UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`HEWLETT-PACKARD COMPANY,
`Petitioner
`
`v.
`
`
`
`YYZ, LLC,
`Patent Owner
`
`
`
`CBM No. Unassigned
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW
`UNDER 35 U.S.C. § 321 and § 18 of the AMERICA INVENTS ACT
`
`
`
`
`
`U.S. PATENT NO. 7,062,749
`
`
`
`
`
`
`
`

`
`3.
`
`V.
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`II. Overview of the ’749 Patent ............................................................................ 2
`III. Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ................................................... 3
`IV. Grounds for Standing (37 C.F.R. § 42.304(a)) ................................................ 4
`A.
`The ’749 Patent is Directed to a Covered Business Method................. 4
`B.
`The ’749 Patent Does Not Claim a “Technological Invention” ........... 7
`1.
`There are no novel and unobvious technological features .......... 9
`2.
`The claims do not solve a technical problem using a technical
`solution ...................................................................................... 11
`The claims do nothing more than use claim drafting techniques
`that do not render the claims a “technological invention” ........ 12
`Petitioner has Standing and is Not Estopped (37 C.F.R. § 42.302) .... 14
`C.
`Prosecution History of the ’749 Patent .......................................................... 14
`A. Original Prosecution ............................................................................ 14
`B.
`Reexamination Prosecution ................................................................. 14
`VI. Claim Construction ........................................................................................ 17
`A. Asynchronous Messaging Environment ............................................. 18
`B.
`Process ................................................................................................. 18
`C.
`Sub-Process ......................................................................................... 18
`D. Original Message ................................................................................. 19
`E. Monitoring Message ............................................................................ 19
`F.
`Central Message Repository ................................................................ 20
`G.
`Transaction .......................................................................................... 21
`H.
`Transaction Record.............................................................................. 21
`VII. Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) ..................... 21
`VIII. Identification of Challenges (37 C.F.R. § 42.304(b)) ................................... 22
`IX. Ground 1: Claims 22-23 and 27-29 are Unpatentable under §101 ............... 22
`A.
`Claims 22-23 and 27-29 Cover an Abstract Idea ................................ 24
`
`
`
`- i -
`
`

`
`B.
`
`Elements of the Claims Do Not Amount to “Significantly More” than
`the Abstract Idea (i.e., No Inventive Concept) .................................... 30
`X. Grounds of Unpatentability Based on eSleuth .............................................. 32
`A. Ground 2: Claims 22-23, and 27-29 are Anticipated by the eSleuth
`Product ................................................................................................. 33
`1.
`The eSleuth product is prior art under § 102(a) because it was
`“known or used by others” ........................................................ 34
`The eSleuth product discloses all elements of 22-23 and 27-29
` ................................................................................................... 38
`B. Ground 3: Claims 22-23 and 27-29 are Rendered Obvious by the
`eSleuth Materials ................................................................................. 62
`1.
`The eSleuth Materials qualify independently as prior art
`references .................................................................................. 62
`Claims 22-23 and 27-29 are obvious over the eSleuth Materials
`based on the Graham factors .................................................... 64
`XI. Ground 4: Claims 22-23 and 27-29 are Rendered Obvious by the MQSeries
`Materials in view of Linthicum ..................................................................... 67
`A.
`Prior Art Relied Upon ......................................................................... 67
`B.
`Claims 22-23 and 27-29 are Obvious over the MQSeries Materials in
`view of Linthicum Based on the Graham Factors .............................. 69
`XII. Conclusion ..................................................................................................... 80
`
`2.
`
`2.
