Paper 7
`Entered: August 23, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00045
`Patent 6,317,783 B1
`_______________
`
`
`
`Before KEVIN F. TURNER, MICHAEL W. KIM, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`Entered: August 23, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00045
`Patent 6,317,783 B1
`_______________
`
`
`
`Before KEVIN F. TURNER, MICHAEL W. KIM, and MICHAEL R.
`ZECHER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Plaid Technologies, Inc. (“Petitioner”) filed a Petition to institute a
`
`covered business method patent review of claims 1–36 of U.S. Patent No.
`
`6,317,783 B1 (Ex. 1001, “the ’783 patent”). Paper 2 (“Pet.”). Yodlee, Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`For the reasons given below, we determine that Petitioner, on this record,
`
`has not shown that it is more likely than not that claims 1–36 do not
`
`constitute statutory subject matter under 35 U.S.C. § 101, the only ground of
`
`unpatentability set forth in the Petition. Accordingly, we do not institute a
`
`covered business method patent review of the ’783 patent.
`
`B.
`
`Related Proceedings
`
`Petitioner and Patent Owner identify the following district court
`
`proceedings concerning the ’783 patent: Yodlee, Inc. v. Plaid Technologies,
`
`Inc., Civ. No. 14-cv-01445 (D. Del.). Pet. 75; Paper 5, 1. Petitioner and
`
`Patent Owner identify also the following request for inter partes review of
`
`the ’783 patent involving the same parties: Case IPR2016-00273. Pet. 75;
`
`Paper 5, 1.
`
`C.
`
`Standing
`
`Section 18 of the American Invents Act (“AIA”) governs the
`
`transitional program for covered business method patent reviews. Section
`
`18(a)(1)(B) of the AIA limits such reviews to persons, or their privies, that
`
`have been sued or charged with infringement of a covered business method
`
`patent. Petitioner asserts that, because it has been sued for infringement of
`
`the ’783 patent, it has standing to file its Petition. Pet. 42–43. Based on the
`
`record before us, we agree.
`
`
`
`2
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`D.
`
`The ’783 Patent
`
`The ’783 patent discloses the following under the heading “Field of
`
`Invention”:
`
`The invention relates to an apparatus and process for
`automated aggregation and delivery of electronic personal
`information or data (PI). The invention further relates to the
`automation of transactions involving electronic PI.
`
`Ex. 1001, 1:23–26. Figure 2 of the ’783 patent is reproduced below.
`
`
`
`Figure 2 depicts end user 210, who accesses client computer 220 running
`
`client software 270 such as a web browser. Ex. 1001, 4:27–32. Client
`
`computer 220 accesses PI engine 240 running on PI host 290 via Internet
`
`230, and client computer 220 can display PI accessed from PI engine 240 to
`
`end user 210 using client software 270. Ex. 1001, 4:33–34, 4:39–43. PI
`
`engine 240 includes PI store 280, which is examined for “freshness” and can
`
`be “refreshed by directly reacquiring the PI from the particular information
`
`
`
`3
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`provider’s Web site 250 running on the provider’s computer system 260
`
`accessed across the Internet 230.” Ex. 1001, 4:34–47.
`
`Figure 3 of the ’783 patent is reproduced below.
`
`
`
`Figure 3 depicts a block diagram of the components of PI engine 240.
`
`Ex. 1001, 4:52–53. PI engine 240 can include PI access/transact component
`
`340, which supports the update, acquisition, and transaction functionality of
`
`PI engine 240. Ex. 1001, 9:30–32. Access/transact component 340 utilizes
`
`“the access procedure and information needed for the particular PI” from
`
`provider store 310 along with “verification and access data” found in user
`
`store 360 for processing PI transactions. Ex. 1001, 9:38–48.
`
`E.
`
`Illustrative Claim
`
`Petitioner challenges claims 1–36 of the ’783 patent. Claims 1, 18,
`
`and 20 are the only independent claims. Independent claim 1 is illustrative
`
`of the challenged claims and is reproduced below:
`
`
`
`4
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`A method for delivering non-public personal
`1.
