`Trials@uspto.gov
`571-272-7822 Entered: January 23, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`Patent of FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`____________________
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`Case CBM2012-00005
`Patent 6,675,151C1
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`___________________
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`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and JENNIFER
`S. BISK, Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
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`Institution of Covered Business Method Review
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`37 C.F.R. § 42.208
`
`SUMMARY
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`On September 16, 2012, CRS Advanced Technologies, Inc. (“CRS”
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`or “Petitioner”) filed a Petition under 35 U.S.C. § 321, pursuant to Section
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`IBG LLC ET AL. - EXHIBIT 1007
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`Case CBM2012-00005
`Patent 6,675,151C1
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`18 of the Leahy-Smith America Invents Act (“AIA”) 1. The Petition
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`challenges claims 3, 6, 7, 16, 24, and 33 of U.S. Patent No. 6,675,151 (the
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`“’151 patent”) as unpatentable under 35 U.S.C. § 101 and under 35 U.S.C.
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`§ 112, ¶ 1 for lack of adequate written description support.
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`We determine that the ’151 patent is a covered business method
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`patent. Petitioner has demonstrated that it is more likely than not that the
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`challenged claims are unpatentable under § 101 because they encompass
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`only abstract unpatentable subject matter. However, Petitioner has not
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`shown that it is more likely than not that the challenged claims are
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`unpatentable under 35 U.S.C. § 112, ¶ 1. Thus, we institute a transitional
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`covered business method review for claims 3, 6, 7, 16, 24, and 33 of the
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`’151 patent based solely upon Petitioner’s challenge that the claims are
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`unpatentable under § 101.
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`THE ’151 PATENT
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`The ’151 patent generally relates to “human resources management.”
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`’151 Patent col. 1, ll. 14-15. In particular, the patent describes “automating
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`the performance of substitute fulfillment to assign a replacement worker to
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`substitute for a worker during a temporary absence, performing placement of
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`floating workers, tracking absences and entitlements of workers, notifying
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`interested parties regarding unexpected events and daily announcements, and
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`bidding for temporary workers.” ’151 patent Abstract.
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`The patent describes known methods for supporting substitute
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`fulfillment in the education field that typically use “one dedicated computer,
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`combined with specialized telephony equipment, including multiple phone
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`lines, and other equipment” and a database accessed through a dial-up
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`1 Pub. L. No. 112–29, 125 Stat. 284 (2011).
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`2
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`Patent 6,675,151C1
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`connection. Id. at col. 3, ll. 36-42, ll. 51-56. The invention described in the
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`’151 patent improves the prior art systems with a system implemented using
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`a central database located on a server and accessed over a communication
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`connection such as the Internet. Id, Abstract, col. 7, ll. 25-34. One preferred
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`embodiment uses the described invention to fulfill substitute teller
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`requirements in a retail bank. Id. at col. 14, ll. 47-50.
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`An ex parte reexamination of claims 3-13 of the ’151 patent was
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`granted on October 24, 2007 based upon several prior art references. A
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`reexamination certificate was issued on October, 20, 2009 (prior to the
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`decision in the Supreme Court case of Bilski v. Kappos) with original claims
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`1 and 2, amended claims 3, 6, and 9, and new claims 14-55. Ex. 1002.
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`The challenged claims encompass a method and system of substitute
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`fulfillment “for a plurality of organizations.” Ex. 1002 claims 3 and 6. The
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`Petition challenges six claims; claims 3 and 6 are independent claims, claim
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`7 depends from claim 6, and claims 16, 24, and 33 depend from claim 3.
