Trials@uspto.gov
`571.272.7822
`
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`
`
`
`Paper 9
`Entered: March 17, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESMAN, LLC,
`Petitioner,
`
`v.
`
`KARYA PROPERTY MANAGEMENT, LLC,
`Patent Owner.
`____________
`
`CBM2020-00020
`Patent 7,636,687 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Covered Business Method Patent Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 9
`Entered: March 17, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESMAN, LLC,
`Petitioner,
`
`v.
`
`KARYA PROPERTY MANAGEMENT, LLC,
`Patent Owner.
`____________
`
`CBM2020-00020
`Patent 7,636,687 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Covered Business Method Patent Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
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`CBM2020-00020
`Patent 7,636,687 B2
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`INTRODUCTION
`I.
`Petitioner Resman, LLC filed a Petition (Paper 1, “Pet.”) requesting
`covered business method (“CBM”) patent review of claims 1–211 of U.S.
`Patent No. 7,636,687 B2 (Ex. 1001, “the ’687 patent”). Patent Owner Karya
`Property Management, LLC filed a Preliminary Response (Paper 8, “Prelim.
`Resp.”).
`Under 35 U.S.C. § 324(a),2 a covered business method patent review
`may not be instituted “unless . . . the information presented in the
`petition . . ., 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.”
`After taking into account Patent Owner’s Preliminary Response and
`evidence of record, we determine that the challenged patent qualifies as a
`covered business method patent. We further determine that the information
`presented in the Petition sufficiently demonstrates on the present record that
`it is more likely than not that at least one of the challenged claims is
`unpatentable. Accordingly, we institute a covered business method patent
`review of the challenged claims.
`
`Related Matters
`A.
`According to the parties, Patent Owner asserted the ’687 patent in
`Karya Property Management, LLC v. ResMan, LLC, Case No. 2:20-cv-
`00134-JRG (E.D. Tex.) (“the 134 case”). Pet. 1; Paper 4, 2. The 134 case,
`however, has since been dismissed without prejudice. See Ex. 3001. In the
`134 case, the district court stated: “Resman made allegations that Karya
`
`1 Patent Owner has disclaimed claims 2 and 19. See Ex. 2011.
`2 See 37 C.F.R. § 42.300(a).
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`2
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`lacked standing to sue because it had executed a defective assignment to the
`asserted patent.” Id. at 1. The district court also stated that in light of
`Petitioner’s allegations of defective assignment to the ’687 patent, “Karya
`executed a Confirmatory Assignment . . . [and] also filed another suit against
`Resman on August 3, 2020 in Case No. 2:20-cv-248[-JRG (E.D. Tex.)].” Id.
`Neither party has updated their respective mandatory notices to reflect the
`fact that the 134 case has been dismissed. See 37 C.F.R. §§ 42.8(a)(3),
`42.8(b)(2). The second case is currently pending with a trial date set for
`December 6, 2021. See Ex. 3002.3
`
`The ’687 Patent
`B.
`The ’687 patent generally relates to completing a lease for property in
`an on-line computing environment “using a distributed computer network to
`support communication, negotiation, and transaction tasks conducted by
`brokers, property owners, tenants, and their advisors.” Ex. 1001, Abst.,
`1:15–21. In other words, this on-line computing environment “addresses the
`primary tasks completed in a typical lease transaction, including the
`identification of a property matching a potential tenant’s requirements, site
`visit and space calculations, lease term negotiations, and lease execution.”
`Id. at 1:53–58.
`
`
`3 Patent Owner asks us to exercise our discretion under 35 U.S.C. § 324(a) to
`deny institution based on the advanced state of the 134 case before it was
`terminated. See Prelim. Resp. 3–11. As the 134 case is now terminated, we
`decline to exercise such discretion and will not sua sponte consider whether
`we should exercise such discretion based on the second district court case
`that is at a much different posture with a much later trial date than the 134
`case. Compare Ex. 2002, with Ex. 3002.
`3
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`Figure 1 shown below is a block diagram of the primary components
`of an on-line operating environment for leasing transactions. Id. at 2:45–48,
`4:37–40.
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`Figure 1 is described as follows.
