Trials@uspto.gov
`571-272-7822
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` Paper 9
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`
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` Entered: June 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT-PACKARD COMPANY,
`Petitioner,
`
`v.
`
`YYZ LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00049
`Patent 7,062,749 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, RICHARD E. RICE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`RICE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: June 30, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT-PACKARD COMPANY,
`Petitioner,
`
`v.
`
`YYZ LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00049
`Patent 7,062,749 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, RICHARD E. RICE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`
`RICE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`
`I.
`
`INTRODUCTION
`
`Hewlett-Packard Co. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`requesting a review of U.S. Patent No. 7,062,749 B2 (Ex. 1001, “the ’749
`
`Patent”) under the transitional program for covered business method patents,
`
`and YYZ LLC (“Patent Owner”) filed a Preliminary Response (Paper 7,
`
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324,1 which
`
`provides that a post-grant review may not be instituted “unless . . . it is more
`
`likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.” 35 U.S.C. § 324(a).
`
`Petitioner challenges the patentability of claims 22, 23, and 27–29 of
`
`the ’749 Patent under 35 U.S.C. §§ 101, 102, and 103. We determine that
`
`the information presented in the Petition demonstrates that it is more likely
`
`than not that each of the challenged claims is unpatentable. Pursuant to
`
`35 U.S.C. § 324, we authorize a covered business method patent review to
`
`be instituted as to claims 22, 23, and 27–29.
`
`
`
`
`
`A. Related Proceedings
`
`We are informed that the following related federal district court cases
`
`involve the ’749 Patent: YYZ, LLC v. Hewlett Packard Co., No. 1:13-cv-
`
`00136-SLR (D. Del.); YYZ, LLC v. Adobe Systems, Inc., No. 1:13-cv-00579-
`
`SLR (D. Del.); and YYZ, LLC v. PegaSystems, Inc., No. 1:13-cv-00581-SLR
`
`
`
`1 See Section 18(a) of the Leahy-Smith America Invents Act (“AIA”), Pub.
`L. No. 112-29, 125 Stat. 284, 329 (2011).
`
` 2
`
`
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`(D. Del.). Pet. 3; see Paper 5, 1. We also are informed that Petitioner has
`
`filed a petition requesting review of U.S. Patent No. 7,603,674 B2, for which
`
`the ’749 Patent is the parent. Id.; see CBM2015-00050, Paper 2.
`
`B. The ’749 Patent (Ex. 1001)
`
`
`
`The ’749 Patent, titled “MEASURING, MONITORING AND
`
`TRACKING ENTERPRISE COMMUNICATIONS AND PROCESSES,”
`
`issued June 13, 2006, from U.S. Patent Application No. 09/737,494, filed
`
`December 15, 2000. The ’749 Patent relates to computer-based systems for
`
`measuring, monitoring, tracking, and simulating enterprise communications
`
`and processes in an “asynchronous messaging environment.” Ex. 1001,
`
`1:10–11, 3:3–6. As described in the Specification, enterprise
`
`communications are “increasingly asynchronous or message based.” Id. at
`
`1:38–39. The Specification further explains:
`
`That is, enterprise communications were formerly primarily
`synchronous, or connection oriented, in which a connection is
`established with prior coordination between communication
`end points with data then being transmitted over the connection.
`Enterprise communications are now increasingly asynchronous,
`or connectionless, transmitting data without prior coordination
`between communication end points, such as through “event
`based” communications which use messages to move data
`instead of large files.
`
`Id. at 1:39–48. A problem identified with such “asynchronous or message
`
`based” communications is that, “[a]t any given time, precise information on
`
`the progress of the processes is difficult to obtain—messages may be in
`
`transit and not instantly locatable.” Id. at 2:5–9.
`
` 3
`
`
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`
`
`The Specification describes a sample process referred to as “Order to
`
`Cash,” in which the sub-processes communicate through “a messaging
`
`broker, such as an [International Business Machines (“IBM”)] MQSeries
`
`component.” Ex. 1001, 3:38–48 (emphasis added). A “messaging
`
`component,” which is added to the messaging broker through methods
`
`known in the art, “creates a ‘monitoring’ message for each original message
`
`received by the broker.” Id. at 3:51–54 (emphasis added). The monitoring
`
`message contains data generated from the original message. Id. at 3:54–57.