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`Claim 3 is as follows:
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`A method for performing substitute fulfillment for a plurality of
`different organizations comprising:
`receiving absentee information representing an absent worker that
`will be or is physically absent from an organization worksite via at least
`one communication link;
`generating and posting by one or more computers a list of one or
`more positions of one or more absent workers that need to be filled by
`one or more substitute workers on a website and providing, for one or
`more of the positions, information indicating directly or indirectly an
`organization worksite location for the respective position;
`receiving a response [by] comprising an acceptance, by the one or
`more computers, from a substitute worker selecting a posted position on
`the website via an Internet communication link; and
`securing, in response to receiving the acceptance from the
`substitute worker, via the Internet communication link and the one or
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`3
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`Patent 6,675,151C1
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`more computers, the posted position for the substitute worker who
`selected the posted position to fill in for the absent worker, the securing
`comprising halting, at the one or more computers, further processing to
`fulfill the posted position with any other substitute worker.
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`Claim 6 is as follows:
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`A substitute fulfillment system that secures one or more substitute
`workers for a plurality of organizations comprising:
`a database comprising worker records, said worker records having
`information associated with workers for each of the organizations, and
`substitute records, said substitute records having information associated
`with at least one substitute worker, and;
`one or more computers comprising a server connected to the
`database, the server configured for:
`receiving absentee information representing an absent worker that
`will be or is physically absent from an organization worksite via at least
`one communication link;
`generating and posting a list of one or more positions of one or
`more absent workers that need to be filled by one or more substitute
`workers on a website and providing, for one or more of the positions,
`information indicating directly or indirectly an organization worksite
`location for the respective position;
`receiving a response [by] comprising an acceptance from a
`substitute worker selecting a posted position on the website via an
`Internet communication link; and
`securing, in response to receiving the acceptance from the
`substitute worker, via the Internet communication link and the one or
`more computers, the posted position for the substitute worker who
`selected the posted position to fill in for the absent worker, the securing
`comprising halting, at the one or more computers, further processing to
`fulfill the posted position with any other substitute worker.
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`CLAIM CONSTRUCTION
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`As a step in our analysis for determining whether to institute a trial,
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`we determine the meaning of the claims. Consistent with the statute and the
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`legislative history of the AIA, the Board will interpret claims using the
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`broadest reasonable construction. See Office Patent Trial Practice Guide, 77
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`4
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`Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR § 100(b). This is true
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`even if a district court has construed the patent claims.2 See Changes to
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`Implement Inter Partes Review Proceedings, Post-Grant Review
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`Proceedings, and Transitional Program for Covered Business Method
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`Patents, Final Rules, 77 Fed. Reg. 48,680, 48,697(Aug. 14, 2012) (citing In
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`re NTP, Inc., 654 F.3d 1269, 1274 (Fed. Cir. 2011)).
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`There is a “heavy presumption” that a claim term carries its ordinary
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`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
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`1359, 1366 (Fed. Cir. 2002). By “plain meaning” we refer to the ordinary
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`and customary meaning the term would have to a person of ordinary skill in
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`the art. Such terms have been held to require no construction. E.g., Biotec
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`Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d
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`1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction of
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`“melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365,
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`1380 (Fed. Cir. 2001) (finding no error in court’s refusal to construe
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`“irrigating” and “frictional heat”).
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`Petitioner provides a table of several claim terms along with their
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`purported broadest reasonable interpretations in view of the
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`specification. Pet. 18-19. Patent Owner does not directly address these
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`proposed interpretations. See generally Prelim. Resp. With two exceptions,
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`we agree that for purposes of this decision Petitioner’s proposed
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`constructions provided in the table spanning pages 18-19 of the petition
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`correspond to the plain and ordinary meaning in the context of the
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`2 In this case, there has been a construction of some of the terms of this
`patent in a district court case. Frontline Placement Techs., Inc. v. CRS, Inc.,
`No. 2:07-cv-2457 (E.D. Pa.) (Markman Order Feb. 8, 2011). Neither party
`asserts that the district court’s construction is relevant here.
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`specification and we therefore adopt Petitioner’s construction for those
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`terms.
