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.
`_____________________
`
`CBM2016-00037
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R.
`§ 42.71(d)
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`_____________________
`
`CBM2016-00037
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R.
`§ 42.71(d)
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`
`INTRODUCTION ........................................................................................... 1
`BACKGROUND. ............................................................................................ 2
`PATENT OWNER’S ADMISSIONS ESTABLISH THAT THE ’077
`PATENT IS CBM-ELIGIBLE. ....................................................................... 4
`IV. THE BOARD MISAPPLIED THE DEFINITION OF A CBM
`PATENT. ......................................................................................................... 8
`THE BOARD’S REQUIREMENT THAT THE CLAIMS RECITE
`AN EXPRESS OR IMPLICIT FINANCIAL LIMITATION IN THIS
`CASE IS ARBITRARY AND CAPRICIOUS. ............................................. 13
`VI. CONCLUSION .............................................................................................. 15
`
`
`V.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 7
`Apple Inc. v. Mirror World Techs.,
`LLC, CBM2016-00019, Paper 12 (May 26, 2016) ............................................ 10
`Davila-Bardales v. I.N.S.,
`27 F.3d 1 (1st Cir. 1994) ..................................................................................... 16
`Dickinson v. Zurko,
`527 U.S. 150 (1999) ............................................................................................ 15
`In re Distefano,
`808 F.3d 845 (Fed. Cir. 2015) .............................................................................. 5
`FCC v. Fox Television Stations, Inc.,
`556 U.S. 502 (2009) ............................................................................................ 15
`Google Inc. v. Unwired Planet, LLC,
`CBM2014-00006, Paper 11 (Apr. 8, 2014) ........................................................ 11
`Johnson Controls, Inc. v. Wildcat Licensing WI, LLC,
`IPR2014-00305, Paper 9 (Jun. 23, 2014) ............................................................. 5
`Medicines Co. v. Kappos,
`731 F. Supp. 2d 470 (E.D. Va. 2010) ................................................................. 16
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`No. 15-1977 ........................................................................................................ 10
`Muwekma Ohlone Tribe v. Salazar,
`708 F.3d 209 (D.C. Cir. 2013) ............................................................................ 15
`Qualtrics, LLC v. OpinionLab, Inc.,
`CBM2015-00164, Paper 8 (Feb. 3, 2016) .......................................................... 13
`Sally Beauty Holdings, Inc. v. Intellectual Ventures I LLC,
`CBM2016-00030, Paper 8 (Aug. 2, 2016) ......................................................... 11
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`SAS Inst., Inc. v. ComplementSoft, LLC.,
`825 F.3d 1341 (Fed. Cir. 2016) .......................................................................... 15
`Secure Axcess v. PNC Bank Nat’l Ass’n,
`No. 16-1353 ........................................................................................................ 10
`ServiceNow, Inc. v. BMC Software, Inc.,
`CBM2015-00107, Paper 12 (Sept. 11, 2015) ..................................................... 14
`ServiceNow, Inc. v. Hewlett-Packard Co.,
`CBM2015-00077, Paper 12 (Sept. 17, 2015) ..................................................... 14
`Sony Corp. of Am. v. Network-1 Techs., Inc.,
`CBM2015-00078, Paper 7 (July 1, 2015) ........................................................... 14
`Southside Bancshares, Inc. v. St. Isidore Research, LLC,
`CBM2016-00027, Paper 28 (Aug. 1, 2016) ................................................. 11, 12
`Square, Inc. v. Protegrity Corp.,