`An on-line property management environment 100 comprises a
`distributed computer network 105, such as the global Internet,
`coupled to numerous clients 110–140, a property services
`server platform 145 connected to a local database 150, and
`numerous property information databases 155–165. For the
`client-server computing environment shown in FIG. 1, the
`client computers 110 and 115 represent typical users of
`property services hosted by the property services server
`platform 145. The client computers 120–140 represent service
`providers for servicing the activities of users in the property
`management field. For example, typical consumers of the
`property services accessible at the property services server
`platform 145 via the distributor computer network 105 include
`property tenants and property owners, as shown in the client
`computers 110 and 115. Representative service providers in the
`property management field include lenders, site visit agents,
`engineering, appraisal and environmental specialists, deal
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`agents, and call center agents, as shown in connection with
`client computers 120–140.
`Id. at 4:40–58.
`
`Property services server platform 145 is further described as providing
`a central forum for a user to retrieve real estate-related information from a
`variety of on-line sources such as from local database 150 or property
`databases 1–3 (165, 160, 155, respectively). Id. at 7:10–13. Figure 2 shown
`below depicts the main components of property services server
`platform 145. Id. at 2:49–52.
`
`
`
`Property services server platform 145 as shown in Figure 2 above is
`
`described as operating “as a Portal by providing a central Web site for a
`consumer’s real estate-related operations.” Id. at 7:64–66. For these Portal
`operations:
`The property services server platform 145 aggregates a variety
`of real estate-related tools and services at a single Web site
`accessible by consumers, service providers and agents via client
`computers. For example, the property services server
`platform 145 can offer consumers the opportunity to use a
`single Web site to conveniently complete due diligence
`activities for a real estate transaction, to analyze market aspects
`of transaction, to finance the transaction and to access service
`providers in support of the transaction. A consumer operating a
`browser at a client site, such as the client 110 or 115, can create
`a “personalizable” workspace for her real estate-related
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`transactions at the property services server platform 145. This
`server platform also provides a central location in an on-line
`computing environment for reviewing a consumer’s real estate
`activities, current real estate news and research, and relevant
`property and stock market information. Typical portal
`operations include the personablizable workspace, described as
`“My Workspace,” a variety of services, including research,
`financing, leasing, and calculation tools, and access to real
`estate experts.
`
`. . . .
`
`The property services server platform 145 also can
`support the negotiation and execution of the real estate
`transaction in an on-line environment.
`Id. at 7:64–8:20, 8:49–51.
`
`With further reference to Figure 2 set forth above, an exemplary
`embodiment is described using commercial products for the components of
`the property services server platform. For instance,
`the operating environment is implemented by Sun
`Microsystem’s “SOLARIS” operating system. An “Epicentric”
`server implements the portal server 205. An “iPlanet” server
`implements the Web server 215, which supports the ASP
`model. The database server 220 is implemented by Oracle’s
`“81” server and corresponding database. Although not
`illustrated in FIG. 2, it will be understood that the property
`services server platform 145 is protected by conventional
`firewalls, being SSL security protocol, physical security, and
`includes emergency back-up capabilities.
`Id. at 9:19–30.
`
`Challenged Claims
`C.
`Petitioner challenges claims 1–21. Claims 1, 10, and 17 are
`independent claims. Claim 10 is illustrative and is reproduced below:
`
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`10.
`
` A computer-implemented method for conducting a lease
`transaction for real estate property in a distributed computer
`network environment, comprising the steps of:
`storing property characteristics from an owner for a
`plurality of the owner’s real estate properties in an electronic
`database;
`defining a tenant’s property requirement for leasing a real
`estate property using a software module operating on a property
`services server;
`identifying with the software module a matching property
`from one of the owner’s real estate properties, the matching
`property comprising property characteristics from the owner
`that match the tenant’s property requirements;
`publishing with the software module the matching
`property that matches the tenant’s property requirements;
`storing in the electronic database an electronic term sheet
`negotiated by the owner and the tenant using the software
`module operating on the property services server;
`creating a lease agreement for the matching property by
`populating the property characteristics from the owner for the
`matching property and the terms of the electronic term sheet
`into a form lease agreement comprising lease terms and legal
`provisions; and
`publishing the created lease agreement for review by the
`tenant and the owner.
