throbber
Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 9
`Entered: August 16, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00037
`Patent 6,199,077 B1
`____________
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`I.
`
`INTRODUCTION
`
`Petitioner, Plaid Technologies Incorporated (“Plaid”), filed a
`
`corrected Petition requesting a review under the transitional program for
`
`covered business method patents of claims 1–12 of U.S. Patent No.
`
`6,199,077 B1 (Ex. 1001, “the ’077 patent”). Paper 4 (“Pet.”). Patent
`
`Owner, Yodlee, Incorporated and Yodlee.com, Incorporated (collectively,
`
`“Yodlee”), filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324(a),1 which provides that a
`
`covered business method patent review may not be instituted unless the
`
`information presented in the Petition demonstrates “that it is more likely
`
`than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.” Taking into account the arguments presented in Yodlee’s
`
`Preliminary Response, we determine that the information presented in the
`
`Petition does not establish that the ’077 patent qualifies as a “covered
`
`business method patent” that is eligible for review, as defined by § 18(d)(1)
`
`of the AIA. We, therefore, deny the Petition.
`
`A. Related Matters
`
`
`
`Plaid indicates that the ’077 patent has been asserted in a district court
`
`case. See Pet. 22. The parties also indicate that the ’077 patent was
`
`challenged previously in another petition seeking an inter partes review. In
`
`particular, Plaid filed a Petition requesting an inter partes review of claims
`
`
`
`1 See Section 18(a)(1) of the Leahy-Smith America Invents Act, Pub. L. No.
`112–29, 125 Stat. 284, 329–31 (2011) (“AIA”), which provides that the
`transitional program for covered business method patents will be regarded as
`a post-grant review under Chapter 32 of Title 35 of the United States Code,
`and will employ the standards and procedures of a post-grant review, subject
`to certain exceptions.
`
`2
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`1–12 of the ’077 patent. Pet. 22 (citing Ex. 1012); Paper 7, 2. In that case,
`
`another Board panel did not institute an inter partes review on any of the
`
`asserted grounds as to any of the challenged claims because the Petition was
`
`time-barred under 35 U.S.C. § 315(b). Plaid Techs., Inc. v. Yodlee, Inc.,
`
`Case IPR2016-00275 (PTAB June 9, 2016) (Paper 15), reh’g denied, (PTAB
`
`Aug. 12, 2016) (Paper 17).
`
`B. The ’077 Patent
`
`The ’077 patent generally relates to the field of Internet navigation
`
`and, in particular, to a method and apparatus for gathering summary
`
`information from users or websites and presenting that information as
`
`HyperText Markup Language to the users or websites via either push or pull
`
`technology. Ex. 1001, 1:16–22. According to the ’077 patent, one problem
`
`encountered by an individual who has several subscriptions to Internet-
`
`brokered services is that there are numerous passwords and usernames to
`
`remember. Id. at 1:46–49. Another problem encountered by an individual
`
`with numerous subscriptions services is that he/she must bookmark all the
`
`corresponding web pages in a computer cache so he/she can find and access
`
`these services quickly. Id. at 1:59–62. The ’077 patent purportedly
`
`addresses these problems by providing an Internet portal that includes a
`
`server connected to the Internet, along with portal software executing on the
`
`server that includes a summary software agent. Id. at 2:59–62. The Internet
`
`Portal maintains a list of Internet websites specific to a particular user, and
`
`the summary software agent accesses these websites, retrieves information
`
`according to pre-programmed criteria, and then summarizes the retrieved
`
`information for delivery to the user. Id. at 2:62–67.
`
`3
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1 and 7 are independent.
`
`Independent claim 1 is directed to an Internet portal, whereas independent
`
`claim 7 is directed to a method executed in an Internet portal system for
`
`gathering data specific to a person from a plurality of Internet sites storing
`
`data specific to that person. Claims 2–6 directly depend from independent
`
`claim 1; and claims 8–12 directly depend from independent claim 7.