`
`The messaging broker then sends the monitoring message to a central
`
`database repository. Id. at 3:57–60 (emphasis added). “The messaging
`
`component may be, in some embodiments, or may not be, in other
`
`embodiments, provided by the messaging broker.” Id. at 3:62–64. The
`
`Specification discloses that “IBM’s MQSeries messaging broker provides a
`
`component that can be configured to perform a copying function for the
`
`messages it receives, and so create monitoring messages for the messages it
`
`receives.” Id. at 3:63–67.
`
`As described in the Specification and shown in Figure 2, the “Order to
`
`Cash” process includes the sub-processes: “Receive Order Inquiry, Provide
`
`Customer Quotation, Create Customer Outline Agreement, Create Sales
`
`Order, Schedule Production, Manufacture Product, Ship Product and Invoice
`
`Customer.” Ex. 1001, 3:38–42. Figure 2 of the ’749 Patent is reproduced
`
`below.
`
` 4
`
`
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`CBM2015-00049
`Patent 7,062,749 B2
`
`
`
`
`
`
`Figure 2 shows a view of a process of a preferred embodiment. Ex.
`
`1001, 2:57–58.
`
`As illustrated in Figure 2, the messaging broker, upon receiving an
`
`original message on path A, creates a monitoring message containing data
`
`generated from the original message on path A, and sends it to the central
`
`database repository. Ex. 1001, 4:12–17. “The central message database can
`
`be reviewed in any number of ways, in order to measure, monitor, and track
`
`enterprise communications and processes, e.g., to provide information or
`
`generate reports.” Id. at 5:1–4.
`
` 5
`
`
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`
`C. Illustrative Claim
`
`Claim 22 is independent; claims 23, 27, and 29 depend from claim 22;
`
`and claim 28 depends from claim 27. Claim 22 is illustrative, and is
`
`reproduced below:
`
`22. A computerized method for use in an
`
`asynchronous messaging environment, wherein
`said messaging environment comprises at least one
`original message comprised of original message
`data, comprising:
`
`monitoring a process, which is comprised of
`at least a first and second sub process, by
`generating original message data from each of said
`first and second sub process;
`
`transmitting said original message data from
`said first sub process, via a first monitoring
`message, to a central message repository;
`
`storing said original message data from said
`first sub process, in a transaction record in said
`central message repository;
`
`transmitting said original message data from
`said second sub process, via a second monitoring
`message, to said central message repository; and,
`
`storing said original message data from said
`second sub process, in said transaction record in
`said central message repository;
`
`wherein
`said original message data
`comprises the status of said sub processes.
`
`
`Ex. 1001, 10:5511:8.
`
`
`D. The Asserted References
`
`Petitioner relies upon the following references (see Pet. 34–38, 67–
`
`68):
`
` 6
`
`
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`
`“eSleuth
`Materials”2
`
`First
`Whitepaper
`
`
`eSleuth product eSleuth software (Version
`1.0), Bristol Technology, Inc.
`(“Bristol”)
`Ex. 1006, Ex. 1008, Ex.
`1011, Ex. 1012, and Ex. 1013
`(listed individually below)
`eSleuth – eBusiness
`Transaction Analysis
`Software that Simplifies the
`Development of Reliable,
`High-Quality eBusiness
`Systems, Bristol
`eSleuth – eBusiness
`Transaction Analysis
`Software that Improves
`Reliability,
`Performance, and Quality,
`Bristol
`eSleuth 1.0 User’s Guide,
`Bristol
`eSleuth 1.0 Administrator’s
`Administrator’s
`Guide, Bristol
`Guide
`Release Notes Release Notes eSleuth Early
`Adoption 1.0.0, Bristol
`
`
`Second
`Whitepaper
`
`User’s Guide
`
`Apr. 2000
`
`
`
`
`
`
`
`Apr. 2000
`
`Ex. 1006
`
`July 2000
`
`
`Ex. 1008
`
`Apr. 2000
`
`Apr. 2000
`
`Apr. 2000
`
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`
`
`
`
`2 Petitioner refers to Ex. 1006, Ex. 1008, Ex. 1011, Ex. 1012, and Ex. 1013,
`collectively, as the “eSleuth Materials.” Pet. 38.
`
` 7
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`
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`
`CBM2015-00049
`Patent 7,062,749 B2
`
`
`“MQSeries
`Materials”3
`
`MQSeries
`Primer
`
`MQSeries
`Integrator 1.0
`Reference
`
`MQSeries
`Control Center
`
`MQSeries
`Planning
`
`MQSeries
`Programming
`
`MQSeries
`Messages
`MQSeries
`Quick
`Beginnings
`
`
`
`Ex. 1017, Ex. 1018, Ex.
