Paper 25
`Entered: May 15, 2014
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EBAY ENTERPRISE, INC. and EBAY, INC.
`Petitioner
`
`v.
`
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_______________
`
`Case CBM2014-00026
`Patent 5,576,951
`_______________
`
`
`
`Before SALLY C. MEDLEY, MICHAEL W. KIM, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`1
`
`VALMONT 2001
`
`
`Entered: May 15, 2014
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`EBAY ENTERPRISE, INC. and EBAY, INC.
`Petitioner
`
`v.
`
`LAWRENCE B. LOCKWOOD
`Patent Owner
`_______________
`
`Case CBM2014-00026
`Patent 5,576,951
`_______________
`
`
`
`Before SALLY C. MEDLEY, MICHAEL W. KIM, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`1
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`VALMONT 2001
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`CBM2014-00026
`Patent 5,576,951
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`eBay Enterprise, Inc. (“EEI”)1 and eBay, Inc. (“eBay”) (collectively
`“Petitioner”) filed a petition (Paper 1, “Pet.”) to institute a review under the
`transitional program for covered business method patents of U.S. Patent No.
`5,576,951 (Ex. 1008, “the ’951 patent”). Patent Owner Lawrence B.
`Lockwood (“Patent Owner”)2 filed a preliminary response (Paper 13,
`“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 1-32 of the ’951
`patent under 35 U.S.C. §§ 112 ¶ 2,3 and 103. Taking into account Patent
`
`1 The petition names eBay and GSI Commerce Solutions, Inc. (“GSI”)
`as petitioners. See Paper 1, cover page. In a paper filed April 11, 2014,
`Petitioner gave notice that GSI had changed its name to EEI. Paper 17 at 1.
`2 The petition names Landmark Technologies, LLC (“Landmark”) as
`the patent owner. Paper 1, cover page. In a paper filed February 21, 2014,
`Mr. Lockwood gave notice that he owns the ’951 patent and that Landmark
`is the licensee of the patent. Paper 15 at 1, n.1.
`3 Section 4(c) of the America Invents Act. Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶¶ 1-6 as 35
`U.S.C. § 112(a)-(f). Because the ’951 patent has a filing date prior to
`September 16, 2012, the effective date of the AIA, we refer to the pre-AIA
`version of 35 U.S.C. § 112.
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`Owner’s preliminary response, we determine that the information presented
`in the petition demonstrates that it is more likely than not that the challenged
`claims are unpatentable under 35 U.S.C. § 112 ¶ 2. As a result, we are
`unable to reach the alleged grounds of unpatentability based on 35 U.S.C.
`§ 103. Accordingly, pursuant to 35 U.S.C. § 324, we authorize a covered
`business method patent review to be instituted as to claims 1-32 of the ’951
`patent.
`
`Related Proceedings
`B.
`Petitioner discloses that the ’951 patent is involved in Landmark v.
`iRobot, Case No. 6:13-cv-411 (E.D. Tex. 2013). Pet. 7. As discussed
`below, iRobot is Petitioner EEI’s customer, and EEI alleges that it is
`obligated to indemnify iRobot. Petitioner further discloses that a related
`patent, U.S. Patent No. 7,010,508, is the subject of another petition for
`transitional covered-business-method review. Id.; see GSI Commerce
`Solutions, Inc., v. Landmark Technologies LLC, CBM2014-00025 (Paper 1).
`Patent Owner discloses that the ’951 patent is involved in sixteen additional
`suits that are pending in the Eastern District of Texas. See Paper 11 at 3-5
`and n.2; Paper 18 at 2-4 and n.2.4
`
`
`4 Patent Owner suggests that we should not institute CBM review
`because Petitioner failed to inform the Board of all related proceedings as it
`was required to do under 37 C.F.R. § 42.8(b)(2). Prelim. Resp. 3-4. Rule
`42.8 requires each party to identify “any other judicial or administrative
`matter that would affect, or be affected by, a decision in the proceeding.”
