Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 13
`Filed: May 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INFORMATICA CORPORATION,
`Petitioner,
`
`v.
`
`PROTEGRITY CORPORATION,
`Patent Owner.
`____________
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`
`
`Before KEVIN F. TURNER, MEREDITH C. PETRAVICK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.308
`
`
`
`I. INTRODUCTION
`A. Background
`On October 14, 2014, Informatica Corporation (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) requesting a review under the transitional program
`for covered business method patents of U.S. Patent No. 8,402,281 B2 (Ex.
`1001, “the ’281 patent”). On February 13, 2015, Protegrity Corporation
`
`
`
`
`
`1
`
`USAA 1025
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 13
`Filed: May 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INFORMATICA CORPORATION,
`Petitioner,
`
`v.
`
`PROTEGRITY CORPORATION,
`Patent Owner.
`____________
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`
`
`Before KEVIN F. TURNER, MEREDITH C. PETRAVICK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.308
`
`
`
`I. INTRODUCTION
`A. Background
`On October 14, 2014, Informatica Corporation (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) requesting a review under the transitional program
`for covered business method patents of U.S. Patent No. 8,402,281 B2 (Ex.
`1001, “the ’281 patent”). On February 13, 2015, Protegrity Corporation
`
`
`
`
`
`1
`
`USAA 1025
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324.
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD.—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`Petitioner challenges the patentability of claims 1–60 (“the challenged
`
`claims”) of the ’281 patent under 35 U.S.C. §§ 101, 102, and 103. Taking
`into account Patent Owner’s Preliminary Response, we determine that the
`Petition demonstrates that it is more likely than not that at least one of the
`challenged claims is unpatentable. Pursuant to 35 U.S.C. § 324, we institute
`a covered business method patent review of all of the challenged claims of
`the ’281 patent.
`
`
`B. Related Matters
`Petitioner identifies Protegrity Corporation v. Informatica
`Corporation, No. 3:14-cv-02588 (N.D. Cal.) as a related district court
`proceeding. Pet. 8; Paper 4, 3. Patent Owner identifies numerous other
`related district court matters that would be affected by a decision in this
`proceeding. See Paper 4, 3–5.
`The ’281 patent was the subject of terminated proceedings CBM2014-
`00024 and CBM2014-00121. Those proceedings terminated due to
`settlement between the parties. The ’281 patent is also the subject of
`pending proceedings CBM2015-00006 and CBM2014-00182.
`
`
`
`2
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`The ’281 patent is a continuation of U.S. Patent No. 6,321,201 B1
`
`(Ex. 1009, “the ’201 patent”). The ’201 patent is the subject of pending
`proceedings CBM2015-00002, CBM2015-00014, and CBM2015-00030.
`The ’201 patent was also the subject of Reexamination No. 90/011,364, with
`some originally issued claims confirmed, some cancelled, one claim
`amended, and several claims added.
`
`
`C. The ’281 Patent
`The ’281 patent, titled “Data Security System for a Database,” issued
`on March 19, 2013, based on Application No. 12/916,274, filed on
`October 29, 2010. Ex. 1001, 1. The ’281 patent claims priority through a
`chain of continuation applications to the ’201 patent, filed on June 18, 1997.
`Id.
`The ’281 patent is concerned with protecting data against
`
`unauthorized access. Id. at col. 2, ll. 30–33. The ’281 patent states that “in
`. . . fields, such as industry, defen[s]e, banking, insurance, etc[.], improved
`protection is desired against unauthori[z]ed access to the tools, databases,
`applications[,] etc.[,] that are used for administration and storing of sensitive
`information.” Id. at col. 1, ll. 35–39. Figure 4 is reproduced below.
`
`
`
`3
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`
`
`
`Figure 4 depicts the ’281 patent’s system
`The system shown in Figure 4 includes an operative database (O-DB)
`and another database, IAM-DB. O-DB database contains data element
`values DV that are to be protected. Id. at col. 5, ll. 62–67. IAM-DB
`database contains a data protection catalogue (DPC), which stores protection
`attributes (e.g., P1*) for data element types (e.g., DT1) that are associated
`with data element values DV. Id. at col. 6, ll. 6–11. The protection
`attributes state rules for processing the corresponding data element values
`DV. Id. at col. 3, ll. 58–59. For example, a protection attribute indicates the
`degree to which data element value DV is encrypted (id. at col. 7, l. 66–col.
`8, l. 3) or indicates that only accepted, or certified, programs are allowed to
`process data element value DV (id. at col. 9, ll. 26–33). See id. at col. 4, l.