`information relating to an end user via a wide-area computer
`network to an end user from at least one of a plurality of
`information providers securely storing the personal information
`under control of a processor located remotely from the
`information providers and the end user, the method comprising
`the steps of:
`
`(a) the processor connecting with at least one information
`provider;
`
`(b) for a selected end user, the processor retrieving
`personal information for the selected end user from the
`connected at least one information provider based on end user
`data associated with the selected end user and information
`provider data associated with the connected one or more
`information providers, the end user data including information
`identifying the plurality of information providers securely
`storing the personal information relating to the end user, the
`provider data including a protocol for instructing the processor
`how to access the securely stored personal information via the
`network, the information accessible to the processor using the
`protocol also being accessible by the end user via the network
`independently of the system for delivering personal information;
`and
`
`(c) the processor storing the retrieved personal information
`in a personal information store for access by the selected end
`user.
`
`Ex. 1001, 16:46–17:6.
`
`F.
`
`Covered Business Method Patent
`
`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
`
`
`
`5
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`§ 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. See 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”).
`
`1.
`
`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)
`
`(discussing the scope of the term “covered business method patent” and, in
`
`particular, what may fall within the purview of a financial product or
`
`service). Indeed, the Federal Circuit held that, “as a matter of statutory
`
`construction, the definition of ‘covered business method patent’ is not
`
`limited to products and services of only the financial industry, or to patents
`
`owned by or directly affecting activities of financial institutions.” Id. at
`
`1325, quoted with approval in Sightsound Techs., LLC, v. Apple Inc., 809
`
`F.3d 1307, 1315 (Fed. Cir. 2015).
`
`Petitioner asserts that all the claims of the ’783 patent are, at a
`
`minimum, “incidental . . . or complementary to a financial activity.”
`
`Pet. 26–34 (citing Ex. 1001). More specifically, Petitioner asserts, among
`
`other reasons, that dependent claims 4, 23, and 24 “require executing
`
`‘transactions,’ which the [’783] patent states are primarily electronic
`
`financial transactions.” Pet. 31–34 (citing Ex. 1001, 3:5–9, 3:15–19, 14:3–
`
`24, 16:8–38, Fig. 11). We agree that dependent claims 4, 23, and 24 recite
`
`
`
`6
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`executing transactions that are, at a minimum, “incidental . . . or
`
`complementary to a financial activity.” The ’783 patent discloses expressly
`
`that “[t]he present invention further facilitates a variety of electronic
`
`transactions involving PI such as stock trading, retail purchases, bill
`
`payment, bank account fund transfers or other transactions” (Ex. 1001, 3:15–
`
`19), all of which are transactions executed as a part of a financial activity.
`
`Indeed, Patent Owner has not identified, and we are unable to ascertain
`
`independently, any transaction in the ’783 patent that is not an electronic
`
`financial transaction.
`
`On this record, we are persuaded by Petitioner’s explanation that at
`
`least the transactions recited as executed in dependent claims 4, 23, and 24
`
`satisfy the “financial product or service” component of the definition for a
`
`covered business method patent set forth in § 18(d)(1) of the AIA.
`
`2.
`
`Technological Invention
`
`The definition of a “covered business method patent” in §18(d)(1) of
`
`the AIA does not include patents for “technological inventions.” When
`
`determining whether a patent is for a technological invention, we consider
`
`the following: “whether the claimed subject matter as a whole [(1)] recites a
`
`technological feature that is novel and unobvious over the prior art; and [(2)]
`
`solves a technical problem using a technical solution.” 37 C.F.R.
`
`§ 42.301(b). The following claim-drafting techniques typically do not
`
`render a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`
`
`7
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`
`14, 2012).
`
`Concerning the first factor of the “technological invention” analysis,
`
`Petitioner contends that the claims of the ’783 patent are not directed to a
`
`technological invention because the subject matter, as a whole, does not
`
`recite a technological feature that is novel and non-obvious. See Pet. 34–40
`
`(citing Exs. 1001, (Declaration of Todd C. Mowry) 1002). Petitioner argues
`
`that the claims only recite known, prior art technology, such as a “network,”
`
`“processor,” “store,” “web sites,” and “delivery platforms.” Pet. 35, 37.
