Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 13
`
`Entered: November 12, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LINKEDIN CORP.
`Petitioner
`
`v.
`
`AVMARKETS INC.
`Patent Owner
`____________
`
`Case CBM2013-00025
`U.S. Patent 7,856,430 B1
`____________
`
`Before MICHAEL P. TIERNEY, JONI Y. CHANG, and
`WILLIAM V. SAINDON, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`Petitioner Exhibit 1009 p.1
`
`
`571-272-7822
`
`
`
` Paper 13
`
`Entered: November 12, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LINKEDIN CORP.
`Petitioner
`
`v.
`
`AVMARKETS INC.
`Patent Owner
`____________
`
`Case CBM2013-00025
`U.S. Patent 7,856,430 B1
`____________
`
`Before MICHAEL P. TIERNEY, JONI Y. CHANG, and
`WILLIAM V. SAINDON, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`Petitioner Exhibit 1009 p.1
`
`
`
`CBM2013-00025
`US 7,856,430 B1
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`I. INTRODUCTION
`A. Background
`On May 29, 2013, LinkedIn Corporation (“LinkedIn”) filed a petition
`(Paper 2, “Pet.”) requesting review under the transitional program for
`covered business method patents of U.S. Patent 7,856,430 (“the ’430
`patent”) (Ex. 1001). Patent owner, AvMarkets Incorporated (“AvMarkets”),
`filed a preliminary response (Paper 12, “Prelim. Resp.”) on August 12, 2013.
`We have jurisdiction under 35 U.S.C. § 324. See section 18(a) of the Leahy-
`Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011)
`(“AIA”).
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a), which provides:
`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.
`
`LinkedIn challenges claims 1-17 of the ’430 patent solely under 35
`U.S.C. § 101. Pet. 11-27. Taking into account AvMarkets’s preliminary
`response, we conclude that the information presented in the petition
`demonstrates that it is more likely than not that claims 1-3, 5-7, 9-11, and
`13-15 are unpatentable under 35 U.S.C. § 101. Pursuant to 35 U.S.C. § 324
`and section 18(a) of the AIA, we hereby authorize a covered business
`method patent review to be instituted as to claims 1-3, 5-7, 9-11, and 13-15.
`LinkedIn’s petition in GRANTED.
`
`2
`
`Petitioner Exhibit 1009 p.2
`
`
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`B. The ’430 Patent
`The ’430 patent is titled “Method for Generating Increased Numbers
`
`of Leads Via the Internet.” The patent generally describes generating sales
`leads on the Internet through the creation of Web pages to display
`information. Ex. 1001, col. 1:1-13. The patent explains that Web pages
`containing items indexed by search engines generate greater sales leads
`because potential customers can find those items using a search engine. Id.
`at col. 3:46-56. In order to generate the Web pages for display on the
`Internet, the method receives a list of data items and lists the data items as
`hyperlinks on a Web page. Id. at col. 6:10-16 (receive list), 37-47 (list data).
`The patent specifies that when a hyperlink is activated, the invention
`generates a Web page showing the data item in a title, URL (Uniform
`Resource Locator), meta-tag, or text of the generated Web page. Id. at col.
`6:48-58. In additional embodiments, the invention can: provide access
`credentials specifying authorized users of the Web site; generate an index of
`non-duplicative data items after receiving the data items; and include a
`prompt on the generated Web page. Id. at col. 6:7-10 (credentials), 20-36
`(index); col. 7:10-14 (prompt).
`
`Claims 1-4 are representative of the claimed methods:
`1. A method for generating increased numbers of sales leads
`for each of a plurality of sellers of parts via a network
`implemented by a computer executing computer readable
`instructions to perform the steps of:
`
`receiving one or more part numbers for said parts from
`each of the plurality of sellers;
`listing each of said part numbers as a part number
`hyperlink on a Web page; and
`
`3
`
`Petitioner Exhibit 1009 p.3
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`generating a part number Web page for any activated part
`number hyperlink wherein the part number Web page includes
`two or more components each of which incorporates the part
`number from said activated part number hyperlink, wherein
`each such component is selected from the group consisting of a
`title, a URL, a meta-tag and a text entry.
`2. The method of claim 1 wherein said receiving is
`implemented via one or more BLOB fields.
`3. The method of claim 1 wherein each generated part number
`Web page includes a prompt for issuing a request for quotation
`or an order relating to one of said part numbers.
