Paper 70
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 13, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., EXPEDIA, INC.,
`HOTELS.COM LP, HOTELS.COM GP, LLC, HOTWIRE, INC., ORBITZ
`WORLDWIDE, INC., PRICELINE.COM, INC.,
`TRAVELOCITY.COM LP, and YAHOO! INC.,
`Petitioner,
`
`v.
`
`METASEARCH SYSTEMS, LLC
`Patent Owner.
`____________
`
`Case CBM2014-00001
`Patent 8,326,924 B1
`____________
`
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Ocean Tomo Ex. 1025-001
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`I. BACKGROUND
`
`On October 1, 2013, American Express Company, et al. (collectively,
`
`“Petitioner”) filed a petition requesting a review of U.S. Patent No. 8,326,924
`
`B1 (“the ’924 patent”) under the transitional program for covered business
`
`method patents,1 asserting that claims 1–12 are directed to unpatentable subject
`
`matter under 35 U.S.C. §§ 101 and 103(a). See Paper 20, Corrected Petition
`
`(“Petition” or “Pet.”). The parties filed a joint motion, which the Board
`
`granted, to withdraw Petitioner’s challenge of all claims except for claims 2, 6,
`
`and 8. Patent Owner filed a preliminary response on January 3, 2014. See
`
`Paper 26 (“Prelim. Resp.”). We determined that Petitioner sufficiently
`
`demonstrated it was more likely than not that the challenged claims were
`
`unpatentable, and we instituted a trial on March 20, 2014. Paper 29, Decision
`
`to Institute (“Decision”).
`
`Patent Owner filed a patent owner response on July 15, 2014. See Paper
`
`45 (“PO Resp.”). Petitioner filed a reply to the patent owner response on
`
`September 11, 2014. See Paper 52 (“Pet. Reply”). Patent Owner filed a motion
`
`to amend the patent on July 15, 2014. See Paper 46 (“Mot. to Amend”).
`
`Petitioner filed an opposition to Patent Owner’s motion to amend on September
`
`11, 2014. See Paper 51 (“Opp. to Mot. to Amend”). Patent Owner filed a reply
`
`to the opposition on October 2, 2014 (Paper 57). Patent Owner filed a motion
`
`for observation on cross-examination on September 16, 2014. See Paper 60
`
`(“Mot. for Observ.”). Petitioner filed a response to Patent Owner’s motion for
`
`observation on October 23, 2014. See Paper 61 (“Resp. to Mot. for Observ.”)
`
`Each of Patent Owner and Petitioner requested an oral hearing under 37 C.F.R.
`
`
`1 Pursuant to Section 18 of the Leahy-Smith America Invents Act (“AIA”)
`(Pub. L. No. 112-29, 125 Stat. 284 (2011)).
`
`2
`
`Ocean Tomo Ex. 1025-002
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`§ 42.70(a). Paper 63; Paper 64. The oral hearing was held on December 5,
`
`2014. A transcript of the hearing is in the record. Paper 69, Record of Oral
`
`Hearing (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This is a final written
`
`decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that
`
`follow, we determine that Petitioner has demonstrated by a preponderance of
`
`the evidence that claims 2, 6, and 8 are unpatentable, and we deny Patent
`
`Owner’s motion to amend.
`
`
`
`A. Instituted Grounds
`
`The Board instituted trial as to claims 2, 6, and 8 of the ’924 patent on the
`
`following grounds of unpatentability.
`
`(1) Claims 2, 6, and 8 are directed to non-statutory subject matter under
`
`35 U.S.C. § 101; and
`
`(2) Claims 2, 6, and 8 would have been obvious under 35 U.S.C. § 103(a)
`
`over the following printed publications:
`
`
`
`Mamma.com Web site captured by Internet Archives (May 5,
`
`1998). (Ex. 1005) (“Mamma.com”)
`
`
`
`Uwe M. Borghoff et al., Constraint-based Information Gathering
`for a Network Publication System, PROC. PAAM ’96, Apr. 22-24, 1996 (Ex.
`1006)
`
`
`
`Uwe M. Borghoff et al., Agent-Based Document Retrieval for the
`European Physicists: A Project Overview, PROC. 2ND INT’L CONF. ON THE
`
`3
`
`Ocean Tomo Ex. 1025-003
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`PRACTICAL APPLICATION OF INTELLIGENT AGENTS & MULTI-AGENT TECH.