`51–col. 5, l. 6. When a user initiates an attempt to process a certain data
`element value DV, a compelling calling is created to data protection
`catalogue DPC to obtain the protection attributes associated with the data
`element type for data element value DV. Id. at col. 2, l. 65–col. 3, l. 4. The
`4
`
`
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`processing of data element value DV is then controlled in conformity with
`the protection attributes. Id. at col. 3, ll. 3–5; see id. at col. 3, l. 61–col. 4, l.
`6. Thus, the individual data element or data element type becomes the
`controlling unit for determining the level of protection. Id. at col. 4, ll. 42–
`47.
`
`Claims 1 and 33 of the ’281 patent are illustrative of the claims at
`issue and read as follows:
`1.
` A computer-implemented data processing method
`comprising:
`
`maintaining a database comprising a plurality of data
`portions;
`
`maintaining a separate data protection table comprising,
`for each of one or more data portions, a plurality of data
`processing rules associated with the data portion that must each
`be satisfied before the data portion can be accessed;
`
`receiving a request to access a data portion;
`
`determining whether each of the one or more data
`processing rules associated with the requested data portion are
`satisfied; and
`
`granting access to the requested data portion responsive
`to each of the one or more data processing rules associated with
`the requested data portion being satisfied.
`
` A computer-implemented data processing method
`33.
`comprising:
`
`maintaining a database comprising a plurality of data
`portions, each data portion associated with a data category;
`
`maintaining a separate data protection table comprising,
`for at least one data category, one or more data processing rules
`associated with the data category that must each be satisfied
`before a data portion associated with the data category can be
`accessed;
`
`
`
`5
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`
`receiving a request to access a data portion associated
`
`with a first data category from a user;
`
`determining whether each of the one or more data
`processing rules associated with the requested data portion are
`satisfied; and
`
`granting the user access to the requested data portion
`responsive to each of the retrieved one or more data processing
`rules being satisfied.
`
`
`D. The Alleged Grounds of Unpatentability
`
`Petitioner sets forth grounds of unpatentability of the challenged
`claims as follows:
`Ground Prior Art
`§ 101
`n/a
`§ 102 Denning1
`
`Challenged Claims
`1–60
`1–6, 9, 10, 12–22, 25, 26, 28–
`38, 43–52, 55, and 57–60
`7, 8, 12–14, 16, 23, 24, 28–
`30, 32, 39, 40, 43–46, 53, 54,
`and 57–60
`11, 27, 42, and 56
`
`§ 103
`
`Denning and FIPS PUB 140-12
`
`Denning and Shear3
`
`§ 103
`
`
`
`1 DOROTHY ELIZABETH ROBLING DENNING, CRYPTOGRAPHY AND DATA
`SECURITY, 1–400 (1982) (Ex. 1006) (“Denning”).
`2 U.S. DEPT. OF COMM., NATIONAL INSTITUTE OF STANDARDS AND
`TECHNOLOGY, FEDERAL INFORMATION PROCESSING STANDARDS
`PUBLICATION: SECURITY REQUIREMENTS FOR CRYPTOGRAPHIC MODULES
`FIPS-PUB 140-1, 1–48 (Jan. 11, 1994) (retrieved from:
`http://csrc.nist.gov/publications/fips/fips1401.htm) (last visited Aug. 16,
`2010) (Ex. 1007) (“FIPS PUB 140-1”).
`3 U.S. Patent No. 5,050,213 (issued Sept. 17, 1991) (Ex. 1008).
`6
`
`
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`
`II. ANALYSIS
`A. 35 U.S.C. § 325(d)
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`§ 325(d) to deny the Petition because it relies upon prior art and arguments
`that are the same or substantially the same as considered during the
`prosecution of the’281 patent, the reexamination of the ’201 patent, and
`CBM2014-00024. Prelim. Resp. 42–48.
`35 U.S.C. § 325(d) states: “In determining whether to institute or
`order a proceeding . . . , the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same
`prior art or arguments previously were presented to the Office.”
`The ’281 patent cites to four articles authored by Dorothy E. Denning
`(Exs. 2010, 2026–2028), the same author who authored the Denning
`reference asserted in this proceeding (Ex. 1006). See Ex. 1001, 4–5. Upon
`review of these articles and the prosecution history of the ’281 patent (Ex.
`1012), we are not persuaded by Patent Owner (see Prelim. Resp. 43–44) that
`Denning (Ex. 1006) is the same or substantially the same as these articles, or
`that the Petition presents the same or substantially same arguments made
`during the prosecution of the ’281 patent in relation to these articles.