`
`Independent claims 1 and 7 are illustrative of the challenged claims and are
`
`reproduced below:
`
`An Internet Portal, comprising:
`1.
`an Internet-connected server;
`a list of addresses of Internet sites associated with a
`specific person, which sites store information specific to the
`person; and
`a software suite executing on the server, the software
`suite including a set of gathering spitware agents, with at least
`one gatherer agent dedicated to each of the Internet sites;
`wherein the Portal accomplishes a gathering cycle by
`accessing individual ones of the Internet sites, authenticating
`too each site accessed as the person, and the gathering agent
`dedicated to each site accessed extracts data from that site.
`
`In an Internet Portal system, a method for
`7.
`gathering data specific to a person from a plurality of Internet
`sites storing data specific to that person, the method comprising
`the steps of:
`(a) initiating a gathering cycle accessing individual ones
`of the plurality of sites;
`(b) authenticating to the sites as the person; and
`(c) executing a software gathering agent at each site
`accessed to gather data from the site, the gathering agent
`dedicated to each site accessed.
`
`
`Ex. 1001, 18:2–15, 18:31–40.
`
`4
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`D. Prior Art Relied Upon
`
`Plaid relies upon the following prior art references:
`
`Inventor2 U.S. Patent No. Dates
`
`Exhibit No.
`
`Lowery
`
`5,894,554
`
`Brandt
`
`5,892,905
`
`issued Apr. 13, 1999,
`filed Apr. 23, 1996
`issued Apr. 6, 1999
`filed Dec. 23, 1996
`
`1005
`
`1009
`
`Author
`
`Title and Date
`
`Exhibit No.
`
` Zhao3
`
`Technical note WebEntree: A Web
`service aggregator, 37 IBM SYS. J. 584
`(1998)
`VerticalOne Corporation to Offer Internet User One-stop
`for Managing Online Personal Content and Account
`Information, BUSINESS WIRE PRESS RELEASE, May 25,
`1999 (“VerticalOne”)
`
`1007
`
`1013
`
`
`
`
`
`E. Asserted Grounds of Unpatentability
`
`Plaid challenges claims 1–12 of the ’077 patent based on the asserted
`
`grounds of unpatentability (“grounds”) set forth in the table below. Pet. 23.
`
`Reference(s)
`
`
`
`Zhao
`
`Basis
`
`§ 101
`
`Challenged Claims
`
`1–12
`
`§ 103(a)
`
`1–12
`
`Zhao and VerticalOne
`
`§ 103(a)
`
`1–12
`
`Lowery, Brandt, and Zhao
`
`§ 103(a)
`
`1–12
`
`
`
`2 For clarity and ease of reference, we only list the first named inventor.
`
`3 For clarity and ease of reference, we only list the author’s last name.
`
`5
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`II. ANALYSIS
`
`Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
`
`proceeding only for 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 also 37 C.F.R. § 42.301 (defining “[c]overed business
`
`method patent” and “[t]echnological invention”). For purposes of
`
`determining whether a patent is eligible for a covered business method
`
`patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon,
`
`Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (stating that Ҥ 18(d)(1) directs us
`
`to examine the claims when deciding whether a patent is a [covered business
`
`method] patent”). Our analysis below solely focuses on whether Plaid has
`
`demonstrated that the challenged claims of the ’077 patent are directed to a
`
`method or apparatus for performing data processing or other operations used
`
`in the practice, administration, or management of a financial product or
`
`service.
`
`The U.S. Court of Appeals for the Federal Circuit has recognized that
`
`“‘financial product or service’ should be interpreted broadly.” See Versata
`
`Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1323–26 (Fed. Cir. 2015).
`
`“[B]roadly” in this context, however, does not mean without limits. As the
`
`Federal Circuit explained, “[t]he plain text of the statutory definition
`
`contained in § 18(d)(1)—‘performing ... operations used in the practice,
`
`administration, or management of a financial product or service’—on its
`
`6
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`face covers a wide range of finance-related activities.” Id. at 1325
`
`(emphasis added).
