Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 17
`Entered: June 12, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKIMLINKS, INC. and SKIMBIT, LTD.,
`Petitioner,
`
`v.
`
`LINKGINE, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00086
`Patent 7,818,214 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PHILLIP J. KAUFFMAN, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Review and
`Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F R § 42.222(b)
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 17
`Entered: June 12, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKIMLINKS, INC. and SKIMBIT, LTD.,
`Petitioner,
`
`v.
`
`LINKGINE, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00086
`Patent 7,818,214 B2
`____________
`
`
`
`Before KEVIN F. TURNER, PHILLIP J. KAUFFMAN, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Review and
`Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F R § 42.222(b)
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`
`I. INTRODUCTION
`
`Skimlinks, Inc. and Skimbit, Ltd. (“Petitioner”) filed a Petition to
`
`institute a covered business method (“CBM”) review of claims 1–7 of U.S.
`
`Patent No. 7,818,214 B2 (Ex. 1001, “the ’214 patent”). Paper 1 (“Pet.”).
`
`On April 17, 2015, Petitioner filed a Motion for Joinder (“Mot.,” Paper 13)
`
`seeking to join this proceeding with VigLink, Inc. v. Linkgine, Inc., Case
`
`CBM2014-00184 (the “VigLink CBM”). Mot. 1. Linkgine, Inc. (“Patent
`
`Owner”) did not file an opposition to Petitioner’s Motion. Patent Owner
`
`filed a Waiver of Preliminary Response. Paper 16. We have jurisdiction
`
`under 35 U.S.C. § 324, which provides that a post-grant review may not be
`
`instituted “unless . . . it is more likely than not that at least 1 of the claims
`
`challenged in the petition is unpatentable.”
`
`For the reasons that follow, we determine that the ʼ214 patent
`
`qualifies as a covered business method patent under § 18(d)(1) of the Leahy-
`
`Smith America Invents Act (“AIA”). Leahy-Smith America Invents Act,
`
`Pub. L. No. 112–29, 125 Stat. 284, 331 (Sept. 16, 2011). We further
`
`determine that it is more likely than not that at least one claim of the ʼ214
`
`patent is unpatentable. We, therefore, (1) institute a covered business
`
`method patent review of claims 1–7, see 35 U.S.C. § 324(a), and (2) grant
`
`Petitioner’s Motion for Joinder.
`
`A. Related Cases
`
`
`
`The ʼ214 patent is at issue in Linkgine, Inc. v. Skimlinks, Inc. and
`
`Skimbit, Ltd., No. 1:14-cv-00571 (E.D. Va.) (“the district court
`
`proceeding”). Paper 12, 2; Pet. 5. We instituted trial in the VigLink CBM
`
`on March 18, 2015. VigLink CBM, Paper 13. In addition, Petitioner has
`
`
`
`
`2
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`filed a petition for covered business method patent review of U.S. Patent
`
`8,027,883 B2 (CBM2015-00087).
`
`B. The ’214 Patent
`
`
`
`The ʼ214 patent relates to an affiliate manipulation system that
`
`permits consumers, Internet Service Providers (ISPs), search engines, and
`
`intermediaries to maximize affiliate program participation in transactions by
`
`or through them. Ex. 1001, Abstract. The operation of the affiliate
`
`manipulation system is illustrated in Figure 4 from the patent reproduced
`
`below:
`
`
`
`
`3
`
`
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`Figure 4 is a process flowchart for an embodiment of the affiliate
`
`manipulation system. Id. at 2:26–27. In the flowchart reproduced above,
`
`the user requests data through the Internet at step 400. Id. at 8:8–10. At step
`
`402, the system checks the data for a possible affiliate link. Id. at 8:13–14.
`
`Affiliate links that contain Uniform Resource Locators (“URLs”) that
`
`participate in affiliate programs are affiliate targets. Id. at 8:17–18. If there
`
`are no possible affiliate targets 404, the system serves the data to the user in
`
`step 406 and ends the process in step 408. Id. at 8:18–20. If there are
`
`possible affiliate targets, the system checks the URLs for existing affiliate
`
`codes in step 410; if no affiliate codes exist, the system adds the affiliate
`
`program code to the affiliate target information in step 414. Id. at 8:21–25.