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`The two exceptions are the terms “organization worksite” and
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`“posting.” Pet. 19. Petitioner contends that the broadest reasonable
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`construction of “organization worksite” is “any location associated with any
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`work environment amenable to substitute fulfillment, information
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`compilation or notification.” Petitioner provides no explanation or
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`supporting citation to the record for the proposed construction. Therefore,
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`we do not accept Petitioner’s construction of the term. In the absence of any
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`explicit definition in the specification, we adopt a broad interpretation of the
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`term “organization worksite”: “any location associated with any work
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`environment.” Again, without explanation, Petitioner contends that the
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`broadest reasonable interpretation for “posting” is “the act of visually
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`displaying information, including in the form of a list.” Id. In the absence
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`of any supporting citation to the record, we do not accept Petitioner’s
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`construction of the term. Because there is no explicit definition of the term
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`in the specification, we adopt a broad interpretation of the term “posting”:
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`“the act of visually displaying information.”
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`For the other claim terms not specifically addressed by the Petitioner,
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`as Petitioner has requested, we apply the plain and ordinary meaning that the
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`term would have had to a person of ordinary skill in the art.
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`COVERED BUSINESS METHOD
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`A covered business method patent “claims a method or corresponding
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`apparatus for performing data processing or other operations used in the
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`practice, administration, or management of a financial product or service,
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`except that the term does not include patents for technological inventions.”
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`AIA § 18(d)(1). The legislative history of the AIA “explains that the
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`definition of covered business method patent was drafted to encompass
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`patents ‘claiming activities that are financial in nature, incidental to a
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`financial activity or complementary to a financial activity.’” 77 Fed. Reg.
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`48,735 (Aug. 14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8,
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`2011)).
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`Patent Owner argues that the Petitioner has not demonstrated that the
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`’151 patent is properly a covered business method patent, asserting that the
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`challenged claims are “neutral with respect to the practice, administration, or
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`management of a financial product or service,” and are therefore not
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`properly “directed to” a covered business method. Prelim. Resp. 11- 12
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`(quoting 77 Fed. Reg. at 48,736 (“A patent having one or more claims
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`directed to a covered business method is a covered business method patent
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`for purposes of the review, even if the patent includes additional claims.”)).
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`Patent Owner adds that “[t]here are no claim elements directed to money,
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`financial transactions, or any type of activity that is inherently a financial
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`product or service.” Prelim. Resp. 13.
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`We are not persuaded by Patent Owner’s argument, which is too
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`narrowly focused on the “directed to” language provided in the Office’s
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`explanation of the rules. Patent Owner’s argument does not take into
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`consideration the legislative intent and history behind the definition of
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`covered business method. For example, in considering public comments
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`during the rulemaking process, the Office stated that the legislative history
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`supported the notion that the definition of covered business method patents
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`be broadly interpreted to encompass patents claiming activities that are
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`financial in nature, incidental to a financial activity, or complementary to a
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`financial activity. 77 Fed. Reg. 157 (August 14, 2012) 48734, 48735. The
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`Office also stated that it did not adopt the suggestion that the term financial
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`product or service be limited to the products or services of the financial
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`services industry as it ran contrary to the intent behind § 18(d)(1). Id. at
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`48736. Nothing in the statute, its legislative history, or the rules requires
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`that a covered business method patent include claim elements that map
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`directly to financial products or services as Patent Owner seems to suggest.
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`The ’151 patent includes a preferred embodiment directed to a
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`“Substitute Teller Fulfillment System” that fulfills the temporary
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`employment requirements of a “retail bank” (’151 patent col. 14, l. 47—col.
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`15, l. 19). In addition, claim 1 explicitly includes “retail banks” as one of
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`the organizations for which the “computer-implemented substitute
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`fulfillment system … identifies and secures substitute workers for.” ’151
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`patent, col. 17, ll. 45-46. Both of the challenged independent claims, claims
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`3 and 6, are directed to substitute fulfillment “for a plurality of different
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`organizations.” These claims are broad enough to include substitute
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`fulfillment for retail banks (or any other financial institution). Retail banks
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`are involved in financial activity. In fact, one of a retail bank’s main
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`purposes is to provide financial products and services to its customers. As
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`explained in the Background of the Invention, the consequences of employee
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`absence can affect the bank’s provision of these products and services. ’151
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`patent, col. 1, ll. 29-54. Thus, substitute fulfillment is an activity that is at
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`least “incidental” and/or “complementary to a financial activity” and
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`qualifies as a covered business method patent under § 18 of the AIA.