`(PAAM ’97), Apr. 21-23, 1997 (Ex. 1007).2
`
`B. Related Matters
`
`In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it has
`
`been sued for infringement of the ’924 patent. Pet. 1. The ’924 patent is
`
`involved in the following U.S. District Court proceedings: MetaSearch Sys.,
`
`LLC v. Am. Express Co., No. 1:12-cv-01225-LPS (D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Expedia Inc., No. 1:12-cv-01188-LPS (D. Del. filed
`
`Sept. 21, 2012); MetaSearch Sys., LLC v. Orbitz Worldwide, Inc., No. 1:12-cv-
`
`01190-LPS (D. Del. filed Sept. 21, 2012); MetaSearch Sys., LLC v.
`
`Priceline.com Inc., No. 1:12-cv-01191-LPS (D. Del. filed Sept. 21, 2012);
`
`MetaSearch Sys., LLC v. Travelocity.com, LP, No. 1:12-cv-01189-LPS (D. Del.
`
`filed Sept. 21, 2012); MetaSearch Sys., LLC v. TravelZoo Inc., No. 1:12-cv-
`
`01222-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v. Yahoo! Inc.,
`
`No. 1:12-cv-01223-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v.
`
`Kayak Software Corp., No. 1:12-cv-01224-LPS (D. Del. filed Sept. 28, 2012);
`
`and MetaSearch Sys., LLC v. Bookit.com Inc., No. 1:12-cv-01226-LPS (D. Del.
`
`filed Sept. 28, 2012). Paper 18, 2. U.S. Patent No. 8,239,451 B1, which issued
`
`from a parent application of the ’924 patent, is the subject of Case CBM2014-
`
`00050 (PTAB 2013).
`
`
`
`
`2 Consistent with the parties’ references to the evidence, we refer to the
`Borghoff articles, collectively, as “Knowledge Broker” or “the Knowledge
`Broker references.”
`
`
`4
`
`Ocean Tomo Ex. 1025-004
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`C. The ’924 Patent
`
`The ’924 patent describes a method for metasearching3 on the Internet
`
`that includes causing an advertisement associated with the search to be
`
`displayed along with the results of the search. Ex. 1001, Abstract.
`
`Claim 2 is illustrative of the claims and is reproduced below.
`
`2. A process for metasearching on the Internet, wherein the
`steps of the process are performed by a metasearch engine
`executing on a hardware device, the process comprising the steps
`of:
`
`
`(a) receiving a Hypertext Transfer Protocol request from a
`client device for the metasearch engine to send at least one search
`query to a plurality of unique hosts that provide access to
`information to be searched, wherein the Hypertext Transfer
`Protocol request from the client device is associated with at least
`one travel related item that may be ordered from a plurality of
`travel related items that may be ordered;
`
`(b) sending the at least one search query to the plurality of
`unique hosts in response to the Hypertext Transfer Protocol request
`received from the client device;
`
`(c) receiving search results from the plurality of unique hosts
`in response to the at least one search query sent to the plurality of
`unique hosts;
`
`(d) incorporating the received search results into a results list
`and incorporating the results list into a response;
`
`(e) causing at least one advertisement associated with the at
`least one item that may be ordered to be displayed in the response;
`
`
`
`3 A discussion of “metasearching” appears in our claim interpretation section,
`infra.
`
`5
`
`Ocean Tomo Ex. 1025-005
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`(f) communicating the response from the metasearch engine
`to the client device;
`
`(g) receiving another Hypertext Transfer Protocol request
`from the client device for placing an order for the at least one item;
`
`(h) processing the order.
`
`
`
`A. Claim Interpretation
`
`II. ANALYSIS
`
`During a review before the Board, we construe the claims in accordance
`
`with the broadest reasonable interpretation in light of the specification.
`
`37 C.F.R. § 42.300(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,697–98 (Aug. 14, 2012). The claim language should be read in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art. In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office
`
`must apply the broadest reasonable meaning to the claim language, taking into
`
`account any definitions presented in the specification. Id. (citing In re Bass,
`
`314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a
`
`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
`
`customary meaning” is that which the term would have to a person of ordinary
`
`skill in the art in question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007).
