Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: April 1, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC
`Petitioner,
`
`v.
`
`INVENTOR HOLDINGS, LLC
`Patent Owner.
`
`____________
`
`Case CBM2014-00002
`Patent 5,884,270
`____________
`
`
`
`
`
`Before BRYAN F. MOORE, TRENTON A. WARD, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
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`
`I. INTRODUCTION
`
`Petitioner Google Inc. filed a Petition to institute a covered business
`method patent review of claims 1-2, 5, 10-11, 23-24, 27, and 32-33 (“the
`challenged claims”) of U.S. Patent No. 5,884,270 (“the ’270 patent”)
`pursuant to 35 U.S.C. § 321-322. (Paper 7, “Pet.”). Patent Owner Inventor
`Holdings, LLC1 filed a preliminary response (Paper 15, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324. The standard for
`instituting a covered business method review is set forth in 35 U.S.C.
`§ 324(a):
`THRESHOLD—The Director may not authorize a post-
`grant review to be instituted unless the Director determines
`that the information presented in the petition filed under
`section 321, if such information is not rebutted, would
`demonstrate that it is more likely than not that at least 1 of
`the claims challenged in the petition is unpatentable.
`
`We determine that the ’270 patent is a covered business method
`patent. Further, upon consideration of the Petition and Preliminary
`Response, we determine that it is more likely than not that Petitioner will
`prevail on its assertion that the challenged claims of the ’270 patent are
`unpatentable on the grounds authorized and discussed below.
`
`Petitioner’s Standing
`A.
`Petitioner asserts that it has been sued for infringement of the ’270
`patent by Patent Owner in the United States District Court for the District of
`
`
` 1
`
` Assignee of Record for U.S. Patent No. 5,884,270 changed from
`Walker Digital, LLC to Inventor Holdings, LLC on December 17, 2013.
`
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`Delaware in Walker Digital, LLC v. Google Inc., No. 1:11-cv-00318-LPS
`(D. Del.). Pet. 2, 14.
`
`The’270 Patent (Ex. 1001)
`B.
`The ’270 patent, titled “Method and System for Facilitating an
`Employment Search Incorporating User-Controlled Anonymous
`Communications,” issued on March 16, 1999, based on U.S. Patent
`Application No. 08/704,314, filed on September 6, 1996.
`The ’270 patent is directed to a communications method and system
`incorporating a central database of information supplied by one or more
`parties and managed by a central administrator, where all parties to the
`system can manage and control the release of information involving their
`identities. Ex. 1001, col. 4, ll. 17-22. One embodiment described in the
`’270 patent employs an anonymous communication system that may be used
`to allow an employer (a requestor) to communicate with prospective
`candidates (the parties) whose backgrounds satisfy employment criteria
`provided by the employer without revealing the identity of the candidates.
`Id. at col. 6, ll. 10-24. The described system may identify a dozen
`candidates from resumes stored in the central database, and may release
`information about those candidates only as authorized, without the company
`knowing the candidate’s identity. Id. at col. 6, ll. 32-39.
`The ’270 patent describes one aspect of the operation of the system
`with respect to Figure 5, reproduced below.
`
`
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`In particular, Figure 5 depicts a flow diagram describing that a central
`controller, at step 510, searches party data in response to a search request.
`Id. at col. 15, ll. 64-67. An anonymous communication channel between the
`party and requestor is established upon request and agreement. Id. at col. 18,
`ll. 29-31. In one embodiment concerning dating services, when the
`communications channel opens, the requestor and the party can exchange
`adequate information about themselves to decide whether to agree to a date
`without subjecting themselves to any risk if either should decide not to agree
`
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`to the date. Id. at col. 22, ll. 4-9. The central controller also may collect
`payment from the requestor, and may transmit payments to parties for
`allowing the central controller to maintain party data. Id. at col. 18, l. 61-
`col. 19, l. 4.
`
`Related Matters
`C.
`The ’270 patent is the subject matter of district court litigation in
`Walker Digital, LLC v. Google Inc., No. 1:11-cv-00318-LPS (D. Del.) and
`Walker Digital, LLC v. Criterion Capital Partners LLC et al., 1-11-cv-
`00340 (D. Del.). Paper 13, 2.