`4. The method of claim 1 wherein each generated part number
`Web page has a static URL.
`
`C. Claim Construction
`In the transitional program for covered business method patents,
`
`claims are construed under the broadest reasonable interpretation standard.
`37 C.F.R. § 42.300(b). LinkedIn’s proposed constructions are as follows:
`
`Supporting Explanation
`
`LinkedIn’s Proposed
`Construction
`“Products marketed by sellers” Pet. 13 (citing Ex. 1001,
`col. 5:44-46, 49-54)
`Pet. 14 (citing Ex. 1001,
`col. 3:46-56); but see infra
`
`Pet. 15 (citing Ex. 1001,
`col. 1:15-18; Ex. 1005 at
`564 (defining “Web
`page”))
`Pet. 15-16 (citing Ex. 1001,
`
`Claim Term
`(Claims)
`“parts”
`(1-4, 9-7)
`“part
`number”
`(1-4, 7, 9-17)
`“Web page”
`(all)
`
`“Any number that could
`represent a product, part of a
`product, or a person”
`“A document available on the
`World Wide Web”
`
`“hyperlink”
`
`“A link on one document to
`
`4
`
`Petitioner Exhibit 1009 p.4
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`
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`(all)
`
`“meta-tag”
`(all)
`
`“BLOB
`field”
`(2, 6, 10 14)
`
`retrieve another piece of that
`document or another
`document”
`“An HTML tag that provides
`information about a Web page
`without affecting how the page
`is displayed. . . .”
`“A user input field for
`accepting Binary Large
`Objects, which comprises not
`only the traditional character,
`numeric, and memo fields but
`also pictures or other data that
`consumes a large amount of
`space”
`
`col. 1:15-19; 2:64-65; Ex.
`1106 at 462 (defining
`“hyperlink”))
`Pet. 16 (citing Ex. 1001,
`col. 3:8-13; Ex. 1005 at
`336 (defining “metatag”))
`
`Pet. 17 (citing Ex. 1001,
`col. 6:10-13; Ex. 1006 at
`163 (defining “BLOB”))
`
`AvMarkets “does not dispute” LinkedIn’s proposed constructions because
`“LinkedIn’s petition . . . must be denied even under [its] own constructions,”
`but indicates that such inaction “should [not] be interpreted as an
`agreement.” See Prelim. Resp. 11.
`
`We have reviewed LinkedIn’s proposed claim interpretations and
`determine that the interpretations are consistent with the ordinary and
`customary meaning of the terms as understood by one of ordinary skill in the
`art, with the exception of the term “part number.” Accordingly, for purposes
`of this decision, we adopt the above interpretations with the exception of the
`term “part number,” which we construe more broadly. Specifically, the term
`“part number” merely means some handle for representing the part.
`Whether that handle comprises numbers, letters, symbols, or a combination
`thereof is not functionally significant. It is well understood that “part
`numbers,” for example, components of airplanes, can include any number of
`
`5
`
`Petitioner Exhibit 1009 p.5
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`symbols and are not limited to numerals. See, e.g., Ex. 1001, figure 5
`(depicting part number “453U7030-143”). Accordingly, for purposes of this
`decision, “part number” merely means “data that could represent a product,
`part of a product, or a person.”
`Neither party proposes a construction for the phrase “generating a
`Web page for any activated part number hyperlink” (claims 9, 13) or
`“generating a [part number/data item] Web page for any activated [part
`number/data item] hyperlink” (claims 1, 5). The plain meaning of
`“generating” is “[t]o produce something by setting in motion an automatic
`procedure”1 or “to use software or a device to produce codes or a program
`automatically.”2 As such, the generated Web page must be created
`automatically, at the time of accessing. Web pages that are created
`automatically in this manner are called dynamic Web pages. Ex.1001, col.
`1:54-56 (“[a] dynamic Web page is one that is created the moment the page
`is accessed and it is usually created based upon data in a database.”). This is
`in contrast to a static Web page, which merely is displayed, as opposed to
`created, upon access. Id. at col. 1:53-54 (“opposite of a static Web page is a
`‘dynamic’ Web page”).