`
`If affiliate codes exist, the system determines if the affiliate codes need to be
`
`replaced at step 424. Id. at 8:40–42. If the existing affiliate code is not for a
`
`preferred commercial agent, then the existing affiliate code is removed in
`
`step 426, and the system continues to step 414. Id. at 8:42–45. At step 416,
`
`the system queries the database or array for affiliate information based on
`
`the affiliate target information; retrieves the affiliate information in step 418,
`
`and merges the data and affiliate code in step 420. Id. at 8:28–33. The
`
`system may then serve the data to the user and end the process if this is the
`
`last possible affiliate, or go back to step 402 to analyze the data for
`
`additional possible affiliate links. Id. at 8:33–37.
`
`C. Illustrative Claim
`
`
`
`Claims 1 and 7 are independent method claims. Claims 2–6 depend
`
`directly from claim 1. Claim 1 is illustrative:
`
`1. A method for operating an automated affiliate manipulation
`system comprising:
`
`
`
`
`4
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`
`receiving a request for preexisting data from a first
`computer,
`identifying the requested preexisting data at an
`intermediary computer, the intermediary computer being
`separate from the first computer, analyzing the requested
`preexisting data at the intermediary computer to automatically
`identify at least one data element corresponding to an affiliate-
`capable merchant,
`determining that the at least one data element comprises
`an existing affiliate code
`determining that the existing affiliate code does not
`comprise the preferred affiliate code,
`creating modified data at the intermediary computer by
`automatically associating the preferred affiliate code with the
`data element, and removing any existing affiliate code
`associated with the data element, the modified data comprising
`at least one affiliate link, wherein the affiliate link comprises a
`URL associated with the affiliate-capable merchant, delivering
`the modified data to the first computer, and communicating the
`affiliate code to the affiliate-capable merchant upon selection of
`the affiliate link.
`
`
`Ex. 1001, 8:56–9:12.
`
`
`D. The Asserted References
`
`Petitioner relies on the following references:
`
`1. U.S. Patent No. 6,804,660 B2, issued October 12,
`2004 (“Landau”) (Ex. 1010);
`
`2. Int’l Pub. No. WO 00/58861 A1, published October 5,
`2000 (“Priest”) (Ex. 1012); and
`
`3. Robert McRackan, “Overture Partnering with Gator,”
`The LED Digest, 1576, 1 (May 8, 2003), available at
`http://www.abestweb.com/ forums/suspicious-activity-161/led-
`digest-articleoverture-gator-partnership-29873.html.
`(“McRackan”) (Ex. 1013).
`
`
`
`
`
`
`5
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`E. The Asserted Grounds
`
`Petitioner challenges claims 1–7 of the ’214 patent on the following
`
`grounds:
`
`Reference(s)
`
`
`
`Landau
`
`Priest
`
`Basis
`
`§ 101
`
`§ 102(a)
`
`§ 102(a)
`
`Priest and McRackan
`
`§ 103
`
`
`
`A. Claim Construction
`
`II. ANALYSIS
`
`Claims Challenged
`
`1–7
`
`1–7
`
`1–7
`
`1–7
`
`Consistent with the statute and the legislative history of the AIA, the
`
`Board will interpret claims in an unexpired patent using the broadest
`
`reasonable construction. See 37 C.F.R. § 42.300(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); see also In re
`
`Cuozzo Speed Techs., LLC, No. 778 F.3d 1271, 1281 (Fed. Cir. 2015) (“We
`
`conclude that Congress implicitly adopted the broadest reasonable
`
`interpretation standard in enacting the AIA.”). There is a “‘heavy
`
`presumption’ that a claim term carries its ordinary and customary meaning.”
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Petitioner proposes constructions for four claim terms: “first
`
`computer,” “intermediary computer,” “server,” and “serving.” Pet. 20–23.
`
`For the purposes of this decision, and on this record, we determine
`
`that no claim term needs express interpretation apart from the following.
`
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`
`
`
`6
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`1999) (holding that only those terms that are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy).
`
`“automatic/automatically”
`
`The term “automatically” appears in claims 1 and 7. In the VigLink
`
`CBM, Patent Owner proposed that we interpret the term
`
`“automatic/automatically” as “without human intervention.” VigLink CBM,
`
`Paper 11, 6. The Specification provides that “the process may appear to be
`
`seamless and instantaneous to a user or buyer.” Ex. 1001, 4:25–26.
