin, Jonathan
`Meyer, David Bacon, and George Furnas, Pad++: A Zoomable
`Graphical Sketchpad For Exploring Alternate Interface Physics,
`Journal of Visual Languages and Computing (1996)
`
`SFDC 1007 Benjamin B. Bederson, James D. Hollan, Jason Stewart, David
`Rogers, Allison Druin, David Vick, A Zooming Web Browser, in
`Proceedings of SPIE Conference on Multimedia Computing and
`Networking, 1996
`
`SFDC 1008 Claim Chart of Peters to the ‘482 Patent
`
`SFDC 1009 Claim Chart of Gordon to the ‘482 Patent
`
`SFDC 1010 Claim Chart of Haverstock to the ‘482 Patent
`
`SFDC 1011 Claim Chart of Pad++ to the ‘482 Patent
`
`SFDC 1012 Declaration of Benjamin B. Bederson
`
`SFDC 1013 U.S. Patent No. 6,615,258 to Barry et al.
`
`SFDC 1014 U.S. Patent No. 6,341,287 to Frankland et al.
`
`
`
`
`1
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`CBM Review of U.S. Patent No. 7,356,482
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`TABLE OF CONTENTS
`(Continued)
`
`
`
`
`
`SFDC 1019
`
`SFDC 1015 H. Balzert, F. Hofmann, V. Kruschinski, & C. Niemann, The
`JANUS Application Development Environment-Generating More
`than the User Interface, in CADUI (Vol. 96) (1996)
`
`SFDC 1016 U. Dayal, Active Database Management Systems, in JCDKB
`(June 1998)
`
`SFDC 1017 G.E. Krasner & S.T. Pope, A description of the model-view-
`controller user interface paradigm in the smalltalk-80 system,
`Journal of Object Oriented Programming, 1(3), 26-49 (1988).
`
`SFDC 1018 P. Szekely, Retrospective and Challenges for Model-Based
`Interface Development, in Design, Specification and Verification
`of Interactive Systems ’96 (1996)
`
`J. Zubowski, Java AWT Reference (Vol. 3) (March 1997)
`
`SFDC 1020 Christian Janssen et al., Generating User Interfaces from Data
`Models and Dialogue Net Specifications (1993)
`
`SFDC 1021 Excerpts from Computer User’s Dictionary (Microsoft Press
`1998)
`
`SFDC 1022 Excerpt from Dictionary of Computing (Oxford Science
`Publications 1986)
`
`SFDC 1023 Publicly available file wrapper of U.S. Patent Application
`12/098,154
`
`SFDC 1024 Excerpts from the IBM Dictionary of Computing (1998)
`
`
`2
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`CBM Review of U.S. Patent No. 7,356,482
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`I.
`
`PRELIMINARY STATEMENT AND INTRODUCTION
`
`Salesforce.com, inc. (“Salesforce”) hereby petitions for institution of
`
`covered business method (“CBM”) patent review of U.S. Patent No. 7,356,482 to
`
`Frankland et al. (“the ‘482 Patent”), entitled “Integrated Change Management
`
`Unit.”1
`
`On its face, it is clear the claims of the ‘482 Patent are overly broad and, at
`
`best, only loosely tied to the specification. Claim 1 of the ‘482 Patent is
`
`representative of this breadth:
`
`1. A system for providing a dynamically generated application having
`one or more functions and one or more user interface elements;
`comprising:
`
` a
`
` server computer;
`
`
`one or more client computers connected to the server computer over a
`computer network;
`
` a
`
`the server computer containing
`layer associated with
` first
`information about the unique aspects of a particular application;
`
` a
`
` second layer associated with the server computer containing
`information about the user interface and functions common to a
`variety of applications, a particular application being generated based
`on the data in both the first and second layers;
`
` a
`
` third layer associated with the server computer that retrieves the data
`in the first and second layers in order to generate the functionality and
`user interface elements of the application; and
`
`
`1 Petitioner has also filed for CBM review of U.S. Patent No. 8,484,111, a
`related patent in the same family as the ‘482 Patent, under CBM 2014-00162.