`The ’201 patent, which is the parent of the ’281 patent, was the
`subject of Reexamination No. 90/011,364, which was based partly upon the
`articles authored by Dorothy E. Denning (Ex. 2010, 2026–2028); an article
`by Khamis A. Omar and David L. Wells (Ex. 2003); an article by George I.
`Davida et al. (Ex. 2006); and U.S. Patent No. 4,827,508, which is a parent
`application of Shear. See Ex. 2004. Upon review of these documents and
`the prosecution history of the reexamination of the ’201 patent, we are not
`
`
`
`7
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`persuaded by Patent Owner (see Prelim. Resp. 7–10, 44–46) that Denning is
`the same or substantially the same as these articles, or that the Petition
`presents the same or substantially the same arguments made during the
`prosecution of the ’201 patent in relation to these articles. The claims of the
`’281 patent are not the same as the claims at issue in the reexamination of
`the ’201 patent. See Ex. 1009.
`
`Covered business method patent review was instituted in CBM2014-
`00024 based upon Denning and FIPS PUB 140-1—the same prior art as in
`this proceeding—based upon substantially similar arguments. See Voltage
`Security, Inc. v. Protegrity Corp., Case CBM2014-00024, Paper 11 (PTAB
`Apr. 15, 2014). CBM2014-00024, however, was filed by Voltage Security,
`Incorporated—which is not a Petitioner in this proceeding—and terminated
`early in the proceeding because Voltage Security, Incorporated and Patent
`Owner entered into a settlement agreement. See Voltage Security, Inc. v.
`Protegrity Corp., Case CBM2014-00024, Paper 17 (PTAB May 1, 2014).
`The Board did not issue a final written decision in CBM2014-00024.
`
`For these reasons, we decline to exercise our discretion under 35
`U.S.C. § 325(d) to deny the Petition.
`
`
`B. Standing to Seek Covered Business Method Patent Review
`Section 18 of the AIA4 provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18 limits
`review to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent.” AIA § 18(a)(1)(B).
`37 C.F.R. § 42.302 states “[c]harged with infringement means a real and
`
`4 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
`(Sept. 16, 2011) (“AIA”).
`
`
`
`8
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`substantial controversy regarding infringement of a covered business method
`patent exists such that a petitioner would have standing to bring a
`declaratory judgment in Federal court.”
`Petitioner and Patent Owner dispute whether Petitioner’s previously
`filed action for declaratory judgment of non-infringement and invalidity of
`the ’281 patent bars this proceeding. Pet. 7–125; Prelim. Resp. 14–15.
`Petitioner argues that because its previously filed declaratory judgment
`action was dismissed without prejudice the proceeding is not barred. Pet. 8–
`10.
`
`A party may not petition for post-grant review if it has filed a civil
`action challenging the validity of a claim of the patent before the petition is
`filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a); see Securebuy, LLC v.
`CardinalCommerce Corp., Case CBM2014-00035, slip op. at _3_ (PTAB
`Apr. 25, 2014) (Paper 12, precedential) (explaining that 35 U.S.C.
`§ 325(a)(1) applies to covered business method patent review proceedings).
`The Board, however, has determined that dismissal without prejudice does
`not trigger the statutory bar. See Cyanotech Corp. v. Bd. of Trustees of the
`Univ. of Ill., Case IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013)
`(Paper 17) (“Excluding an action that de jure never existed from the scope of
`§ 315(a)(1) is consistent with both relevant case law and legislative
`history.”); see also Callidus Software, Inc. v. Versata Software, Inc., Case
`CBM2013-00052 , slip op. at 5–7__ (PTAB Mar. 4, 2014) (Paper 21).
`
`
`5 On May 4, 2015, Petitioner, via email, informed the Board of a clerical
`typographical error on page 11 of the Petition. The sentence starting with
`“[i]n the prior cases, petitioner was sued . . .” should be read as “[i]n the
`prior cases, petitioner was not sued . . . .”
`9
`
`
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`(explaining that Cyanotech Corp. also applies to covered business method
`patent review).
`
`Petitioner’s previously filed action for declaratory judgment of non-
`infringement and invalidity of the ’281 patent does not bar this proceeding,
`because the previously filed civil action was dismissed without prejudice.
`See Ex. 1005.