`
`Exemplary Claim
`D.
`Of the challenged claims, claims 1 and 23 are independent claims.
`Claim 1 of the ’270 patent, reproduced below, is representative of the
`challenged claims.
`1. A method for operating a computer system to facilitate
`an exchange of identities between two anonymous parties,
`comprising the steps of:
`receiving from a first party first data including an identity
`of said first party;
`receiving from said first party at least two first-party
`rules for releasing said first data including a rule for releasing
`said identity of said first party;
`receiving from a second party a search request
`comprising at least one search criterion;
`receiving from said second party second data including
`an identity of said second party;
`receiving from said second party at least two second-
`party rules for releasing said second data including a rule for
`releasing said identity of said second party;
`processing said search request to determine if said first
`data satisfies said search criterion; and if said first data satisfies
`
`
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`said search criterion, then exchanging said first and second
`data, except said identities of said first and second parties,
`between said first and second parties in accordance with said
`first-party and second-party rules,
`after said exchanging step, upon satisfying said first party
`rule for releasing said identity of said first party, transmitting
`said identity of said first party to said second party, and
`after said exchanging step, upon satisfying said second
`party rule for releasing said identity of said second party,
`transmitting said identity of said second party to said first party.
`
`Covered Business Method Patent
`E.
`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.” America Invents Act (“AIA”), § 18(d)(1); see 37
`C.F.R. § 42.301(a). For purposes of determining whether a patent is eligible
`for a covered business method patent review, the focus is on the claims. 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”). A patent need
`have only one claim directed to a covered business method to be eligible for
`review. Id.
`
`1. Financial Activity
`In promulgating rules for covered business method reviews, the Office
`considered the legislative intent and history behind the AIA’s definition of
`“covered business method patent.” Id. at 48,735-36. The “legislative
`history explains that the definition of covered business method patent was
`
`
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`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Id. at 48,735 (citing 157 CONG. REC. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)). The legislative history indicates that
`“financial product or service should be interpreted broadly.” Id.
`Petitioner contends that the ’270 patent is directed to matching two
`anonymous parties, where the parties control the release of their identities
`until one or more search criteria are met. Pet. 5. Petitioner further points
`out the related financial activity, because the specification of the ’270 patent
`describes the use of the method for “employment search, dating, seeking a
`merger partner, and ‘commerce-based applications in which controlled
`anonymity by any party would be beneficial.’” Pet 6 (citing Ex. 1001 at col.
`22, ll. 10-22). Moreover, the described method contemplates collecting
`payment for performed transactions. See Ex. 1001, fig. 5 (step 540); col. 19,
`ll. 34-48.
`Patent Owner contends that Petitioner has not met the burden of
`demonstrating that the ’270 patent is a covered business method patent.
`Prelim. Resp. 11. In support of its contention, Patent Owner asserts that the
`claims do not recite data processing or monetary transactions, and that the
`claimed subject matter (exchange of identities between otherwise
`anonymous parties) is “too far removed” from a financial activity. Prelim.
`Resp. 13, 15. Patent Owner acknowledges that the identity exchange “may
`take place within a financial context or as a predicate to a financial activity,”
`but argues that there is insufficient nexus between the claims and the
`financial activity itself to render the ’270 patent “one that is concerned
`(whether primarily, solely, or otherwise) with the practice, administration, or
`
`
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`management of a financial product or service.” Id.
`We are not persuaded by Patent Owner’s arguments, which narrowly
`focus on whether the claims recite monetary transactions or limitations with
`a strong nexus to such transactions. The definition of covered business
`method patents is to be interpreted broadly to encompass patents claiming
`activities that are financial in nature, incidental to a financial activity, or
`complementary to a financial activity. 77 Fed. Reg. at 48,735 (emphases
`added). Patent Owner has not pointed to any statute, its legislative history,
`or rule that requires a covered business method patent to include claim
`elements that map directly to a monetary or financial transaction.
`Both of the challenged independent claims of the ’270 patent recite
`the exchange of information between anonymous parties. The specification
`describes an embodiment in which one of those parties is an employer or
`company seeking potential candidates for a job opening. Ex. 1001, col. 6, ll.