`
`Petitioner asserts that the lack of detailed, enabling description of these
`
`technologies in the ’783 patent suggests these technologies are conventional.
`
`As one example, Petitioner alleges that there is nothing in the ’783 patent
`
`that suggests that the claimed “processor” is anything more than a generic
`
`well-known computer component. Pet. 35–36 (citing Ex. 1001, 6:13–18;
`
`Ex. 1002 ¶ 78). Petitioner provides a similar analysis for “store.” Pet. 36–
`
`37 (citing Ex. 1001, 5:9–25, 5:57–6:4; Ex. 1002 ¶ 78). Petitioner alleges
`
`additionally that, even when considered as a whole, the claims are directed
`
`to methods of “[t]he use of a generic processor for retrieving and storing
`
`specific data from information providers and executing a transaction[,
`
`which] were . . . exceedingly well known in the art, and do not transform the
`
`claims into a technological invention.” Pet. 38–40 (citing Ex. 1001, 2:3–4,
`
`2:42–63, 3:5–9, 3:15–19; Ex. 1002 ¶¶ 28, 29, 31, 74, 85, 87; Ex. 1004, 2:10–
`
`
`
`8
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`17, 4:36–53; Ex. 1005, 23:6–10, 25:51–59; Ex. 1007, 3:60–64, 5:32–34;
`
`Ex. 1008, 2:36–51). Patent Owner does not assert explicitly that the claims
`
`of the ’783 patent, as a whole, do not recite a technological feature that is
`
`novel and non-obvious. See generally Prelim. Resp. 9–17. On this record,
`
`we are persuaded by Petitioner’s explanation that the claims of the ’783
`
`patent, as a whole, do not recite a technological feature that is novel and
`
`non-obvious.
`
`We recognize that Patent Owner presents arguments directed to
`
`whether certain claims of the ’783 patent solve a technical problem using a
`
`technical solution, which is the second factor involved in determining
`
`whether a patent is for a “technological invention.” Prelim. Resp. 10–17.
`
`We, however, need only assess whether one of the factors set forth in
`
`37 C.F.R. § 42.301(b) is deficient to determine that the claims of the ’783
`
`patent are not for a “technological invention.”1 See Blue Calypso, 815 F.3d
`
`at 1341 (holding that the Board’s determination that the patents at issue do
`
`not claim a technological invention was not arbitrary or capricious and was
`
`supported by substantial evidence based solely on the second factor—
`
`namely, whether the claimed subject matter as a whole solves a technical
`
`problem using a technical solution.) On this record, we are persuaded by
`
`Petitioner’s explanation as to why the subject matter of the claims, as a
`
`
`1 The legislative history of the AIA supports this interpretation of the
`“technological invention” exception. See, e.g., 157 Cong. Rec. S1364 (daily
`ed. Mar. 8, 2011) (Sen. Schumer stated the “‘technological invention[]’
`exception only excludes those patents whose novelty turns on a
`technological innovation over the prior art and are concerned with a
`technical problem which is solved with a technical solution . . . .” (emphases
`added)).
`
`
`
`9
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`whole, does not recite a technological feature that is novel and non-obvious
`
`over the prior art and, therefore, we are satisfied that Petitioner has met its
`
`burden of demonstrating that the ’783 patent is not for a “technological
`
`invention.”
`
`3.
`
`Summary
`
`Because we have determined that at least dependent claims 4, 23, and
`
`24 of the ’783 patent satisfy the “financial product or service” component of
`
`the definition for a covered business method patent, and the ’783 patent is
`
`not for a “technological invention,” this patent is a covered business method
`
`patent eligible for review.
`
`F.
`
`Asserted Ground of Unpatentability
`
`Petitioner challenges claims 1–36 as not constituting statutory subject
`
`matter under 35 U.S.C. § 101.