`
`Based on the disclosure in the Specification and on our comparable
`
`analysis in the VigLink CBM, and applying the broadest reasonable
`
`interpretation, we construe “automatic/automatically” to mean “without
`
`human intervention.”
`
`B. Whether Petitioner Has Standing to Seek Covered Business Method
`Patent Review of the ʼ214 Patent
`
`Under § 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:
`
`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, 125 Stat. at 331; see also 37 C.F.R. § 42.301(a) (restating this
`
`definition).
`
`The determination of whether a patent is eligible for covered business
`
`method patent review is based on what the patent claims. See Liberty
`
`Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case No. CBM2012-
`
`
`
`
`7
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`00004, slip op. at 5 (PTAB Jan. 25, 2013) (Paper 10). A patent having even
`
`one claim directed to a covered business method is eligible for review, even
`
`if the patent includes additional claims. 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 (Aug. 14, 2012) (Response to Comment 8).
`
`1. Petitioner Has Been Sued for Infringement of the ’214 Patent
`
`Section 18 of the AIA limits reviews to persons or their privies that
`
`have been sued or charged with infringement of a covered business method
`
`patent. AIA §§ 18(a)(1)(B), 18(d)(1).
`
`
`
`Petitioner represents that it has been sued for infringement of the ’214
`
`patent in the district court proceeding. Pet. 5. Patent Owner acknowledges
`
`that the ’214 patent is at issue in that case. Paper 12, 2. Therefore,
`
`Petitioner has met this requirement. See 37 C.F.R. § 42.302(a).
`
`2. Claims 1–7 are Directed to Financial Products and Services
`
`The AIA legislative history explains that the definition of a covered
`
`business method patent was drafted to encompass patents “claiming
`
`activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity” and that “financial product or
`
`service” should be interpreted broadly. 157 Cong. Rec. S5432
`
`(daily ed. Sept. 8, 2011) (statement of Sen. Schumer).
`
`Petitioner argues that claims 1–7 are directed to financial products or
`
`services because the claims are directed to “methods for crediting an agent
`
`for a commission from a sale using ‘affiliate programs for commercial
`
`websites.’” Pet. 12 (citing Ex. 1001, 1:12–15; 2:38–45). Petitioner adds that
`
`the file history of the ’214 patent states that the claimed system is analogous
`
`
`
`
`8
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`to the financial arrangement between a retail store and a salesperson in
`
`which the salesperson is awarded a commission. Id. at 12–13 (citing Ex.
`
`1004, 356–57). Based on the record before us, we are persuaded that claims
`
`1–7 are directed to financial products or services.
`
`3. Claims 1–7 Are Not Directed to a Technological Invention
`
`The definition of “covered business method patent” in § 18(d)(1) of
`
`the AIA excludes patents for “technological inventions.” AIA, 125 Stat. at
`
`331. For guidance, we look to 37 C.F.R. § 42.301(b), which defines the
`
`term “technological invention” and requires a case-by-case consideration of
`
`“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.” The following claim drafting
`
`techniques, for example, typically do not render a patent a “technological
`
`invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,764. Therefore, to
`
`qualify under the “technological invention” exception to covered business
`
`method patent review, it is not necessarily enough that the claimed invention
`
`makes use of technological systems, features, or components.
`
`
`
`
`9
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`
`
`Petitioner contends that the ʼ214 patent is not directed to a
`
`technological invention. Pet. 14–17. Specifically, Petitioner argues that the
`
`claims include only generic technology that was well-known in the art. Id.
`
`at 14. Petitioner contends, with supporting evidence, that the hardware
`
`elements and claimed steps were known at the time of the invention. Id. at
`
`14–17 (citing the Declaration of Dr. Michael Shamos, Ex. 1007). Petitioner
`
`contends that the ʼ214 patent claims do not solve a technical problem with a
`
`technical solution, but rather that the patent “merely recites using well-
`
`known technology (computers and a communication network) to perform the
`
`well-known functions of identifying a character string associated with an
`
`existing affiliate code and replacing the character string with a second
`
`character string associated with a preferred affiliate code to attribute sales to
`
`the preferred affiliate.” Id. at 18 (citation omitted).