`
`
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`CBM Review of U.S. Patent No. 7,356,482
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`a change management layer for automatically detecting changes that
`affect an application,
`
`each client computer further comprising a browser application being
`executed by each client computer, wherein a user interface and
`functionality for the particular application is distributed to the browser
`application and dynamically generated when the client computer
`connects to the server computer
`
`
`As highlighted above, the claims of the ‘482 Patent are broadly directed to
`
`detecting any “changes that affect an application,” and then generating a user
`
`interface incorporating these changes.
`
`
`
`In contrast, the specification of the ‘482 Patent focuses, not on changes of
`
`any kind, but on managing changes specifically to government regulations or to
`
`ancillary business requirements related to government regulations. In fact, the first
`
`eight columns of the specification exclusively discuss various Federal statutory and
`
`regulatory frameworks and the requirements they impose on businesses. For
`
`example:
`
`At the federal level, special purpose hazardous substance laws and
`regulations, focusing on a particular hazardous substance or narrow
`class of such materials, have been applied for more than a century. In
`1866, a federal law regulating transportation and storage of explosive
`and flammable materials was promulgated. . . . These laws statutes,
`ordinances, regulations and related constraints are constantly changing
`and require corresponding changes in data entry, data analysis and
`presentation of the results.
`
`(SFDC 1001, at Col. 2:1-24).
`
` A
`
` Uniform Hazardous Waste Manifest, developed by the E.P.A. under
`RCRA and under HMTA, must be used by persons who transport
`
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`CBM Review of U.S. Patent No. 7,356,482
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`hazardous waste for off-site treatment, storage or disposal, and a copy
`of each Manifest must be maintained as part of a facility's operating
`record. Owners or operators of a TSDF who receive hazardous waste
`without a proper Manifest must submit an Unauthorized Waste Report
`to the E.P.A. within 15 days after such an incident occurs. Upon
`closure of a hazardous waste facility, records of hazardous waste
`disposal and the amounts thereof must be submitted to the E.P.A. and
`to local land use control authorities.
`
`(SFDC 1001, at Col. 5:49-60).
`
`The Pollution Prevention Act (“PPA”), passed in 1990, requires
`hazardous waste generators and other similar facilities that
`manufacture, import, process or otherwise use listed toxic chemicals
`to annually report releases of any of these chemicals to any
`environmental medium (atmosphere, water, soil and biota). For each
`listed chemical that is reported, the generator must provide: (1) the
`quantity of the chemical that is released (before recycling, treatment
`or disposal) into a waste stream and the change, if any, from release in
`the preceding year; (2) the quantity of the chemical, if any, that is
`recycled or treated at the facility or elsewhere, the percentage change
`from the preceding year and the method(s) of recycling or treatment
`used; (3) the source reduction practices adopted by the generator and
`the quantitative method(s) used to monitor these practices, with these
`practices being reported in the categories of (a) equipment,
`technology, process or procedure modifications, (b) reformulation or
`redesign of the products, (c) substitution of input materials and (d)
`improvement in management, training, inventory control, materials
`handling or other administrative practices; (4) quantities of the
`chemical, if any, that are released in one-time events not associated
`with production processes; (5) quantities of the chemical expected to
`be released into a waste stream or to be recycled in each of the two
`immediately following years; and (6) a ratio or other quantitative
`comparison of production of the chemical between the current and
`preceding reporting years. Much of this information would be
`reported on a revised Form R under SARA Title III for each listed
`chemical.
`
`(SFDC 1001, at Col. 7:17-46).
`
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`CBM Review of U.S. Patent No. 7,356,482
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`
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`The rest of the specification discusses various embodiments of the claimed
`
`invention, all of which expressly deal with managing regulatory changes. For
`
`example, the specification discusses an embodiment for managing changes “made
`
`to landfill waste regulations” by using “intelligent agents” to monitor regulations
`
`over the Internet. (See SFDC 1001, at Col. 10:41-60). In reference to another
`
`embodiment of the ‘482 Patent, the specification discusses a “business content
`
`layer” related to “food, drugs, cosmetics, and medical treatment and devices” or
`
`“any of the other regulated areas to which one or more of the Codes of Federal
`
`Regulations applies.” None of these regulatory functionalities, however, discussed
`
`virtually in every paragraph of the specification of the ‘482 Patent, actually appears
`
`in any of the patent’s claims. Thus, the claims of the ‘482 Patent bear at best only
`
`a tenuous connection to the specification.
`
`
`
`Notably, the applicants of the ‘482 Patent subsequently sought to patent
`
`related claims in U.S. Patent Application 12/098,154 (“the ‘154 Application”).