`CBM2014-00182, Paper 30 at *5 (June 5, 2015) .......................................... 3, 11
`Unwired Planet, LLC v. Google, Inc.,
`No. 15-1812 ........................................................................................................ 10
`Versata Dev. Grp., Inc. v. SAP Am., Inc.,
`793 F.3d 1306 (Fed. Cir. 2015) ............................................................................ 9
`Westar Energy, Inc. v. FERC,
`473 F.3d 1239 (D.C. Cir. 2007) .......................................................................... 15
`Statutes
`America Invents Act § 18 ........................................................................................ 11
`America Invents Act § 18(d)(1) ............................................................... 9, 12, 14, 15
`Regulations
`37 C.F.R. § 42.71(d) .................................................................................................. 4
`
`
`
`iii
`
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`77 Fed. Reg. 48734 (Aug. 14, 2015) ....................................................................... 10
`77 Fed. Reg. 48735 (Aug. 14, 2015) ....................................................................... 10
`
`iv
`
`
`
`
`
`
`
`
`
`Exhibit
`Number
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`PETITIONER’S EXHIBIT LIST
`Description
`
`U.S. Patent No. 6,199,077 (’077 Patent)
`File History of U.S. Patent No. 6,199,077
`Declaration of Dr. Todd Mowry
`Redline Comparison of U.S. Patent Appl. No. 09/323,598 and
`Application No. 09/208,740
`U.S. Patent No. 5,894,554 (“Lowery”)
`U.S. Patent No. 6,317,783 (“Freishtat”)
`Zhao, “Technical Note, WebEntree: A Web Service Aggregator,”
`(1998) (“Zhao”)
`U.S. Patent No. 6,278,449 (“Sugiarto”)
`U.S. Patent No. 5,892,905 (“Brandt”)
`Yodlee, Inc. v. Plaid Technologies, Inc., No. 1:14-cv-01445-LPS-
`CJB, ECF No. 96 (D. Del. Jan. 15, 2016) (the “District Court
`Action”)
`Yodlee, Inc. v. CashEdge, Inc., No. 3:05-cv-01550-SI, ECF No.
`66 (N.D. Cal. July 7, 2006) (the “CashEdge Case”)
`IPR2016-00275, Petition for Inter Partes Review of U.S. Patent
`No. 6,199,077.
`Business Wire Press Release, “VerticalOne Corporation to Offer
`Internet Users One-stop for Managing Online Personal Content
`and Account Information” (May 25, 1999)
`Roy Schoenberg, 321 BMJ 1199, Internet Based Repository of
`Medical Records that Retains Patient Confidentiality (2000),
`available at
`http://www.ncbi.nlm.nih.gov/pmc/articles/PMC1118958)
`Certified Financial Planning Board, Financial Planning Practice
`Standards 200-2, available at http://www.cfp.net/for-cfp-
`professionals/professional-standards-enforcement/standards-of-
`professional-conduct/financial-planning-practice-
`standards/practice-standards-200
`Austen Zuege, A New Theory for Patent Subject Matter
`Eligibility: A Veblenian Perspective, 5 Cybaris An Intell. Prop. L.
`Rev. 211, 279 st(2014)
`Wendy Seltzer, Software Patents and/or Software Development,
`78 Brook. L. Rev. 929, 949 (2013)
`v
`
`
`
`
`
`
`
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`
`Screenshot of ACM Digital Library Page for Zhao
`U.S. Patent No. 6,006,333 (“Nielsen”)
`Article on CNN’s personalized service
`U.S. Patent No. 6,029,175 (“Chow”)
`U.S. Patent No. 6,401,118 (“Thomas”)
`U.S. Patent No. 5,903,881 (“Schrader”)
`U.S. Patent No. 6,041,362 (“Mears”)
`U.S. Patent No. 6,243,816 (“Fang”)
`
`
`
`vi
`
`
`
`GLOSSARY OF ABBREVIATIONS
`
`Shorthand
`Order
`
`’077 patent
`Prelim. Resp.
`
`IPR Prelim.
`Resp.
`Petitioner
`Patent Owner
`CBM
`Board
`APA
`Petition
`
`Description
`Order Denying Institution of Covered Business
`Method Review, Paper 9 (Aug. 16, 2016).
`U.S. Patent No. 6,199,077, Ex. 1001.
`Patent Owner Preliminary Response, Paper 8 (May
`25, 2016).
`Patent Owner Preliminary Response in IPR2016-
`00275, Paper 11 (Mar. 11, 2016).
`Petitioner Plaid Technologies, Inc.
`Patent Owner Yodlee, Inc. and Yodlee.com, Inc.
`Covered Business Method
`Patent Trial and Appeal Board
`Administrative Procedure Act, 5 U.S.C. § 500, et seq.
`Petition, Paper No. 1 (Feb. 17, 2016)
`
`
`
`
`
`
`
`vii
`
`
`
`
`
`I.