`
`“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,” typically is not enough to show a technological
`
`invention. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,764. Nor
`
`is “[r]eciting the use of known prior art technology to accomplish a process
`
`or method, even if that process or method is novel and non-obvious.” Id.
`
`The recitations of generic computer elements to accomplish the process or
`
`method of the ʼ214 patent claims are insufficient to show that the claimed
`
`invention is technological.
`
`
`
`In sum, we are persuaded, on this record, that the invention of the
`
`ʼ214 patent, as claimed, does not recite a novel or non-obvious technological
`
`feature, nor does it solve a technical problem using a technical solution and,
`
`
`
`
`10
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`thus, is not a technological invention. Accordingly, the ’214 patent is
`
`eligible for covered business method patent review.
`
`C. Whether Claims 1–7 Are More Likely Than Not Unpatentable Under
`35 U.S.C. § 101
`
`1. Overview
`
`Section 101 of the Patent Statute (35 U.S.C. § 101) defines the subject
`
`matter eligible for patenting. The Supreme Court has “long held that this
`
`provision contains an important implicit exception: Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
`
`CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014) (citing Assoc. for Molecular
`
`Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116 (2013) (internal
`
`quotation marks and brackets omitted)). “The ‘abstract ideas’ category
`
`embodies the longstanding rule that ‘[a]n idea of itself is not patentable.’”
`
`Id. at 2355 (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (quotations
`
`omitted)).
`
`In Alice Corp., the Supreme Court emphasized the importance of the
`
`so-called “Mayo framework,” which provides “a framework for
`
`distinguishing patents that claim laws of nature, natural phenomena, and
`
`abstract ideas from those that claim patent-eligible applications of those
`
`concepts.” Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`
`132 S.Ct. 1289 (2012)). Under the Mayo framework, “[w]e must first
`
`determine whether the claims at issue are directed to a patent-ineligible
`
`concept.” Id. Next, “we consider the elements of each claim both
`
`individually and ‘as an ordered combination’ to determine whether the
`
`additional elements ‘transform the nature of the claim’ into a patent-eligible
`
`application.” Id. (citing Mayo, 132 S.Ct. at 1297–1298).
`
`
`
`
`11
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`
`Under Mayo, to be patentable, a claim must do more than simply state
`
`the law of nature or abstract idea and add the words “apply it.” Mayo, 132
`
`S.Ct. at 1294; see Benson, 409 U.S. at 67. Furthermore, “the mere recitation
`
`of a generic computer cannot transform a patent-ineligible abstract idea into
`
`a patent-eligible invention.” Alice Corp., 134 S.Ct. at 2358. “Thus, if a
`
`patent’s recitation of a computer amounts to a mere instruction to
`
`‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot
`
`impart patent eligibility.” Id. (internal citation omitted).
`
`A challenged patent claim, properly construed, must incorporate
`
`enough meaningful limitations to ensure that it claims more than just an
`
`abstract idea and not just a mere “‘drafting effort designed to monopolize the
`
`[abstract idea].’” Id. (quoting Mayo, 132 S.Ct. at 1297). “Simply appending
`
`conventional steps, specified at a high level of generality,” is not “enough”
`
`for patent eligibility. Id. at 2357 (quoting Mayo, 132 S.Ct. at 1300, 1297,
`
`1294). Thus, we analyze the claims of the ʼ214 patent to determine whether
`
`the claims embody a patent-eligible application of an abstract idea or merely
`
`nothing more than the abstract idea itself.
`
`2. Whether Claims 1–7 Are Directed To an Abstract Idea
`
`In accordance with the Supreme Court’s “framework for
`
`distinguishing patents that claim . . . abstract ideas from those that claim
`
`patent-eligible applications of those concepts,” we must first “determine
`
`whether the claims at issue are directed to one of those patent-ineligible
`
`concepts.” Alice Corp., 134 S.Ct. at 2355. In Alice Corp., the Supreme
`
`Court determined that the claims at issue were “drawn to the concept of
`
`intermediated settlement,” i.e., the use of a third party to mitigate settlement
`
`risk. Id. at 2356. Furthermore, the Supreme Court determined that “[l]ike
`
`
`
`
`12
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`the risk hedging in [Bilski v. Kappos, 561 U.S. 593 (2010)], the concept of
`
`intermediated settlement is ‘a fundamental economic practice long prevalent
`
`in our system of commerce.’” Id. (citations omitted). With respect to the
`
`first step of the “Mayo framework,” the Supreme Court concluded in Alice
`
`Corp. that “there is no meaningful distinction between the concept of risk
`
`hedging in Bilski and the concept of intermediated settlement” in Alice
`
`Corp., and that “[b]oth are squarely within the realm of ‘abstract ideas’ as
`
`we have used that term.” Id. at 2357.