`
`
`1 Webster’s New World™ Computer Dictionary (2003)
`(http://www.credoreference.com/entry/webstercom/generate)
`2 Dictionary of Computing (2008)
`(http://www.credoreference.com/entry/acbcomp/generate)
`
`6
`
`Petitioner Exhibit 1009 p.6
`
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`II. THE ’430 PATENT IS AN ELIGIBLE COVERED
`BUSINESS METHOD PATENT
`
`Covered business method patent review requires that the petitioner
`
`has standing and shows the subject matter of the challenged patent is eligible
`for review. We determine that LinkedIn has standing to request review and
`has shown that the ’430 patent is a covered business method patent.
`
`A. Standing
`Section 18(a)(1)(B) of the AIA limits the availability of the
`transitional proceeding for covered business method patents to persons or
`their privies that have been sued or charged with infringement of a covered
`business method patent. LinkedIn indicates that the ’430 patent was asserted
`against it in AvMarkets, Inc. v. LinkedIn Corporation, No. 13-cv-00230-LPS
`(D. Del), pending in the U.S. District Court for the District of Delaware.
`Pet. 11. AvMarkets acknowledges that it filed an action against LinkedIn.
`Prelim. Resp. 5. AvMarkets does not allege that LinkedIn lacks standing.
`We determine that LinkedIn has standing to request a covered business
`method patent review.
`
`B. The ’430 Patent is a Covered Business Method Patent
`1. Principles of Law
`Under section 18(a)(1)(E) of the AIA, the Board may institute a
`transitional proceeding only for a patent that is a “covered business method
`patent.” Section 18(d)(1) of the AIA defines the term “covered business
`method patent” to mean:
`
`7
`
`Petitioner Exhibit 1009 p.7
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`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.
`
`Regarding the technological invention exclusion, and pursuant to
`Section 18(d)(2) of the AIA, the Office promulgated 37 C.F.R. § 42.301(b)
`to define the term “technological invention” for the purposes of the
`transitional program for covered business method patent review. In
`determining whether a patent is for a technological invention, the rule
`requires that the following be considered on a case-by-case basis (37 C.F.R.
`§ 42.301(b)):
`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.
`
`To help the public better understand how the definition of a
`technological invention under 37 C.F.R. § 42.301(b) would be applied in
`practice, the Office Patent Trial Practice Guide provides the following
`guidance as to claim drafting techniques that typically would 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.
`
`8
`
`Petitioner Exhibit 1009 p.8
`
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`77 Fed. Reg. 48734, 48764 (Aug. 14, 2012).
`The presence of a single eligible claim is sufficient to institute a
`covered business method patent review of the patent.3
`
`2. Covered Business Method Patent Review Eligibility Analysis
`i. Financial Service or Product
`The Board has indicated previously that the term financial product or
`service is to “be broadly interpreted and encompass patents claiming
`activities that are financial in nature, incidental to a financial activity or
`complementary to a financial activity.” SAP Am., Inc. v. Versata Dev. Grp.,
`Inc., CBM2012-00001, pages 21-22 (PTAB Jan. 9, 2013) (Decision to
`Institute), (citing 77 Fed. Reg. at 48734, 48735). We adopt this logic here,
`and determine the term is not limited to products or services of the financial
`services industry itself. 77 Fed. Reg. 157 at 48736.
`Independent claim 1 of the ’430 patent is directed to a method for
`generating increased numbers of sales leads, and includes steps of gathering
`data items and making them available on Web pages. As set forth in the
`’430 patent, by making these data items available on the Web, the invention
`“provide[s] increased exposure and generation of sales leads for entities
`marketing products . . . over the Internet.” Ex. 1001, col. 5:44-49.
`LinkedIn contends that the claimed subject matter is directed to
`“increasing sales leads” and that “[g]enerating sales leads is a fundamental
`business practice.” Pet. 5. LinkedIn also contends that the ’430 patent was
`
`
`3 Transitional Program for Covered Business Method Patents – Definitions
`of Covered Business Method Patent and Technological Invention; Final
`Rule, 77 Fed. Reg. 48734, 48736 (Aug. 14, 2012) (Response to Comment 8).
`
`9
`
`Petitioner Exhibit 1009 p.9
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`classified under Class 705, which corresponds to the business methods data
`processing arts. Pet. 5-6 (citing 77 Fed. Reg. at 48739, in which the Patent
`Office indicated, “patents subject to covered business method patent review
`are anticipated to be typically classifiable in Class 705”).