`37 C.F.R. § 42.8(a)(1)-(2), (b)(2). While a failure to comply with an
`applicable rule may be sanctioned (37 C.F.R. § 42.12(a)(1)), we do not
`believe that a sanction, much less dismissal of the petition, is appropriate
`here. Patent Owner has not shown that Petitioner failed to identify a related
`proceeding of which Petitioner was aware. Moreover, we presume that
`
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`The ’951 Patent also has been the subject of two ex parte
`reexaminations: (1) No. 90/006,625 (“the 1st ex parte reexam”); and (2) No.
`90/012,685 (“the 2nd ex parte reexam”). The 1st ex parte reexam confirmed
`the patentability of original claims 1-10, and added claims 11-32. Ex. 2008,
`1st reexam cert., 1:17-20. The 2nd ex parte reexam confirmed the
`patentability of claims 1-32. Ex. 2008, 2nd reexam cert., 1:12.
`
`The Claimed Subject Matter
`C.
`The ’951 patent is directed to “data processing systems designed to
`facilitate commercial, financial and educational transactions between
`multimedia terminals such as automated sales workstations, information
`dispensing networks and self-service banking systems.” Ex. 1008, 1:30-34.
`The preferred embodiment is directed to “a means for automatically creating
`and displaying customized travel and tour sales presentations from various
`textual and graphical data sources managed by a multiplicity of operating
`programs.” Id. at 5:24-28. Referring to figure 1, the specification describes
`this system as comprising “one or more special information and sales
`terminals 2 linked to an airline computerized reservation system 1 which
`gives access to the data processing installations of various travel
`suppliers 4.” Id., 8:44-47; fig. 1. A travel agent interviews a client and
`enters client’s requests – e.g., travel to Barbados to play golf – into terminal
`2. Id., 9:13-14; fig. 2. Based on this input, microprocessor 14: (1) selects
`relevant video chapters – e.g., relating to golf courses in Barbados – stored
`locally in the terminal’s A/V Data Sources 9; (2) obtains relevant reservation
`data – e.g., cost and schedule of flights to Barbados – from remote
`
`Patent Owner has identified all related proceedings that Petitioner did not
`identify in the petition.
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`Patent 5,576,951
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`reservation system 1; and (3) combines the video and reservation data into a
`single personalized presentation displayed on the terminal for the client. Id.,
`8:54-9:37; figs. 1, 2, 6.
`A first alternate embodiment of the invention relates to multimedia
`terminals used by banking institutions to make their services, such as loan
`processing, continuously available from various remote locations. Id.,
`3:35-38. As shown in figure 7, the system comprises financial institution
`101 linked to a plurality of remote self-service terminals 102 and credit
`rating service 103. Id., 12:38-41; fig. 7. The terminal’s video screen
`displays pre-recorded video of a fictitious bank loan officer who guides a
`loan applicant through the application process. Id., 13:66-14:3; fig. 8. The
`applicant answers questions posed by the fictitious loan officer via a touch
`pad. Id., 14:19-29; fig. 9. Based on the applicant’s answers, the terminal
`communicates with financial institution 101 and credit rating service 103 to
`process the loan. Id., 14:49-60, 15:21-64; figs. 10, 11.
`A second alternative embodiment is drawn to a system for “dispensing
`information, goods and services from multiple retail, travel, financial,
`grocery and other service industries.” Id. 16:43-46. As shown in figure 12,
`the system comprises central data processing center 201 that links
`customers’ information and sales stations 202 to retailers’ data processing
`terminals 204. Id., 16:47-51; fig. 12. Customers can use their terminals to
`request information about goods and services available from the retailers,
`and order such goods and services, via central data processing center 201.
`Id., 17:9-18; fig. 12.
`
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`
`textual and graphical
`
`Illustrative Claims
`D.