`
`II. ANALYSIS
`
`A.
`
`Claims 1–36 as Failing to Recite Statutory Subject Matter
`
`Petitioner contends that claims 1–36 fail to recite statutory subject
`
`matter under 35 U.S.C. § 101. Pet. 43–75 (citing Exs. 1001, 1002, 1005–
`
`1010, 1013, 1014). Patent Owner disagrees. Prelim. Resp. 18–27 (citing
`
`Exs. 1001, 2001). Claims 1, 18, and 20 are independent.
`
`1.
`
`Relevant Law
`
`Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
`
`“new and useful process, machine, manufacture, or composition of matter.”
`
`35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
`
`to include implicit exceptions: “[l]aws of nature, natural phenomena, and
`
`abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int’l, 134 S. Ct. 2347, 2354 (2014).
`
`
`
`10
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`In determining whether a claim falls within the excluded category of
`
`abstract ideas, we are guided in our analysis by the Supreme Court’s two-
`
`step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
`
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–97
`
`(2012)). In accordance with that framework, we first determine whether the
`
`claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
`
`at 2356 (“On their face, the claims before us are drawn to the concept of
`
`intermediated settlement, i.e., the use of a third party to mitigate settlement
`
`risk”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
`
`petitioners’ application explain the basic concept of hedging, or protecting
`
`against risk”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
`
`respondents’ claims according to the above statements from our cases, we
`
`think that a physical and chemical process for molding precision synthetic
`
`rubber products falls within the § 101 categories of possibly patentable
`
`subject matter”); Parker v. Flook, 437 U.S. 584, 594–595 (1978)
`
`(“Respondent’s application simply provides a new and presumably better
`
`method for calculating alarm limit values”); Gottschalk v. Benson, 409 U.S.
`
`63, 64 (1972) (“They claimed a method for converting binary-coded decimal
`
`(BCD) numerals into pure binary numerals”).
`
`In articulating what the claims are directed to, however, our reviewing
`
`court has cautioned as follows:
`
`The district court concluded that the claims were directed to the
`abstract idea of “storing, organizing, and retrieving memory in a
`logical table” or, more simply, “the concept of organizing
`information using tabular formats.” J.A. 321 (emphasis
`omitted). Likewise, Microsoft urges the court to view the claims
`as being directed to “the concepts of organizing data into a
`logical table with identified columns and rows where one or more
`
`
`
`11
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`rows are used to store an index or information defining
`columns.” Appellee’s Br. 17. However, describing the claims at
`such a high level of abstraction and untethered from the language
`of the claims all but ensures that the exceptions to § 101 swallow
`the rule. See Alice, 134 S.Ct. at 2354 (noting that “we tread
`carefully in construing this exclusionary principle [of laws of
`nature, natural phenomena, and abstract ideas] lest it swallow all
`of patent law”); cf. Diamond v. Diehr, 450 U.S. 175, 189 n. 12,
`101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (cautioning that
`overgeneralizing claims, “if carried to its extreme, make[s] all
`inventions unpatentable because all inventions can be reduced to
`underlying principles of nature which, once known, make their
`implementation obvious”).
`
`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). The
`
`Federal Circuit in Enfish subsequently analyzed the claim language and
`
`specification in determining that the claims in that proceeding were directed
`
`to “a self-referential table for a computer database.” Id. at 1337–1339
`
`(emphasis added).
`
`If the claim is “directed to” a patent-ineligible abstract idea, we then
`
`consider the elements of the claim—both individually and as an ordered
`
`combination—to assess whether the additional elements transform the nature
`
`of the claim into a patent-eligible application of the abstract idea. Alice, 134
`
`S. Ct. at 2355. This is a search for an “inventive concept”—an element or
`
`combination of elements sufficient to ensure that the claim amounts to
`
`“significantly more” than the abstract idea itself. Id.