`AvMarkets contends that the claimed subject matter is directed to
`increasing sales of physical parts as opposed to financial products or services
`such as online banking or electronic stock trading. Prelim. Resp. 7.
`AvMarkets also contends that the primary classification of the ’430 patent is
`Class 707 (Spiders, Bots, Harvesters); the secondary classification is Class
`705 (Business Methods). Id. at 7-8. Lastly, AvMarkets contends that the
`dispute between AvMarkets and LinkedIn is outside the scope of covered
`business method patent review because LinkedIn is not a bank, and
`AvMarkets is not a non-practicing entity but rather an entity that makes
`productive use of the invention of the ’430 patent. Id. at 8-9.
`While patents involved in covered business method patent review
`typically may be classified in Class 705, classification determinations,
`primary or secondary, are not binding on our eligibility determination, which
`is instead bound by 35 U.S.C. § 324(a) and section 18 of the AIA. In
`addition, the breadth of covered business method patent review is not limited
`explicitly to the financial services industry. See 77 Fed. Reg. at 48736.
`Thus, that the patent provides a market for physical parts rather than
`financial instruments is not determinative. Likewise, that LinkedIn is not a
`bank and AvMarkets is not a non-practicing entity also are not
`determinative.
`The subject matter of the claim, however, is determinative. Looking
`to the subject matter recited in claim 1, there is a method for “increasing
`
`10
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`Petitioner Exhibit 1009 p.10
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`sales leads” by making items available on Web pages. A definition of
`“marketing” is “[t]he techniques used in selling a product.”4 Listing items
`online so that the intended customers can find them more easily is, therefore,
`a marketing technique in the sale of products. Accordingly, the subject
`matter of claim 1 is incidental or complementary to a financial activity
`(product sales) and, thus, directed to a financial product or service and
`eligible for covered business method patent review.
`
`ii. Exclusion for Technological Inventions
`LinkedIn contends that the subject matter of claim 1 is not excluded
`from covered business method patent review because each claim limitation
`is “accomplished using admittedly known Internet technologies.” Pet. 8.
`For example, with respect to the receiving step, LinkedIn contends that it is
`“[s]imply obtaining data” and known in the art. Id. at 9. LinkedIn also
`contends that the listing step is “well-known in the prior art,” as there are
`“more than a billion documents available . . . from the list of hyperlinked
`data of [sic] (“Web”) over the Internet.” Id. (citing Ex. 1001, col. 1:15-18).
`With respect to the generating step, LinkedIn contends that it was known in
`the art that Web pages had titles, text, URLs, and meta-tags, and that
`dynamic generation of such Web pages was likewise known in the art. Pet.
`9-10 (citing Ex. 1001, col. 1:20-21 (URLs, text), col. 3:4-6 (titles), col. 3:8-9
`(meta-tags)); see id. col. 1:51 to col. 2:25 (dynamic Web pages).
`AvMarkets responds that the steps are “all performed by a computer
`on a network, and relate to the manipulation of hyperlinks, URLs, meta-tags,
`
`4 Dictionary of Business (2006)
`(http://www.credoreference.com/entry/acbbusiness/marketing).
`
`11
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`Petitioner Exhibit 1009 p.11
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`and other components on Web pages.” Prelim. Resp. 8. AvMarkets also
`responds that one purpose of the claimed method is to entice Web crawlers
`to index Web sites, which is a technical need and for which it has created a
`technical solution. Id. at 8-9.
`Even if the steps are performed using a computer, simply “[r]eciting
`the use of known prior art technology to accomplish a process or method” is
`insufficient to make the claimed process technical, “even if that process or
`method is novel and non-obvious.” 77 Fed. Reg. at 48764. On this record,
`LinkedIn has established that the various steps of claim 1 were nothing more
`than the use of known prior art technology involving the typical and
`common use of hyperlinks and Web pages.
`Regarding AvMarkets’s argument that enticing Web crawlers is a
`technological solution to a technological problem, that argument is not
`commensurate with the scope of claim 1. In particular, it is unclear as to
`how this alleged technological problem is solved by the method set forth in
`claim 1. As we discussed above, the covered business method patent review
`program only requires one claim to institute review. The steps of claim 1 do
`not discuss enticement of Web crawlers nor does AvMarkets explain how
`the steps of claim 1 entice Web crawlers. The ’430 patent discusses how
`Web crawlers (or, spiders) typically do not access Web pages having a
`dynamic form. Ex. 1001, col. 3:37-45. The generating step of claim 1
`encompasses generating dynamic Web pages. Accordingly, the steps of
`claim 1 do not to present a technological solution to the alleged
`technological problem.