`
`Although not binding authority, several Board decisions have
`
`determined that the following considerations weigh in favor of concluding
`
`that the patent at issue is not a covered business method patent eligible for
`
`review: (1) claims of general utility with (2) no explicit or inherent finance-
`
`related terminology or limitations. See, e.g., Qualtrics, LLC v. OpinionLab,
`
`Inc., Case CBM2015-00164, slip op. at 5–6 (PTAB Feb. 3, 2016) (Paper 8)
`
`(“Qualtrics”) (determining that a claim that “solicit[s] feedback from
`
`website visitors across a variety of sectors” is of general utility and,
`
`therefore, is not directed to a covered business method patent eligible for
`
`review); ServiceNow, Inc. v. Hewlett-Packard Co., Case CBM2015-00077,
`
`slip op. at 5–7 (PTAB Sept. 17, 2015) (Paper 12) (determining that a claim
`
`reciting “a system for managing a Web service” is of general utility and,
`
`therefore, is not directed to a covered business method patent eligible for
`
`review); ServiceNow, Inc. v. BMC Software, Inc., Case CBM2015-00107,
`
`slip op. at 10–15 (PTAB Sept. 11, 2015) (Paper 12) (determining that a
`
`claim that performs “fault analysis” is of general utility and, therefore, is not
`
`directed to a covered business method patent eligible for review).
`
`
`
`Plaid contends that the challenged claims of the ’077 patent cover
`
`financial-related activities because these claims gather data for “subscription
`
`services,” such as activities like “banking, stock trading, shopping, and so
`
`forth.” Pet. 11 (citing Ex. 1001, 1:35–38). In particular, Plaid argues that
`
`independent claim 7 of the ’077 patent falls squarely within the range of
`
`finance-related activities, because this claim encompasses, and indeed was
`
`designed to cover, financial embodiments. Id. at 12–13. For instance, Plaid
`
`7
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`argues that the claimed “Internet Portal system” is intended to be used to
`
`gather data, particularly financial data, because the corresponding “Internet
`
`sites” may include a number of financially-related websites, such as “My
`
`Bank.com,” “My Stocks.com,” “My shopping.com,” “Mortgage.com,” and
`
`“Airline.com.” Id. at 13 (citing Ex. 1001, 5:4–21, Fig. 2).
`
`Plaid also argues that the claimed “accessing individual ones of the
`
`plurality of sites” entails gaining access to servers 23, 25, and 27 illustrated
`
`in Figure 1 of the ’077 patent. Pet. 14 (citing Ex. 1001, 4:39–58) (emphasis
`
`omitted). Plaid asserts that the specification of the ’077 patent indicates that
`
`these servers may include a bank server, investment server, or an
`
`airline/travel server. Id. Lastly, Plaid argues that the claimed “executing a
`
`software gather agent at each site accessed to gather data from the site”
`
`entails extracting data from a user-subscribed website, “such as account
`
`summaries, order tracking information and certain other information
`
`according to user-defined parameters.” Id. at 15 (citing Ex. 1001, 10:25–32)
`
`(emphasis omitted). As just one example, Plaid directs us to a disclosure in
`
`the specification where a user enters a request to return a summary of pricing
`
`for all apartments that cost less than $1,000.00 a month. Id. at 15–16 (citing
`
`Ex. 1001, 11:20–36).
`
`In response, Yodlee contends that Plaid’s arguments do not
`
`demonstrate that the challenged claims of the ’077 patent are directed to a
`
`method or apparatus for performing data processing or other operations used
`
`in the practice, administration, or management of a financial product or
`
`service. Prelim. Resp. 6. In particular, Yodlee argues that Plaid’s arguments
`
`may be broken down as follows: (1) the claimed “data” are financial; (2) the
`
`claimed “plurality of sites” are financial; and (3) the claimed “software
`
`8
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`gathering agent” gathers or extracts financial data from financial websites.