`
`1. Metasearch Engine
`
`
`
`For purposes of our Decision instituting trial, we adopted Petitioner’s
`
`proposed construction of the term “metasearching.” On that preliminary record,
`
`6
`
`Ocean Tomo Ex. 1025-006
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`we presumed that “metasearching” refers to an unstructured keyword query or
`
`queries to plural hosts, as requested by a user, and grouping, sorting, and
`
`returning to the user the results received from each host. Decision 9–11.
`
`Patent Owner submits that the term “metasearching” in the late 1990s
`
`applied also in the context of both “semistructured” and “structured” data. PO
`
`Resp. 4. According to Patent Owner, metasearch engines queried sources of,
`
`for example, “structured” data such as relational databases. Id. at 5. Patent
`
`Owner advocates a broader definition of “metasearching” than that used for
`
`purposes of the Decision on Institution. Patent Owner contends that
`
`“metasearching,” under the broadest reasonable interpretation in light of the
`
`known art at the time of the invention and the patent specification, means
`
`“sending at least one search query to plural hosts, and returning the results
`
`received from each host.” Id. at 25.
`
`The ’924 patent issued December 4, 2012, claiming priority through a
`
`string of continuations and continuations-in-part to U.S. Patent Application No.
`
`09/510,749, filed February 22, 2000. The ’924 patent consists of 422 pages,
`
`containing 344 drawing sheets and 150 columns of text. See Ex. 1001. Other
`
`than the Title, Abstract, and reference list, the patent does not appear to use any
`
`form of the word “metasearch” prior to column 111. At column 111, the patent
`
`states that “[t]he client-server multitasking system 10 [Fig. 1] of the present
`
`invention comprises a metasearch engine, which is a search engine that sends
`
`user requests to several other search engines, servers, clients, and/or databases,
`
`and other suitable systems and/or devices, groups, sorts, and returns the results
`
`from each one.” Ex. 1001, col. 111, ll. 58–63. Later text in the patent
`
`establishes that “the metasearch system of the present invention” is
`
`synonymous with the “client-server multitasking system” discussed in the
`
`7
`
`Ocean Tomo Ex. 1025-007
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`earlier 110 columns of text. See, e.g., Ex. 1001, col. 112, l. 7 et seq. (“FIGS. 1
`
`and 2 show the client-server multitasking system 10/metasearch system of the
`
`present invention. . . .”). Although the inventor referred to the invention as a
`
`“client-server multitasking” process or system in parent Application No.
`
`09/510,749, in subsequent filings the Examiner recommended that the
`
`technology be described in terms of “metasearching.” Prelim. Resp. 3. Patent
`
`Owner adopted the recommendation. Id.
`
`In its Patent Owner Response, Patent Owner suggests at least tangentially
`
`that a “metasearch engine” does or requires more than “metasearching.” In
`
`attempting to distinguish the ’924 patent claims from the prior art, Patent
`
`Owner argues that metasearching “generally” required “on-the-fly search of
`
`multiple external databases (which had been previously populated by a
`
`spidering process) and combined their results, and/or sent the query to multiple
`
`external search engines and combined the results.” PO Resp. 60 (citing Ex.