`
`Introduction
`Petitioner requests that the Board reconsider its decision not to institute
`
`CBM review of the ’077 patent for three independent reasons. First, the Board
`
`misapprehended the scope of the challenged claims by applying an overly broad
`
`reading of those claims that did not hold Patent Owner to the scope-narrowing
`
`admissions made in its Preliminary Response. As Petitioner argued in its petition,
`
`the ’077 claims must be understood to have specific utility to financial products or
`
`services and that at least the claimed “Internet sites” and “data specific to a person”
`
`are financial limitations. Patent Owner admitted that to be true in defending the
`
`patent. The Board should have applied a narrower understanding of the claims
`
`based on Patent Owner’s admissions and in so doing found that the claims were
`
`directed to a covered business method.
`
`Second, the Board misapprehended the statutory definition of a CBM patent.
`
`The CBM analysis necessarily must consider whether the claimed embodiment—
`
`as opposed to unclaimed embodiments—is “used in . . . a financial product or
`
`service.” Nothing in the statute excludes the specification as a source for
`
`determining whether the claimed embodiment has specific utility to financial
`
`products or services. The Board’s narrow focus on the specification only to the
`
`extent that it explicitly or inherently limits the claims is contrary to the statute.
`
`1
`
`
`
`
`
`Third, the Board’s requirement that the claims have an explicit or inherent
`
`financial limitation directly conflicts with how other panels have applied the
`
`statute. Other panels have properly held that the specification alone can establish
`
`use of the claimed embodiment in a financial product or service. Thus, the Board’s
`
`decision in this case impermissibly imposes additional requirements on Petitioner
`
`that the Board has not imposed on other similarly situated petitioners.
`
`II. Background.
`
`As explained in the Petition, claim 7 of the ’077 patent has specific utility to
`
`financial products and services as it was “written specifically to encompass
`
`financially-related data processing.” Petition at 12. In particular, Petitioner
`
`explained that the claimed “Internet sites” and “data specific to a person”
`
`specifically cover financial sites and financial data, respectively. Id. Petitioner
`
`further explained that the claimed “Internet Portal system” was intended to gather
`
`“data—in particular financial data—‘specific to a person from a plurality of
`
`Internet sites storing data specific to that person.’” Id. at 13 (quoting ’077 patent at
`
`2:59–67). The ’077 specification further established that the claimed “Internet
`
`sites” can “include a number of financially-related sites such as ‘MyBank.com,’
`
`‘MyStocks.com,’ ‘MyShopping.com,’ ‘Mortgage.com,’ and ‘Airline.com.’” Id.
`
`(quoting ’077 patent at 5:4–21, Fig. 2). The Portal home page “is also designed to
`
`display financial information gathered from these various Internet sites such as
`
`
`
`2
`
`
`
`
`
`‘reports of changes in account balances in bank accounts, stock purchases, stock
`
`values, total airline travel purchases, frequent-flier miles . . . .’” Id. at 13–14
`
`(quoting ’077 patent at 7:46–8:4). Accordingly, Petitioner explained, “the ’077
`
`Patent falls squarely within this range of finance-related activities, because the
`
`claims encompass, and indeed were designed to apply to, financially-related data
`
`processing.” Id. at 12 (citing Square, Inc. v. Protegrity Corp., CBM2014-00182,
`
`Paper 30 at *5 (June 5, 2015) (“Square”)).
`
`Nevertheless, the Board determined that the ’077 patent is not CBM-eligible
`
`“because the challenged claims of the ’077 patent are of general utility with no
`
`explicit or inherent finance-related terminology or limitations.” Order at 12.
`
`Specifically, the Board found that passages of the ’077 specification showing that
`
`the claimed “Internet sites” can store financial information were insufficient
`
`because Petitioner did not “point to any language in the specification that somehow
`
`limits the scope of independent claims 1 and 7” to financial activity. Order at 10.
`
`Instead, the Board pointed to passages from the ’077 specification allegedly
`
`indicating that data gathered from websites may include “any information” and that
`
`a software program can be written to obtain “any type of text information available
`
`from any site.” Id. (quoting ’077 patent at 9:43–46, 13:46–48) (emphasis added in
`
`the Order). The Board thus concluded that the ’077 claims have general utility:
`
`with no particular connection to a financial product or service:
`
`
`
`3
`
`
`
`
`
`Based on these cited disclosures in the specification, the websites on
`the Internet and the process of gathering or extracting data 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.
`
`Order at 10–11 (emphasis added).