`
`The Office soundly rejected those claims. In the Non-Final Rejection dated April
`
`27, 2010, the Examiner observed:
`
`If the examiner had not read the application number she never would
`have realized that these claims went with this specification. The
`claims are extremely generic and broad[,] there is no mention about
`regulatory changes or anything that the invention talks about in the
`first 13 pages of the specification that the invention is trying to solve/
`directed at.2
`
`2 All emphases added, unless otherwise noted.
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`CBM Review of U.S. Patent No. 7,356,482
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`
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`(SFDC 1023, at April 27, 2010 Office Action). So, too, are the claims of the ‘482
`
`Patent “extremely generic and broad.” None of the claims of the ‘482 Patent
`
`“mention . . . regulatory changes or anything that the invention talks about in the
`
`first 13 pages of the [filed] specification that the invention is trying to
`
`solve/directed at.”
`
`
`
`The extreme breadth of the ‘482 Patent claims forms the basis for this
`
`petition for CBM review of the ‘482 Patent. First, the ‘482 Patent is invalid as
`
`indefinite under 35 U.S.C. § 112 because its claims, even when read in the context
`
`of the specification and prosecution history, are of vague and uncertain scope.
`
`Second, the ‘482 Patent is invalid as anticipated and obvious under 35 U.S.C. §§
`
`102/103 because myriad prior art read on the claims’ broad language.
`
`Salesforce thus hereby petitions for cancellation of claims 1-59 of the ‘482
`
`Patent, owned by Applications In Internet Time, LLC (“AIT”).
`
`II. MANDATORY NOTICES
`
`
`
`Real Party-in-Interest: The Real Party-In-Interest is: salesforce.com, inc.
`
`(“Petitioner”).
`
`Related Matters: The ‘482 Patent is asserted in the following case in the
`
`District of Nevada: Applications In Internet Time LLC v. Salesforce.com, Inc.,
`
`Case No. 3:13-CV-00628-RCJ-VPC (D. Nev.). AIT filed its Complaint for Patent
`
`Infringement against Petitioner on November 8, 2013.
`
`
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`CBM Review of U.S. Patent No. 7,356,482
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`Related Petitions: CBM2014-00162
`
`Counsel: Lead Counsel:
`
`Kevin P.B. Johnson (Reg. No. 38,927)
`
`Backup Counsel: Edward J. DeFranco (Reg. No. 39,653)
`
`Service Information (Email): SFDC_CBM@quinnemanuel.com
`
`Post:
`
`Quinn Emanuel Urquhart & Sullivan LLP, 555 Twin Dolphin
`Dr., 5th Flr., Redwood Shores, California 94065
`
`
`
`Telephone: (650) 801-5000
`III. OVERVIEW
`
`A. The ‘482 Patent
`
`
`
`The specification of the ‘482 Patent describes the object of the invention as
`
`“managing changes in regulatory and non-regulatory requirements for business
`
`activities,” such as changes to “laws statutes, ordinances, regulations and related
`
`constraints.” (SFDC 1001, at Abstract). As a further object of the invention, the
`
`specification describes generating a user interface that accounts for these changes,
`
`in particular through “changes in data entry forms, data processing and analysis
`
`procedures, and presentation (by printing, electronic display and/or distribution) of
`
`data processing and analysis results to selected recipients.” (Id.)
`
`
`
`To achieve these objectives, the purported invention uses “intelligent agents”
`
`to detect changes affecting a business. These intelligent agents monitor “one or
`
`more databases having all relevant information, including knowledge of regulatory
`
`and non-regulatory information and changes.” (SFDC 1001, at Cols. 8:11-14).
`
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`CBM Review of U.S. Patent No. 7,356,482
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`When an intelligent agent detects a change to those databases, the claimed
`
`invention implements concomitant changes to “documents and reports required for
`
`compliance under applicable regulations, laws and statutes.” (SFDC 1001, at Cols.
`
`8:18-23). These changes include providing appropriate changes to “screen
`
`images. . . that implement data entry, processing, analysis, reporting and results
`
`presentation.” (SFDC 1001, at Cols. 8:20-23).