`
`i. Financial Product or Service
`A covered business method patent “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 “legislative history explains that the definition of
`covered business method patent was drafted to encompass patents ‘claiming
`activities that are financial in nature, incidental to a financial activity 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. 48,734, 48,735 (Aug. 14, 2012)
`(Final Rule) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)). The legislative history indicates that
`“financial product or service” should be interpreted broadly. Id. A patent
`need have only one claim directed to a covered business method to be
`eligible for review. Id. at 48,736 (Response to Comment 8).
`Petitioner argues that the ’281 patent claims a method for performing
`data processing, including to protect against unauthorized access of data,
`such as in banking, that is at least incidental to the “practice, administration,
`or management of a financial product or service.” Pet. 4–5. To support its
`
`
`
`10
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`argument, Petitioner states that claim 1’s “data processing rules” are
`described in the Specification as protecting against unauthorized access to
`data portions in a database, and that the Specification discloses that such
`protection against unauthorized access is used in the field of banking. Id. at
`5.
`
`Patent Owner argues that “[t]he claims of the [’]281 [p]atent do not
`encompass activities that are ‘financial in nature, incidental to a financial
`activity or complementary to a financial activity.’” Prelim. Resp. 16 (citing
`77 Fed. Reg. at 48,374–35). To support its argument, Patent Owner states
`that Petitioner does not cite to “any single word in any single claim” that is
`directed to a financial product of service, none of the prior art cited by
`Petitioner is directed to a financial product or service, and Petitioner does
`not cite any examples of actual financial products that employ the method of
`the claims. Id. at 16–20.
`We are persuaded by Petitioner that at least claim 1 claims a method
`for performing data processing or other operations that are at least incidental
`or complementary to the practice, administration, or management of a
`financial product or service. Claim 1 recites “determining whether each of
`the one or more data processing rules associated with [a] requested data
`portion are satisfied.” The Specification discloses that protection attributes
`(i.e., the claimed data processing rules) are used to protect against
`unauthorized access of a data portion in a database (see Ex. 1001, col. 4, ll.
`35–47) and that banking is a field where protection against unauthorized
`access to databases that are used for administering and storing sensitive
`information is desired. Id. at col. 1, ll. 35–39; see also id. at Fig. 5, col. 11,
`ll. 9–15 (describing an example where “Social Allowance” and “Housing
`
`
`
`11
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`Allowance” are the protected data and “Financial manager” is an authorized
`user). Banking is a financial activity.
`Upon this record, we determine that Petitioner establishes that at least
`claim 1 recites 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.
`ii. Technological Invention
`The definition of “covered business method patent” in Section
`18(d)(1) of the AIA does not include patents for “technological inventions.”
`To determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art; and solves a technical
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The following
`claim drafting techniques, for example, typically do not render a patent a
`“technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012).
`Petitioner argues that the ’281 patent is not for a technological
`invention because none of the claims recite a technological feature that is
`novel and nonobvious over the prior art, and because none of the claims
`12
`
`
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`solves a technical problem using a technical solution. Pet. 6. According to
`Petitioner, none of the claims recites any technology beyond generic
`computer components. Id. at 7.
`Patent Owner argues that the ’281 patent is for a technological
`invention, because the claims solve a technical problem with a technical
`solution. Prelim. Resp. 20–25. According to Patent Owner, the technical
`problem is “the incomplete data protection in a database that was provided
`by prior art protection methods and systems, such as “‘shell protections,’
`under which data ‘can often . . . relatively easily be subjected to
`unauthorized access.’” Id. at 22 (citing Ex. 1001, col. 2, ll. 10–25).
`According to Patent Owner, the technical solution is “(i) associating each
`data element type with one or more protection attributes ‘which are stored in
`a separate data element protection catalogue’ and (ii) making compelling
`calls to the data element protection catalogue when data is requested.” Id.
`(citing Ex. 1001, col. 3, l. 52–col. 4, l. 44). Patent Owner argues that this
`solution has the technical advantage of allowing for encryption at the field
`level in a database. Id. at 19–21.
`
`Patent Owner also argues that the ’281 patent is for a technological
`invention, because the claims recite technological features that were novel
`and unobvious over the prior art at the time of the invention. Id. at 21–22.
`According to Patent Owner, the technological features are “an
`unconventional data protection table,” “a specific association between data
`processing rules and data portions or data categories,” and “a specially
`configured processor.” Id.