`Claims 1 and 10, the ’951 patent’s independent claims, illustrate the
`claimed subject matter:
`1. A computer search system for retrieving information,
`comprising:
`means for storing interrelated textual information and
`graphical information;
`means
`for
`interrelating said
`information;
`a plurality of entry path means for searching said stored
`interrelated textual and graphical information, said entry path
`means comprising:
`textual search entry path means for searching said
`textual information and for retrieving interrelated graphical
`information to said searched text;
`graphics entry path means for searching said graphical
`information and
`for
`retrieving
`interrelated
`textual
`information to said searched graphical information;
`selecting means for providing a menu of said plurality
`of entry path means for selection;
`automatic data processing means for executing inquiries
`provided by a user in order to search said textual and
`graphical information through said selected entry path
`means and for fetching data as a function of other data;
`indicating means for indicating a pathway that accesses
`information related in one of said entry path means to
`information accessible in another one of said entry path
`means;
`accessing means for providing access to said related
`information in said another entry path means; and
`output means for receiving search results from said
`processing means and said related information from said
`accessing means and for providing said search results and
`received information to such user.
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`10. A computerized system for selecting and ordering a variety
`of information, goods and services, which comprises:
`a plurality of computerized data processing installations
`programmed for processing orders for said information, goods
`and services;
`at least one computerized station, said station including:
`a micro-processor;
`a device for displaying graphical and textual material;
`at least one mass memory device controlled by said
`micro-processor;
`means for addressing at least one of said computerized
`data processing installations, and for sending thereto and
`receiving therefrom, coded messages and batches of data;
`program means for controlling the display on said display
`device of inquiries and acceptable answers;
`user operated means for selecting at least one of said
`acceptable answers;
`means for accumulating a set of said acceptable answers;
`automatic data processing means for processing said set
`of answers as a function of other data;
`means
`for
`storing
`in
`said mass-storing device,
`interrelated textual information and graphical information;
`means for
`interrelating said
`textual and graphical
`information;
`a plurality of entry path means for searching said stored
`interrelated textual and graphical information;
`means, responsive to said means for processing, for
`executing inquiries provided by said user and for searching
`said textual and graphical information through said selected
`entry path means;
`said means for executing and searching, including means
`for addressing at least one of said installations and for
`retrieving data related to said answer; and
`means responsive to said means for processing, for
`transferring orders for said information, goods and services
`to said installations.
`
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`
`Prior Art Relied Upon
`E.
`Petitioner relies upon the following prior-art references:
`U.S. Patent No. 4,359,631 to Lockwood et al., filed Jul. 11, 1980
`(“Lockwood”) (Ex. 1001);
`Dungan, C., A Model of an Audit Judgment in the Form of an Expert
`System (May 23, 1983) (Ph. D. dissertation, University of Illinois)
`(“Dungan”) (Ex. 1002);
`Shortliffe, H., et al., Oncocin: An Expert System for Oncology
`Protocol Management, 7TH INT’L CONF. ON ARTIFICIAL INTELLIGENCE (Aug.
`1981) (“Shortliffe”) (Ex. 1003);
`U.S. Patent No. 5,241,671 to Reed et al., filed Oct. 26, 1989
`(“Compton”) (Ex. 1004);
`Johnson, H. et al., Expert System for Diesel Electric Locomotive
`Repair, 1 J. FORTH APPL. & RES. 7 (Sept. 1983) (“Johnson”) (Ex. 1005);
`Gordon, R., An Interactive Video Information Terminal, 3 1982 IEEE
`GLOBAL TELECOMM. CONF. REC. 1356 (Nov. 29-Dec. 2, 1982) (“Gordon”)
`(Ex. 1006);
`Van Melle, W. et al., THE EMYCIN MANUAL (Stanford Univ. Nov. 9,
`1981) (“EMYCIN”) (Ex. 1007).
`
`
`
`Asserted Grounds of Unpatentability
`F.