`Ex. 1001, 15:25–65.
`Alleged Ground of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability:
`
`Claims Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–21
`
` 101
`
`Eligibility
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`Claims Challenged
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`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–21
`
`1–9
`
`1034
`
`112
`
`Keitheley5 and Broerman6
`
`Indefiniteness
`
`Pet. 25. Petitioner relies on the Declaration of Peter Kent (Ex. 1003) to
`support its assertions of unpatentability. In support of arguments in the
`Preliminary Response, Patent Owner relies on the Declaration of Michael C.
`Brogioli, Ph.D. See Ex. 2001.
`
`II. ANALYSIS
`
`Claim Construction
`A.
`In a covered business method patent review, we interpret claims in the
`same manner used in a civil action under 35 U.S.C. § 282(b) “including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.300(b)
`(2019). In applying a district court-type claim construction, we are guided
`by the principle that the words of a claim “are generally given their ordinary
`and customary meaning,” as understood by a person of ordinary skill in the
`art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`
`
`4 The Leahy-Smith America Invents Act (“AIA”) included amendments to
`35 U.S.C. §§ 103 and 112. Because the ’687 patent issued from an
`application filed before the effective date of these amendments, we apply the
`pre-AIA versions of §§ 103 and 112.
`5 Ronald D. Keithley and Kevin L. Keithley, U.S. Patent No. 5,584,025,
`issued Dec 10, 1996 (Ex. 1010, “Keithley”).
`6 Vincent S. Broerman, U.S. Patent No. 6,594,633 B1, issued Jul. 15, 2003
`(Ex. 1011, “Broerman”).
`
`8
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`1312–13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17). There is a “heavy presumption,”
`however, that a claim term carries its ordinary and customary meaning. CCS
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
`(citation omitted). Only terms that are in controversy need to be construed,
`and then only to the extent necessary to resolve the controversy. Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017).
`In the Petition, Petitioner asserts that “[c]laim construction is not
`necessary for the Board to resolve the question of patent eligibility under
`Section 101,” and otherwise asserts that the claim terms of the ’687 patent
`should be accorded “their plain and ordinary meaning as understood by a
`person of ordinary skill in the art consistent with Phillips.” Pet. 25–26.
`Patent Owner responds that although Petitioner presented claim
`constructions to the district court in the parallel proceedings, Petitioner
`inappropriately omitted any claim construction of any term here or how that
`construction applies to the asserted art in contravention of 37 C.F.R.
`§ 42.304(b)(3)–(4). Prelim. Resp. 14–16. For this reason alone, Patent
`Owner asserts that the Petition should be denied. Id. (citing OrthoPediatrics
`Corp. v. K2M, Inc., IPR2018-01548, Paper 9, 9–12 (PTAB Mar. 1, 2019)).
`Patent Owner also provides constructions stating that, based on
`Petitioner’s district court position, the parties have agreed that the preambles
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`of independent claims 1, 10, and 17 are limiting. Prelim. Resp. 16. Patent
`Owner also addresses the claim phrase “the comparables data” in claim 1
`asserting that it should mean “comparables data” or “information about
`similar properties in the area.” Id. at 16–23.
`We determine that we need not construe expressly any claim term to
`resolve the issues for purposes of institution. Because we find that we need
`not expressly construe any claim term, Patent Owner’s reliance on our
`decision in OrthoPediatrics is inapposite. In that case, Petitioner failed to
`provide an affirmative construction for a claim term which it had previously
`asserted in a parallel district court case was a means-plus-function limitation
`subject to 35 U.S.C. § 112 ¶ 6. See OrthoPediatrics, Paper 9, 9–11. Also,
`Patent Owner’s arguments concerning construing “the comparables data”
`addresses Petitioner’s indefiniteness arguments for claims 1–9. We will
`address these arguments when we address the indefiniteness ground.
`
`CBM Patent Review Eligibility
`B.