`1022, Ex. 1023, Ex. 1024,
`Ex. 1025, Ex. 1026, and Ex.
`1027 (listed individually
`below)
`Dieter Wackerow, MQSeries
`Primer, MQSeries Enterprise
`Application Integration
`Center, IBM
`Dieter Wackerow et al.,
`Using the MQSeries
`Integrator Version 1.0,
`International Technical
`Support Organization, IBM
`MQSeries Integrator Using
`the Control Center Version 2
`Release 0, IBM
`MQSeries® Integrator
`Introduction and Planning
`Version 2.0, IBM
`MQSeries® Integrator
`Programming Guide
`Version 2.0, IBM
`MQSeries® Integrator
`Messages Version 2, IBM
`MQSeries® for Windows
`NT® Quick Beginnings
`Version 5.1, IBM
`
`
`
`
`
`
`Oct. 1999
`
`Ex. 1017
`
`May 1999
`
`Ex. 1018
`
`Mar. 2000
`
`Ex. 1022
`
`Apr. 2000
`
`
`Apr. 2000
`
`
`Ex. 1023
`
`Ex. 1024
`
`Apr. 2000
`
`Mar. 1999
`
`Ex. 1025
`
`Ex. 1026
`
`
`
`3 Petitioner refers to Ex. 1017, Ex. 1018, Ex. 1022, Ex. 1023, Ex. 1024, Ex.
`1025, Ex. 1026, and Ex. 1027, collectively, as the “MQSeries Materials.”
`Pet. 67–68.
`
` 8
`
`
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`
`IBM Redbook Geert Van de Putte et al.,
`Business Integration
`Solutions with
`MQSeries Integrator,
`Redbooks, IBM
`David S. Linthicum,
`Enterprise Application
`Integration
`
`Linthicum
`
`Aug. 2000
`
`Ex. 1027
`
`Feb. 2000
`
`Ex. 1020
`
`
`E. The Asserted Grounds
`
`Petitioner challenges claims 22, 23, and 27–29 of the ’749 Patent on
`
` Basis
`
`§ 101
`
`§ 102(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claims Challenged
`
`22, 23, and 27–29
`
`22, 23, and 27–29
`
`22, 23, and 27–29
`
`22, 23, and 27–29
`
`the following grounds (Pet. 22):
`
`
`
` Reference(s)
`
`
`
`eSleuth product (as described in
`the eSleuth Materials)
`
`eSleuth Materials
`
`MQSeries Materials and
`Linthicum
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`We give claim terms in an unexpired patent their broadest reasonable
`
`interpretation in light of the specification of the patent in which they appear.
`
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d
`
`1271, 1281–82 (Fed. Cir. 2015) (“Congress implicitly adopted the broadest
`
` 9
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`CBM2015-00049
`Patent 7,062,749 B2
`
`reasonable interpretation standard in enacting the AIA,” and “the standard
`
`was properly adopted by PTO regulation.”). Under the broadest reasonable
`
`interpretation standard, and absent any special definitions, 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
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Further, “the
`
`specification and prosecution history only compel departure from the plain
`
`meaning in two instances: lexicography and disavowal.” GE Lighting
`
`Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)
`
`(citing Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
`
`(Fed. Cir. 2012)). The standards for lexicography and disavowal are
`
`exacting, and require clear intent to define or narrow a term. Thorner, 669
`
`F.3d at 1365–66. 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).
`
`1. Monitoring message
`
`Petitioner contends that the term “monitoring message” should be
`
`construed as “a message related to an original message or to something
`
`being monitored.” Pet. 19–20 (citing Ex. 1001, 3:6–9, 55–57, 64–67; Ex.
`
`1031 (Jacobsen Declaration) ¶ 34). Patent Owner disagrees, and asserts that
`
`“the Reexamination [of the ’749 Patent] specifically defined a monitoring
`
`message as having original message data and being created by a messaging
`
`component of a messaging broker, and providing a monitoring message to a
`
`
`
`10
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`central message repository.” Prelim. Resp. 33 (citing Ex. 1003, 573–74
`
`(Reexam File Hist., Dec. 21, 2012 Office Act.)).