`Petitioner contends that claims 1-32 of the ’951 patent are
`unpatentable on the following grounds: (1) indefinite under 35 U.S.C. § 112
`¶ 2; and (2) obvious under 35 U.S.C. § 103 based on the following
`combinations:
`
`Reference[s]
`Lockwood, Johnson, and EMYCIN
`Lockwood, Shortliffe, EMYCIN,
`and Gordon
`Compton and Dungan
`
`Claims Challenged
`1-32
`1-32
`1-9, 11, 13, 17, 18, and 19
`
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`
`II. ANALYSIS
`
`A.
`
`Standing Under the Transitional Program for
`Reviewing Covered Business Method Patents
`The parties dispute whether Petitioners EEI and eBay have standing to
`seek review of the ’951 patent under the transitional program for reviewing
`covered-business-method (“CBM”) patents. “[T]he starting point for a
`standing determination for a litigant before an administrative agency . . . is
`the statute that confers standing before that agency.” Ritchie v. Simpson,
`170 F.3d 1092, 1095 (Fed. Cir. 1999). In this case, the starting point is AIA
`§ 18, which creates the transitional CBM-patent-review program. This
`section states in relevant part: “A person may not file a petition for a
`transitional proceeding with respect to a covered business method patent
`unless the person or the person’s real party in interest or privy has been sued
`for infringement of the patent or has been charged with infringement under
`the patent.” AIA § 18(a)(1)(B). This requirement is repeated in 37 C.F.R.
`§ 42.302(a), which further defines “charged with infringement” to mean that
`“a real and substantial controversy regarding infringement of a covered
`business method patent exists such that the petitioner would have standing to
`bring a declaratory judgment action in Federal court.” 37 C.F.R. § 42.302.
`1.
`EEI
`Petitioner asserts that EEI has been “charged with infringement”
`under this rule because Patent Owner sued EEI’s customer, iRobot, for
`infringement of the ’951 patent based on iRobot’s use of EEI systems and
`software, and EEI is obligated to indemnify iRobot if infringement is found.
`Pet. 3. Petitioner argues that EEI’s indemnification obligation confers on it
`declaratory-judgment standing, and therefore, under rule 42.302, standing to
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`petition for CBM review of the ’951 patent. Id. (citing Arris Group, Inc. v.
`British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011)).
`Patent Owner disputes that EEI has standing. First, Patent Owner
`argues that the petition “failed to provide evidence of an indemnification
`contract or any connection between the iRobot litigation and [EEI’s] systems
`and software.” Prelim. Resp. 9. Second, Patent Owner disputes Petitioner’s
`contention that having an obligation to indemnify iRobot automatically
`confers standing to EEI. Id. at 11.
`After the petition and preliminary response were filed, Petitioner
`moved to submit briefing, along with the declaration of EEI’s patent
`counsel, Howard I. Sherman, to provide clarification regarding EEI’s
`obligation to indemnify iRobot. Paper 21 at 3. Petitioner asserts that while
`it only had to “certify” in the petition that it had standing, it wishes to
`provide Mr. Sherman’s declaration to clarify the record. Id. at 2-3. Patent
`Owner opposes the motion. Paper 23. According to Patent Owner, Rule
`42.304(a) requires that a CBM petition “demonstrate” standing rather than
`merely provide certification of standing. Id. at 2-3. Patent Owner further
`argues that Petitioner’s late submission of the Sherman Declaration is not
`permitted by the rules. Id. at 3-4. Finally, Patent Owner argues that the
`dismissal of the iRobot suit after the petition was filed removes any standing
`that Petitioner may have had. Id. at 4-7.
`To the extent that Rule 42.304(a) requires that a petitioner provide
`evidence of standing with the petition and no later, we exercise our
`discretion under Rule 42.5(b) and waive that requirement. First, the Office
`Patent Trial Practice Guide suggests that a CBM petition need only provide
`certification of standing. Specifically, the Practice Guide states that among
`
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`the specific requirements for petitions for all AIA proceedings, including
`CBM proceedings, “[a] petitioner must certify that the patent or application
`is available for review and that the petitioner is not barred or estopped from
`seeking the proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,763 (Aug. 14, 2012). It is not unreasonable for a petitioner to
`rely on this characterization and believe that certification alone is sufficient.