`
`The ’214 Patent describes “an affiliate manipulation system and
`
`method that permits computers users, ISPs, search engines and other
`
`intermediaries to maximize affiliate program participation in transaction[s]
`
`by or through them.” Ex. 1001, 1:61–64. Petitioner contends that “the ’214
`
`Patent claims are directed to the abstract idea of redirecting affiliate
`
`commissions.” Pet. 26.
`
`Petitioner asserts that the “solution proposed here to the problem of
`
`manipulating sales commissions has a direct preexisting analog in the physical
`
`world,” namely, “replacing one affiliate’s name with another, allowing the
`
`second named affiliate to receive credit for the sale.” Id. at 29. Petitioner
`
`supports this assertion by referring to the file history, in which “the then-
`
`Applicant analogized the claimed invention to the interaction between a
`
`bookstore and its salesperson.” Id.
`
`We are persuaded on the present record that the ʼ214 patent claims an
`
`abstract idea. Under Alice Corp., the concept of intermediated settlement
`
`was determined to be “a fundamental economic practice long prevalent in
`
`our system of commerce.” 134 S.Ct. at 2356 (quoting Bilski, 561 U.S. at
`
`611). This led the Court to conclude that intermediated settlement, like the
`
`
`
`
`13
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`concept of “hedging” in Bilski, is an abstract idea under § 101. Id. We see
`
`little difference between replacing one character set with another character
`
`set to denote the recipient of a commission, and the type of fundamental
`
`economic practices considered to be abstract ideas in Alice Corp. and Bilski.
`
`We conclude on the present record, therefore, that the ʼ214 patent claims are
`
`directed to an abstract idea.
`
`3. Whether Claims 1–7 are Meaningfully Limited Under 35 U.S.C.
`
`§ 101
`
`The second step of the Supreme Court’s “Mayo framework” requires
`
`that we consider the elements of the claim and determine whether there is an
`
`“element or combination of elements that is ‘sufficient to ensure that the
`
`patent in practice amounts to significantly more than a patent upon the
`
`[ineligible concept] itself.’” Alice Corp., 134 S.Ct. at 2355 (quoting Mayo,
`
`132 S.Ct. at 1294).
`
`Petitioner focuses its § 101 arguments on independent claims 1 and 7.
`
`Pet. 33–37. The main argument is that the claims are not meaningfully
`
`limited because they are directed to mental processes, as steps 1–4 of claim
`
`1 can be reduced to “the mental process of identifying a web address that
`
`includes an affiliate code”; “[s]tep 5 involves the mental process of
`
`determining that the detected data element is not associated with a preferred
`
`affiliate code”; and “[s]teps 6 and 7 merely consist of replacing or otherwise
`
`associating the detected affiliate code with the preferred affiliate code, and
`
`delivering the modified data.” Pet. 33.
`
`We are not persuaded on the present record that these are meaningful
`
`limitations on the abstract idea. As the Supreme Court held in Benson,
`
`409 U.S. 63, claims do not become patent-eligible under § 101 simply for
`
`reciting a known, general purpose computer. See id. at 67 (invalidating as
`
`
`
`
`14
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`patent-ineligible claimed processes that “can be carried out in existing
`
`computers long in use, no new machinery being necessary,” or “can also be
`
`performed without a computer.”). And in Alice Corp., the Supreme Court
`
`rejected a similar argument, determining that “the claims at issue amount to
`
`‘nothing significantly more’ than an instruction to apply the abstract idea of
`
`intermediated settlement using some unspecified, generic computer.” Alice
`
`Corp., 134 S.Ct. at 2360 (quoting Mayo, 132 S.Ct. at 1298).
`
`Petitioner contends that independent claim 7 (also directed to a
`
`method) is only nominally different than claim 1 and, therefore, both are
`
`ineligible under § 101 for the same reasons. Pet. 36. Petitioner also argues
`
`that the dependent claims recite actions that can be performed as mental
`
`processes. Id. at 35–36. We agree, on the present record, that these claims
`
`do not provide meaningful limitations to the abstract idea.