`Under § 18(a)(1)(E) of the AIA7, we may institute a transitional
`review proceeding only for a CBM patent. A “covered business method
`patent” is a patent that “claims a method or corresponding apparatus for
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service, except that
`the term does not include patents for technological inventions.” AIA
`§ 18(d)(1); see also 37 C.F.R. § 42.301 (defining “[c]overed business
`method patent” and “[t]echnological invention”). To determine whether a
`patent is eligible for a CBM patent review, the focus is on the claims. Blue
`
`7 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011).
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`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016)
`(“[Section] 18(d)(1) directs us to examine the claims when deciding whether
`a patent is a [covered business method] patent.”); Unwired Planet, LLC v.
`Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (CBM patents “are
`limited to those with claims that are directed to methods and apparatuses of
`particular types and with particular uses ‘in the practice, administration, or
`management of a financial product or service’” (emphasis added)). One
`claim directed to a CBM is sufficient to render the patent eligible for CBM
`patent review. See Transitional Program for Covered Business Method
`Patents—Definitions of Covered Business Method Patent and Technological
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Comment 8) (Aug. 14,
`2012).
`
`1. Standing
`Section 18(a)(1)(B) of the AIA requires that Petitioner, or its real
`party in interest or privy, “has been sued for infringement of the patent.”
`Petitioner has been sued for infringing the ’687 patent in the 134 case, in the
`Eastern District of Texas, Pet. 1; Paper 4, 2, which is now terminated, and
`also in Karya Property Management, LLC v. ResMan, LLC, Case No. 2:20-
`CV-00248-JRG, now pending in the Eastern District of Texas. See Pet. 15.
`
`2. Financial Product or Service
`The AIA defines a CBM patent as “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.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A CBM patent can be
`interpreted broadly to encompass patents claiming activities that are
`financial-in-nature. Transitional Program for Covered Business Method
`
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`Patents—Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. 48734, 48735 (Aug. 14, 2012); Blue Calypso, 815
`F.3d at 1338–41 (determining that a patent was a covered business method
`patent because it claimed activities that are financial-in-nature); Unwired
`Planet, 841 F.3d at 1380 n. 5 (stating, “we endorsed the ‘financial in nature’
`portion of the standard as consistent with the statutory definition of ‘covered
`business method patent’ in Blue Calypso”); Versata Dev. Grp., Inc. v. SAP
`Am., Inc., 793 F.3d 1306, 1324–25 (Fed. Cir. 2015) (“[The statute] on its
`face covers a wide range of finance-related activities.”).
`Petitioner asserts that all the claims of the ’687 patent recite subject
`matter of a financial nature as all claims involve a lease transaction, which
`Petitioner asserts is a financial activity—a “contract by which one party lets
`land, property, services etc. to another for a specified time in return for
`payment.” Pet. 16–17 (emphasis in original). Petitioner also points to the
`requirement of the independent claims of negotiating a terms sheet or storing
`such a negotiated term sheet. Id. at 17. Petitioner also notes that the
`Specification of the ’687 patent describes property services platform 145 as
`including budgeting, financing, forecasting, and valuation tools for the real
`estate industry as well as payback calculation tools and cash flow calculation
`tools. Id. at 18.
`Patent Owner asserts that the claimed subject matter has a broader
`application, and does not fit the definition of a CBM patent because
`the claims themselves do not recite any elements requiring
`financial activity, let alone payment. Rather, the claims recite a
`particular arrangement of hardware and software (e.g., a
`“property management services server (Claims 1 and 17) or
`“property services server” (Claim 10), databases, and client
`computers) that perform specialized functions to facilitate a
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`lease transaction for real property in an on-line computing
`environment. The claims do not relate to the practice,
`administration, or management of payments related to lease
`transaction and, as such, do not recite the kind of financial
`activity required for a CBM patent.
`Prelim. Resp. 74–75.
`We agree with Petitioner. The preamble of all three independent
`claims 1, 10, and 17 recite a computer system or method for enabling or
`conducting a lease transaction for real property. Ex. 1001, 15:27–28, 16:13–
`14. The body of independent claims 1, 10, and 17 also include requirements
`for negotiating an electronic term sheet using the leasing software module
`and populating the lease agreement using the leasing software module. See
`id. at 15:39–41, 43–51, 16:54–61, 17:7–13. We find that a lease transaction
`that includes negotiating a lease as well as creating the lease agreement for
`the parties to execute is financial in nature.