`
`Petitioner does not agree that Patent Owner’s arguments during the
`
`Reexamination should define or narrow the meaning of the term “monitoring
`
`message” under the broadest reasonable construction standard. Pet. 20. In
`
`particular, Petitioner argues that Patent Owner’s arguments improperly
`
`import limitations from the Specification into the claims. Id. Petitioner also
`
`argues that Patent Owner’s arguments are inconsistent with the
`
`Specification, to the extent they require the messaging component to be a
`
`part of the messaging broker. Id. (citing Ex. 1001, 3:62–64 (“The
`
`messaging component [for creating monitoring messages] may be, in some
`
`embodiments, or may not be, in other embodiments, provided by the
`
`messaging broker.”)).
`
`To the extent that Patent Owner argues that the Reexamination history
`
`is relevant to our claim interpretation, we agree. See Tempo Lighting, Inc. v.
`
`Patent of Tivoli LLC, 742 F.3d 973, 977 (Fed. Cir. 2014) (explaining that
`
`“the prosecution history, while not literally within the patent document,
`
`serves as intrinsic evidence for purposes of claim construction . . . before the
`
`PTO”) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.1997)). We are
`
`under no obligation, however, to accept a claim construction proffered as a
`
`prosecution history disclaimer. See Tempo Lighting, 742 F.3d at 978 (“This
`
`court also observes that the PTO is under no obligation to accept a claim
`
`construction proffered as a prosecution history disclaimer, which generally
`
`only binds the patent owner.”).
`
`
`
`11
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`CBM2015-00049
`Patent 7,062,749 B2
`
`
`In the Reexamination, Patent Owner argued that “‘[m]onitoring
`
`message’ is defined and limited in the specification as being created from a
`
`messaging component of a ‘messaging broker.’” Ex. 1003, 552 (Reexam.
`
`File Hist., Nov. 19, 2012 Response). Patent Owner asserted that “no other
`
`type of ‘message’ [is] claimed here.” Id. Patent Owner further argued that
`
`“[t]he monitoring message is then sent from the messaging broker to a
`
`central message repository or database” and “[t]hus it is necessary for a
`
`central message repository, receiving data from a monitoring message, to be
`
`present in order to practice the inventions taught by the claims.” Id. at 553
`
`(citing Ex. 1001, 3:51–4:67, Fig. 2). Patent Owner also provided the
`
`following “progression as taught by the specification and present claims”:
`
`messaging broker → monitoring message → central message repository
`
`Id. at 553. Finally, Patent Owner stated:
`
`[The term “monitoring message”] is defined in terms of a
`messaging broker — without a messaging broker there can be
`no monitoring message. Thus, the messaging broker is present
`in the definition of monitoring message — even though the
`words “messaging broker” do not appear in the claims.
`Without a messaging broker however there can be no
`monitoring message.
`
`Id.
`
`In response to Patent Owner’s arguments in the Reexamination, the
`
`Examiner stated that he agreed with Patent Owner’s “definition of a
`
`monitoring message and its relationship with a messaging broker and central
`
`message repository.” Ex. 1003, 574 (Reexam. File Hist., Dec. 21, 2012
`
`Office Act.). The Examiner further stated: “The specification makes it clear
`
`
`
`12
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`CBM2015-00049
`Patent 7,062,749 B2
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`that a monitoring message must be generated by a messaging component of
`
`a centralized messaging broker.” Id. (citing Ex. 1001, 3:51–4:20, Fig. 2).
`
`The Examiner also stated: “Therefore, a messaging broker component is
`
`fundamentally necessary to be present in order to practice the invention as
`
`taught in the claims.” Id. at 574.
`
`Upon considering the claims, the Specification, the Reexamination
`
`history, and the competing arguments of the parties, we determine that the
`
`broadest reasonable interpretation consistent with the Specification of the
`
`term “monitoring message,” in claim 22, is a message created by a
`
`messaging broker, containing data generated from an original message. At
`
`this stage of the proceeding, we are not persuaded that a monitoring message
`
`must be generated by a messaging component of a centralized messaging
`
`broker, as determined by the Examiner in the Reexamination. See Ex. 1003,
`
`574 (citing Ex. 1001, 3:51–4:20, Fig. 2). First, as Petitioner and its declarant
`
`assert, the Specification makes clear that a messaging component need not
`
`be a part of the messaging broker. See Ex. 1001, 3:62–64 (“The messaging
`
`component may be, in some embodiments, or may not be, in other
`
`embodiments, provided by the messaging broker”); Pet 20; Ex. 1031 ¶ 63.