`
`12
`
`Petitioner Exhibit 1009 p.12
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`3. Covered Business Method Patent Review Eligibility Conclusion
`We hold that the subject matter of claim 1 is eligible for covered
`business method patent review. Accordingly, the ’430 patent is eligible for
`covered business method patent review.
`
`III. CLAIMS 1-3, 5-7, 9-11, AND 13-15 OF THE
`’430 PATENT ARE MORE LIKELY THAN NOT
`UNPATENTABLE UNDER 35 U.S.C. § 101
`
`LinkedIn’s sole challenge of the ’430 patent is that claims 1-17 are not
`patentable under 35 U.S.C. § 101. Pet. 11. Under § 324(a), the threshold for
`instituting a review is a demonstration that it is “more likely than not” that at
`least one of the claims challenged is unpatentable. For the reasons set forth
`below, we are persuaded that under 35 U.S.C. § 101 LinkedIn has:
`(1) shown that claims 1-3, 5-7, 9-11, and 13-15 are more likely than not
`unpatentable, and (2) failed to show that claims 4, 8, 12, 16, and 17 are more
`likely than not unpatentable.
`
`A. Claim 1 Is More Likely Than Not Unpatentable Under § 101
`1. Claim 1 Is Directed to an Abstract Idea
`The Supreme Court has made it clear that the test for patent eligibility
`under § 101 is not amenable to bright-line categorical rules. See Bilski v.
`Kappos, 130 S. Ct. 3218 (2010); see also Mayo Collaborative Servs. v.
`Prometheus Labs., Inc., 132 S. Ct. 1289 (2012). One constant is that claims
`drawn merely to abstract ideas, or “abstract intellectual concepts,” are not
`patentable because “they are the basic tools of scientific and technological
`
`13
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`Petitioner Exhibit 1009 p.13
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`work.” Mayo, 132 S. Ct. at 1293 (citing Gottschalk v. Benson, 409 U.S. 63,
`67 (1972)). A challenged claim, construed properly, must incorporate
`enough meaningful limitations to ensure that it claims more than just an
`abstract idea and is not just a mere “drafting effort designed to monopolize
`[an abstract idea] itself.” Mayo, 132 S. Ct. at 1297.
`LinkedIn contends that the claims of the ’430 patent are directed to
`the abstract idea of creating a product catalog provided via the Internet.
`Pet. 20. AvMarkets counters that LinkedIn ignores the computer
`implemented limitations of the claims and that claims 1-17 “do not preempt
`every possible way (or even a substantial number of ways) of ‘creating a
`product catalog.’” Prelim. Resp. 18-19.
`
`The subject matter of claim 1 is directed to an abstract idea—namely,
`creating a product catalog to generate sales leads. Ex. 1001, col. 1:6-13.
`The concept of creating a product catalog is abstract as it represents a
`“disembodied concept,” a basic building block of human ingenuity. An
`abstract idea does not represent patent-eligible subject matter. Accordingly,
`we analyze claim 1 to determine whether it incorporates sufficient
`meaningful limitations to ensure that the claim is more than just an abstract
`idea. Mayo, 132 S. Ct. at 1297.
`
`2. Claim 1 Does Not Likely Transform the Unpatentable
`Abstract Idea into a Patent-Eligible Application of the Idea
`LinkedIn contends that claim 1 only adds “conventional and routine
`limitations to the underlying abstract idea.” Pet. 24. The claim, according to
`LinkedIn, “consist[s] of nothing more than receiving data, and then listing
`the data as hyperlinks and as Web page content.” Id. AvMarkets, on the
`
`14
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`Petitioner Exhibit 1009 p.14
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`other hand, responds that claim 1 is required to be performed via a network
`and implemented by a computer via computer readable instructions. Prelim.
`Resp. 13, 16 and 17. Lastly, AvMarkets states that the claims “do not
`preempt every possible way” to create a product catalog. Id. at 19.
`AvMarkets’s claim 1 involves a method of generating sales leads via a
`network where the method is implemented by a computer executing
`computer readable instructions. Claims, however, do not become patent-
`eligible under § 101 simply by reciting a computer element. See Benson,
`409 U.S. at 68.