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`8
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`To determine whether a patent is a technological invention, we
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`consider “[w]hether the subject matter as a whole recites a technological
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`feature that is novel and unobvious over the prior art, and solves a technical
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`problem using a technical solution.” 37 C.F.R. § 42.301(b). The
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`technological features recited by the ’151 patent were well-known at the
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`relevant time period. For example, the ’151 patent states that “[a]t present,
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`computer systems for supporting substitute fulfillment are known in the
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`education field.” ’151 patent, col. 3, ll. 36-37. The technological limitations
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`of the challenged claims include: a “communication link,” an “Internet
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`communication link,” a “web communication link,” “one or more
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`computers,” “a website,” “a database,” “a server.”3 ’151 patent claims 3, 6,
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`7, 16, 24, and 33. None of these limitations, all of which refer to generic
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`hardware, was novel or unobvious on the effective filing date of the ’151
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`patent.
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`We have considered whether this invention solves a technical problem
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`using a technical solution, but because we conclude that the ’151 patent does
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`not recite a technological feature that is novel and unobvious, we hold that
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`the ’151 patent is a covered business method patent and is eligible for the
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`transitional covered business method patent program.
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`THE § 101 CHALLENGE
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`Petitioner challenges claims 3, 6, 7, 16, 24, and 33 as invalid under 35
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`U.S.C. § 101. Pet., Paper 2, at 20. We agree that under the most recent case
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`3 Such features are of the type that would not typically render a patent a
`technological invention under 37 C.F.R. 42.301(b), as explained per Office
`guidelines. 77 Fed. Reg. 157 (August 14, 2012) at 48,763-64.
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`law, these claims are more likely than not directed to patent-ineligible
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`subject matter.
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`Under the AIA, any ground that could be raised under 35 U.S.C.
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`§§ 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions
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`not relevant here) in a covered business method review. Patent Owner
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`asserts that § 101 is not available to challenge patentability in a covered
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`business method review because it is not included in §§ 282(b)(2) or (3).
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`We disagree.
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`As the Office described in the final rules implementing post-grant
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`review and covered business method review in the Federal Register, the
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`“grounds available for post-grant review include 35 U.S.C. 101 and 112,
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`with the exception of compliance with the best mode requirement.” 77 Fed.
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`Reg. 48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with
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`both the relevant case law and the legislative history. See e.g., Mayo
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`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012)
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`(addressing invalidity under § 101 when it was raised as a defense to an
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`infringement claim); Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
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`12 (1966) (stating that the 1952 Patent Act “sets out the conditions of
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`patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103);
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`Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012); H.R.
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`Rep. No.112-98, at 47 (2011); 157 Cong. Rec. S1375 (daily ed. Mar. 8,
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`2011). We have reviewed Patent Owner’s contentions and citations to the
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`contrary, but do not find them persuasive.
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`Patent Owner also argues that the claims are patentable because a
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`machine is integral to the claimed subject matter. Prelim. Resp. 32-36.
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`According to Patent Owner, the “one or more computers,” “Internet
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`communication link,” and “website” recited in claim 3 are analogous to the
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`GPS receiver in SiRF Tech., which the Federal Circuit found to be essential
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`to the operation of the claimed method. Id. at 34 (citing SiRF Tech., Inc. v.
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`Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010)). We do not
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`agree.
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`Claim 3 does not satisfy the “machine or transformation” test because
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`it is not tied to a particular machine or apparatus and does not transform a
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`particular article into a different state or thing. See Bilski v. Kappos, 130 S.