`
`
`
`- ii -
`
`

`
`Ex. 1001 U.S. Patent No. 7,062,749
`Ex. 1001
`U.S. Patent No. 7,062,749
`
`EXHIBIT LIST
`
`EXHIBIT LIST
`
`Ex. 1002
`Ex. 1002
`
`Publicly Available File History of U.S. Patent No. 7,062,749
`Publicly Available File History of U.S. Patent No. 7,062,749
`
`Ex. 1003
`Ex. 1003
`
`Publicly Available File History of Reexamination of U.S. Patent
`Publicly Available File History of Reexamination of U S Patent
`No. 7,062,749
`No. 7,062,749
`
`Ex. 1004
`Ex. 1004
`
`eSleuth History Document
`eSleuth History Document
`
`Ex. 1005
`Ex. 1005
`
`Scanned Copy of First eSleuth Demonstration Disc
`Scanned Copy of First eSleuth Demonstration Disc
`
`Ex. 1006 Whitepaper entitled “eSleuth – eBusiness Transaction Analysis
`Ex. 1006 Whitepaper entitled “eSleuth — eBusiness Transaction Analysis
`Software that Simplifies the Development of Reliable, High-
`Software that Simplifies the Development of Reliable, High-
`Quality eBusiness Systems,” January 28, 2000 (“First
`Quality eBusiness Systems,” January 28, 2000 (“First
`Whitepaper”)
`Whitepaper”)
`
`Ex. 1007
`Ex. 1007
`
`Scanned Copy of Second eSleuth Demonstration Disc
`Scanned Copy of Second eSleuth Demonstration Disc
`
`Ex. 1008 Whitepaper entitled “eSleuth – eBusiness Transaction Analysis
`Ex. 1008 Whitepaper entitled “eSleuth — eBusiness Transaction Analysis
`Software that Improves Reliability, Performance, and Quality,”
`Software that Improves Reliability, Performance, and Quality,”
`February 22, 2000 (“Second Whitepaper”)
`February 22, 2000 (“Second Whitepaper”)
`
`Ex. 1009
`Ex. 1009
`
`Bristol Website Pages Archived on Feb. 29, 2000 and May 28,
`Bristol Website Pages Archived on Feb. 29, 2000 and May 28,
`2000
`2000
`
`Ex. 1010 April 2000 Business Wire Press Release
`Ex. 1010
`April 2000 Business Wire Press Release
`
`Ex. 1011
`Ex. 1011
`
`eSleuth 1.0 User’s Guide, April 13, 2000 (“User’s Guide”)
`eSleuth 1.0 User’s Guide, April 13, 2000 (“User’s Guide”)
`
`Ex. 1012
`Ex. 1012
`
`eSleuth 1.0 Administrator’s Guide, April 10, 2000
`eSleuth 1.0 Administrator’s Guide, April 10, 2000
`(“Administrator’s Guide”)
`(“Administrator’ s Guide”)
`
`Ex. 1013
`Ex. 1013
`
`eSleuth 1.0 Release Notes, April 2000 (“Release Notes”)
`eSleuth 1.0 Release Notes, April 2000 (“Release Notes”)
`
`Ex. 1014
`
`Ex. 1014
`
`June 2000 Business Wire Press Release
`
`June 2000 Business Wire Press Release
`
`Ex. 1015
`Ex. 1015
`
`Chane Cullens Affidavit for Bristol’s Application for the
`Chane Cullens Affidavit for Bristol’ s Application for the
`Trademark “eSleuth” signed April 2, 2001
`Trademark “eSleuth” signed April 2, 2001
`
`Ex. 1016
`Ex. 1016
`
`Chane Cullens Affidavit for Bristol’s Application for the
`Chane Cullens Affidavit for Bristol’ s Application for the
`
`
`
`—iii—
`
`- iii -
`
`

`
`Trademark “eSleuth” signed May 16, 2001
`
`Ex. 1017 MQSeries Primer, IBM MQSeries EAI Center, October 1999
`(“MQSeries Primer”)
`
`Ex. 1018 Using the IBM MQSeries Integrator Version 1.0, IBM International
`Technical Support Organization, SG24-5386-00, May 1999
`(“MQSeries Integrator 1.0 Reference”)
`
`Ex. 1019 Oracle8i, Application Developer’s Guide - Advanced Queuing,
`Release 8.1.5, February 1999 (“Oracle 8i Guide”)
`
`Ex. 1020 D. Linthicum, Enterprise Application Integration, Addison-Wesley
`Longman, Copyright 2000 (“Linthicum”)
`
`Ex. 1021 Y. Hoffner, Monitoring in Distributed Systems, ANSA
`Architecture Report, October 25, 1994 (“Hoffner”)
`
`Ex. 1022 MQSeries Integrator, Using the Control Center, Version 2 Release
`0, SC34-5602-00, First edition, March 2000 (“MQSeries Control
`Center”)
`
`Ex. 1023 MQSeries Integrator, Introduction and Planning, Version 2.0,
`GC34-5599-00, First edition, April 2000 (“MQSeries Planning”)
`
`Ex. 1024 MQSeries Integrator, Programming Guide, Version 2.0, SC34-