`
`III. Patent Owner’s Admissions Establish That the ’077 Patent is CBM-
`Eligible.
`The fundamental premise behind the Board’s finding—that the claimed
`
`
`
`“Internet sites” and “data specific to a person” cover any site and any data,
`
`respectively— cannot be squared with Patent Owner’s admissions in its
`
`Preliminary Response.1 Those admissions should be binding on the Patent Owner
`
`for all purposes and should have been used by the Board in determining the proper
`
`
` 1 Pages 13–14 of the Petition addressed the relevance of the “Internet sites” and
`
`“data specific to a person” to the CBM eligibility of the ’077 patent. 37 C.F.R.
`
`§ 42.71(d). Petitioner could not have incorporated Patent Owner’s admissions
`
`because the Prelim. Resp. was filed after the Petition was filed. Although
`
`Patent Owner made similar admissions in the IPR Prelim. Resp., it was also
`
`filed after the Petition.
`
`
`
`4
`
`
`
`
`
`scope of the claims for CBM eligibility. Johnson Controls, Inc. v. Wildcat
`
`Licensing WI, LLC, IPR2014-00305, Paper 9 at *12–13 (Jun. 23, 2014) (holding a
`
`patent owner’s arguments in a preliminary response against the patent owner for
`
`claim construction purposes).
`
`Specifically, in attempting to distinguish the prior art, Patent Owner
`
`admitted that the claimed “Internet sites” and “data specific to a person” are
`
`limited such they have specific utility to financial products or services. Patent
`
`Owner argued that the claimed “data specific to a person,” is limited to non-public
`
`information, stating that “[i]nformation specific to a person is not a news report or
`
`other publicly available information source.” Prelim. Resp. at 19. Patent Owner
`
`added that “data specific to a person” does not even cover all data protected by a
`
`user name and password. Rather, the content2 of the data must be private to a
`
`person. Prelim. Resp. at 21.
`
`
`
` 2 The printed matter doctrine does not negate Petitioner’s reliance on the content
`
`of the claimed “data” in showing CBM eligibility because that doctrine is
`
`confined to disregarding limitations as “a basis for distinguishing prior art.” In
`
`re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015).
`
`
`
`5
`
`
`
`
`
`In explaining these limitations on “data specific to a person,”3 Patent
`
`Owner’s arguments contradict the Board’s understanding of both passages from
`
`’077 specification on which the Board relied on to show general utility. As to the
`
`first passage, both the Board and Patent Owner rely on the following two sentences
`
`from the ’077 specification:
`
`Scripts may also be written to obtain virtually any type of text
`information available from any site. For example, a user may wish to
`obtain the New York Times headlines, the top ten performing stocks,
`a comparative list of flights from San Francisco to New York, etc.
`
`’077 patent at 13:46–50. The Board quoted the first sentence as indicating that the
`
`’077 claims have general utility because any type of data can be retrieved from any
`
`site. Order at 10 (quoting ’077 patent at 13:46–48). But Patent Owner made clear
`
`that this passage does not apply to the claimed embodiments. In particular, Patent
`
`Owner quoted the second sentence as an example of data that is not “data specific
`
`to a person,” as recited in claim 7. Prelim. Resp. at 22 (quoting ’077 patent at
`
`13:48–50). Indeed, Patent Owner stated that the data described in the passage
`
`
` 3 Because claim 7 requires that the “Internet sites store[] data specific to a
`
`person,” all limitations on the “data specific to a person” are inherently
`
`limitations on the claimed “Internet sites.”
`
`
`
`6
`
`
`
`
`
`“may also be accessed using various embodiments of the invention, but it is not
`
`the embodiment recited in claim 1.” Prelim. Resp. at 22 (emphasis added). As for
`
`the second passage that the Board relied on, ’077 patent at 9:43–46, Patent
`
`Owner’s arguments indicate that this passage is also inapplicable to the claimed
`
`embodiments because, like the above-quoted passage, it describes “any
`
`information,” without any limitation about whether the information is public or
`
`private to the user.