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`Ct. 3218, 3224 (2010). Moreover, the claimed technology in the method,
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`generic servers, communication links, and databases, is employed only for
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`the purposes of creating more efficient communication and data storage—
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`basic functions of those components. ’151 patent, col. 4, ll.46-58 (stating
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`that the advantages of the present invention are “to provide a reliable,
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`efficient system… that has low overhead and requires little oversight …
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`include[s] an interface to the internet … [and] a central database”); also see
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`col. 3, ll. 36-64 (describing the prior art automated systems). Thus, the
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`technology does not impose meaningful limits on the scope of the claims
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`and is not integral to the invention as a whole. Bancorp Servs., L.L.C. v. Sun
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`Life Assurance Corp., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“To salvage an
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`otherwise patent-ineligible process, a computer must be integral to the
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`claimed invention, facilitating the process in a way that a person making
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`calculations or computations could not.”); SiRF Tech, 601 F.3d at 1333 (“In
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`order for the addition of a machine to impose a meaningful limit on the
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`scope of a claim, it must play a significant part in permitting the claimed
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`method to be performed, rather than function solely as an obvious
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`mechanism for permitting a solution to be achieved more quickly . . .”).
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`Patent Owner also argues that the method of claim 3 cannot be viewed
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`as an abstract idea because it represents an improvement to prior systems.
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`Prelim. Resp. 34. However, the technology recited in claim 3 merely allows
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`a known method of fulfilling substitute employees, using one computer with
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`a database and specialized telephony equipment, to be implemented more
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`efficiently using the basic functions of the recited generic technology,
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`including servers, a centralized database, a website, and the Internet. ’151
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`patent, col. 3, ll. 15-64 (describing the prior art method of fulfilling
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`substitute employees); Bancorp, 687 F.3d at 1279 (finding a claim not
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`patent-eligible when “the computer simply performs more efficiently what
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`could otherwise be accomplished manually”). Thus, we agree with
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`Petitioner that it is more likely than not that claim 3 covers subject matter
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`that is patent ineligible.
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`Claim 6, claiming a “substitute fulfillment system,” tracks the
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`language of claim 3 with the addition of a “database” and a “system” for
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`performing the method claimed in claim 3. These additions do not
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`necessarily change the patent-eligibility analysis. See Bancorp, 687 F.3d at
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`1276-77 (“[W]e look not just to the type of claim but also ‘to the underlying
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`invention for patent-eligibility purposes.”).4 “As the Supreme Court has
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`explained, the form of the claims should not trump basic issues of
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`patentability.” Id. at 1277 (citing Parker v. Flook, 437 U.S. 584, 593
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`(1978)). In this case, we are persuaded that claim 6 is simply an alternative
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`4 In CLS Bank Int’l v. Alice Corp, the Federal Circuit held that the format of
`the various method, system, and media claims asserted in that case “does not
`change the patent eligibility analysis under § 101.” 685 F.3d 1341, 1353
`(Fed. Cir. 2012). That case was subsequently vacated in an order granting
`rehearing en banc. 484 Fed. Appx. 559 (Fed. Cir. Oct. 9, 2012).
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`format for claiming the same underlying patent-ineligible subject matter of
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`claim 3.
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`We are therefore persuaded that it is more likely than not that
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`independent claims 3 and 6 encompass an abstract idea that is patent
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`ineligible. For the same reasons, we are persuaded that it is more likely than
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`not that dependent claims 7, 16, 24, and 33 encompass patent-ineligible
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`subject matter.
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`THE WRITTEN DESCRIPTION CHALLENGE
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`Petitioner also challenges claims 3, 6, 7, 16, 24, and 33 as lacking
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`adequate written description support so as to preclude patentability under 35
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`U.S.C. § 112, ¶ 1. Pet. 33. We are not persuaded that it is more likely than
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`not that any of the challenged claims are invalid for lacking an adequate
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`written description.