`5603-00, First edition, April 2000 (“MQSeries Programming”)
`
`Ex. 1025 MQSeries Integrator, Messages, Version 2, GC34-5601-00, First
`edition, April 2000 (“MQSeries Messages”)
`
`Ex. 1026 MQSeries for Windows NT, Quick Beginnings, Version 5.1,
`GC34-5389-00, First edition, March 1999 (“MQSeries Quick
`Beginnings”)
`
`Ex. 1027 Van de Putte et al., Business Integration Solutions with MQSeries
`Integrator, IBM RedBooks, SG24-6154-00, August 2000 (“IBM
`Redbook”)
`
`Ex. 1028 M43 – Introduction to Business Integration & Message Brokers,
`IBM MQSeries Technical Conference, June 2000 (“IBM
`
`
`
`- iv -
`
`

`
`Presentation M43”)
`
`Ex. 1029 M56 – MQSeries Workflow Technical Overview, IBM MQSeries
`Technical Conference, June 2000 (“IBM Presentation M56”)
`
`Ex. 1030 Declaration of Chane Cullens
`
`Ex. 1031 Declaration of Dr. Arno Jacobsen
`
`Ex. 1032 Declaration of Stephen Craggs
`
`Ex. 1033
`
`Copyright Certificate (Linthicum)
`
`Ex. 1034 Markman Order in YYZ, LLC v. Hewlett Packard Co., No. 1:13-cv-
`00136-SLR (D. Del.), December 12, 2014
`
`
`
`- v -
`
`
`
`
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`I.
`
`Introduction
`
`Hewlett-Packard Co. petitions for Covered Business Method (“CBM”) Patent
`
`Review, seeking cancellation of claims 22-23 and 27-29 of U.S. Patent No.
`
`7,062,749 to Cyr et al. (“the ’749 patent”) (Ex. 1001), owned by YYZ, LLC.
`
`The ’749 patent is directed to collecting communications relating to a business
`
`process (such as the financial process of turning orders into cash). In the
`
`specification, that process is called “Order to Cash,” confirming that the ’749
`
`patent relates to monetary matters and, thus, is a CBM patent. Because the ’749
`
`patent also does not claim a technological invention, the patent is eligible for CBM
`
`review.
`
`Review of the ’749 patent shows that it merely describes and claims nothing
`
`more than preexisting computer technology. Unsurprisingly, the challenged claims
`
`are unpatentable under 35 U.S.C. §§ 101, 102, and 103. As discussed below, the
`
`claims are unpatentable under 35 U.S.C. § 101 because the claims cover nothing
`
`more than the fundamental administrative concept of collecting communications
`
`relating to a business process, i.e., an ineligible abstract idea. The claims are not
`
`limited in any meaningful way, and the only references in the patent to computer
`
`technology are to admitted prior art components and generic databases.
`
`Additionally, the claims are unpatentable under 35 U.S.C. §§ 102 and 103 because
`
`the claims lack novelty and are obvious in view of prior art messaging technology.
`
`
`
`1
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`Therefore, Petitioner seeks cancellation of claims 22-23, and 27-29.
`
`II. Overview of the ’749 Patent
`Generally, the ’749 Patent relates to “monitoring” a business “process” by
`
`collecting and storing certain information about its “sub-processes” at a central
`
`location that can be later accessed by a user. To illustrate the “invention,” the ’749
`
`Patent describes a hypothetical enterprise referred to as the “Widget Co.” Ex. 1001,
`
`4:1-19. The Widget Co. follows a so-called “Order to Cash” process to convert
`
`product orders from customers into revenue. This process is broken down (on an
`
`abstract level) into various sub-processes (such as “Receive Order Inquiry” and
`
`“Provide Customer Quotation”) that communicate with each other in an
`
`asynchronous messaging environment using existing message technology. Id. The
`
`messaging system makes a copy of these messages (so-called “monitoring”
`
`messages) and stores them in a central database. Id. at 3:58-61, 3:64-67. The
`
`database may later be accessed by an employee of Widget Co., thereby allowing
`
`that employee to review the “Order to Cash” process. Id. at 5:1-4.