`Second, we believe that considering Petitioner’s evidence now, rather than
`denying the petition as to EEI and have it file a new petition merely to
`provide the same evidence, is a more efficient use of Board and litigant
`resources. Accordingly, we will consider the Sherman Declaration, Ex.
`1014.
`“[W]here a patent holder accuses customers of direct infringement
`based on the sale or use of a supplier’s equipment, the supplier has standing
`to commence a declaratory judgment action if . . . the supplier is obligated to
`indemnify its customers from infringement liability.” Arris, 639 F.3d at
`1375.5 We credit the Sherman Declaration, and find that at the time the
`Petition was filed, EEI was obligated to indemnify iRobot. The subsequent
`dismissal of the iRobot suit is irrelevant, as the requirements of Rule
`42.302(a) need be met only at the time of filing. See 37 C.F.R. § 42.302(a)
`(“A petitioner may not file with the Office a petition to institute a covered
`business method patent review . . . unless the petitioner . . . has been charged
`with infringement.”). Moreover, we are not persuaded by Patent Owner’s
`argument that dismissal of the iRobot suit extinguishes Petitioner’s standing
`because it eliminates any Article III case or controversy between the parties.
`
`5 We have considered Patent Owner’s arguments against applying
`Arris in this case, Prelim. Resp. 11-13, and find them unpersuasive.
`
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`Paper 23 at 6-7. Article III case-or-controversy considerations do not apply
`to administrative proceedings. Coach Servs., Inc. v. Triumph Learning LLC,
`668 F.3d 1356, 1376 (Fed. Cir. 2012).
`2.
`eBay
`Petitioner contends that eBay has standing to file the petition because
`“Landmark has asserted that Petitioner eBay Inc. infringes one or more
`claims of the’951 Patent.” Pet. 3 (citing Ex. 1013). The basis for this
`contention is a letter that Patent Owner sent to John J. Donahoe, President of
`eBay, on May 3, 2013. Patent Owner’s letter is said to include a copy of the
`’951 patent, along with a draft license agreement, and states that “eBay
`Inc.’s websites . . . make[] use of the technology covered by [the ’951]
`patent.” Ex. 1013 at 1-2.
`Patent Owner asserts that its May 3, 2013 letter did not “charge” eBay
`with infringement. According to Patent Owner, its letter “intentionally
`tracked [the language] of [SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127
`F.3d 1462, 1469-70 (Fed. Cir. 1997)], which the Federal Circuit held . . .
`failed to create standing for a declaratory judgment action.” Prelim. Resp.
`15. Patent Owner also argues that the petition “provides no justification why
`it has ‘under all the circumstances, show[n] that there is a substantial
`controversy, between parties having adverse legal interests, of sufficient
`immediacy and reality to warrant the issuance of a declaratory judgment.’”
`Id. (quoting Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)).
`Neither of these arguments is persuasive.
`First, Patent Owner incorrectly characterizes SRI’s holding. The SRI
`court did not hold that the letter at issue in that case failed to create
`declaratory-judgment standing. Declaratory-judgment standing was not at
`
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`issue in SRI, but rather whether the patent owner’s letter to an accused
`infringer gave the accused infringer “actual notice” of infringement under 35
`U.S.C. § 287(a) for purposes of determining when damages started to
`accrue. SRI, 127 F.3d at 1469. The accused infringer argued that the letter
`did not satisfy § 287(a)’s actual-notice requirement because it did not create
`“an actual controversy under the Declaratory Judgment Act.” Id. at 1470.
`The court rejected this argument, holding that the criteria for actual notice
`under § 287(a) “are not coextensive with the criteria for filing a declaratory
`judgment action,” and that “[a]ctual notice may be achieved without creating
`a case of actual controversy.” The SRI court thus addressed declaratory-
`judgment standing solely for the purpose of rejecting the infringer’s attempt
`to equate declaratory-judgment standing with actual notice of infringement.