`
`2006 ¶ 33). Patent Owner’s expert, Dr. Jaime Carbonell testifies that a
`
`metasearch system requires “on-the-fly” search of multiple external databases
`
`“and/or” sending the query to multiple external search engines and combining
`
`the results. Ex. 2006 ¶ 34. Earlier in the Declaration, however, Dr. Carbonell
`
`states that “[m]etasearch or metasearching means the process of searching
`
`multiple databases and combining the results, or the process of issuing the same
`
`query to multiple search engines or database management systems, which
`
`8
`
`Ocean Tomo Ex. 1025-008
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`operate on the same or different data and again combining the results.” Id. ¶ 15
`
`(emphases added).4
`
`Patent Owner also seems to suggest that a “metasearch engine” requires
`
`some kind of special hardware. “This ‘metasearch engine’ is integral to the
`
`claimed invention and covers specific hardware components for receiving and
`
`transmitting signals (the metasearch engine) over a specific transfer medium
`
`(the Internet)).” PO Resp. 51; see also id. at 51–52 (referring to “the special
`
`hardware of the metasearch engine”). Such an interpretation of “metasearch
`
`engine” is not consistent with the ’924 patent claims and other intrinsic
`
`evidence. The preamble of each of claims 2, 6, and 8 recites that the steps of
`
`the claimed process are “performed by a metasearch engine executing on a
`
`hardware device.” The claims, thus, imply that the “metasearch engine”
`
`consists of software, as opposed to “hardware” that may somehow “execute” on
`
`“a hardware device.” The ’924 patent directs that the “metasearch engine” is to
`
`be interpreted broadly, that it may consist entirely of software, and that indeed it
`
`even should not be limited to “search engines.” As we noted supra, the
`
`“metasearch system” is synonymous with the “client-server multitasking
`
`system.” According to the ’924 patent:
`
`The client-server multitasking system 10 [Fig. 1] of the
`present invention, the client-server multitasking process 99, and
`the multitasking process 104, which in itself is a process, the user
`interfaces I1 . . . In (14), and/or the clients C1 . . . Cn (16), and/or the
`server PS (18), and/or the servers S1 . . . Sz (20), and/or the
`optional servers SO1 . . . SOp (22) may be constructed of hardware,
`
`
`4 Although Patent Owner does not appear to argue in the Patent Owner
`Response that the word “metasearch” in the context of the instant claims
`requires any kind of “on-the-fly” operation, to the extent it may so argue, we
`find the argument unpersuasive for the reasons expressed at pages 9 and 10 of
`our Decision on Institution.
`
`9
`
`Ocean Tomo Ex. 1025-009
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`firmware, software, machines, and/or operating systems, and/or
`combinations thereof, and/or other suitable means, and/or other
`components and/or systems, and/or combinations thereof. Such
`hardware, firmware, software, machines, and/or operating systems,
`and/or combinations thereof, other components and/or systems,
`and/or other suitable means, and/or combinations thereof may have
`therein and/or be resident therein, but are not limited to computer
`components and/or systems, television and/or telecommunications
`components and/or systems, merger of television and computer
`systems, and/or merger of television and/or computer and/or
`telecommunications systems, networks, simulators, interactive
`technologies and/or systems, cybernetics and/or cybernetic
`systems, and/or combinations thereof.
`The clients C1 . . . Cn (16), the server PS (18), the servers
`SO1 . . . SOz (20), and/or the optional servers SO1 . . . SOp (22)
`may be search engines, and/or sites, and/or servers, and/or clients,
`and/or URL's, and/or databases, and/or locations on the network,
`and/or other suitable components and/or systems, and/or other
`suitable means, and/or combinations thereof, which may be
`capable of communicating on the network 24. The scope of the
`client-server multitasking system 10 of the present invention, the
`client-server multitasking process 99, and the multitasking process
`104, however, is not limited to search engines, and/or sites, and/or
`servers, and/or clients, and/or URL's, and/or databases, and/or
`locations on the network, and/or other suitable components and/or
`systems, and/or other suitable means, and/or combinations thereof,
`which may be capable of communicating on the network 24, as it
`is recognized that other components, systems, technologies, and/or
`operating systems exist and/or emerge that may make use of the
`benefits of the present invention, and are either on the horizon
`and/or are recognized to be forthcoming.
`
`Ex. 1001, col. 106, l. 34 – col. 107, l. 6 (emphases added).
`
`In short, a “metasearch engine” is at most “a search engine that sends
`
`user requests to several other search engines, servers, clients, and/or databases,
`
`and other suitable systems and/or devices, groups, sorts, and returns the results
`
`from each one.” Id. at col. 111, ll. 58–63. In accordance with Patent Owner’s
`
`10
`
`Ocean Tomo Ex. 1025-010
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`definition of “metasearching” (PO Resp. 25), we interpret a “metasearch
`
`engine” in the context of the ’924 patent claims as software for sending at least
`
`one search query to plural hosts, and returning the results received from each
`
`2. Results List
`
`
`
`host.
