Paper 9
`
`
`
`Trials@uspto.gov
`Entered: June 30, 2015
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT-PACKARD COMPANY,
`Petitioner,
`
`v.
`
`YYZ LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00050
`Patent 7,603,674 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
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: June 30, 2015
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HEWLETT-PACKARD COMPANY,
`Petitioner,
`
`v.
`
`YYZ LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00050
`Patent 7,603,674 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
`
`
`
`
`
`
`
`
`
`CBM2015-00050
`Patent 7,603,674 B2
`
`
`I.
`INTRODUCTION
`Hewlett-Packard Co. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting a review of U.S. Patent No. 7,603,674 B2 (Ex. 1001, “the ’674
`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 51, 52, and 55–57 of
`the ’674 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 51, 52, and 55–57.
`
`
`A. Related Proceedings
`We are informed that the following related federal district court cases
`
`involve the ’674 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).
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`Patent 7,603,674 B2
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`(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. 7,062,749 B2, which is
`the parent of the ’674 Patent. Id.; see CBM2015-00049, Paper 1.
`B. The ’674 Patent (Ex. 1001)
`The ’674 Patent, titled “APPARATUS AND SYSTEMS FOR
`
`MEASURING, MONITORING, TRACKING AND SIMULATING
`ENTERPRISE COMMUNICATIONS AND PROCESSES,” issued October
`13, 2009, from U.S. Patent Application No. 11/398,133, filed April 5, 2006,
`which is a continuation of U.S. Patent Application No. 09/737,494, filed
`December 15, 2000, now U.S. Patent No. 7,062,749 B2. The ’674 Patent
`relates to computer-based systems for measuring, monitoring, tracking, and
`simulating enterprise communications and processes in an “asynchronous
`messaging environment.” Ex. 1001, 1:17–20, 3:7–11. As described in the
`Specification, enterprise communications are “increasingly asynchronous or
`message based.” Id. at 1:47–48. 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 1:48–57. A problem identified with such “asynchronous or message
`based” communications is that, “[a]t any given time, precise information on
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`the progress of the processes is difficult to obtain—messages may be in
`transit and not instantly locatable.” Id. at 2:16–18.
`
`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, 3:43–53 (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 3:56–59 (emphasis added). The monitoring
`message contains data generated from the original message. Id. at 3:59–61.
`The messaging broker then sends the monitoring message to a central
`database repository. Id. at 3:61–63 (emphasis added). “The messaging
`component may be, in some embodiments, or may not be, in other
`embodiments, provided by the messaging broker.” Id. at 3:66–4:1. 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 4:1–4.
`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, 3:43–47. Figure 2 of the ’674 Patent is reproduced
`below.
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`Figure 2 shows a view of a process of a preferred embodiment. Ex.
`
`1001, 2:62–63.
`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, 4:16–19. “The central message database can
`be reviewed in any number of ways, in order to measure, monitor and track
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`enterprise communications and processes, e.g., to provide information or
`generate reports.” Id. at 5:4–7.
`
`
`C. Illustrative Claim
`Claim 51 is independent, and each of claims 52 and 55–57 depends
`from claim 51. Claim 51 is illustrative, and is reproduced below:
`
`51. 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:
`
`providing, through a monitoring message, at
`least part of said original message data to a central
`message repository;
`
`populating a transaction record in said
`central message repository with said original
`message data provided by said monitoring
`message;
`
`reviewing data collected in said transaction
`record;
`data
`original message
`said
`
`wherein
`comprises status information of a process and/or
`sub process.
`
`Ex. 1001, 12:2537.
`
`
`D. The Asserted References
`Petitioner relies upon the following references (see Pet. 33–37, 67–
`
` 6
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`
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`68):
`
`
`
`
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`CBM2015-00050
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`
`“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. 37.
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`
`“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.
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`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 51, 52, and 55–57 of the ’674 Patent on
`the following grounds (Pet. 22):
`
` Reference(s)
`
`Claims Challenged
`
` Basis
`§ 101
`
`§ 102(a)
`
`§ 103(a)
`
`§ 103(a)
`
`51, 52, and 55–57
`
`51, 52, and 55–57
`
`51, 52, and 55–57
`
`51, 52, and 55–57
`
`
`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
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`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, 3:11–13, 59–61, 4:1–4; Ex.
`1031 (Jacobsen Declaration) ¶ 34). Patent Owner disagrees, and asserts that
`“the Reexamination [of the ’674 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
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`central message repository.” Prelim. Resp. 32 (citing Ex. 1003, 630–31
`(Reexam File Hist., Jan. 4, 2013 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, 3:66–4:1 (“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.”).
`
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`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, 608 (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 608–
`09 (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 609. 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, 631 (Reexam. File Hist., Jan. 4, 2013 Office
`Act.). The Examiner further stated: “The specification makes it clear that a
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`monitoring message must be generated by a messaging component of a
`centralized messaging broker.” Id. (citing Ex. 1001, 3:56–4:23, 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.