`
`
`
`Many claims of the ‘482 Patent make no mention of several key facets of the
`
`invention described in the specification. In particular, the independent claims
`
`make no reference to using “intelligent agents” to monitor and detect “regulatory
`
`and non-regulatory” changes that affect a business activity. Instead, representative
`
`claim 1 is broader, requiring only “a change management layer for automatically
`
`detecting changes that affect an application.” Claim 1 also makes no mention of
`
`updating the user interface to account for changes, as described in the specification.
`
`
`
`In contrast, the disclosures of the specification of the ‘482 Patent claim that
`
`the “invention monitors, responds to, and incorporates changes in, federal, state
`
`and local laws, statutes, ordinances and regulations (referred to collectively herein
`
`as ‘regulations’) and changes in technology in one or more regulated areas of
`
`commercial activity, such as environmental health and safety (EH&S), and food,
`
`drugs, cosmetics, medical devices and treatments (‘FDCMTD’).” (SFDC 1001, at
`
`Col. 9:10-16). None of the claims of the ‘482 Patent, independent or dependent,
`
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`CBM Review of U.S. Patent No. 7,356,482
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`make any mention of “federal, state, and local laws, statutes, ordinances and
`
`regulations.”
`
`
`
`Further, none of the independent claims make any mention of updating the
`
`user interface to account for changes as described in the specification. Instead, the
`
`independent claims require “dynamic generation” of user interface and a
`
`functionality when a client computer “connects” to a server computer.
`
`The other claims of the ‘482 Patent are similarly unmoored from the
`
`specification. Independent claim 21 is simply a system implementation of method
`
`claim 1, while independent claim 41 is an alternative system focusing on the server
`
`of the purported invention of the ‘482 Patent.
`
`B.
`
`Summary of Argument
`
`
`
`The ‘482 Patent is a covered business method and does not claim a
`
`technological invention. Its claims suffer from structural and term-by-term
`
`indefiniteness. The claims of the ‘482 Patent are broad and divorced from the
`
`purported invention claimed in the specification. As a result, the specification and
`
`prosecution history fail to sufficiently inform those skilled in the art of the proper
`
`scope of the claims. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
`
`2124 (2014). Certain specific terms used in the claims are particularly problematic,
`
`including “layer” and “change management layer.”
`
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`The elements in the claims of the ‘482 Patent were also well-known in the
`
`prior art and should not have issued. A description of the state of the art is
`
`provided in paragraphs 22 through 34 of the Declaration of Benjamin B. Bederson,
`
`attached hereto. In view of the showings of lack of novelty and obviousness, as
`
`well as the showing of indefiniteness, provided below, claims 1-59 are
`
`unpatentable and should be canceled.
`
`IV. GROUNDS FOR STANDING (37 C.F.R. § 304(A))
`
`
`
`The undersigned and Salesforce certify that the ‘428 patent is available for
`
`post-grant review. Because the ‘482 Patent is a covered business method patent, as
`
`defined by § 18 of the America Invents Act (“AIA”), the timing requirements of 35
`
`U.S.C. § 321(c) do not apply. The ‘482 Patent is eligible under AIA § 18(d)(1) as
`
`explained below.
`
`A. The ‘482 Patent is directed to a covered business method.
`
`
`
`The ‘482 Patent squarely meets the AIA definition of a covered business
`
`method. The AIA defines a CBM patent as “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 . . . .”
`
`AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The Office noted that the AIA’s
`
`legislative history demonstrates that “financial product or service” should be
`
`“interpreted broadly,” encompassing patents “claiming activities that are financial
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`CBM Review of U.S. Patent No. 7,356,482
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`in nature, incidental to a financial activity or complementary to a financial
`
`activity.” 77 Fed. Reg. 157, p. 48735. Of particular pertinence, Senator Charles
`
`Schumer, coauthor of § 18, stated “[t]o meet this [eligibility] requirement, the
`
`patent need not recite a specific financial product or service. Rather, the patent
`
`claims must only be broad enough to cover a financial product or service.” 157
`
`Cong. Rec. S1365 (daily ed. March 8, 2011) (Sen. Schumer).
`
`
`
`Moreover, the language “practice, administration, or management” in AIA §
`
`18(d)(1) is “intended to cover any ancillary activities related to a financial product
`
`or service, including… customer interfaces, Web site management and
`
`functionality,
`
`transmission or management of data,
`
`[and] customer
`
`communications…” Id. (emphasis added).