`AvMarket claim 1 recites explicitly the use of a computer and a
`network for carrying out its method. The computer may comprise a Web
`server or similar computer with a database server comprising a hard disk
`drive and database software. Ex. 1001, col. 5:63-6:1. As to the claimed
`network, the ’430 patent describes and depicts the use of the Internet and the
`World Wide Web. Ex. 1001, 1:8-13, 6:3-6 and Fig. 1. As recognized by the
`’430 patent , “[t]here are more than a billion documents available on the
`World Wide Web from the list of hyperlinked data of (“Web”) over the
`Internet and this number continues to rapidly increase.” Id. at 1:15-18.
`Accordingly, we conclude that AvMarket claim 1 requires only routine
`computer hardware and the use of a conventional network, the Internet with
`its billions of existing documents. Consistent with the Supreme Court’s
`decision in Benson, we conclude that simply reciting the use of a generic
`computer functionality (e.g., “network,” “computer executing computer
`readable instructions”) in claim 1 to lend speed or efficiency to the
`performance of the abstract idea (creating a product catalog) does not
`meaningfully limit claim scope for purposes of patent eligibility. See
`
`15
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`Petitioner Exhibit 1009 p.15
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`Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes
`that “can be carried out in existing computers long in use, no new machinery
`being necessary”).
`The method recited in claim 1 involves receiving part numbers from
`the plurality of sellers, listing the part numbers as a hyperlink on a Web page
`and generating a part number Web page for any activated part number
`hyperlink. The step of receiving is merely data gathering and the step of
`listing the hyperlinks is nothing more than the mere display of hyperlinks on
`a Web page, as happens with virtually all hyperlinks. The generating step
`merely describes what hyperlinks to dynamic Web pages do: they create a
`Web page having various components such as a title, URL, meta-tag, and
`text entry.
`Limiting an abstract idea to a specific field of use or adding token
`postsolution activity does not make an abstract concept patentable.
`Diamond v. Diehr, 450, U.S. 175, 191-192, Parker v. Flook, 437 U.S. 584,
`590 (“[t]he notion that post-solution activity, no matter how conventional or
`obvious in itself, can transform an unpatentable principle into a patentable
`process exalts form over substance.”). Receiving part numbers, listing part
`numbers on a Web page, and generating a part number Web page for any
`activated part number hyperlink represent insignificant post-solution activity
`as they do not represent significant meaningful limitations on the claim.
`Specifically, creating a product catalog would require some form of data
`gathering (receiving part numbers) and displaying them in the catalog
`(listing part numbers on a Web page). Further, the generation of a part
`number Web page merely employs conventional, routine steps to ensure that
`the data could be retrieved on the Internet, which is in effect a standardized
`
`16
`
`Petitioner Exhibit 1009 p.16
`
`
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`CBM2013-00025
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`manner of ensuring that a document can be located and retrieved, like a card
`catalog in a library.
`AvMarkets’s final contention, that not all uses of product catalogues
`are preempted by the claims, is not persuasive. The claim encompasses no
`more than the abstract idea of producing a card catalog by employing
`conventional, routine technology, a general purpose computer and the
`Internet. In summary, merely adding existing computer technology to an
`abstract idea does not convert an abstract idea into a patent eligible machine
`or method.
`In view of the above, we find the subject matter of claim 1 is more
`likely than not unpatentable under § 101.
`
`B. Remaining Independent Claims 5, 9, and 13 Are More Likely
`Than Not Unpatentable Under Section 101
`LinkedIn points out that the other independent claims are similar to
`
`claim 1. Pet. 21 at n. 5. Claim 5 uses “data items” instead of “part
`numbers.” Claims 5, 9, and 13 include a step of “generating an index” of the
`received part numbers or data items, as appropriate. Claim 13 includes a
`step of “issuing unique access credentials” before a user can input a list of
`numbers. While AvMarkets contends that LinkedIn does not challenge
`claims other than claim 1 specifically, we consider these claims properly
`challenged because LinkedIn has addressed the additional limitations found
`in these claims.5 See Prelim. Resp. 20-21; Pet. 21 at n. 5. Reviewing these
`
`
`5 AvMarkets also contends that because LinkedIn does not challenge every
`claim, the entire Petition must be denied. Prelim. Resp. 22. This is
`unpersuasive, however, as 35 U.S.C. § 322(a)(3) and 37 C.F.R. § 42.304(b)
`
`17
`
`Petitioner Exhibit 1009 p.17
`
`
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`limitations, we do not find them to provide anything other than conventional
`and routine steps to the underlying abstract idea.