`
`But the ’749 patent acknowledges that most—if not all—of this functionality
`
`was part of existing IBM MQSeries technology. Specifically, the ’749 patent
`
`describes configuring existing IBM MQSeries software as a “messaging
`
`component . . . added to the messaging broker, through methods known in the art.”
`
`Id. at 3:52-53. The ’749 patent further acknowledges that “IBM's MQSeries
`
`
`
`2
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`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 3:64-67. The ’749 patent describes storing
`
`these copied messages (or monitoring messages) in a generic database. See id. at
`
`3:58-61.
`
`III. Mandatory Notices (37 C.F.R. § 42.8(a)(1))
`The Real Party-in-Interest (37 C.F.R. § 42.8(b)(1):
`
`Hewlett-Packard Co. (“HP” or “Petitioner”) is the real party-in-interest.
`
`Related Matters (37 C.F.R. § 42.8(b)(2)):
`
`The ’749 patent is the subject of district court litigation in the following cases:
`
`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 (D. Del.). Petitioner is filing herewith
`
`a CBM petition for U.S. patent no. 7,603,674, for which the ’749 patent is the
`
`parent.
`
`Designation of Counsel & Service (37 C.F.R. § 42.8(b)(3)-(4)) :
`
`Lead Counsel
`
`Backup Counsel
`
`Brian S. Mudge (Reg. No. 40,738)
`
`Adeel Haroon (Reg. No. 64,938)
`Matthew Faust (pro hac vice to be
`
`requested)
`
`Electronic Service: Petitioner consents to email service at:
`
`
`
`3
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`HP-YYZ-CBM@kenyon.com
`bmudge@kenyon.com;
`aharoon@kenyon.com
`
`Post & Delivery: Kenyon & Kenyon, LLP
`1500 K Street NW
`Washington, DC 20005
`
`Telephone & Fax: 202-220-4200 (main); 202-220-4201 (fax)
`
`IV. Grounds for Standing (37 C.F.R. § 42.304(a))
`Petitioner certifies that the ’749 patent is available for post-grant review. The
`
`’749 patent is a CBM patent and, thus, is eligible for review under AIA § 18(d) and
`
`37 C.F.R. § 42.301, as explained below.
`
`A. The ’749 Patent is Directed to a Covered Business Method
`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). The legislative history of the AIA “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.’” 77 Fed. Reg. 48734, 48735 (Aug. 14, 2012) (quoting 157
`
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). The
`
`legislative history also indicates that “financial product or service” should be
`
`
`
`4
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`interpreted broadly. Id. A patent is eligible for review if it has at least one claim
`
`directed to a covered business method. Id. at 48736 (Response to Comment 8).
`
`Additionally, and of particular pertinence to the ’749 patent, the claims of the
`
`challenged patent do not need to explicitly recite financially-related elements;
`
`where (as here) the written description of the challenged patent describes the
`
`claimed invention in language encompassing financial matters, the patent qualifies
`
`for CBM review. Id. at 48735; see also CRS Advanced Techs., Inc. v. Frontline
`
`Techs., Inc., CBM2012-00005, Paper 17 at 7-8 (PTAB Jan. 23, 2013) (patent
`
`qualified for CBM review even though the challenged claims related to “a plurality
`
`of different organizations”
`
`instead of explicitly referring
`
`to a financial
`
`organization, because the challenged claims were broad enough to include
`
`financial institutions such as retail banks, as evidenced by the written description).
`
`Here, the ’749 patent makes clear that the claimed invention is incidental and/or
`
`complementary to a financial activity and relates to monetary matters. The written
`
`description of the ’749 patent describes a system for monitoring and collecting
`
`communications of a process, and the preferred embodiment—indeed the only
`
`embodiment—described is a process named “Order to Cash.” Figure 1 of the ’749
`
`patent depicts the financial process, “Order to Cash,” which includes sub-
`
`processes: “Receive Order Inquiry, Provide Customer Quotation, Create Customer
`
`Outline Agreement, Create Sales Order, Schedule Production, Manufacture
`
`
`
`5
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`Product, Ship Product and Invoice Customer.” Ex. 1001 at 3:39-43; see also id. at
`
`1:15-28 (listing verbatim the same sub-processes for “Order to Cash” process as
`
`Figure 1 in the Background section). Because 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. See American Express Co. v. Lunenfeld, CBM2014-00050, Paper 17 at 10-
`
`11 (PTAB June 18, 2014) (claim requiring placing order for travel related items
`
`and processing order recites a financial activity for purposes of qualifying patent
`
`for CBM review). Thus, as the only embodiment described in the ’749 patent is
`
`directed to a financial service, the claimed invention must cover activities that are
`
`financial in nature, incidental to a financial activity, or complementary to a
`
`financial activity.