`Further, SRI issued before the Supreme Court rejected the Federal Circuit’s
`requirement that a declaratory-judgment plaintiff have a “reasonable
`apprehension of imminent suit.” Medimmune, 549 U.S. at 118, 132 n.11.
`Thus, the distinction between declaratory judgment jurisdiction and actual
`notice under § 287(a) is likely less sharp now than it may have been when
`SRI issued. For these reasons, Patent Owner has not shown sufficiently that
`SRI is dispositive of the issue.
`Second, we determine that Patent Owner’s letter is sufficient to
`establish declaratory-judgment standing under the Medimmune standard. As
`Patent Owner alludes, the Medimmune Court held that declaratory-judgment
`standing exists when “there is a substantial controversy, between parties
`having adverse legal interests, of sufficient immediacy and reality to warrant
`the issuance of a declaratory judgment.” Medimmune, 549 U.S. at 127. The
`dispute must be “real and substantial” and “admit of specific relief through a
`
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`decree of a conclusive character, as distinguished from an opinion advising
`what the law would be upon a hypothetical state of facts.” Id. Under
`Medimmune, a declaratory-judgment plaintiff no longer needs to show that is
`has a “reasonable apprehension of imminent suit,” as the Federal Circuit had
`required. Id. at 118, 132 n.11. Patent Owner’s letter demonstrates that it
`believes that eBay is practicing the ’951 patent without a license, and that
`Patent Owner intends to seek compensation for such practice. Patent
`Owner’s letter thus gives rise to a “real and substantial,” rather than
`hypothetical, legal controversy between eBay and Patent Owner, which
`controversy would admit of specific relief through a decree as to the ’951
`patent’s validity. Accordingly, we determine that it is sufficient to establish
`declaratory-judgment standing under Medimmune, and therefore sufficient to
`confer standing to seek CBM review of the ’951 patent.
`
`B. Whether the ’951 Patent is a Covered Business Method
`Patent or a Patent for a Technological Invention
`The parties also dispute whether the ’951 patent is a “covered
`business method patent,” as defined in the AIA and 37 C.F.R. § 42.301.
`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 37 C.F.R. § 42.301(a).
`Patent Owner does not dispute, at least at this preliminary stage, that
`the ’951 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.” Based on the current record,
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`we agree with Petitioner that the ’951 patent relates to a financial product or
`service as required by AIA § 18(d)(1) and 37 C.F.R. § 42.301. Thus, the
`specific issue presented is whether the ’951 patent claims a technological
`invention.
`Whether a patent is for a technological invention under AIA
`§ 18(d)(1) is determined by considering, on a case-by-case basis: (1)
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art;” and (2) whether the
`claimed subject matter as a whole “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
`to
`technology
`the use of known prior-art
`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).
`Because a patent need have only one claim directed to a covered
`business method to be eligible for review,6 we focus our inquiry on claim 1.
`
`
`6 See Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`
`
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`15
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`CBM2014-00026
`Patent 5,576,951
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`Claim 1 is drawn to a “computer search system,” but does not recite any
`technology per se. Instead, claim 1 contains limitations written in means-
`plus-function format, requiring us to discern any recited technology from the
`written description. The written description, in turn, indicates that the
`invention may be implemented using technology disclosed in Lockwood,
`Ex. 1001. For example, the written description describes the first alternate
`embodiment as utilizing the Lockwood patent’s interactive multimedia
`terminals. Ex. 1008, 3:35-56. The Lockwood patent issued on Nov. 16,
`1982, before the earliest possible effective filing date of the ’951 patent,
`May 24, 1984.7 On the record before us, therefore, we determine that to the
`extent that claim 1 recites technology via its mean-plus-function claim
`limitations, it recites technology that existed before the earliest possible
`effective filing date of the ’951 patent. Accordingly, on the present record,
`we determine that the subject matter of claim 1, as a whole, does not recite
`“a technological feature that is novel and unobvious over the prior art,” and,
`therefore, is not a technological invention.