`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 51, 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, 631 (citing Ex. 1001, 3:56–4:23, 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, 3:66–4:1 (“The
`messaging component may be, in some embodiments, or may not be, in
`other embodiments, provided by the messaging broker”); Pet 20; Ex. 1031
`¶ 61. Second, Patent Owner has not persuaded us that a messaging broker
`must be “centralized.” See Ex. 1003, 631 (citing Ex. 1001, 3:56–4:23, 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, 3:51,
`Figs 1, 2. Patent Owner has not provided any justification for importing this
`
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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).
`Here, the parties disagree as to whether the ’674 Patent is a covered
`business method patent under section 18(d)(1) of the AIA and 37 C.F.R.
`§ 42.301(a).
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`1. Financial Product or Service
`Petitioner asserts that the ’674 Patent qualifies for covered business
`method patent review. Pet. 5. Petitioner argues that, “[b]ecause the ’674
`patent describes ‘Order to Cash’ as a financial process for receiving and
`processing sales, and ‘cash’ clearly relates to monetary matters, the ’674
`patent indisputably describes a financial service.” Id. at 6 (citation omitted).
`Petitioner also argues that the claims recite activity, described in the
`Specification, “that is ‘financial in nature’ or at least ‘incidental’ or
`‘complementary to a financial activity.’” Id. at 6–7.
`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. 17
`(emphasis omitted). Patent Owner further argues that the Specification
`describes a business process or operation, not an embodiment of a financial
`process. Id. at 19–24.
`We are persuaded by Petitioner that the claims are directed to a
`covered business method. Claim 44, for example, requires permitting a
`customer to retrieve from the central message repository, over a corporate
`extranet, information concerning the customer’s orders. Claims 51 and 52
`encompass reviewing original message data, comprising “customer number
`data,” collected in a transaction record in the central message repository.
`Claim 74 recites “reviewing . . . order information.”
`Reviewing “order information,” as described in the Specification,
`involves activities that are financial in nature, such as pricing, quoting, and
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`invoicing. See Ex. 1001, 1:24–37. 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 claims of the ’674
`Patent meet the financial-in-nature requirement of § 18(d)(1) of the AIA.
`2. Exclusion for Technological Inventions
`Petitioner asserts that the claims of the ’674 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 ’674 patent does not claim a
`technological invention because its chief elements—an asynchronous
`messaging environment, a monitoring message, and a central message
`repository—were well-known in the prior art as admitted by the ’674 patent
`itself.” Id. at 7–8.
`Patent Owner argues in response that the claims recite “technological
`features that are novel and unobvious over the prior art to solve the
`identified issues arising out of the asynchronous messaging technical
`environment.” Prelim. Resp. 26. Patent Owner asserts that Petitioner’s
`arguments mischaracterize the teachings of the patent and ignore the finding
`
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`of the Reexamination upholding the patent claims over the prior art. Id. at
`27–32.
`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 51, for example, recites use of only known technologies, such as a
`monitoring message and a central message repository. See Pet. 7–9. The
`Specification specifically discloses that “IBM’s MQSeries messaging broker
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`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, 4:1–4 (emphasis added). The evidence of
`record also establishes that a central message repository or database was
`known in the prior art. See Ex. 1003, 568 (Reexam File Hist., Sept. 19, 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 ’674 Patent solves a technical
`problem relating to the “loosely coupled nature” of asynchronous or
`message-based communications. Prelim. Resp. 30–31. We are not
`persuaded by this argument because, as Petitioner argues, the problem is
`“one of organization,” which the ’674 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 ’674
`Patent do not fall within the exclusion for technological inventions, and
`conclude that the ’674 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.
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`C. Statutory-Subject-Matter Challenge
`Petitioner challenges claims 51, 52, and 55–57 as directed to patent-
`ineligible subject matter under 35 U.S.C. § 101. Pet. 22–31. 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. 32), 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
`34). Patent Owner further asserts that “[t]he claims at issue do not attempt
`to preempt every application of the idea.” Id. at 35 (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
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`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 ’674 Patent, is that messages containing information about the status of a
`process may not be accessible at any given time. See Ex. 1001, 2:14–26.
`The ’674 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 3:20–25. The ’674
`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 3:8–38.
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`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. 34), 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).
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`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 51, 52, and 55–57 as anticipated under
`
`the “known . . . by others in this country” provision of 35 U.S.C. § 102(a).
`Pet. 31–62. 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 32–33 (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 document, much less, a single written document”)
`(citation omitted)). As discussed below, we are persuaded, at this stage of
`the proceeding, that each of the challenged claims is unpatentable under
`35 U.S.C. § 102(a) as anticipated by public knowledge of the eSleuth
`product as described in the eSleuth Materials.
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`1. Overview of Petitioner’s Contentions
`Based on the Declaration of Chane Cullens (Ex. 1030), who was
`
`President of Bristol Technology, Inc. (“Bristol”)
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