`
`A review of the challenged claims confirms that they cover financial activities.
`
`Independent claim 22 recites “monitoring a process, which is comprised of at least
`
`a first and second sub process.” As the specification makes clear, the claimed
`
`process encompasses financial processes such as “Order to Cash,” the only
`
`“process” described in the specification. Claim 22 also recites a “transaction
`
`record,” which the specification describes as holding all of the information needed
`
`to measure a transaction, Ex. 1001 at 4:56-63, further showing the financial nature
`
`of the claimed activity. Moreover, dependent claim 28, which depends from claim
`
`
`
`6
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`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`22, recites “reviewing said central message repository further comprises reviewing
`
`information from the group consisting of order information, . . .” clearly a
`
`financial activity. See Lunenfeld, CBM2014-00050, Paper 17 at 10-11. Indeed, the
`
`specification explicitly describes “reviewing” information from the central
`
`message repository for the purpose of stock analysis, a classic financial activity:
`
`“One example would be providing information to stock analysts so that they could
`
`track any particular enterprise’s productivity or other areas of interest.” Ex. 1001 at
`
`5:32-34. Therefore, as evidenced by claims 22 and 28, and the specification, the
`
`‘749 patent claims activity that is “financial in nature” or at least “incidental” or
`
`“complementary to a financial activity.”
`
`Similarly, claim 15 recites a transaction record. As above, because the
`
`specification describes the transaction record as holding data from the process
`
`“Order to Cash,” Ex. 1001 at 4:56-63, this is yet another example showing that the
`
`’749 patent is a covered business method. See CRS Advanced Techs., CBM2012-
`
`00005, Paper 17 at 2, 8 (relying in part on unchallenged claim to show patent is
`
`CBM patent).
`
`B. The ’749 Patent Does Not Claim a “Technological Invention”
`The AIA excludes patents for “technological inventions” from the definition of
`
`CBM patents. AIA § 18(d)(1). But the ’749 patent does not claim a technological
`
`invention because its chief elements—an asynchronous messaging environment,
`
`
`
`7
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`monitoring messages, and a central message repository—were well-known in the
`
`prior art as admitted by the ’749 patent itself.
`
`To determine whether a patent is for a technological invention, “the following
`
`will be considered on a case-by-case basis: 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. In
`
`addition to this two-stage definition, the PTO’s Office Patent Trial Practice Guide
`
`provides a list of exemplary claim drafting techniques that would not turn a patent
`
`into 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 database, 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.
`77 Fed. Reg. 48756, 48764 (Aug. 14, 2012). The “technological invention”
`
`exception is intended to be a narrow basis for excluding patents from CBM review.
`
`
`
`8
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`See 157 Cong. Rec. S1364 (daily ed. Mar. 8, 2011).
`
`1. There are no novel and unobvious technological features
`
`Referring again to claim 22 of the ’749 patent, the method, at best, only
`
`describes
`
`the
`
`following
`
`technical
`
`features: an asynchronous messaging
`
`environment, monitoring messages, and a central message repository holding a
`
`transaction record. None of these features, either individually or as a whole, are
`
`novel and unobvious over the prior art. Just the opposite, the ’749 patent admits
`
`that most of these devices were known in the prior art. With respect to the
`
`“asynchronous messaging environment,” the ’749 patent admits in the Background
`
`section:
`
`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.
`
`Ex. 1001, 1:43-48.
`
`The ’749 patent also admits that the messaging component (and, to the extent
`
`covered by the claims, a messaging broker) was known in the prior art:
`
`FIG. 1 shows a sample process, Order to Cash, which is comprised of
`various sub-processes . . . the sub-processes actually communicate
`through a messaging broker, such as an IBM MQSeries component,
`and the paths to and from the component are identified identically.
`9
`
`
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`This messaging broker permits certain sophisticated messaging uses,
`such
`as message
`queuing,
`some
`data
`translation,
`etc.