`19-38. Further, the recited “rules” that control whether identity is released
`are described as including a list of companies, and whether a company is in
`the Fortune 500 list or has stock option plans. Id. at col. 8, ll. 10-14.
`We are persuaded that matching job candidates and releasing their
`identities to a specific company or a potential employer (id. at col. 22, ll. 10-
`19) is an activity incidental or complementary to financial activity. Indeed,
`the ’270 patent specification describes the method in connection with
`“various commerce-based applications” where controlled anonymity would
`be beneficial. Id. at col. 22, ll. 20-22. Such a “commerce-based application”
`is even more evident in light of the description of collecting “payment for
`certain transactions performed.” Id. at col. 19, ll. 34-35. That is, the
`claimed method is described as a revenue-generating operation and also as
`
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`an operation performed in conducting financial activities, such as fulfilling
`employment needs and matching merger partners. Therefore, the exchange
`of information between anonymous parties is at least “incidental” and/or
`“complementary to a financial activity” and qualifies as a covered business
`method patent under § 18 of the AIA.
`
`2. Technological Invention
`The definition of “covered business method patent” in § 18(d)(1) of
`the AIA excludes patents for “technological inventions.” 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).
`We are persuaded that the technological features recited by the
`’270 patent were well-known at the relevant time period. For example, the
`
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`preamble of claim 1 recites “a computer system,” and the body of the claim
`does not recite any computer hardware. Claim 1. Recitation of a generic
`computer system fails to direct the claims to a technological invention,
`because such a system was not novel or unobvious on the effective filing
`date of the ’270 patent. Further, the step of “processing” does not impart a
`technological feature. See Prelim. Resp. 19. The body of the claim, in
`which the step of “processing” is recited, does not mention any
`technological feature that is novel or unobvious on the effective filing date.
`We have considered whether the claimed invention solves a technical
`problem using a technical solution. Nevertheless, because we conclude that
`the ’270 patent does not recite a technological feature that is novel and
`unobvious, we determine that the ’270 patent is a covered business method
`patent and is eligible for the transitional covered business method patent
`review program.
`
`The Alleged Grounds of Unpatentability
`F.
`Petitioner seeks to cancel the challenged claims of the ’270 patent
`based on the alleged grounds of unpatentability set forth below.
`Challenged
`Basis
`References and Descriptions
`Claim(s)
`1, 2, 5, 10, 11, 23,
`24, 27, 32, and 33
`1, 2, 5, 10, 11, 23,
`24, 27, 32, and 33
`
`§ 101
`
`lack of patentable subject matter
`
`§ 112, ¶ 1
`
`insufficient written description
`
`
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`Challenged
`Claim(s)
`1, 2, 5, 10, 11, 23,
`24, 27, 32, and 33
`1, 2, 5, 10, 11, 23,
`24, 27, 32, and 33
`1, 2, 5, 10, 11, 23,
`24, 27, 32, and 33
`1, 2, 5, 10, 11, 23,
`24, 27, 32, and 33
`
`
`§ 103
`
`§ 103
`
`II. ANALYSIS
`Claim Interpretation
`A.
`Consistent with the statute and legislative history of the AIA, the
`Board interprets claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.300(b); see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Under the broadest reasonable construction standard, claims 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). In that regard,
`we must be careful not to read a particular embodiment appearing in the
`
`
` 2
`
` WO 9605563A1 (Ex. 1004) (hereinafter “Silvermann”).
`3 U.S. Patent No. 5,086,394 (Ex. 1005) (hereinafter “Shapira”).
`4 Roscheisen et al., A Communication Agreement Framework for
`Access/Action Control, Proceedings in IEEE Symposium on Security and
`Privacy, Oakland, CA (May 6-8, 1996) (Ex. 1006) (hereinafter
`“Roscheisen”).