`
`We do not need to reach, and, therefore, do not address for the
`
`purposes of this Decision, Petitioner’s secondary arguments based on the
`
`“machine or transformation” test. Pet. 37–38.
`
`D. Asserted Grounds of Unpatentability Under 35 U.S.C. § 102
`
`1. Landau
`
`Petitioner argues that claims 1–7 are anticipated by Landau. Pet. 38–
`
`49. Landau discloses a method, system, and computer program for affording
`
`“Virtual Affiliates” access to an existing affiliate system. Ex. 1010,
`
`Abstract. Virtual affiliates are affiliates that are not registered with a
`
`particular Merchant’s affiliate system. Id. at 7:49–50. In Landau, a
`
`Webmaster operates a web site, through which a request for a target
`
`Merchant web site triggers a correlation function, such that “the source
`
`Webmaster unique identifier [source Webmaster ID] is correlated to a target
`
`
`
`
`15
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`Webmaster unique identifier [target Webmaster ID] functional within the
`
`unique identification system of the requested Merchant system.” Id. at
`
`Abstract. The request may contain the “source Webmaster ID” and the
`
`“target system identifier,” and may also contain information identifying the
`
`source affiliate system of the Webmaster (a “source system identifier”),
`
`either within the URL or based on other information in the URL (such as the
`
`source Webmaster ID). Id. at 10:20–29. Then, “a properly formatted entry
`
`mechanism URL is returned, enabling a hand off to the target Merchant
`
`affiliate system and including the correlated target Webmaster unique
`
`identifier.” Id. at Abstract.
`
`Petitioner presents claim charts that it argues show how Landau
`
`discloses “each and every element of the limitations of claims 1–7, which
`
`are therefore anticipated by Landau.” Pet. 49–55.
`
`Petitioner alleges that the “preferred affiliate code” claim element is
`
`disclosed by Landau’s “lookup operation to determine a target Webmaster
`
`ID (i.e., the preferred affiliate code).” Pet. 41. Specifically, Petitioner
`
`argues that Landau’s lookup function finds the database assigned to the
`
`target Merchant affiliate system, within which are three fields of
`
`information: the source system information, the source Webmaster ID, and
`
`the target Webmaster ID. Id. at 41–42 (citing Ex. 1010, 14:46–66). Based
`
`on Petitioner’s argument and the record before us, we are persuaded that
`
`Landau’s lookup operation would determine whether the existing affiliate
`
`code does or does not comprise a preferred affiliate code.
`
`To disclose modified data as required by claim 1, which requires
`
`“creating modified data at the intermediary computer by automatically
`
`associating the preferred affiliate code with the data element, and removing
`
`
`
`
`16
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`any existing affiliate code associated with the data element,” Petitioner relies
`
`on Landau’s creation of a new, transformed URL in “new URL (i.e.,
`
`creating modified data) determination operation 612,” in which the “new
`
`URL is determined based on the target Merchant and the target Webmaster
`
`ID (i.e., the preferred affiliate code).” Pet. 42, 52 (citing Ex. 1010, 15:29–
`
`34; 15:42–45). Petitioner’s citations and argument support its assertion that
`
`Landau appears to remove any existing affiliate code (i.e., the source
`
`Webmaster ID) and automatically associate the preferred affiliate code (i.e.,
`
`the target Webmaster ID) with the data element to create modified data (i.e.,
`
`the new URL).
`
`To disclose “identifying the requested preexisting data at an
`
`intermediary computer” and “analyzing the requested preexisting data at the
`
`intermediary computer to automatically identify at least one data element
`
`corresponding to an affiliate-capable merchant,” as required by claim 1,
`
`Petitioner relies on Landau’s receiving operation 604, which discloses that
`
`the URL received includes information including a source Webmaster ID
`
`and a target system identifier, and lookup operation 606, which finds the
`
`database assigned to the target Merchant affiliate system and its three fields
`
`of information, namely, source system information, source Webmaster ID,
`
`and target Webmaster ID. Pet. 50–51 (citing Ex. 1010, 10:4–10, 46–49,
`
`14:45–51, 58–66). We are persuaded that Petitioner has demonstrated
`
`Landau’s disclosure of analyzing and identifying at least one data element
`
`corresponding to an affiliate-capable merchant.