`
`
`
`The specification of the ‘482 Patent acknowledges that the purported
`
`invention disclosed therein is usable in the context of governmental regulatory
`
`activities including those related to “banking, financial and securities activities and
`
`foreign trade.” (SFDC 1001, at Col. 1:24-25). The patentee further envisions use
`
`of the purported invention in conjunction with a “business content layer – that is,
`
`“business knowledge, logical designs, physical designs, physical structures,
`
`relationships, and data associated with a selected area of business activity,” which
`
`“can be a functional field within an organization, such as finance . . . .” (Id. at Col.
`
`at Col. 12:19-20).
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`Indeed, not only does the specification support a link between the purported
`
`invention and the financial services industry, the Office clearly believed that the
`
`patent was related to the financial services industry at the time of examination.
`
`The ‘482 Patent was classified under Class 705/7.12, which is “drawn to a
`
`computerized arrangement for planning or assigning of resources in an optimal or
`
`systemic way in order to achieve a business goal, or drawn to the management or
`
`planning of a business task or operation.” As the Office has stated, “patents
`
`subject to covered business method patent review are anticipated to be typically
`
`classifiable in Class 705.” Transitional Program for Covered Business Method
`
`Patents—Definitions of Covered Business Method Patent and Technological
`
`Invention, 77 Fed. Reg. 48735 (Aug. 14, 2012).
`
`
`
`Based on the claims, the descriptions and embodiments in the specification,
`
`and the Office’s own classification of the ‘482 Patent, the patent is directed
`
`towards the “practice, administration, or management of a financial product or
`
`service.”
`
`B.
`
`The ‘482 Patent does not claim a “Technological Invention”
`
`
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of covered business method patents. AIA § 18(d)(2). The ‘482 Patent does not
`
`claim a technological invention under the AIA because its chief elements are parts
`
`of what the patentee termed “one integrated system that (1) provides one or more
`
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`CBM Review of U.S. Patent No. 7,356,482
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`databases that contain information on operations and requirements concerning an
`
`activity or area of business; (2) monitors and evaluates the relevance of
`
`information on regulatory and non-regulatory changes that affect operations of the
`
`business and/or information management requirements; (3) converts the relevant
`
`changes into changes in work/task lists, data entry forms, reports, data processing,
`
`analysis and presentation (by printing, electronic display, network distribution
`
`and/or physical distribution) of data processing and analysis results to selected
`
`recipients, without requiring the services of one or more programmers to re-
`
`program and/or re-code the software items affected by the change; and (4)
`
`implements receipt of change information and dissemination of data processing
`
`and analysis results using the facilities of a network, such as the Internet.” Each of
`
`these four elements were well known in the prior art, individually and collectively.
`
`Notably, the purported invention of the ‘482 Patent also is not even limited on its
`
`face to computer implemented systems and methods. For example, the ‘482 Patent
`
`specification discloses monitoring non-electronic sources for regulatory changes.
`
`As the specification states: “Regulatory changes” monitored for by the invention
`
`“are recorded and posted for reference in different media, including paper,
`
`microfiche and electronic media. The internet is one source of information on
`
`regulatory change that is both prompt and cost-effective.” (SFDC 1001, at Col.
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`10:22-27). Also in a disclosed embodiment, the specification further offers an
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`CBM Review of U.S. Patent No. 7,356,482
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`exemplary “regulatory change” that is “posted in the Federal Register and becomes
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`promptly available as a hard copy (paper) and electronically, on the Internet.”
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`(SFDC 1001, at Col. 10:37-40).
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`To determine if a patent is for a technological invention, “the following will
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`be considered on a case-by-case basis: whether the claimed subject matter as a
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`whole recites a technological feature that is novel and unobvious over the prior art;
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`and solves a technical problem using a technical solution.” 37 C.F.R. § 42.301.
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`Under that framework, to be exempt from CBM, the claimed subject matter as a
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`whole must: (1) have a technological feature that is novel and unobvious; and (2)
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`solve a technical problem using a technical solution. If even one claim of a patent
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`is not directed to a “technological invention,” the exception does not apply. 77
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`Fed. Reg. 157, p. 48736.
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`Under this framework, the ‘482 Patent claims do not meet the requirements
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`of a “technological invention.” Not only do the claims of the ‘482 Patent fail to
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`recite a novel and unobvious technological feature, but, as demonstrated below,
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`they do not solve a technical problem using a technical solution.