`
`Second, Patent Owner has not persuaded us that a messaging broker must be
`
`“centralized.” See Ex. 1003, 574 (citing Ex. 1001, 3:51–4:20, Fig. 2). The
`
`reference to a “centralized messaging broker” in the Reexamination appears
`
`to stem from the description of a preferred embodiment in which sub-
`
`processes communicate “through a messaging broker.” Ex. 1001, 3:47, Figs
`
`1, 2. Patent Owner has not provided any justification for importing this
`
`
`
`13
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`CBM2015-00049
`Patent 7,062,749 B2
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`specific limitation from the preferred embodiment into claim 51. See
`
`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
`
`2004) (“Though understanding the claim language may be aided by
`
`explanations contained in the written description, it is important not to
`
`import into a claim limitations that are not part of the claim.”).
`
`2. Other Claim Terms
`
`None of our determinations regarding Petitioner’s proposed grounds
`
`of unpatentability requires us to construe any other claim term expressly.
`
`
`
`B. Standing
`
`Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional
`
`proceeding only for a patent that is a “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.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have
`
`only one claim directed to a covered business method to be eligible for
`
`review. See Transitional Program for Covered Business Method Patents—
`
`Definitions of Covered Business Method Patent and Technological
`
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM
`
`Rules”) (Comment 8).
`
`
`
`14
`
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`CBM2015-00049
`Patent 7,062,749 B2
`
`
`Here, the parties disagree as to whether the ’749 Patent is a covered
`
`business method patent under section 18(d)(1) of the AIA and 37 C.F.R.
`
`§ 42.301(a).
`
`1. Financial Product or Service
`
`Petitioner asserts that the ’749 Patent qualifies for covered business
`
`method patent review because “the claimed invention is incidental and/or
`
`complementary to a financial activity and relates to monetary matters.” Pet.
`
`5. Petitioner argues, for example, that “reviewing . . . order information,” as
`
`required by claim 28, is clearly a financial activity. Id. at 6–7 (emphasis
`
`supplied by Petitioner; citation omitted). Additionally, Petitioner argues that
`
`“[b]ecause the ’749 patent describes ‘Order to Cash’ as a financial process
`
`for receiving and processing sales, and ‘cash’ clearly relates to monetary
`
`matters, the ’749 patent indisputably describes a financial service.” Id. at 6
`
`(citation omitted).
`
`In opposition, Patent Owner asserts that the claims are directed to
`
`technology “common in business environments across sectors” with “no
`
`particular relation to the financial services sector.” Prelim. Resp. 18
`
`(emphasis omitted). Patent Owner further argues that the Specification
`
`describes a business process or operation, not an embodiment of a financial
`
`process. Id. at 20–25. Patent Owner does not address specifically
`
`Petitioner’s arguments with respect to claim 28.
`
`We are persuaded that at least claim 28 is directed to a covered
`
`business method. Claim 28 recites “reviewing . . . order information,”
`
`which, as described in the Specification, encompasses activities that are
`
`
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`15
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`CBM2015-00049
`Patent 7,062,749 B2
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`financial in nature, such as pricing, quoting, and invoicing. See Ex. 1001,
`
`1:16–28. Contrary to Patent Owner’s arguments, the legislative history
`
`indicates that the phrase “financial product or service” is not limited to the
`
`products or services of the “financial services industry” and is to be
`
`interpreted broadly. CBM Rules, 77 Fed. Reg. at 48,735–36. For example,
`
`the “legislative history explains that the definition of covered business
`
`method patent was drafted to encompass patents ‘claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.’” Id. (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8,
`
`2011) (statement of Sen. Schumer)).
`
`For the reasons stated above, we determine that the ’749 Patent
`
`includes at least one claim that meets the financial-in-nature requirement of
`
`§ 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`
`Petitioner asserts that the claims of the ’749 Patent do not fall within
`
`the exclusion for “technological inventions” set forth in § 18(d)(1). Pet. 7–
`
`13. In particular, Petitioner argues that “the ’749 patent does not claim a
`
`technological invention because its chief elements—an asynchronous
`
`messaging environment, monitoring messages, and a central message
`
`repository—were well-known in the prior art as admitted by the ’749 patent
`
`itself.” Id. at 7–8.