`
`The claims include the phrase “incorporating the received search results
`
`into a results list.” Patent Owner submits that “results list” should be
`
`interpreted in accordance with the plain and ordinary meaning of the term —
`
`simply, “a list of information.” Prelim. Resp. 21–22.
`
`We find Patent Owner’s interpretation to be consistent with the required
`
`broadest reasonable interpretation of the term. The term “list” is not at issue.
`
`Accordingly, we interpret “results list” as a list of information. The phrase
`
`“incorporating the received search results into a results list” means
`
`incorporating the received search results into a list of information.
`
`
`
`B. Section 101
`
`
`
`1. 35 U.S.C. § 101— Principles of Law
`
`“Whoever invents or discovers any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof, may obtain a patent therefor, subject to the conditions and requirements
`
`of this title.” 35 U.S.C. § 101. Supreme Court precedents provide three
`
`specific exceptions to the broad categories of § 101: laws of nature, physical
`
`phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010).
`
`“The ‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
`
`itself is not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
`
`11
`
`Ocean Tomo Ex. 1025-011
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`2347, 2355 (2014) (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
`
`(quotations omitted)).
`
`In Alice, the Supreme Court referred to the framework set forth in Mayo
`
`Collaboration Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
`
`(2012), “for distinguishing patents that claim laws of nature, natural
`
`phenomena, and abstract ideas from those that claim patent-eligible applications
`
`of those concepts.” Alice, 134 S. Ct. at 2355. In the first step, “we determine
`
`whether the claims at issue are directed to one of those patent-ineligible
`
`concepts.” Id. “If so, we then ask, ‘[w]hat else is there in the claims before
`
`us?’” Id. (quoting Mayo, 132 S. Ct. at 1297). In the second step, we consider
`
`the elements of each claim both individually and as an ordered combination to
`
`determine whether the additional elements transform the nature of the claim
`
`into a patent-eligible application. Id. Step two of the analysis may be described
`
`as 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. (citing
`
`Mayo, 132 S. Ct. at 1294).
`
`2. Section 101 Analysis
`
`
`
`Petitioner submits that the claimed invention is directed to the abstract
`
`idea of “marketing an item on a metasearch Web site with keyword ads and
`
`some way to order the item.” Pet. 24; Pet. Reply 4. Patent Owner responds that
`
`Petitioner selectively focuses only on the claim elements directed to keyword
`
`advertisements and ordering, failing to consider the claims as a whole. PO
`
`Resp. 37.
`
`12
`
`Ocean Tomo Ex. 1025-012
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`Patent Owner’s argument, however, disregards step one of the Alice
`
`analysis. Any novelty in implementation of the abstract idea is a factor to be
`
`considered only in the second step of the Alice analysis. Ultramercial, Inc. v.
`
`Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). In Ultramercial,5 for example,
`
`the representative claim was directed to a method for distribution of products
`
`over the Internet, which included providing a media product for sale at an
`
`Internet website. 772 F.3d at 712. The claim recited eleven steps for displaying
`
`an advertisement in exchange for access to copyrighted media. 772 F.3d at
`
`714–15. Yet, the U.S. Court of Appeals for the Federal Circuit found that this
`
`“ordered combination of steps” recited “an abstraction—an idea, having no
`
`particular concrete or tangible form.” 772 F.3d at 715. “The process of
`
`receiving copyrighted media, selecting an ad, offering the media in exchange
`
`for watching the selected ad, displaying the ad, allowing the consumer access to
`
`the media, and receiving payment from the sponsor of the ad all describe an
`
`abstract idea, devoid of a concrete or tangible application.” Id.
`
`In this case, representative claim 2 recites eight steps for a search that is
`
`“associated with at least one travel related item,” and which include receiving
`
`the search results, communicating the results along with an advertisement,
`
`receiving an order for the item, and processing the order. See Ex. 1001, col.
`
`145, ll. 33–61. Although the claimed process requires computer hardware and
`
`software (e.g., step (a) of claim 2, “receiving a Hypertext Transfer Protocol
`
`request from a client device”), we agree with Petitioner that the claim embraces
`
`
`5 The Court’s decision is sometimes referenced as Ultramercial III. The
`Federal Circuit heard the second appeal from the U.S. District Court after the
`Supreme Court vacated the Federal Circuit’s first decision. 772 F.3d at 711–12.