`We are persuaded by Petitioner that the ’281 patent is not for a
`technological invention because at least claim 1 does not recite a
`
`
`
`13
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`technological feature that is novel or unobvious over the prior art. Claim 1
`recites a data processing method that is “computer-implemented” and
`includes “maintaining a database.” Data processing computers having
`databases, which store the data, were known at the time of filing the ’281
`patent. See Ex. 1001, col. 1, ll. 28–33. Therefore, we find that at least claim
`1 does not recite a technological feature that is novel or unobvious over the
`prior art.
`We also are persuaded that claim 1 does not solve a technical problem
`using a technical solution. The ’281 patent solves the problem of protecting
`data against unauthorized access. See e.g., Ex. 1001, col. 2, ll. 29–33.
`Claim 1 recites a data processing method that grants access to data only if
`associated rules are satisfied. The method is computer implemented and
`recites maintaining a database of data and separate data protection table
`having the rules. Contrary to Patent Owner’s argument, claim 1 does not
`require data element types or encryption elements. Data processing
`computers having databases, which store data, were known at the time of
`filing the ’281 patent. See id. at col. 1, ll. 28–33. Thus, at least claim 1 does
`not solve a technical problem using a technical solution.
`
`For the reasons discussed above, we are persuaded by Petitioner that
`the ’281 patent is eligible for covered business method patent review.
`
`C. Claim Construction
`The Board interprets claims of unexpired patents using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`
`
`
`14
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`i. “data processing rule”
`Petitioner proposes that the broadest reasonable construction of “data
`processing rules” is “rules for processing data.” Pet. 14. Petitioner further
`proposes that “processing” should be construed to include, but is not limited
`to, reading, printing, altering, moving, or copying the data. Id. Petitioner
`argues that its proposed construction is consistent with the Specification,
`which describes processing as any “‘form of reading, printing, altering,
`coding, moving, copying, etc.’” Id. (citing Ex. 1001, col. 3, ll. 8–11).
`Patent Owner argues that Petitioner’s proposed construction is
`unreasonably broad and proposes that the appropriate construction is “non-
`user-based data processing rules for protection of data element values in a
`database.” Prelim. Resp. 49–50. According to Patent Owner, Petitioner’s
`proposed construction is unreasonably broad because “a primary concern of
`the [’]281 [p]atent is to protect data that is to be protected by requiring that
`certain processing rules (i.e.[,] how to decrypt it, what key to use, etc.) be
`satisfied before the protected data (i.e.[,] the unencrypted data) can be
`processed (i.e.[,] read, printed, etc.).” Id. at 50.
`Upon review of Petitioner’s evidence and analysis, we are persuaded
`that the broadest reasonable construction of “data processing rules” is “rules
`for processing data.” Petitioner’s proposed construction is consistent with
`the Specification, which not only describes processing rules which relate to
`
`
`
`15
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`encryption (see, e.g., Ex. 1001, col. 7, l. 63–col. 8, l. 3 (describing a
`protection attribute that indicates the degree of encryption used in generating
`a data element value); claim 2 (“the data processing rules restrict access to
`an associated data portion to a specified user”)), but also describes
`processing rules which relate to user-based conditions for accessing the data
`portion (see, e.g., id. at col. 9, ll. 26–33 (describing a “protected programs”
`rule that restricts access to only accepted or certified programs)).
`Petitioner’s proposed construction, further, is consistent with the dependent
`claims, which define the data processing rules not only as relating to
`encryption (see, e.g., dependent claims 7 and 10–12), but also as rules
`related to which user access the data (see, e.g., dependent claim 2).
`Patent Owner’s proposed construction is overly narrow and attempts
`to import limitations, such as the rules being non-user based and for
`protection of data element values, from the specification (see Ex. 1001, col.
`3, ll. 52–59) into the claim. Limitations appearing in the specification but
`not recited in the claim are not read into the claim. E-Pass Techs., Inc. v.
`3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be
`interpreted “in view of the specification” without importing limitations from
`the specification into the claims unnecessarily) (internal quotations and
`citation omitted). We see nothing in the claims that requires the data
`processing rule to be non-user based or to be specifically for protection of
`data element values. Further, Patent Owner’s proposed construction is
`inconsistent with the claims themselves, which do not require that the data
`portion be data element values. See, e.g., dependent claim 5 (defining the
`data portion as a column of data in the database).
`
`
`
`16
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`
`Upon this record and for the purposes of this decision, we determine
`that the broadest reasonable construction of data processing rules in light of
`the specification is “rules for processing data.”
`ii. “data portion”
` Patent Owner argues that the appropriate construction of “data
`
`portion” is “a data element value or a cell.” Prelim. Resp. 52. Petitioner
`proposes no construction for “data portion,” but argues that the claim term
`should be given its plain and ordinary meaning. Pet. 13.