`
`Patent Owner argues in response that “[c]laim 22 as a whole recites
`
`technological features that are novel and unobvious over the prior art to
`
`solve the identified issues arising out of the asynchronous messaging
`
`
`
`16
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`
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`CBM2015-00049
`Patent 7,062,749 B2
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`technical environment.” Prelim. Resp. 26. Patent Owner asserts that
`
`Petitioner’s arguments mischaracterize the teachings of the patent and ignore
`
`the finding of the Reexamination upholding the patent claims over the prior
`
`art. Id. at 28–31.
`
`To determine whether a patent is for a technological invention, we
`
`consider “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). 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.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`
`14, 2012).
`
`Thus, a claim reciting use of only known prior art technology to
`
`accomplish a process or method does not define a technological invention,
`
`even if the claimed process or method, as a whole, is novel and unobvious,
`
`as Patent Owner argues here. See Prelim. Resp. 26. We are persuaded that
`
`claim 22 recites use of only known technologies, such as monitoring
`
`
`
`17
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`
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`CBM2015-00049
`Patent 7,062,749 B2
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`messages and a central message repository or database. See Pet. 7–8. The
`
`Specification specifically discloses that “IBM’s MQSeries messaging broker
`
`provides a component that can be configured to perform a copying function
`
`for the messages it receives, and so create monitoring messages for the
`
`messages it receives.” Ex. 1001, 3:63–67 (emphasis added). The evidence
`
`of record also establishes that a central message repository or database was
`
`known in the prior art. See Ex. 1003, 539 (Reexam File Hist., Sept. 18, 2012
`
`Final Act.) (finding that “the transaction database of Blackwell is a central
`
`message repository”); see Ex. 2001 (Blackwell), 15:59–65, Fig. 14
`
`(transaction database 20).
`
`Patent Owner also argues that the ’749 Patent solves a technical
`
`problem relating to the “loosely coupled nature” of asynchronous or
`
`message-based communications. Prelim. Resp. 31–32. We are not
`
`persuaded by this argument because, as Petitioner argues, the problem is
`
`“one of organization,” which the ’749 patent solves “by monitoring and
`
`collecting communications, including status information, at a central
`
`location.” Pet. 11–12. We have considered all of Patent Owner’s arguments,
`
`but do not find them persuasive.
`
`For the reasons stated above, we determine that the claims of the ’749
`
`Patent do not fall within the exclusion for technological inventions, and
`
`conclude that the ’749 Patent is a covered business method patent under AIA
`
`§ 18(d)(1) and is eligible for review under the transitional covered business
`
`method patent program.
`
`
`
`
`
`18
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`CBM2015-00049
`Patent 7,062,749 B2
`
`
`C. Statutory-Subject-Matter Challenge
`
`Petitioner challenges claims 22, 23, and 27–29 as directed to patent-
`
`ineligible subject matter under 35 U.S.C. § 101. Pet. 22–32. Analyzing the
`
`challenged claims using the two-step analysis of Alice Corp. Pty, Ltd. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347 (2014), Petitioner asserts that all the challenged
`
`claims are directed to an abstract idea without additional elements that
`
`transform the claims into a patent-eligible application of that idea. Id.
`
`Specifically, Petitioner argues that the challenged claims are directed
`
`improperly to the abstract idea of “collecting communications relating to a
`
`business transaction.” Pet. 24.
`
`Patent Owner argues in response that Petitioner’s § 101 challenge
`
`“read[s] out every single element of the claim” (Prelim. Resp. 33), and
`
`asserts as novel and unobvious elements of the patent “generating a
`
`monitoring message, wherein the monitoring message with original message
`
`data was created by a messaging component of a messaging broker, and
`
`providing the monitoring message to a central message repository” (id. at
`
`35). Patent Owner further asserts that “[t]he claims at issue do not attempt
`
`to preempt every application of the idea.” Id. (quoting DDR Holdings, LLC
`
`v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014)).
`
`At this stage of the proceeding, we are persuaded that the challenged
`
`claims are more likely than not drawn to a patent-ineligible abstract idea. In
`
`Alice, the Supreme Court reiterated the analysis set forth in Mayo
`
`Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289, 1293 (2012),
`
`“for distinguishing patents that claim laws of nature, natural phenomena, and
`
`
`
`19
`
`
`
`CBM2015-00049
`Patent 7,062,749 B2
`
`abstract ideas from those that claim patent-eligible applications of those
`
`concepts.” Alice, 134 S. Ct. at 2355. The two steps of the analysis are, first,
`
`to “determine whether the claims at issue are directed to one of those patent-
`
`ineligible concepts” and, second, to consider the elements of the claims
`
`“individually and ‘as an ordered combination’” to determine whether there
`
`are additional elements that “‘transform the nature of the claim’ into a
`
`patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1297).