`
`13
`
`Ocean Tomo Ex. 1025-013
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`the abstract idea of marketing an item on a metasearch Web site with keyword
`
`ads and providing a way to order the item.
`
`Next, or in step two of the analysis, we 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. Alice, 134 S. Ct. at 2355. In this case, the
`
`claims recite, for the most part, an ordered combination of steps that contain
`
`Internet operations that were conventional at the time of invention. For
`
`example, the claims recite communicating with a client device using a
`
`Hypertext Transfer Protocol [HTTP]. Momma.com demonstrates that browsers
`
`on Internet client devices used such a protocol at the time of invention. See Ex.
`
`1005, 10 (for “Microsoft Internet Explorer,” go to the address
`
`“http://www.mamma.com”).
`
`The claims further recite a “metasearch engine,” which also was
`
`conventional at the time of invention. See id. at 5 (“Mamma is a meta search
`
`engine”); see also Prelim. Resp. 3 (Patent Owner did not claim that
`
`“metasearching” was novel at the time of invention). Patent Owner argues that
`
`designing more than a “rudimentary” metasearch engine in the late 1990’s was
`
`not a trivial task. PO Resp. 44. The argument is premised on the assumption
`
`that the claims require more than “rudimentary” metasearching. The claims
`
`recite, however, as in claim 2, a “metasearch engine to send at least one search
`
`query to a plurality of unique hosts”—e.g., a metasearch engine capable of
`
`sending a single search query to a plurality (e.g., two) different hosts. The
`
`claims are drawn to implementing the abstract idea of marketing an item on a
`
`metasearch Web site with keyword ads and some way to order the item with
`
`14
`
`Ocean Tomo Ex. 1025-014
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`routine, conventional activity. Such an implementation does not transform the
`
`abstract idea into patent eligible subject matter.
`
`The invention here is unlike that in DDR Holdings, LLC v. Hotels.com,
`
`L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Federal Circuit
`
`found that although the patent claims at issue involved computers and the
`
`Internet, the claims addressed the problem of retaining website visitors that, if
`
`adhering to the routine, conventional functioning of Internet hyperlink protocol,
`
`would be instantly transported away from a host’s website after “clicking” on
`
`an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
`
`“[T]he claimed solution is 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 distinguish the invention from that in Ultramercial.
`
`Unlike the claims in Ultramercial, the claims at issue here specify
`how interactions with the Internet are manipulated to yield a
`desired result—a result that overrides the routine and conventional
`sequence of events ordinarily triggered by the click of a hyperlink.
`Instead of the computer network operating in its normal, expected
`manner by sending the website visitor to the third-party website
`that appears to be connected with the clicked advertisement, the
`claimed system generates and directs the visitor to the above-
`described hybrid web page that presents product information from
`the third-party and visual “look and feel” elements from the host
`website. When the limitations of the ’399 patent’s asserted claims
`are taken together as an ordered combination, the claims recite an
`invention that is not merely the routine or conventional use of the
`Internet.
`
`DDR Holdings, 773 F.3d at 1258–59.
`
`This case involves an invention more similar to that in Ultramercial than
`
`DDR Holdings. Illustrative claim 2 recites receiving a Hypertext Transfer
`
`Protocol (conventional Internet protocol) request, associated with a travel
`
`15
`
`Ocean Tomo Ex. 1025-015
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`related item, from a client device for a metasearch engine (known in the art) to
`
`send a search query to (conventional) hosts. The claim recites further that the
`
`received search results are displayed with an advertisement associated with an
`
`item that may be ordered, receiving a conventional Internet protocol request
`
`from the client device for placing an order, and processing the order. The
`
`Internet is used in its normal, expected, and routine manner for requesting,
`
`receiving, and processing data. The claim contains little more than a directive
`
`to “use the Internet” to implement the abstract idea embraced by the claims.
`
`The transformation of an abstract idea into patent-eligible subject matter
`
`“requires ‘more than simply stat[ing] the [abstract idea] while adding the words
`
`“apply it.”’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294).