`
`2. Whether Claims 1–36 Recite an Abstract Idea
`
`Petitioner asserts that the claims of the ’783 patent are directed to
`
`“retrieving and storing personal information,” which Petitioner asserts has
`
`been “long-performed” and held repeatedly by our reviewing court as a
`
`patent-ineligible abstract idea. Pet. 43–46 (Exs. 1001, 1002, 1013, 1014,
`
`
`
`12
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`2001). More specifically concerning what the claims of the ’783 patent are
`
`directed to, Petitioner asserts the following:
`
`The ’783 Patent’s independent method claim, claim 1, is
`representative and recites a processor “retrieving personal
`information” and then “storing” it. The claim then enunciates
`some commonplace features of this process, such as that the user
`must be able to access the data from either the original website
`or the location where the gathered data is ultimately stored.
`Ex. 1002, Mowry Decl., ¶ 80.
`
`Pet. 43. Petitioner later asserts the following:
`
`The ’783 Patent’s claims do not even require a specific
`environment for this retrieving and storing of information,
`instead reciting “a wide-area computer network” (claims 1, 18)
`or a “network” (claim 20). See Ex. 1002, Mowry Decl., ¶ 71.
`The patent contains two Beauregard media claims (claims 18–
`19) covering a “digital storage device” with “executable
`instructions” to perform the method, which are likewise
`ineligible for the same reasons as the method claims. See Alice,
`134 S. Ct. at 2360; see Ex. 1002, Mowry Decl., ¶ 71. The ’783
`Patent’s system claims (claims 20–36) rewrite the ineligible
`method claims by reiterating the standard computer terms found
`in the method claim, like “store” and “processor.” See Ex. 1002,
`Mowry Decl., ¶ 71. The dependent claims also add certain
`routine computing functions, such as outputting information to
`conventional outlets like the World Wide Web (claims 6–12, 14–
`17, 25–31, 33–36), communicating with servers (claims 13, 19,
`32), and data-monitoring and updating (claims 2–3, 21–22). See
`Ex. 1002, Mowry Decl., ¶ 72. Other dependent claims simply
`require that a “transaction” based on the data occur (claims 4–5,
`23–24). See Ex. 1002, Mowry Decl., ¶ 72.
`
`Pet. 46. The above constitutes the entirety of Petitioner’s analysis as to why
`
`claims 1–36 are purportedly directed to retrieving and storing personal
`
`information.
`
`
`
`13
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`
`Patent Owner counters that Petitioner has overly generalized the
`
`claimed invention, as our reviewing court cautioned against doing in Enfish,
`
`and instead asserts the following:
`
`As the Magistrate Judge [in the related district court case]
`recognized, the key concept of the ’783 Patent is embodied in
`claim 1: “This key concept is addressed in claim 1, where the
`claim states that the provider data to be retrieved by the method
`includes ‘a protocol for instructing the processor how to access
`the securely stored personal information via the network[.]’” Id.
`at 28 (emphasis in original). This key concept (which also
`appears in the other two independent claims 18 and 20) is not
`addressed at all by Petitioner’s proposed abstract idea.
`
`Prelim. Resp. 21. We agree with Patent Owner.
`
`Specifically, we agree with Patent Owner that Petitioner’s proffered
`
`assertion that the claims of the ’783 patent are directed to retrieving and
`
`storing personal information is an impermissible over-generalizing of the
`
`claims.2 Starting with Petitioner’s assertions on page 43 of the Petition, we
`
`agree that independent claim 1 does recite a processor “retrieving personal
`
`information” and then “storing” it. The Petitioner then asserts, however, that
`
`“[t]he claim then enunciates some commonplace features of this process,
`
`such as that the user must be able to access the data from either the original
`
`website or the location where the gathered data is ultimately stored.”
`
`Pet. 43. This assertion, however, conflates the second step of Alice with the
`
`first, as we are unclear as to why any assertions concerning whether certain
`
`technology is “commonplace” informs appreciably the identification of what
`
`the claimed invention is “directed to.” Indeed, when the terms concerning
`
`
`2 As Petitioner begins its analysis using independent claim 1 as
`representative, we also do the same.