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`Petitioner argues that the ’151 patent specification fails to mention the
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`“organization worksite location” recited by claims 3 and 6 and fails to show
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`that the inventors were “in possession of the step of generating and posting
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`or otherwise providing information indicating directly or indirectly an
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`organization worksite location for the respective position.”5 Pet. 48-49. The
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`’151 patent discloses that a preferred embodiment of the invention stores
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`5 Petitioner spends much of this section of the brief arguing that the ’151
`patent is not eligible for the benefit date of its parent application. Pet. 35-48.
`This is irrelevant to the issue at hand—whether it is more likely than not that
`any of the challenged claims is unpatentable. We therefore need not and do
`not consider whether the ’151 patent is properly accorded benefit of its
`parent application. See Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345
`(Fed. Cir. 2000) (“For purposes of § 112 ¶ 1, the relevant specifications are
`those of the [two patents at issue]; earlier specifications are relevant only
`when the benefit of an earlier filing date is sought under 35 U.S.C. § 120.”).
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`“classroom location information” and that the system may contact
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`replacement workers to inform them to report to “a particular branch office.”
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`’151 patent col. 9, ll. 48-49, col. 15, l. 5. Moreover, the ’151 patent
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`discloses that in a preferred embodiment, a client may enter “pertinent
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`information” including “the geographical location” of the available position.
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`Id. at col. 16, l. 54. Petitioner asserts that these statements fail to disclose
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`that the information is provided on a website or that it is provided as part of
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`the “generating and posting” step. Pet. 50-51. As support, Petitioner cites to
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`expert testimony stating that “these citations do not, either individually or
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`collectively, convey to one of ordinary skill in the art at the time of filing
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`that the inventors were in possession of the claimed ‘information indicating
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`directly or indirectly an organization worksite location for the respective
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`position.’” Pet. 51 (quoting Ex. 1007 ¶¶ 58-64). We do not find Petitioner’s
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`argument persuasive.
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`To show possession of a claimed invention, the specification of a
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`patent must reasonably convey to those of skill in the art that, as of the filing
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`date, the inventor had possession of the claimed subject matter. Ariad
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`Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
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`banc). Petitioner does not direct us to persuasive evidence regarding the
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`level of ordinary skill in the art at the relevant time period. For example,
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`Petitioner does not explain (or direct us to evidence that explains) what
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`considerations would have been pondered by one with ordinary skill in the
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`art regarding what stored characteristics would have been “generated and
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`posted” as a list of information. It is not enough to point out that the
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`specification does not explicitly disclose every claim limitation verbatim.
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`Id. at 1352 (stating that the description requirement does not demand that
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`“the specification recite the invention in haec verba”).
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`Because we are not persuaded that the challenged claims are invalid
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`under § 112, ¶ 1, we decline to institute a covered business method
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`proceeding based on this theory.
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`In consideration of the foregoing, it is hereby
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`DECISION
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`ORDERED that the Petition is granted as to claims 3, 6, 7, 16, 24, and
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`33 of the ’151 patent.
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(a), a covered
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`business method patent review of the ’151 patent is hereby instituted
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`commencing on the entry date of this Order, and pursuant to 35 U.S.C.
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`§ 324(d) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a
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`trial.
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`FURTHER ORDERED that the trial is limited to § 101 and no other
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`grounds are authorized.
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`FURTHER ORDERED that an initial conference call with the Board
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`is scheduled for 2 PM EST on February 7, 2013. The parties are directed to
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`the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
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`2012) for guidance in preparing for the initial conference call. The parties
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`should come prepared to discuss any proposed changes to the Scheduling
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`Order herewith and any motions the parties anticipate filing during the trial.
`
`15
`
`
`
`
`
`Case CBM2012-00005
`Patent 6,675,151C1
`
`For Patent Owner
`
`John Donohue
`Woodcock Washburn, LLP
`donohue@woodcock.com
`
`For Petitioner
`
`E. Robert Yoches
`Finnegan, Henderson, Farabow,
`Garrett & Dunner LLP
`bob.yoches@finnegan.com
`
`
`16