`
`At least in light of Patent Owner’s admissions, the ’077 patent makes clear
`
`that “data specific to a person” should be limited to financial data. Even under the
`
`broadest reasonable interpretation, a specification can limit a claim through
`
`“repeated[], consistent[], and exclusive[]” description. In re Abbott Diabetes Care
`
`Inc., 696 F.3d 1142, 1150 (Fed. Cir. 2012). Here, the only two examples from the
`
`’077 specification that Patent Owner cited as constituting “data specific to a
`
`person” are financial information:
`
`For example, the specification provides an example of source code
`that is designed [to] “navigate and obtain data from Amazon.com,
`specifically that data that reflects the user’s current order status.”
`Ex. 1001 at 12:63-13:42 (emphasis added); see also 5:33-35
`(describing that the website MyBank.com “may have more than
`one URL associated for such as different accounts or businesses
`associated also with a single subscriber.”).
`
`
`
`7
`
`
`
`
`
`Prelim. Resp. at 21–22 (emphases in the original). Apart from Patent Owner’s
`
`examples, the ’077 patent repeatedly, consistently, and exclusively describes
`
`financially-related use of the claimed embodiments. ’077 patent at 4:42–47, 5:13–
`
`16, 5:42–49, 7:1–6, 7:50–58, 7:63–8:1, 8:5–12. And even if the cited passages do
`
`not rise to the level of implicit definition, they at least establish specific utility of
`
`the claimed embodiments to the processing of financial data.
`
`
`
`In sum, the Board’s evaluation of the scope of the ’077 claims should have
`
`held Patent Owner to its admissions. If it had done so, the methods and
`
`apparatuses recited in the ’077 claims include financial limitations and have
`
`specific utility to data processing involved in financial products or services.
`
`IV. The Board Misapplied the Definition of a CBM Patent.
`
`
`The Board applied the wrong standard in determining CBM eligibility in this
`
`case. The Board applied a test that would have required it to find that the ’077
`
`claims have some “explicit or inherent finance-related terminology or limitations.”
`
`Order at 12. That is not the correct test that many other panels have applied.
`
`Rather, the correct test asks whether the specification establishes use in a financial
`
`product or service even without expressly or implicitly limiting the claims.4
`
`
`
` 4 Pages 11–12 of the Petition addressed the test for CBM-eligibility.
`
`
`
`8
`
`
`
`
`
`A CBM patent is “a patent that claims a method or corresponding apparatus
`
`for performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service, except that the
`
`term does not include patents for technological inventions.” AIA § 18(d)(1). The
`
`Federal Circuit has explained that this definition “covers a wide range of finance-
`
`related activities.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325
`
`(Fed. Cir. 2015).5 Indeed, the PTO observed in its final rulemaking that the
`
`definition covers activities that are “incidental” or “complementary” to a “financial
`
`activity.” Transitional Program for Covered Business Method Patents—
`
`Definitions of Covered Business Method Patent and Technological Invention, 77
`
`Fed. Reg. 48734, 48735 (Aug. 14, 2015).
`
`Although the focus of the CBM inquiry is on the claims, the statute does not
`
`require that the claims recite finance-related limitations. Rather, the question is
`
`
`
` 5 On June 7, 2016, the Federal Circuit heard argument in Unwired Planet, LLC v.
`
`Google, Inc., No. 15-1812, a case that may require the court to interpret the
`
`statutory definition of a CBM patent. The court may also be asked to interpret
`
`the CBM definition in Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`
`No. 15-1977 and/or Secure Axcess v. PNC Bank Nat’l Ass’n, No. 16-1353.
`
`
`
`9
`
`
`
`
`
`whether the claimed embodiment—as opposed to unclaimed embodiments—is
`
`“used in the practice, administration, or management of a financial product or
`
`service.” The Board has repeatedly held that the specification can show use of the
`
`claimed embodiment in a financial product or service. E.g., Apple Inc. v. Mirror
`
`World Techs., LLC, CBM2016-00019, Paper 12 at *7 (May 26, 2016) (“We do not
`
`interpret AIA § 18 as requiring a literal recitation of the terms data processing or
`
`financial or similar terms.”); Sally Beauty Holdings, Inc. v. Intellectual Ventures I
`
`LLC, CBM2016-00030, Paper 8 at *7 (Aug. 2, 2016) (“[A]lthough no explicit
`
`mention of a financial product or service is made, the Specification of the ’715
`
`Patent makes clear that the method is applicable to private information which can
`
`include ‘bank account records, 401k account information, and credit card balance
`
`information.’”); Square at *5 (“[T]he patent claims must only be broad enough to
`
`cover a financial product or service.”); Google Inc. v. Unwired Planet, LLC,
`
`CBM2014-00006, Paper 11 at *11 (Apr. 8, 2014).