`
`Id. at 7 (citing Pet. 13–16). Yodlee, however, argues that these arguments
`
`presented by Plaid narrowly focus on examples in the specification of the
`
`’077 patent. Id. Yodlee asserts that Plaid does not identity a single claim
`
`term that is tied sufficiently to a financial-related activity that would justify
`
`concluding that the ’077 patent is a covered business method patent eligible
`
`for review. Id. Yodlee further argues that Plaid does not propose any claim
`
`constructions that are financial in nature, which, according to Yodlee, also
`
`weighs in favor of determining that the ’077 patent is not a covered business
`
`method patent eligible for review. Id. at 8. Lastly, Yodlee argues that the
`
`specification of the ’077 patent does not confine the challenged claims to the
`
`particular embodiments upon which Plaid relies, much less limit the scope of
`
`these claims to something related to a financial product or service. Id. at 10–
`
`11.
`
`We agree with Yodlee that Plaid has not demonstrated that the
`
`challenged claims of the ’077 patent are directed to a method or apparatus
`
`for performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service. We begin
`
`our analysis by focusing on the language of independent claim 7,
`
`particularly the language regarding “the plurality of sites,” “executing a
`
`software gathering agent,” and “gather[ing] data from [these] site[s].”
`
`Ex. 1001, 18:35–40. Independent claim 1 recites similar limitations. Id. at
`
`18:4–15 (reciting “Internet sites,” “a software suite executing on the server,”
`
`and “extract[ing] data from [each] site”). The language of these independent
`
`claims generally applies to executing a software program to gather or extract
`
`data from a plurality of websites on the Internet. Given this general utility,
`
`9
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`we agree with Yodlee that these independent claims are devoid of any claim
`
`terms that reasonably could be argued as being tied sufficiently to a
`
`financial-related activity that would justify concluding that the ’077 patent is
`
`a covered business method patent eligible for review. See Prelim. Resp. 6–
`
`8. We also agree with Yodlee that Plaid does not propose any claim
`
`constructions that are financial in nature that would warrant a different
`
`conclusion. See Prelim. Resp. 8; see also Pet. 8–10 (setting forth Plaid’s
`
`proposed constructions, none of which indicates a specific tie to a financial
`
`product or service).
`
`Although Plaid directs us to certain examples in the specification of
`
`the ’077 patent to support its arguments that the challenged claims cover
`
`financial embodiments (see Pet. 13–16), Plaid does not point to any
`
`language in the specification that somehow limits the scope of independent
`
`claims 1 and 7 in this way. Indeed, the specification discloses that the list of
`
`websites on a user’s personalized web page, which may include “My
`
`Bank.com,” “My Stocks.com,” “My shopping.com,” “Mortgage.com” and
`
`“Airline.com,” are “but a few of many exemplary destinations that may be
`
`present and listed on [the user’s personalized web page].” Ex. 1001, 5:14–
`
`18 (emphasis added). In addition, the specification discloses that the data
`
`gathered or extracted from these websites “may include any information
`
`contained in any of the stored pages such as text, pictures, interactive
`
`content, or the like.” Id. at 9:43–46 (emphasis added). The specification
`
`further discloses that a software program or script may be written to obtain
`
`“any type of text information available from any site.” Id. at 13:46–48
`
`(emphases added). Based on these cited disclosures in the specification, the
`
`websites on the Internet and the process of gathering or extracting data
`
`10
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`therefrom required by independent claims 1 and 7 are not limited in any way
`
`to financial institutions and financial data, respectively, but instead may
`
`include a broad spectrum of websites and a wide variety of data that have no
`
`particular connection to a financial product or service.