`Patent Owner’s argument to the contrary applies an overly narrow
`interpretation for a CBM by asserting that the claims must relate to the
`practice, administration, or management of payments related to a lease
`transaction. Prelim. Resp. 75. A CBM patent claims a method or
`corresponding apparatus performing data processing or other operations
`used in the practice, administration, or management of a financial product
`or service, which does not require necessarily involvement of payments. See
`AIA § 18(d)(1). We find that a lease transaction as set forth in the
`challenged claims is a financial product within the meaning of the definition
`for a CBM patent. See SightSound Tech., LLC v. Apple Inc., 809 F.3d 1307,
`1315–16 (Fed. Cir. 2015) (affirming the Board’s determination that “the
`electronic sale of something . . . is a financial activity, and allowing such a
`sale amounts to providing a financial service”); Versata, 793 F.3d at 1325–
`
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`26 (upholding the Board’s determination that a “method for determining a
`price” was directed to a financial product or service); Blue Calypso, 815
`F.3d at 1340 (affirming the Board's finding that a patent that claims a
`subsidy, or financial inducement that encourages consumers to participate in
`the distribution of advertisements claims a financial activity).
`Given this, we determine that Petitioner shows that the challenged
`claims recite an apparatus and method for performing data processing or
`other operations used in the practice, administration, or management of a
`financial product or service. The ’687 patent, thus, is a CBM patent.
`
`3. Technological Invention
`Even if a patent includes claims that would otherwise be eligible for
`treatment as a CBM, a review of the patent is precluded if the claims cover
`only “technological invention[s],” as defined by 37 C.F.R. § 42.301(b). The
`definition of “covered business method patent” in § 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 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). Both
`prongs must be satisfied in order to exclude the patent as a technological
`invention. See Versata, 793 F.3d at 1326–27; Apple Inc. v. Ameranth, Inc.,
`842 F.3d 1229, 1240 (Fed. Cir. 2016).
`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
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`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.
`Patent Trial and Appeal Board Consolidated Trial Practice Guide8, 43 (Nov.
`2019) (“Consolidated Trial Practice Guide”). The Federal Circuit has held
`that a claim does not include a “technological feature” if its “elements are
`nothing more than general computer system components used to carry out
`the claimed process.” Blue Calypso, 815 F.3d at 1341; see also Versata, 793
`F.3d at 1327 (“the presence of a general purpose computer to facilitate
`operations through uninventive steps does not change the fundamental
`character of an invention”).
`
`Petitioner contends that the ’687 patent does not claim a technological
`invention and that neither prong of the definition is satisfied. Pet. 19–24.
`Petitioner asserts that the challenged claims do not recite a technological
`feature that is novel and unobvious over the prior art because they recite
`“systems or methods using generic computer hardware and software
`performing well-known functions – i.e., they simply add conventional
`computer components to well-known business practices.” Pet. 20.
`Petitioner also concludes that the challenged claims do not solve a technical
`problem using a technical solution because “the ’687 Patent purports to
`address a real-world, non-technical problem, not a problem specific to
`
`
`8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
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`computer technology.” Id. at 24. Petitioner contends “[s]tated differently,
`the ’687 Patent’s purported solution to the perceived problem with off-line
`lease transactions is simply to provide an on-line lease instead of a paper
`one—that is all. The identified problem and purported solution are not
`technical in nature.” Id. at 23–24.
`Patent Owner counters that:
`[T]he ’687 Patent describes and claims a novel online property
`management environment comprising a specific arrangement of
`elements, including a property services server platform, client
`computers, and remote and local databases coupled over a
`distributed computer network. The property services server
`platform described and claimed in the ’687 Patent improves
`upon prior systems by ‘operat[ing] as a Portal’ and thereby
`‘providing a central Web site for a consumer’s real estate-
`related operations’ that ‘aggregates a variety of real-estate
`related tools and services at a single Web site accessible by
`consumers, service providers and agents via client computers.’
`
`. . .
`
`Thus, the challenged claims recite technological features
`that are novel and unobvious over the prior art and solve a
`technical problem (the inability to identify an owner’s property
`that matches a tenant’s needs, negotiate, and close a lease
`transaction in a single platform in an online environment) using
`a technical solution (a novel online property management
`environment comprising, among other things, an inventive
`property services server platform).