`Patent Owner’s proposed construction is again overly narrow and
`attempts to import the limitations from the Specification into the claim.
`Although the Specification describes the invention as working on the cell or
`data element level (see Ex. 1001, col. 3, ll. 52–59), we see nothing in the
`claims themselves that requires the data portions to be data element values or
`cells. Further, dependent claims 5 and 6 define the claimed data portions to
`be “a column of data in the database” and “a field of data in the database.”
`Patent Owner’s proposed construction is inconsistent with these claims.
`The Specification contains no lexicographic definition of “data
`portion” and, therefore, we shall give “data portion” its ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. MERRIAM-WEBSTER’S
`COLLEGIATE DICTIONARY 908 (10th ed. 1998) defines “portion” as “an
`individual’s part or share of something.” Ex. 3001. The claims recite that
`the data portions are part of a database. See, e.g., Ex. 1001, col. 11, ll. 18–
`19 (reciting “maintaining a database comprising a plurality of data
`portions”). Given this, we determine that the broadest reasonable
`
`
`
`17
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`construction of “data portion,” in light of the Specification, is a part or share
`of the database.
`
`iii. “data category”
`Petitioner proposes that the broadest reasonable construction of data
`category is “any class or division of data sharing one or more characteristics
`or attributes.” Pet. 15–16. Patent Owner proposes no construction for “data
`category.” Prelim. Resp. 51. Upon this record and for the purposes of this
`decision, we determine that the broadest reasonable construction of data
`category is any class or division of data sharing one or more characteristics
`or attributes.
`
`iv. Other Proposed Constructions
`Both Petitioner and Patent Owner propose constructions for various
`other claim terms. See Pet. 13–18; Prelim. Resp. 45–54. Based on our
`review of the record before us, however, no explicit construction of any
`other claim term is needed at this time.
`
`
`D. 35 U.S.C. § 101
`i. Availability of § 101
`As an initial matter, Patent Owner argues that § 101 is not available to
`challenge patentability in a covered business method patent review, because
`it is not included in 35 U.S.C. § 282(b)(2) or (3). Prelim. Resp. 42.
`We disagree. Under the AIA, any ground that could be raised under
`§§ 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions
`not relevant here) in a covered business method patent review. The final
`rules implementing post-grant review and covered business method patent
`review in the Federal Register state that the “grounds available for post-grant
`
`
`
`18
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`review include 35 U.S.C. [§§] 101 and 112, with the exception of
`compliance with the best mode requirement.” 77 Fed. Reg. 48,680, 48,682
`(Aug. 14, 2012). This interpretation is consistent with both the relevant case
`law and the legislative history. See, e.g., Mayo Collaborative Servs. v.
`Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012) (addressing invalidity
`under § 101 when it was raised as a defense to an infringement claim);
`Graham v. Deere, 383 U.S. 1, 12 (1966) (stating that the 1952 Patent Act
`“sets out the conditions of patentability in three sections,” citing 35 U.S.C.
`§§ 101, 102, and 103); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3
`(Fed. Cir. 2012); H.R. Rep. No.112-98, at 47 (2011); 157 Cong. Rec. S1375
`(daily ed. Mar. 8, 2011). Thus, § 101 is a proper ground for a review under
`the transitional program for covered business method patents.
`ii. Section 101 Subject Matter Eligiblity
`For claimed subject matter to be patent-eligible, it must fall into one
`of four statutory classes set forth in 35 U.S.C. § 101: a process, a machine, a
`manufacture, or a composition of matter. The Supreme Court recognizes
`three categories of subject matter that are ineligible for patent protection:
`“laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos,
`561 U.S. 596, 601 (2010) (internal quotations and citation omitted). A law
`of nature or an abstract idea by itself is not patentable; however, a practical
`application of the law of nature or abstract idea may be deserving of patent
`protection. Mayo, 132 S. Ct. at 1293–94. To be patentable, however, a
`claim must do more than simply state the law of nature or abstract idea and
`add the words “apply it.” Id.
`In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`Supreme Court recently clarified the process for analyzing claims to
`
`
`
`19
`
`
`
`CBM2015-00010
`Patent 8,402,281 B2
`
`determine whether claims are directed to patent-ineligible subject matter. In
`Alice, the Supreme Court applied the framework set forth previously in
`Mayo, “for distinguishing patents that claim laws of nature, natural
`phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
`the analysis is to “determine whether the claims at issue are directed to one
`of those patent-ine
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