`
`Patent Owner argues that the claims do not preempt the use of abstract
`
`ideas like keyword ads and online ordering. PO Resp. 40, 42–43. But limiting
`
`application of an abstract idea to a particular technological environment—such
`
`as the Internet—has long been held insufficient to save a claim. See Alice, 134
`
`S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski, 561 U.S. at 610–11; Diamond
`
`v. Diehr, 450 U.S. 175, 191 (1981); see also Ultramercial, 772 F.3d at 716
`
`(“Narrowing the abstract idea of using advertising as a currency to the Internet
`
`is an ‘attempt[ ] to limit the use’ of the abstract idea ‘to a particular
`
`technological environment,’ which is insufficient to save a claim.”) (quoting
`
`Alice, 134 S. Ct. at 2358).
`
`Patent Owner submits, further, that the claims satisfy the machine-or-
`
`transformation test. PO Resp. 47. The Supreme Court instructs us that the
`
`“Court’s precedents establish that the machine-or-transformation test is a useful
`
`16
`
`Ocean Tomo Ex. 1025-016
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`and important clue, an investigative tool, for determining whether some claimed
`
`inventions are processes under § 101.” Bilski, 561 U.S. at 604.6
`
`Patent Owner argues that the claims include “transformative” steps such
`
`as:
`
`(1) receiving a HTTP request to send at least one search query and
`sending the at least one search query to a plurality of unique hosts;
`(2) receiving search results from the plurality of unique hosts and
`communicating the response to the client device; and (3) receiving
`another HTTP request to place an order for at least one travel
`related item and processing the order.
`
`PO Resp. 47. “Each of these transformative steps require[s] receiving data in
`
`an original syntax and transforming that data into an entirely different syntax in
`
`order to enable communication of the search request, results, or order.” Id.
`
`Searching, retrieving, and organizing data do not represent a type of
`
`“transformation” that has been determined sufficient to render a claimed
`
`method statutory by the Supreme Court or by the Federal Circuit. See, e.g.,
`
`CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
`
`2011) (mere collection and organization of data regarding credit card numbers
`
`and Internet addresses is insufficient to meet the transformation prong of the
`
`test). The conventional computer operations, such as receiving data, sending
`
`data, searching for data, and processing data, do not transform the abstract idea
`
`into a patent-eligible application of the idea. Cf. Mayo, 132 S. Ct. at 1298
`
`(purely “conventional or obvious” limitations are “normally not sufficient to
`
`
`6 Statements that may be read as questioning application of the test in the
`“Information Age” in Part II.B.2 of the opinion were not adopted by a majority
`of the Court. See id. at 596 n.1.
`
`
`17
`
`Ocean Tomo Ex. 1025-017
`
`

`
`CBM2014-00001
`Patent 8,326,924 B1
`
`transform an unpatentable law of nature into a patent-eligible application of
`
`such a law”).
`
`
`
`C. Conclusion § 101 — Non-Statutory Subject Matter
`
`We have considered the Petition and all of Patent Owner’s rebuttal
`
`arguments and evidence relied upon in its Patent Owner Response. On this
`
`record, we conclude that Petitioner has demonstrated by a preponderance of the
`
`evidence that claims 2, 6, and 8 are unpatentable under 35 U.S.C. § 101 as
`
`being directed to non-statutory subject matter.
`
`
`D. Section 103(a)
`
`
`
`We instituted trial on the additional ground that claims 2, 6, and 8 are
`
`unpatentable under 35 U.S.C. § 103(a) over Knowledge Broker and
`
`Mamma.com.
`
`1. Knowledge Broker and Mamma.com
`
`
`
`Petitioner submits that each limitation of the ’924 patent’s claim 1 is
`
`taught by Knowledge Broker except for causing an “advertisement,” associated
`
`with the item that may be ordered, to be displayed in the response. Pet. 75–77
`
`(claim chart).7 Petitioner refers to Mamma.com’s teaching of advertisements
`
`being returned in addition to the descriptive information that is part of the
`
`search results. Id. at 76–77, 78; Ex. 1005, 7–9 (unnumbered pages). In
`
`particular, Mamma.com describes offering key word purchases for targeted
`
`
`7 Although Petitioner’s claim chart addresses claim 1 as representative, the
`Petition elsewhere explains the basis on which the addition or deletion of
`language in otherwise similar claims (e.g., 2, 6, and 8) is deemed not to render
`the claimed subject matter