`
`
`
`14
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`“commonplace” are removed from the above assertion, we are left with
`
`“[t]he claim then enunciates . . . the user must be able to access the data from
`
`either the original website or the location where the gathered data is
`
`ultimately stored.” It is telling that this enunciation is similar to that which
`
`Patent Owner asserts is improperly omitted from Petitioner’s assertions as to
`
`what the claimed invention is “directed to.”
`
`To that end, we are persuaded that independent claim 1 is directed to
`
`more than “retrieving and storing personal information” for several reasons.
`
`Starting with the claim language itself, the preamble of independent claim 1
`
`recites “[a] method for delivering non-public personal information relating
`
`to an end user via a wide-area computer network to an end user from at least
`
`one of a plurality of information providers securely storing the personal
`
`information under control of a processor located remotely from the
`
`information providers and the end user.” Ex. 1001, 16:47–52. From
`
`analyzing the text of the preamble, it is apparent that independent claim 1 is
`
`directed to retrieving and storing personal information securely stored under
`
`the control of a processor at a remote location. This determination is
`
`supported further by limitations recited in the body of independent claim 1,
`
`such as “the provider data including a protocol for instructing the processor
`
`how to access the securely stored personal information via the network.”
`
`Ex. 1001, 16:67–67 (emphases added). Indeed, we note that independent
`
`claim 1 recites repeatedly references to computer technology, such as “wide-
`
`area computer network,” “processor,” “information provider,” “data,” and
`
`“end user,” which supports our determination that independent claim 1 is
`
`directed to computer technologies, such as retrieving and storing personal
`
`information securely stored under the control of a processor at a remote
`
`
`
`15
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`location. To be sure, technology is usually analyzed under the second step
`
`of Alice, however, that is not to say that it cannot also be a factor to support
`
`a determination concerning the first step of Alice.
`
`The specification of the ’783 patent supports further this
`
`determination that independent claim 1 is directed to retrieving and storing
`
`personal information securely stored under the control of a processor at a
`
`remote location. For example, the section with the heading “Description of
`
`Related Art” begins with four paragraphs describing, almost exclusively,
`
`accessing content using Internet technologies (Ex. 1001, 1:29–2:41), and
`
`then describes several problems encountered in those technologies, most
`
`notably the following:
`
`In step 130, the end users logs into the selected information
`provider’s Web site utilizing the site’s specific logon protocol.
`This protocol usually involves verifying the identity of the end
`user using a user name and password or other means of
`verification, acquiring the verification data from cookies residing
`on the end user’s system or a combination of requested data and
`cookie data.
`
`Ex. 1001, 2:12–18.
`
`The end user 210 utilizes the client computer 220 to access each
`PI Web site 250 across the Internet 230. This current model
`suffers from several significant deficiencies. The end user must
`login to each site separately. Each separate site has its own
`graphical user interface. Each site wants the end user to stay and
`return; each visited site wants to retain end user focus for as long
`as possible. No true aggregation of PI exists; multiple accesses
`simply allow sequential access to particular pieces of PI.
`
`Ex. 1001, 2:33–41. The substance of the above disclosures, that certain
`
`websites have specific logon protocols and there is a related deficiency in
`
`that current practice requires an end user to logon to each site separately,
`
`supports squarely the above determination that independent claim 1 is
`
`
`
`16
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`directed to retrieving and storing personal information securely stored under
`
`the control of a processor at a remote location.
`
`The ’783 patent then goes on to describe several solutions that have
`
`been attempted using current technologies, but notes, in the end, that those
`
`solutions are not acceptable, as follows:
`
`Under current technology, aggregating PI available over
`the Internet requires a significant burden in terms of time, effort
`and learning curve. An end user wishing to access his PI needs
`to individually visit a variety of information provider sites each
`with its own requirements, graphical user interface and login
`protocol.
`
`Ex. 1001, 2:64–3:2. Again, this supports squarely the above determination
`
`that independent claim 1 is directed to retrieving and storing personal
`
`information securely stored under the control of a processor at a remote
`
`location.