`
`A computer storing “data items” versus “part numbers” does not
`appear to be distinguishable functionally, as we noted in our claim
`construction of “part numbers” above. A computer “generating an index of
`non-duplicative [data]” uses basic and conventional data processing.
`Likewise, issuing access credentials to computer users is conventional and
`fails to place meaningful limitations on the abstract idea. Accordingly, these
`claims are more likely than not unpatentable under § 101 for the reasons
`expressed above.
`
`D. Dependent Claims 2, 3, 6, 7, 10, 11, 14, and 15 Are More
`Likely Than Not Unpatentable Under Section 101
`LinkedIn points out that these claims merely add data gathering steps.
`
`Pet. 21 at n. 5. AvMarkets contends that LinkedIn has not challenged these
`claims specifically. Prelim. Resp. 20-21. As noted in the footnote, however,
`LinkedIn challenges the “[o]ther claims [that] add similar, non-specific data-
`gathering steps.” Pet. 21 at n. 5. LinkedIn provides a proposed definition
`for “BLOB field” (claims 2, 6, 10, and 14) indicating that a BLOB field is
`for data gathering. Pet. 17. Similarly, presenting a prompt (claims 3, 7, 11,
`and 15) is for the purpose of gathering data, such that we consider
`LinkedIn’s challenge to extend to these claims as well.
`Regarding these limitations, LinkedIn has provided evidence that
`BLOB fields are well known in the art for gathering data. Id. at 17.
`
`
`require specificity for “each claim challenged” rather than “all claims.”
`
`18
`
`Petitioner Exhibit 1009 p.18
`
`
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`Presenting a prompt is conventional in the computer arts and fails to place
`meaningful limitations on the abstract idea. Accordingly, we determine that
`these claims are more likely than not unpatentable under § 101 for the
`reasons expressed above.
`
`D. Dependent Claims 4, 8, 12, 16, and 17 Have Not Been
`Demonstrated To Be More Likely Than Not Unpatentable
`Under Section 101
`LinkedIn does not address the limitation set forth in claims 4, 8, 12,
`
`and 17 specifically, wherein “each generated [part number/data item] Web
`page has a static URL,” nor the limitation set forth in claim 16, a step of
`“sending an issued request.” Accordingly, LinkedIn has failed to identify
`how these claims are unpatentable under 35 U.S.C. § 101, as required by
`35 U.S.C. § 322(a)(3) and 37 C.F.R. § 42.304(b).
`
`VI. SUMMARY
`
`The sole asserted ground of unpatentability is that the subject matter
`of claims 1-17 of the ’430 patent is not statutory under 35 U.S.C. § 101.
`LinkedIn has demonstrated that it is more likely than not it that claims
`1-3, 5-7, 9-11, and 13-15 of the ’430 patent are unpatentable.
`LinkedIn has not demonstrated that it is more likely than not that
`claims 4, 8, 12, 16, and 17 of the ’430 patent are unpatentable.
`
`19
`
`Petitioner Exhibit 1009 p.19
`
`
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`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition for covered business method patent
`review is granted as to claims 1-3, 5-7, 9-11, and 13-15 of the ’430 patent.
`
`FURTHER ORDERED that the Petition for covered business method
`patent review is denied as to claims 4, 8, 12, 16, and 17 of the ’430 patent.
`FURTHER ORDERED that the trial is limited to § 101 and that no
`other grounds are authorized.
`
`FURTHER ORDERED that notice is given of the institution of a trial.
`The trial will commence on the entry date of this decision.
`
`FURTHER ORDERED that an initial conference call with the Board
`is scheduled for 10:30 AM EST on Monday, November 25th, 2013. The
`parties are directed to the Office Trial Practice Guide, 77 Fed. Reg. 48756,
`48765-66 (Aug. 14, 2012) for guidance in preparing for the initial
`conference call, and should come prepared to discuss any proposed changes
`to the Scheduling Order entered herewith and any motions the parties
`anticipate filing during the trial.
`
`20
`
`Petitioner Exhibit 1009 p.20
`
`
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`PETITIONER:
`
`Jord
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