`
`
`
`11
`
`Basis
`
`References and Descriptions
`
`§ 112, ¶ 2
`
`§ 102
`
`indefinite
`
`Silvermann2
`
`Shapira3 and Silvermann
`
`Shapira and Roscheisen4
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`written description into the claim if the claim language is broader than the
`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner proposes constructions for the following four terms/phrases:
`“identity,” “anonymous party,” “party rules for releasing party data except
`identity,” and “rule for releasing party identity.” Pet. 15-17. Patent Owner
`proposes claim constructions for the terms/phrases above, with the exception
`of “party rules for releasing party data except identity.” Prelim. Resp. 5-7.
`According to Patent Owner, and we agree, this last phrase does not appear in
`the claims of the ’270 patent. Prelim. Resp. 6. Accordingly, we proceed
`with determining the proper scope of the remaining proposed terms.
`We note that the district court interpreted various terms of the
`’270 patent in Walker Digital, LLC v. Google Inc., No. 1:11-cv-00318-LPS
`(D. Del.) (Ex. 1009). The constructions proposed by the parties follow
`closely, if not verbatim, the district court order. Prelim. Resp. 5-6; Pet. 15-
`17. Finding no real dispute between the parties regarding the scope of these
`terms and having reviewed the district court’s claim construction order, we
`are persuaded, with the exception explained below, that the constructions
`given to the terms of the ’270 patent by the district court are proper, as they
`are the broadest reasonable interpretation of the terms in light of the
`specification of the ’270 patent.
`We make a small modification to the district court’s construction to
`account for the claim language in the term “party rule.” We agree with the
`district court that the plain and ordinary meaning of the term “rule” is
`“criterion or set of criteria”; but the term “party rule” should be a party’s
`criterion or set of criteria. Such interpretation follows the plain and ordinary
`meaning of the term in the context of the specification. See e.g., Ex. 1001,
`
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`col. 8, ll. 65-67 (describing, among other examples of criteria for releasing
`party data, that the “rules could simply include a list of companies to which
`party data is not to be released”). To exclude the word “party” would read
`out that word from the claim.
`Consequently, for purposes of this decision, we adopt the following
`constructions:
`Term/Phrase
`identity
`
`Board’s Construction
`information that determines that a person is a
`specific person
`a party whose identity is shielded from others
`a party’s criterion or a set of criteria
`
`anonymous party
`party rule
`
`
`Subject Matter Eligibility Under § 101
`A.
`Petitioner contends that the challenged claims of the ’270 patent are
`unpatentable under 35 U.S.C. § 101. Pet. 19-34. Upon consideration of
`Petitioner’s arguments and supporting evidence, and taking into
`consideration Patent Owner’s arguments submitted in its preliminary
`response, we are persuaded by Petitioner’s contention for purposes of this
`decision.
`Claims 1, 2, 5, and 10-11 are directed to a computer-implemented
`method and claims 23-24, 27, and 32 are directed to a system—a process
`and apparatus that fit within the four statutory classes set out in § 101. The
`subject matter eligibility analysis does not end there, however. The Supreme
`Court has set forth three exceptions of subject matter ineligible for patent
`protection: “laws of nature, physical phenomena, and abstract ideas.” Bilski
`v. Kappos, 130 S. Ct. 3218, 3225 (2010). As explained by the Court,
`“[p]henomena of nature, though just discovered, mental processes, and
`
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`abstract intellectual concepts are not patentable, as they are the basic tools of
`scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
`(1972). Here, the issue before us is whether the claimed process and
`apparatus amount to no more than an abstract idea. To resolve this issue, we
`perform a preemption analysis to determine whether the challenged claims
`pose “any risk of preempting an abstract idea.” CLS Bank Int’l v. Alice
`Corp. Pty. Ltd., 717 F.3d 1269, 1282 (Fed. Cir. 2013) (plurality opinion).