`A messaging component is added to the messaging broker, through
`methods known in the art.
`
`Id. at 3:39-53 (emphasis added).
`
`Further, even the claimed monitoring messages are admittedly not novel or
`
`unobvious. The ’749 patent acknowledges that the monitoring message can simply
`
`be a copied message from the prior art copying function of IBM’s MQSeries:
`
`For example, 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 3:64-67 (emphasis added). Thus, the ’749 patent admits that all the
`
`messaging devices in claim 22 were known in the prior art.
`
`Moreover, the claimed central message repository cannot transform claim 22
`
`into a technological invention because the central message repository is, at best,
`
`merely a generic database, which was well-known in the art. See id. at 3:60-61
`
`(“the terms ‘repository’ or ‘database’ are used interchangeably throughout”).
`
`Neither the specification nor claim 22 describes anything novel or unobvious
`
`regarding the central message repository/database. Indeed, as noted above, mere
`
`recitation of known technologies, such as databases, does not describe a
`
`technological invention. 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012); see also
`10
`
`
`
`

`
`CBM Petition – U.S. Patent No. 7,062,749
`
`Agilysys, Inc. v. Ameranth, Inc., CBM2014-00016, Paper 19 at 13 (PTAB Mar. 26,
`
`2014) (“Mere recitation of known technologies or combinations of prior art
`
`structures to achieve normal, expected, or predictable results do not render a patent
`
`a technological invention.”).
`
`Finally, claim 15 is directed to a transaction record, which is nothing more than
`
`a data structure. As such, the claim contains no technological devices whatsoever,
`
`confirming that the ’749 patent cannot be a technological invention.
`
`2. The claims do not solve a technical problem using a technical
`solution
`
`First, the problem described by the ’749 patent is not a technical one. The
`
`background section of the ’749 patent describes the problem that claim 22 is
`
`attempting to solve:
`
`Of course, if the enterprise lacks the ability to access status
`information, business partners of the enterprise will similarly lack that
`ability. Thus, asynchronous communications may well increase
`inefficiency among business partners as well.
`
`Ex. 1001 at 2:19-23.
`
`Thus, the problem is not technical, but rather one of organization—namely, the
`
`lack of organization of status information, resulting in business inefficiencies.
`
`Second, the solution to this problem is not technical. The ’749 patent solves the
`
`above-identified problem by monitoring and collecting communications, including
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`CBM Petition – U.S. Patent No. 7,062,749
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`status information, at a central location. However, this is not a technical solution,
`
`but an administrative solution. As noted above, the devices used to carry out the
`
`monitoring and collection are nothing more than well-known devices (e.g.,
`
`messaging components and generic databases) that were already used in the prior
`
`art asynchronous messaging environment. Claim 22, therefore, fails to recite a
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`technological invention under 37 C.F.R. § 42.301(b). See, e.g., Indeed, Inc. v
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`Career Destination Development, LLC, CBM2014-00069, Paper 12 at 11 (PTAB
`
`Aug. 20, 2014) (“[T]he ’901 patent does not solve a technical problem using a
`
`technical solution. The ’901 patent solves the business problem of ineffective and
`
`expensive job recruitment and hiring with a central career site” using a non-
`
`technical solution because the claimed computer elements “were conventional and
`
`known.”).
`
`3. The claims do nothing more than use claim drafting techniques
`that do not render the claims a “technological invention”
`
`As noted above, the Office Patent Trial Practice Guide lists three exemplary
`
`claim drafting techniques that would not create a technological invention. Here,
`
`claim 22 does nothing more than use these exemplary claim drafting techniques
`
`and, for this additional reason, cannot be considered a technological invention.
`
`Claim 22 uses claim drafting techniques (a) and (b) by merely reciting known
`
`technologies such as an asynchronous messaging environment and monitoring
`
`messages (i.e., “communication or computer networks”), and a central message
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`CBM Petition – U.S. Patent No. 7,062,749
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`repository (i.e., “database”) to accomplish a process or method. But mere recitation
`
`of these known technologies cannot make claim 22 a technological invention.
`
`Additionally, even if the method of claim 22 itself could be deemed novel (which it
`
`is not), the use of prior art devices as recited in claim 22 to accomplish that method
`
`fails to turn the claim into a technological invention—as indicated by technique
`
`(b).