`Patent Owner responds that “the Petition’s obviousness analysis is
`fatally flawed because it did not correctly define a [person of ordinary skill
`in the art] and construe the claims.” Prelim. Resp. at 16. This argument is
`not persuasive because our determination above does not rely on the
`petition’s obviousness analysis, but rather on the ’951 patent’s disclosure.
`Patent Owner next argues that “[e]ven where ‘known technologies’ are
`
`
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012)
`(Comment 8).
`7 For purposes of this decision we need not, and do not, determine
`whether the ’951 patent is entitled to this priority date.
`
`
`
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`16
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`CBM2014-00026
`Patent 5,576,951
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`recited and combined, the claimed subject matter may still meet these
`criteria where something more than ‘the normal, expected, predictable
`result’ of combination of ‘known technologies’ is claimed.” Id. at 17 (citing
`77 Fed. Reg. 48,756, 48,763-64 (Aug. 12, 2012). That may be true, but
`Patent Owner does not allege, and we do not find, that the ’951 patent claims
`the “combination” of technologies, known or otherwise. Finally, Patent
`Owner argues that the ’951 patent is a pioneering patent (because more than
`350 subsequent patents cited it), and thus the ’951 patent “fall[s] into the
`technological exception.” Id. at 17-18. But Patent Owner provides no
`support for the notion that a pioneer patent is necessarily one that claims a
`technological invention, and such notion is not self-evident to us. Therefore,
`we are not persuaded by this argument.
`
`C. Definiteness, 35 U.S.C. § 112 ¶ 2
`Petitioner asserts that claims 1-32 of the ’951 patent are indefinite
`under 35 U.S.C. § 112 ¶ 2. Specifically, Petitioner asserts that the following
`limitations are means-plus-function claim limitations, and that the written
`description does not disclose structure that performs the functions they
`recite: (1) “means for interrelating said textual and graphical information,”
`in independent claims 1 and 10; and (2) “indicating means for indicating a
`pathway that accesses information related in one of said entry path means to
`information accessible in another one of said entry path means,” in claim 1.
`Both limitations recite the term “means,” which creates a rebuttable
`presumption that they are written in means-plus-function format under 35
`U.S.C. § 112 ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir.
`2008). The presumption may be rebutted if the limitation includes structure
`that performs the specified function. Personalized Media Communications,
`
`
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`17
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`CBM2014-00026
`Patent 5,576,951
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`LLC v. International Trade Com'n, 161 F.3d 696, 704 (Fed. Cir. 1998).
`Neither of these limitations appears to include any structure. Moreover,
`Patent Owner does not dispute Petitioner’s contention that they are means-
`plus-function limitations. Accordingly, we will interpret them in accordance
`with 35 U.S.C. § 112 ¶ 6.
`Under 35 U.S.C. § 112 ¶ 6, “[a]n element in a claim for a combination
`may be expressed as a means or step for performing a specified function
`without the recital of structure, material, or acts in support thereof.” Id. But
`the scope of a claim containing such a means-plus-function limitation is
`limited to “the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” Id. Construing a claim under 35
`U.S.C. § 112 ¶ 6 is thus a two-step process. The first step is identifying the
`particular function recited. Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d
`1327, 1333 (Fed. Cir. 2004) (citation omitted). The second step is
`identifying, in the specification, the structure that corresponds to that
`function. Id. at 1334. “Under this second step, structure disclosed in the
`specification is corresponding structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim.” In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)
`(internal quotation omitted) (emphasis added). Failure to disclose structure
`that performs the claimed function renders the claim invalid for
`indefiniteness under 35 U.S.C. § 112 ¶ 2. Aristocrat Techs. Aus. Pty Ltd. v.
`Int’l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008) (citing In re
`Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)).
`“In cases involving a computer-implemented invention in which the
`inventor has invoked means-plus-function claiming, [the Federal Circuit] has
`
`
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`CBM2014-00026
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`consistently required that the structure disclosed in the specification be more
`than simply a general purpose computer or microprocessor.” Aristocrat, 521
`F.3d at 1333. This is becau
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