`
`Additionally, we note that the Magistrate Judge’s analysis concerning
`
`“Alice’s step one” of the ’783 patent in a related proceeding, reproduced in
`
`part above, is consistent with our determination. Ex. 2001, 27–28. To be
`
`sure, we acknowledge that the Magistrate Judge’s analysis was in the
`
`context of evaluating a “Motion to Dismiss for Failure to State a Claim”
`
`under Rule 12(b)(6) of the Federal Rules of Civil Procedure, and is only a
`
`Report and Recommendation. Nevertheless, even with those caveats, we are
`
`persuaded that the Magistrate Judge’s analysis is a factor weighing in favor
`
`of Patent Owner.
`
`Furthermore, Petitioner cites to paragraph 80 of the Declaration of Dr.
`
`Mowry in support of its position that independent claim 1 is directed to
`
`“retrieving and storing personal information.” Pet. 43. A closer
`
`examination of paragraph 80, however, shows that it actually undercuts
`
`
`
`17
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`Petitioner’s position. Specifically, although ostensibly analyzed within the
`
`rubric of step two of Alice, i.e., inventive concept, Dr. Mowry admits that
`
`“[t]he claims then enunciate a common feature of the automatic retrieval
`
`process that a user must be able to access the data from either the original
`
`website or the location where the gathered data is ultimately stored.”
`
`Ex. 1002 ¶ 80 (emphases added); see also Ex. 1002 ¶ 80 (“The processor, in
`
`other words, retrieves, accesses, and stores personal information just as a
`
`human would—simulating an end user entering his or her login credentials
`
`into the site and then retrieving content” (emphasis added).) These portions
`
`of Dr. Mowry’s Declaration support also the above determination that
`
`independent claim 1 is directed to retrieving and storing personal
`
`information securely stored under the control of a processor at a remote
`
`location.
`
`Given our above determination, Petitioner’s analyses as to whether
`
`“retrieving and storing personal information” is an abstract idea are
`
`misplaced, as Petitioner has not identified any evidence or analysis
`
`concerning “information securely stored at a remote location.” Specifically,
`
`Petitioner does cite to some facts in Dr. Mowry’s Declaration and identifies
`
`several Federal Circuits cases, but only in relation to “retrieving and storing
`
`information,” and Petitioner’s analysis of the other independent claims and
`
`dependent claims also do not mention anything concerning “information
`
`securely stored at a remote location.” Pet. 43–46 (citing Exs. 1002 ¶¶ 67–
`
`73, 1013, 1014). Absent such relevant evidence or analysis, Petitioner has
`
`insufficient basis on which it can rely for meeting its burden of showing that
`
`“retrieving and storing personal information securely stored under the
`
`
`
`18
`
`
`
`CBM2016-00045
`Patent 6,317,783 B1
`
`control of a processor at a remote location” is a patent ineligible abstract
`
`idea.
`
`Of course, the panel could perform its own evaluation as to whether or
`
`not “retrieving and storing personal information securely stored under the
`
`control of a processor at a remote location” is a patent ineligible abstract
`
`idea. The burden of persuasion is on Petitioner, however, and any such sua
`
`sponte evaluation made by the Board would, on these specific facts, be
`
`completely divorced from any evidence and analysis offered by Petitioner
`
`as, again, Petitioner does not identify any evidence or analysis concerning
`
`“information securely stored at a remote location.” We, thus, on these
`
`specific facts, decline to unilaterally engage in such a speculative endeavor.
`
`Accordingly, given that Petitioner has not met its burden with respect to step
`
`one of Alice, there is no need to evaluate step two of Alice. Our analysis of
`
`independent claim 1 applies equally to claims 2–36.
`
`3.
`
`Conclusion
`
`We determine that Petitioner has not met its burden of showing that it
`
`is more likely than not that claims 1–36 do not constitute statutory subject
`
`matter under 35 U.S.C. § 101.
`
`C.
`
`Final Conclusion
`
`For the reasons given above, based on the present record and
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