`
`Similarly, claim 15, which is directed to a transaction record, includes nothing
`
`more than a data structure. As such, and because the ’749 patent describes that
`
`transaction records may be located in a central database (Ex. 1001 at 4:59-63), at
`
`best this claim also falls squarely within claim technique (a) above and, thus,
`
`cannot be a technological invention.
`
`Claim 22 also uses technique (c) by combining prior art structures such as
`
`known communication technology (an asynchronous messaging environment and
`
`monitoring messages) and database technology (central message repository). This
`
`combination achieves a method for monitoring and collecting communications,
`
`which is the “normal, expected, or predictable result of that combination.” The
`
`’749 patent describes nothing about the combination that is unexpected or
`
`unpredictable.
`
`For the foregoing reasons, the ’749 patent does not claim a technological
`
`invention and, therefore, is subject to CBM review.
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`CBM Petition – U.S. Patent No. 7,062,749
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`C. Petitioner has Standing and is Not Estopped (37 C.F.R. § 42.302)
`YYZ has sued the Petitioner for infringement of the ’749 patent in the District
`
`of Delaware. Thus, Petitioner has standing to file the instant petition. 37 C.F.R. §
`
`42.302(a).
`
`Moreover, Petitioner has not been a party to any other post-grant review of the
`
`challenged claims, and has not initiated a civil action challenging the validity of a
`
`claim of the ’749 patent. Therefore, the Petitioner is not estopped from challenging
`
`the claims on the grounds identified in the instant petition.
`
`V.
`
`Prosecution History of the ’749 Patent
`A. Original Prosecution
`Application Ser. No. 09/737,494 was filed on Dec. 15, 2000. The application
`
`made no claim of priority to any earlier application, and during prosecution the
`
`Applicants did not establish an earlier date of invention. The application issued as
`
`the ’749 patent on June 13, 2006.
`
`B. Reexamination Prosecution
`An ex parte reexamination request for the ’749 patent was filed November 1,
`
`2011, raising several substantial new questions of patentability. The PTO granted
`
`the reexamination request. During reexamination, the PTO rejected two attempts
`
`by Applicants to antedate the prior art references, determining that the supporting
`
`evidence was insufficient to establish an earlier date of invention. Ex. 1003 at 373-
`
`
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`74 (Office Action mailed June 14, 2012 at 6-7), 535 (Office Action mailed Sept.
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`CBM Petition – U.S. Patent No. 7,062,749
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`18, 2012 at 9).1
`
`After an examiner interview, Applicants argued that the claims distinguished
`
`over the cited prior art because “monitoring message” as recited is “defined and
`
`limited in the specification as being created from a messaging component of a
`
`‘messaging broker,’” even though neither of “messaging component” nor
`
`“messaging broker” appears in the independent claims (such as claim 22). Id. at
`
`552-53 (Response filed Nov. 19, 2012 at 2-3).
`
`Shortly thereafter, the Examiner issued a Notice of Intent to Issue a Reexam
`
`Certificate, adopting Applicants’ construction of “monitoring message” and
`
`withdrawing all outstanding rejections. Id. at 573-74 (Notice of Intent to Issue a
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`Reexam Certificate mailed Dec. 21, 2012 at 2-3). The Certificate was issued on
`
`January 10, 2013.
`
`
`
` 1
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` The PTO thoroughly considered the declarations and other supporting evidence
`
`submitted by Patent Owner, and found them insufficient to prove diligence and
`
`reduction to practice. Therefore, there is no credible evidence that would entitle the
`
`Patent Owner to an earlier invention date.
`
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`CBM Petition – U.S. Patent No. 7,062,749
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`Notably, the PTO, in the original prosecution and reexamination, did not
`
`consider the specific invalidity grounds presented in this petition. For example, the
`
`PTO did not address patentability under 35 U.S.C. § 101 as asserted in the instant
`
`petition: the reexamination could not consider 35 U.S.C. § 101 issues (see 35
`
`U.S.C. § 302), and the original prosecution concluded in 2006, well before the
`
`seminal § 101 Supreme Court cases of Alice Corp. Pty. Ltd v. CLS Bank Int’l, 134
`
`S. Ct. 2347 (2014), Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
`
`Ct. 1289 (2012), and Bilski v. Kappos, 130 S. Ct. 3218 (2010). In these cases, the
`
`Supreme Court has