`
`The Board’s recent decision in Southside Bancshares illustrates the proper
`
`approach under the statute—focusing on the claimed embodiment, but not
`
`disregarding the specification in determining use of that embodiment in a financial
`
`product or service. Southside Bancshares, Inc. v. St. Isidore Research, LLC,
`
`CBM2016-00027, Paper 28 (Aug. 1, 2016). Although the claims were not
`
`explicitly limited to financial activity, the Board found that “verifying the
`
`
`
`10
`
`
`
`
`
`authenticity of a request to access an account is an activity that, at the very least,
`
`encompasses financial activity.” Id. at 10 (emphasis added). The Board rejected
`
`any argument that the claims must be explicitly limited to financial transactions,
`
`reasoning that “Patent Owner does not direct us to, nor can we find, language in §
`
`18(d)(1) of the AIA that suggests limiting covered business method patent
`
`eligibility” to claims that “cover only financial transactions, and not other kinds of
`
`transactions.” Id. (emphasis in original).
`
`The Board’s reasoning in Southside Bancshares applies with at least equal
`
`force here. Like Southside Bancshares, as noted above, the ’077 patent is “replete”
`
`with examples of “how the invention embodied in these challenged claims is used
`
`in the context of financial transactions.” Id. at 10. These “cited disclosures in the
`
`specification” show that method recited in claim 7 of the ’077 patent is at least
`
`“broad enough in scope to encompass a financial activity.” Id. at 11. As a result,
`
`the ’077 patent reinforces that the claimed method “at least in some instances, is
`
`performed as part of a financial transaction.” Id. at 12.
`
`The decisions cited by the Board do not compel a contrary result. See Order
`
`at 7. Although the Board in Qualtrics found that the claims were “devoid of any
`
`terms that reasonably could be argued as having any particular relation to a
`
`financial product or service” and faulted the petitioner for not “point[ing] to any
`
`language in the specification of the ’724 patent that limits the scope of the
`
`
`
`11
`
`
`
`
`
`challenged claims to a financial product or service,” nothing in Qualtrics requires
`
`explicit or inherent financial recitation in the claims to establish CBM-eligibility as
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`the Board has done so here. Qualtrics, LLC v. OpinionLab, Inc., CBM2015-
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`00164, Paper 8 at *5–6 (Feb. 3, 2016). To the contrary, the Board in Qualtrics
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`extensively relied on the specification in determining whether the claimed survey
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`tool is used in a financial product or service. For example, the Board found that
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`the specification described “many other” potential uses aside from financial data
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`processes, including the specific example of employees searching for guidance and
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`support information. Id. at 6. The Board further found that “the specification
`
`suggests that the survey tool is amenable to any one of a broad spectrum of
`
`websites wishing to obtain feedback from their visitors.” Id. at 7. Similarly, in
`
`Hewlett-Packard Co., the Board reasoned that “illustrative embodiments in the
`
`specification” may be sufficient to establish CBM eligibility where, inter alia, “the
`
`specification indicates particular advantages or applicability to financial
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`embodiments,” and in BMC Software, the specification was not sufficient because
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`it did not “attribute any significance” to the embodiments the petitioner relied on to
`
`show CBM eligibility. ServiceNow, Inc. v. Hewlett-Packard Co., CBM2015-
`
`00077, Paper 12 at *15 (Sept. 17, 2015); ServiceNow, Inc. v. BMC Software, Inc.,
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`CBM2015-00107, Paper 12 at *15 (Sept. 11, 2015).
`
`
`
`12
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`
`
`
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`The Board also expressed the concern that “if we were to adopt the position
`
`advocated by Plaid in its Petition, it would mean that any patent claiming
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`something that might potentially apply to a financial product or service would be a
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`covered business method patent eligible for review, regardless of its general utility
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`and application outside of finance.” Order at 12. But this case presents no such
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`slippery slope. The ’077 claims are not directed to “an Ethernet cable, a generic
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`computer monitor, or even a ballpoint pen” that have the same utility to non-
`
`financial uses as they do to financial uses. Hewlett Packard at *12 (quoting Sony
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`Corp. of Am. v. Network-1 Techs., Inc., CBM2015-00078, Paper 7 *11–12 (July 1,
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`2015)). Instead, Patent Owner here has admitted that the claims are limited such
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`that they have specific utility to financial products or services and the specification
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`repeatedly and exclusively touts the benefit of the claimed methods and
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`apparatuses to operations involving financial transactions. As a result, the ’077
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`patent is squarely within § 18(d)(1)’s definition of a CBM patent.