`As a first step in our analysis, we determine the idea represented in the
`claim. “[I]t is important at the outset to identify and define whatever
`fundamental concept appears wrapped up in the claim so that the subsequent
`analytical steps can proceed on a consistent footing.” Id. Here, the method
`claims are directed to “operating a computer system to facilitate an exchange
`of identities between two anonymous parties.” Claim 1. As an example, the
`specification describes that an employer is allowed to communicate with
`prospective candidates whose backgrounds satisfy employment criteria
`provided by the employer without revealing the identity of the employer or
`the identities of the candidates. Ex. 1001, col. 6, ll. 19-24. Anonymity is
`used, for example, to ensure that payment is received for bringing the two
`parties together. Id. at col. 21, ll. 13-16. As another example, anonymity is
`desired because candidates may not want anyone to know they are hunting
`for a job. Id. at col. 16, ll. 60-65. If a party does not agree to communicate
`with a requestor, the transaction ends. Id. at col. 18, ll. 47-51. If a party
`indicates agreement to communicate with a requestor, a communication
`channel facilitates the exchange of information and the requestor is billed for
`the transaction of matching the two. Id. at col. 18, ll. 51-67. Therefore,
`based on the specification and the challenged method claims, the challenged
`
`
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`claims focus on the use of an intermediary to facilitate communication or
`exchange of information between two parties who wish to maintain
`anonymity from each other during some portion of the exchange. See id. at
`col. 4, ll. 17-25. For purposes of this decision, we are persuaded that this
`use of an intermediary is abstract—it is a “disembodied concept,” as
`Petitioner argues (Pet. 19-20). Furthermore, we are persuaded that the
`method claimed can be performed without the use of any machine and can
`be performed by human minds or by humans using pen and paper. Pet. 21-
`24 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-
`1373 (Fed. Cir. 2011)). “With the pertinent abstract idea identified, the
`balance of the claim can be evaluated to determine whether it contains
`additional substantive limitations that narrow, confine, or otherwise tie down
`the claim so that, in practical terms, it does not cover the full abstract idea
`itself.” CLS Bank Int’l., 717 F.3d at 1282.
`Patent Owner argues that the subject matter is not abstract because the
`claims recite “functional and palpable applications in the field of computer
`technology” and “no fewer than ten specific steps.” Prelim. Resp. 23. We
`are not persuaded by Patent Owner’s arguments because Patent Owner does
`not identify substantive limitations in any of the recited steps that
`sufficiently narrow the claim so it does not cover the full abstract idea. See
`Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
`1344-45 (Fed. Cir. 2013) (preemption analysis includes whether “additional
`substantive limitations . . . narrow, confine, or otherwise tie down the claim
`so that, in practical terms, it does not cover the full abstract idea itself”).
`Patent Owner merely points to the recited steps as being tied to a computer
`implementation because, for example, claim 1’s preamble recites “a
`
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`computer system.” Prelim. Resp. 23-24. Patent Owner further points to the
`recited “rules” as a limitation that differentiates the claims from the abstract
`idea. Id. at 25-27.
`First, claims do not become patentable under § 101 simply for reciting
`a computer element. See Benson, 409 U.S. at 71-72. As explained by the
`Court, “[s]imply adding a ‘computer aided’ limitation to a claim covering an
`abstract concept, without more, is insufficient to render the claim patent
`eligible.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
`Second, a “party rule” is a criterion or a set of criteria, per our construction,
`and does not narrow the claims sufficiently. Indeed, a “party rule” does not
`confine the abstract idea merely because the intermediary must know the
`parties’ wishes (i.e., criteria) to maintain, or not maintain, the parties’
`anonymity.
`Patent Owner further argues that “even though the claim does not
`specify a particular mechanism for each step of the process,” the claim is not
`impermissibly abstract because the specification provides sufficient
`disclosure to enable the practice of the invention. Prelim. Resp. 25. The
`inquiry is not focused on the specification alone, but on “whether a claim, as
`a whole, includes meaningful limitations restricting it to an application,
`rather than merely an abstract idea.” Ultramercial, Inc. v. Hulu, LLC, 722
`F.3d 1335, 1344 (Fed. Cir. 2013) (emphasis added). Here, Patent Owner
`admits that the method claim steps do not recite any mechanism. Focusing
`on the claim as a whole and based on the record before us, we are not
`persuaded that the claim includes meaningful limitations restricting it to an
`application.
`Regarding system claims 23-24, 27, and 32-33, Patent Owner argues
`
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`eligibility for patentability because these “clearly involve extensive
`computer involvement . . . of a memory and a processor.” Prelim. Resp. 27.