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`1.
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`The claims of the ‘482 Patent do not recite a technological
`feature that is novel and unobvious over the prior art
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`
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`The claims of the ‘482 Patent do not recite a technological feature that is
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`novel and unobvious. Claim 1, for example, only references general purpose
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`computer components – e.g., “a server computer,” “client computers,” and
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`CBM Review of U.S. Patent No. 7,356,482
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`“browser application.” Although Claim 1 discloses additional structure to the
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`server computer (“first layer,” “second layer,” third layer,’ “change management
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`layer”), the narrow “technological invention” exception to CBM review was not
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`intended to shield such claims from Office review.
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`Claim 1 is provided again below in its entirety:
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`A system for providing a dynamically generated application having
`one or more functions and one or more user interface elements;
`comprising:
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` a
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` server computer;
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`one or more client computers connected to the server computer over a
`computer network;
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` a
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`the server computer containing
`layer associated with
` first
`information about the unique aspects of a particular application;
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` a
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` second layer associated with the server computer containing
`information about the user interface and functions common to a
`variety of applications, a particular application being generated based
`on the data in both the first and second layers;
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` a
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` third layer associated with the server computer that retrieves the data
`in the first and second layers in order to generate the functionality and
`user interface elements of the application; and
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` a
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` change management layer for automatically detecting changes that
`affect an application,
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`each client computer further comprising a browser application being
`executed by each client computer, wherein a user interface and
`functionality for the particular application is distributed to the browser
`application and dynamically generated when the client computer
`connects to the server computer.
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`CBM Review of U.S. Patent No. 7,356,482
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`None of the elements disclosed in Claim 1, including even arguably
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`technical limitations (e.g., “server computer” and “client computers”) nor do their
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`respective limitations disclose a technological invention. (Declaration of Benjamin
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`B. Bederson ¶¶ 79-80 (hereinafter “SFDC 1012”).
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`2.
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`The claims of the ‘482 Patent do not solve a technical
`problem using a technical solution
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`
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`The problem posed by the patentee in the ‘482 Patent’s specification reveal
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`that the problem contemplated in the prior art and purportedly addressed by the
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`claims in the ‘482 Patent was not a “technical” one, much less one solved by a
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`“technical solution.” During the legislative debate that took place prior to the
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`passage of the AIA, through which Congress created the statutory category of
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`covered business method review, Senator Charles Schumer (D-NY) opined that
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`mere recitation of technological devices in patent claim language—even
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`specialized devices like ATMs, databases, or scanners—does not make a purported
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`invention “technological” where those technologies are “known technologies”:
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`[The technological inventions exception] is not meant to exclude
`patents that use known technology to accomplish a business process
`or method of conducting business – whether or not that process or
`method appears to be novel. The technological invention exception is
`also not intended to exclude a patent simply because it recites
`technology. For example, the recitation of computer hardware,
`communication or computer networks, software, memory, computer-
`readable storage medium, scanners, display devices or databases,
`specialized machines, such as an ATM or point of sale device, or
`other known technologies, does not make a patent a technological
`invention. In other words, a patent is not a technological invention
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`CBM Review of U.S. Patent No. 7,356,482
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`because it combines known technology in a new way to perform data
`processing operations.
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`157 Cong. Rec. S1364 (daily ed. March 8, 2011) (Sen. Schumer).
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`
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`First, there is no technical problem here. As noted supra, the subject matter
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`of the ‘482 Patent addressed a very specific problem in the prior art: efficiently
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`efficiently allocating a business’s resources to manage and respond to changes
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`related to regulatory and related business requirements. This is not a technical
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`problem, but a commercial one. As the patentee acknowledged, each of the
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`constituent elements of the claimed invention of the ‘482 Patent disclosed in the
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`specification had been used in the prior art: “Other workers have created
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`regulations databases, document management systems and other partial solutions
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`for tracking changes in, and compliance with, regulations and similar requirements
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`. . . .” (SFDC 1001, at Col. 7:56-59).
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`
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`The key problem in the prior art, as described by the patentee, was the effort,
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`time, and money expended by a business to respond to changes in regulations and
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`to maintain a company’s computer systems to keep them consistent and compatible
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`with those external regulatory or related rules:
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`One recurring problem with any d