`Prelim. Resp. 78–79 (citing Ex. 2001 ¶ 133).
`On this record, Petitioner’s evidence sufficiently shows that none of
`the challenged claims recites any technological feature that is novel and
`unobvious over the prior art nor solves a technical problem using a technical
`solution.
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`The Specification of the ’687 patent explains that all of the
`components of the claimed computing system or computer-implemented
`methods recited in the challenged claims are computer system components
`that are commercially available. See Ex. 1001, 4:35–58 (describing on-line
`real estate services environment using a distributed computer network
`including the global Internet, client computers, property information
`databases), 9:11–30 (describing commercially available components for
`property services server platform 145). This mere recitation of known
`technologies to make up the claimed combinations shows that the challenged
`claims do not recite any technological feature that is novel and unobvious
`over prior art.
` We determine that Petitioner has sufficiently shown that the
`challenged claims do not recite a technological feature that is novel and
`unobvious. Because both prongs must be satisfied for a patent to be
`excluded from covered business method patent review for being a
`technological invention, we find that the ’687 patent is eligible for a covered
`business method patent review for at least the reason that the challenged
`claims fail to recite a technological feature that is novel and unobvious.
`Nonetheless, we also are persuaded by Petitioner that the ’687 patent
`does not solve a technical problem with a technical solution. Concerning
`this second prong of the technical invention test, as set forth above, Patent
`Owner asserts that the technological problem solved by the claimed
`combinations is “the inability to identify an owner’s property that matches a
`tenant’s needs, negotiate, and close a lease transaction in a single platform in
`an online environment.” Prelim. Resp. 78. Patent Owner states that the
`’687 patent solves this problem by “providing a central Web site for a
`
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`consumer’s real-estate related operations” that “aggregates a variety of real-
`estate related tools and services at a single Web site accessible by consumer,
`service providers and agents via client computers.” Id. 78. Patent Owner
`further states that this “technical solution” includes a “novel online property
`management environment comprising, among other things, an inventive
`property services server platform.” Id. at 79.
`First, Patent Owner’s alleged problem, i.e., information aggregation,
`is not a technical problem, nor is merely applying an online environment or
`distributed computing environment to achieve such information aggregation
`a technical solution when carried out on known generic computers. The
`Specification of the ’687 patent does not appear to describe any particular
`inventive technical solution for creating such an aggregation apart from
`using commercially available products for the components of the claimed
`combinations. See generally Ex. 1001. As for the alleged inventive
`property services server platform, the Specification of the ’687 patent
`describes commercial components for each element of an exemplary
`embodiment of the property services server platform. See id. at 9:11–30.
`Patent Owner also does not point us to any particular technical solution that
`is provided in the ’687 patent, but merely asserts how the claimed
`arrangements function without reference to any disclosed technical solution.
`See Prelim. Resp. 77–80.
`
`On this record, we determine that the challenged claims of the
`’687 patent do not recite a technological feature that is novel and unobvious,
`nor do the challenged claims solve a technical problem using a technical
`solution. Therefore, we determine that the ’687 patent is not for a
`technological invention.
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`4. Conclusion for CBM Eligibility
`We determine that Petitioner has been sued for infringement of the
`’687 patent. We further determine that Petitioner has demonstrated that at
`least one claim of the ’687 patent is directed to a financial service or activity
`and is not directed to a technological invention. Accordingly, we conclude
`that the ’687 patent is eligible for CBM patent review.
`
`
`Patent Eligibility
`C.
`An invention is patent-eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
`include implicit exceptions: “[l]aws of nature, natural phenomena, and
`abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
`U.S. 208, 216 (2014).
`In determining whether a claim falls within an excluded category, we
`are guided by the Court’s two-part framework, described in Mayo and Alice.
`Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
`determine what concept the claim is “directed to.” See Alice, 573 U.S. at
`219 (“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.”); see also 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.”).
`Concepts determined to be abstract ideas, and thus patent ineligible,
`include certain methods of organizing human activity, such as fundamental
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`economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
`mathematic
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