`
`In other words, the second step is a “search for an ‘inventive concept’—i.e.,
`
`an element or combination of elements that is ‘sufficient to ensure that the
`
`patent in practice amounts to significantly more than a patent upon the
`
`[ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S.
`
`Ct. at 1294).
`
`With respect to the first step of the analysis, we are persuaded, on this
`
`record, that the challenged claims are directed to the abstract idea of
`
`“collecting communications relating to a business transaction.” Pet 24. A
`
`problem associated with asynchronous messaging environments, according
`
`the ’749 Patent, is that messages containing information about the status of a
`
`process may not be accessible at any given time. See Ex. 1001, 2:5–18. The
`
`’749 Patent proposes to solve this problem by providing a central message
`
`repository or database as “a collection point” for process information
`
`passing through an enterprise. See id. at 3:15–20. The ’749 Patent makes
`
`clear that the crux of the claimed subject matter is collecting process-related
`
`communications in a central location for efficient access and review. See id.
`
`at 3:2–33.
`
`
`
`20
`
`
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`CBM2015-00049
`Patent 7,062,749 B2
`
`
`Turning to the second step of the Alice analysis, we are persuaded, on
`
`this record, that the challenged claims do not add an inventive concept
`
`sufficient to ensure that the patent in practice amounts to significantly more
`
`than a patent on the abstract idea itself. Patent Owner’s asserted inventive
`
`concept, “generating a monitoring message . . . and providing the monitoring
`
`message to a central message repository” (Prelim. Resp. 35), merely
`
`“implement[s] the abstract idea with ‘routine, conventional activit[ies],’
`
`which is insufficient to transform the patent-ineligible abstract idea into
`
`patent-eligible subject matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
`
`709, 716 (Fed. Cir. 2014) (second alteration in original).
`
`At this stage of the proceeding, we determine that Patent Owner’s
`
`reliance on DDR Holdings is misplaced. Prelim. Resp. 35. In DDR
`
`Holdings, the Federal Circuit decided that the patent claims at issue there
`
`addressed the problem of retaining website visitors who, if adhering to the
`
`routine, conventional functioning of Internet hyperlink protocol, would be
`
`transported instantly away from a host’s website after “clicking” on an
`
`advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
`
`In that context, the Federal Circuit determined that the claimed solution was
`
`“necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks.” Id. The court went
`
`on to explain that “the claims at issue do not attempt to preempt every
`
`application of the idea of increasing sales by making two web pages look the
`
`same, or of any other variant suggested by [defendants].” Id. at 1259
`
`(emphasis added).
`
`
`
`21
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`
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`CBM2015-00049
`Patent 7,062,749 B2
`
`
`We are persuaded that this case, unlike DDR Holdings, involves only
`
`conventional technology, which is used in its normal, expected, and routine
`
`manner. The claims contain little more than a directive to use “monitoring
`
`messages” and a “central message database” to implement the abstract idea
`
`of collecting communications relating to a business transaction.
`
`Having considered the information provided in the Petition and the
`
`Preliminary Response, we are persuaded that Petitioner has demonstrated
`
`that it is more likely than not that the challenged claims are unpatentable
`
`under 35 U.S.C. § 101.
`
`
`
`D. Anticipation Challenge — the eSleuth Materials
`
`
`
`Petitioner challenges claims 22, 23, and 27–29 as anticipated under
`
`the “known . . . by others in this country” provision of 35 U.S.C. § 102(a).
`
`Pet. 32–62. Petitioner asserts, and for purposes of this Decision we agree,
`
`that multiple references may be used to show anticipating public knowledge
`
`of an invention under § 102(a). Id. at 33–34 (citing Aspex Eyewear, Inc. v.
`
`Concepts In Optics, Inc., 111 F. App’x. 582, 586–87 (Fed. Cir. 2004)
`
`(unpublished) (holding that “the ‘known . . . by others’ provision [of
`
`35 U.S.C. § 102(a)] does not require the anticipating public knowledge to be
`
`disclosed in a written
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