`
`With respect to claim 7, Petitioner argues that the “difference[s] in
`
`claim language between claim 7 and claim 1 are non-substantive and are not
`
`sufficient to alter the above analysis of Claim 1 with respect to Landau.”
`
`
`
`
`17
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`Pet. 45–46. Petitioner’s Landau claim chart refers back to its claim 1
`
`analysis to disclose the claim 7 elements. Id. at 54–55. For the purposes of
`
`institution, we adopt substantially the same analysis for claim 7 as for
`
`claim 1, supra. With respect to claims 2–6, each depend directly from claim
`
`1. Petitioner contends these claims are also anticipated by Landau. Pet. 43–
`
`45. Concerning these claims, we determine that the supporting evidence
`
`demonstrates a reasonable likelihood that Petitioner would prevail in its
`
`showing.
`
`Based on the record before us, we are persuaded that Petitioner has
`
`demonstrated that it is more likely than not that claims 1–7 would be
`
`anticipated by Landau.
`
`2. Priest
`
`Petitioner argues that claims 1–7 are anticipated by Priest. Pet. 56–68.
`
`We note that, in its Motion for Joiner, Petitioner requests withdrawal of its
`
`Section 102 ground of unpatentability based on Priest. Mot. 2. For the
`
`purposes of this decision, therefore, we do not evaluate Petitioner’s
`
`arguments based on anticipation on the basis of Priest.
`
`E. Asserted Ground of Unpatentability Under 35 U.S.C. § 103
`
`Petitioner challenges claims 1–7 as obvious over Priest and
`
`McRackan (Ex. 1013). Pet. 75–78. Petitioner argues that the combination
`
`of Priest with non-patent literature prior art references that discuss the
`
`concept of affiliate hijacking disclose “modifying an affiliate code to make it
`
`appear that a referral is coming from a particular affiliate, regardless of its true
`
`source.” Id. at 75.
`
`Priest provides “a method and apparatus for use in e-commerce for
`
`returning to a consumer all or a portion of commissions earned by a third
`
`
`
`
`18
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`party when the consumer purchases goods or services from a vendor that is
`
`affiliated with the third party.” Ex. 1012, 2:16–19. Priest summarizes its
`
`invention:
`
`The vendor and the third party first enter into an affiliate
`relationship in which they agree to a commission payable by
`the vendor to the third party for sales made to customers who
`have reached the vendor by or through the third party.
`Thereafter, the consumer forms a relationship with the third
`party whereby the consumer makes purchases from the vendor
`through the third party’s affiliation with the vendor so that
`commissions are generated for the third party. Moreover, the
`consumer allows the third party to monitor the consumer’s
`behavior so that the third party may ascertain the commissions
`generated by the consumer without relying on information
`supplied by the vendor or the consumer. Finally, the third party
`returns to each individual consumer all or a portion of the
`commission generated by his purchases.
`
`
`
`Id. at 2:19–29.
`
`In its now-withdrawn Section 102 arguments relating to Priest,
`
`Petitioner argues that Priest discloses “each and every element of the
`
`limitations of claims 1–7,” and presents a claim chart in support of its
`
`arguments. Pet. 56–75. Petitioner supports its allegation that Priest
`
`discloses “automatically associating the preferred affiliate code with the data
`
`element” of claim 1 by stating: “For example, Priest discloses: ‘[I]f the
`
`affiliate ID is not a Whypaythem.com affiliate ID, […] the URL is replaced
`
`with the Whypaythem.com affiliate URL in step 416.’” Pet. 61 (citing Ex.
`
`1012, 17:5–20, Fig. 9 at step 416). However, the omitted portion of the
`
`Priest quote explains in detail that the user is prompted to determine whether
`
`or not to replace the affiliate code, and that the code is replaced only if the
`
`user decides to replace the code. Ex. 1012, 17:5–20 (“if the user does wish
`
`
`
`
`19
`
`
`
`CBM2015-00086
`Patent 7,818,214 B2
`
`to receive a portion or all of the affiliate commission associated with the
`
`purchase, then the user replaces the current URL with a Whypaythem.com
`
`affiliate URL”). Thus, Priest does not disclose that this step is performed
`
`automatically (without human int
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