`We are not persuaded. Limitations of “memory” and “processor” are
`insignificant, conventional, and routine components employed for their basic
`function of storing data and processing information. Reciting these
`limitations does not impose meaningful limits on the scope of the claims and
`are not integral to the invention as a whole. See Bancorp Servs., L.L.C. v.
`Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012); SiRF
`Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In
`order for the addition of a machine to impose a meaningful limit on the
`scope of a claim, it must play a significant part in permitting the claimed
`method to be performed, rather than function solely as an obvious
`mechanism for permitting a solution to be achieved more quickly . . . .”).
`For the foregoing reasons, we conclude that Petitioner has
`demonstrated that the challenged claims are more likely than not directed to
`patent-ineligible subject matter under § 101.
`
`B. Definiteness
`Petitioner further contends that the term “identity” renders the
`challenged claims indefinite under 35 U.S.C. § 112, ¶ 2.5 Pet. 37-40. In
`particular, Petitioner argues that the specification does not define the term
`
`
`
` 5
`
` Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 2, as 35
`U.S.C. § 112(b). Because the ’270 patent has a filing date before September
`16, 2012 (the effective date of the relevant section of the AIA), we will refer
`to the pre-AIA version of 35 U.S.C. § 112 in this decision.
`
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`“identity,” and places no bounds on the construction of the term. Id. at 37.
`In support of its argument, Petitioner points to the declaration of Mr. James
`B. Duke II to state that “one of skill in the art would not know, from one
`person to the next, whether the certain information of a person is specific
`enough to divulge the ‘identity’ of that person” to another. Id. (citing Ex.
`1002 ¶ 78). Petitioner argues that “identity” is ambiguous and indefinite
`because the term may lead to dynamic definitions. Pet. 39-40. We are not
`persuaded by Petitioner’s argument.
`The scope of the claims must be sufficiently definite to inform the
`public of the bounds of the protected invention, i.e., what subject matter is
`covered by the exclusive rights of the patent. Halliburton Energy Servs. v.
`M–I, LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). The test for whether a
`claim meets the definiteness requirement is whether a person of ordinary
`skill in the art would have understood the scope of the claim when read in
`light of the specification. Exxon Research & Eng’g Co. v. United States,
`265 F.3d 1371, 1375 (Fed. Cir. 2001).
`Patent Owner points out that Petitioner’s characterization of “identity”
`considers the term in isolation and not within the claim as a whole. Prelim.
`Resp. 9. We have construed “identity” to mean “information that determines
`that a person is a specific person.” What constitutes the “identity” of the
`party is established by the party itself. Claim 1 (“receiving from a first party
`. . . identity of said first party”). That is, the recited “party” provides the
`information that specifically identifies it. See, e.g., Ex. 1001, col. 7, ll. 1-6
`(listing the “candidate’s identity”—distinct from the “candidate’s address”
`or the “candidate’s vital statistics”—as part of the party data provided by the
`job candidate that may be of interest to an employer). Thus, the term is
`
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`constrained within the bounds set by the claim language. Petitioner does not
`provide sufficient evidence as to why a person of ordinary skill in the art
`would not have understood that “identity” of a “party” is bound by how that
`“party” specifies its own “identity.” For the foregoing reasons, we
`determine that Petitioner fails to demonstrate that it is more likely than not
`that the challenged claims are indefinite under § 112, ¶ 2.
`
`C. Written Description
`Petitioner contends that the challenged claims fail to meet the written
`description requirement under 35 U.S.C. § 112, ¶ 1. Pet. 34-37. In
`particular, Petitioner argues that “rule for releasing said identity” is not
`described in the ’270 patent specification. Id. at 34. As support for its
`contention, Petitioner points out that party identity is released only after a
`party approves a request for authorization, and not when a rule is satisfied.
`Id. We are not persuaded by Petitioner’s argument.
`The specification of the ’270 patent describes that party data and
`requestor data include the identity. See Ex. 1001, col. 6, l. 65–col. 7, l. 20.
`The specification further describes that the rules include, for example,
`“characteristics of certain companies to which party data can be released.”
`Id. at col. 8, ll. 9-14. Patent Owner also points out that a party specifies
`“which of the entered party data system 100 is authorized to release to