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`V. The Board’s Requirement that the Claims Recite an Express or Implicit
`Financial Limitation in this Case is Arbitrary and Capricious.
`The Board should have a uniform standard for what is needed to show that a
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`patent is CBM-eligible. The Board’s failure to abide by a common interpretation
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`of § 18(d)(1)’s definition of a CBM patent is arbitrary and capricious, and violates
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`Petitioner’s 5th Amendment rights because it results disparate treatment of
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`identically-situated petitioners. The Board’s decision in this case is arbitrary and
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`13
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`
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`capricious because it requires that Petitioner establish that the challenged claims
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`recite “explicit or inherent finance-related terminology or limitations,” Order at 12,
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`where the Board has not imposed that requirement in previous cases.
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`CBM reviews are formal administrative adjudications subject to the APA.
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`See SAS Inst., Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016);
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`Dickinson v. Zurko, 527 U.S. 150, 152 (1999). Under the APA, “[a] fundamental
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`norm of administrative procedure requires an agency to treat like cases alike.”
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`Westar Energy, Inc. v. FERC, 473 F.3d 1239, 1241 (D.C. Cir. 2007); FCC v. Fox
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`Television Stations, Inc., 556 U.S. 502, 515 (2009) (“An agency may not, for
`
`example, depart from a prior policy sub silentio or simply disregard rules that are
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`still on the books.”); Muwekma Ohlone Tribe v. Salazar, 708 F.3d 209, 215 (D.C.
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`Cir. 2013) (similar requirement under the Fifth Amendment). “If the agency
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`makes an exception in one case, then it must either make an exception in a similar
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`case or point to a relevant distinction between the two cases.” Westar, 473 F.3d at
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`1241. This requirement applies even if the prior decisions are not designated
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`“precedential.” Medicines Co. v. Kappos, 731 F. Supp. 2d 470, 477 (E.D. Va.
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`2010) (“But the APA requires that all agency decisions either be consistent with
`
`past decisions or give a reasonable explanation for any departure and this
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`obligation applies even to non-precedential decisions.”); see also Davila-Bardales
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`v. I.N.S., 27 F.3d 1, 5 (1st Cir. 1994) (“Put bluntly, we see no earthly reason why
`
`
`
`14
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`
`
`
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`the mere fact of nonpublication should permit an agency to take a view of the law
`
`in one case that is flatly contrary to the view it set out in earlier (yet
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`contemporary) cases, without explaining why it is doing so.”).
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`Here, the Board does not describe a difference between the present case and
`
`the cases cited above in Section IV that justifies requiring that Petitioner show
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`“explicit or inherent finance-related terminology or limitations.” Order at 12.
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`Indeed, as noted above, not even the cases that the Board cites in the Order
`
`required the petitioner to meet such a requirement. Because the Board imposed
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`this requirement on Petitioner in this case without any justification for treating this
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`case differently from previous cases, the Board’s decision not to institute is
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`arbitrary and capricious and violates Petitioner’s 5th Amendment rights.
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`VI. CONCLUSION
`In light of the foregoing, Petitioner requests that the Board reconsider the
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`Order and institute CBM Review proceedings on all challenged grounds against
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`claims 1–12 of the ’077 patent.
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`Dated: September 15, 2016
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`
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`Respectfully submitted,
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`
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`
`
`By: /Brian M. Buroker/
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`
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`Brian M. Buroker (Reg. No. 39,125) (lead)
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`15
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`CERFITICATE OF SERVICE
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`
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
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`of Petitioner’s Request for Rehearing by electronic mail on September 15, 2016 on
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`the counsel of record of the Patent Owner:
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`David M. Hoffman, CBM12233-0048CP1@fr.com
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`Dated: September 15, 2016
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`By: /Brian M. Buroker/
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`
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`Brian M. Buroker (Reg. No. 39,125)
`Attorney for Plaid Technologies, Inc.
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`16
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