`
`To the extent Plaid argues that challenged claims cover financial-
`
`related activities because these claims require gathering or extracting data
`
`from websites that provide “subscription services,” we do not agree. See
`
`Pet. 11, 13. First, Plaid does not direct us to, nor can we find, language in
`
`independent claims 1 and 7 that limits the claimed websites to only websites
`
`that provide subscription services. Even if we were to assume that the
`
`claimed websites were limited to just websites that provide subscription
`
`services, there is nothing in the specification of the ’077 patent suggesting
`
`that the services subscribed to by the user require payment of a fee.
`
`Second, although we recognize that independent claims 1 and 7 both
`
`recite “authenticating” to the plurality of websites as the user, there is
`
`nothing in these claims confining this authentication process to websites that
`
`require log-in or password codes particular to a user. Indeed, the
`
`specification of the ’077 patent discloses at least one embodiment where “a
`
`user would not be required to supply log-in or password codes.” Ex. 1001,
`
`14:67–15:2; see also id. at 16:61–63 (disclosing that “[t]he method and
`
`apparatus of the present invention may be used to present summaries to
`
`users without user input”), 17:43–47 (disclosing that “[a] user may forbid
`
`use of a user’s personal information, in which case, no enterprise-initiated
`
`summaries would be performed unless they are conducted strictly in an offer
`
`mode instead of a comparative mode”). Based on these cited disclosures in
`
`the specification, independent claims 1 and 7 are broad enough to
`
`11
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`encompass “authenticating” to the plurality of websites as a user without
`
`using personal information, such as a log-in or password codes particular to
`
`the user. In other words, we decline to limit the claimed websites to just
`
`those websites that provide subscription services because personal
`
`information, such as log-in or password codes particular to a user, that is
`
`necessary to obtain such subscription services is not an explicit requirement
`
`of the authentication process recited in the challenged claims.
`
`Lastly, we take this opportunity to note that the Board panel’s
`
`reasoning in Qualtrics applies equally to the circumstances presented in this
`
`case. Qualtrics, slip op. at 8. That is, if we were to adopt the position
`
`advocated by Plaid in its Petition, it would mean that any patent claiming
`
`something that might potentially apply to a financial product or service
`
`would be a covered business method patent eligible for review, regardless of
`
`its general utility and application outside of finance. See id. We are not
`
`persuaded that Plaid’s position is consistent with the statutory language in
`
`§ 18(d)(1) of the AIA and the Federal Circuit’s guidance Blue Calypso, both
`
`of which require us to focus on what is recited explicitly or inherently in the
`
`challenged claims. See Qualtrics, slip op. at 8. To be clear, because the
`
`challenged claims of the ’077 patent are of general utility with no explicit or
`
`inherent finance-related terminology or limitations, we conclude that this
`
`patent is not a covered business method patent eligible for review.
`
`In summary, based on this record, we are not persuaded that Plaid has
`
`demonstrated that the challenged claims satisfy the “financial product or
`
`service” component of the definition for a covered business method patent,
`
`as set forth in § 18(d)(1) of the AIA.
`
`
`
`12
`
`

`
`CBM2016-00037
`Patent 6,199,077 B1
`
`III. CONCLUSION
`
`Taking into account the arguments presented in Yodlee’s Preliminary
`
`Response, we determine that the information presented in the Petition does
`
`not establish that the ’077 patent qualifies as a “covered business method
`
`patent” that is eligible for review, as defined by § 18(d)(1) of the AIA. We,
`
`therefore, do not institute a covered business patent review based on any of
`
`the asserted grounds as to any of the challenged claims.
`
`IV. ORDER
`
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
`
`
`
`13
`
`

`
`14
`
`CBM2016-00037
`Patent 6,199,077 B1
`
`For PETITIONER:
`
`Brian Buroker
`Omar Amin
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`oamin@gibsondunn.com
`
`
`
`For PATENT OWNER:
`
`David Hoffman
`Fish & Richardson P.C.
`CBM12233-0048CP1@fr.com

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