Trial@uspto.gov
`571-272-7822
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` Paper No. 11
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` Entered: October 3, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00037
`Patent 6,199,077 B1
`____________
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`571-272-7822
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` Paper No. 11
`
`
` Entered: October 3, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00037
`Patent 6,199,077 B1
`____________
`
`
`
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`CBM2016-00037
`Patent 6,199,077 B1
`
`I. INTRODUCTION
`
`Petitioner, Plaid Technologies Incorporated (“Plaid”), timely filed a
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`Request for Rehearing under 37 C.F.R. § 42.71(d). Paper 10 (“Req.
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`Reh’g”). Plaid’s Request for Rehearing seeks reconsideration of the
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`Decision not to Institute a covered business method patent review of claims
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`1–12 (“the challenged claims”) of U.S. Patent No. 6,199,077 B1 (Ex. 1001,
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`“the ’077 patent”) because the information presented in the Petition did not
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`establish that this patent qualifies as a “covered business method patent” that
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`is eligible for review, as defined by § 18(d)(1) of the America Invents Act
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`(“AIA”). Paper 9 (“Dec.”).
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`In its Request for Rehearing, Plaid contends that our determination
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`not to institute a covered business method patent review was improper for at
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`least three reasons. First, Plaid argues that we misapprehended or
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`overlooked the scope of the challenged claims by applying an overly broad
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`reading of those claims that did not hold Patent Owner, Yodlee, Incorporated
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`and Yodlee.com, Incorporated (collectively, “Yodlee”), to purported scope-
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`narrowing admissions made in its Preliminary Response. Req. Reh’g 4–8.
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`Second, Plaid argues that we misapplied the statutory definition of a covered
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`business method patent. Id. at 8–13. Lastly, Plaid argues that we
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`established a new requirement for demonstrating covered business method
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`patent eligibility. Id. at 13–15.
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`As we explain below, we have considered the arguments presented by
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`Plaid in its Request for Rehearing, but we discern no reason to modify the
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`Decision not to Institute. As a consequence, we deny Plaid’s Request for
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`Rehearing.
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`
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`2
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`CBM2016-00037
`Patent 6,199,077 B1
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`II. STANDARD OF REVIEW
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
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`specifically all matters we misapprehended or overlooked, and the place
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`where each matter was addressed previously in a motion, an opposition, or a
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`reply. Id. When rehearing a decision on a petition, we review the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion
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`may be indicated if a decision is based on an erroneous interpretation of law,
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`if a factual finding is not supported by substantial evidence, or if the
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`decision represents an unreasonable judgment in weighing relevant factors.
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`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005);
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`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
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`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we
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`address the arguments presented by Plaid in turn.
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`
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`III. ANALYSIS
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`A.
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`Plaid contends that our determination that the ’077 patent is not a
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`covered business method patent eligible for review—because the claimed
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`“Internet sites” and “data specific to a person” cover any sites and any data,
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`respectively—cannot not be reconciled with purported scope-narrowing
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`admissions by Yodlee in its Preliminary Response. Req. Reh’g 4–5.
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`According to Plaid, Yodlee’s arguments distinguishing the challenged
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`claims over the asserted prior art included purported admissions that the
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`claimed “Internet sites” and “data specific to a person” are limited such that
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`they have specific utility to financial products or services. Id. at 5–7 (citing
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`3
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`CBM2016-00037
`Patent 6,199,077 B1
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`Paper 8 (“Prelim. Resp.”), 19, 21–22). Plaid asserts that we should have
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`held Yodlee to these admissions when evaluating the scope of the challenged
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`claims for purposes of covered business method patent eligibility. Id. at 8.
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`As an initial matter, we do not agree with Plaid that we
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`misapprehended or overlooked Yodlee’s purported scope-narrowing
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`admissions when determining whether Plaid had demonstrated that the
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`challenged claims satisfy the financial prong of the definition of a covered
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`business method patent. Plaid directs us to these purported admissions for
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`the first time in its Request to Rehearing. Compare Paper 4 (“Pet.”), 11–17,
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`with Req. Reh’g 4–8. Indeed, Plaid readily admits that it did not present and
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`develop arguments based on these purported admissions in its Petition. Req.
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`Reh’g 4 n.1 (stating “Petitioner could not have incorporated Patent Owner’s
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`admission because the Prelim. Resp. was filed after the Petition was filed.”).
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`Consequently, we could not have overlooked or misapprehended this new
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`argument because it was not presented and developed by Plaid in its Petition.
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`Nor did Plaid seek a reply to highlight the purported admissions in Yodlee’s
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`Preliminary Response as further support for demonstrating that the
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`challenged claims satisfy the financial prong of the definition of a covered
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`business method patent.
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`Even if we were to consider Plaid’s newly minted theory as to why
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`the challenged claims satisfy the financial prong of the definition of a
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`covered business method patent, we still would disagree. It is undisputed
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`that Plaid must meet the “more likely than not” threshold standard for
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`institution, which includes, among other things, demonstrating that the ’077
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`patent qualifies as a covered business method patent that is eligible for
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`review. Plaid’s new argument based on Yodlee’s purported scope-
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`4
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`CBM2016-00037
`Patent 6,199,077 B1
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`narrowing admissions that were made in the context of attempting to
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`distinguish the challenged claims over the asserted prior art has little, if any,
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`bearing on whether Plaid has carried its burden in that regard. It is
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`incumbent on Plaid to make its case in the Petition, itself, without the need
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`to rely upon arguments or testimonial evidence that Yodlee may optionally
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`advance in a preliminary response. In any event, Plaid does not explain
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`adequately how Yodlee’s purported scope-narrowing admissions,
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`particularly with respect to the claimed “data specific to a person,” would
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`comply with the broadest reasonable interpretation standard. See Prelim.
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`Resp. 19, 21–22. We, therefore, maintain our initial position that, on this
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`record, Plaid has not demonstrated that the challenged claims meet the
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`financial prong of the definition of a covered business method patent set
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`forth in § 18(d)(1) of the AIA. See Dec. 6–12.
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`B.
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`Plaid contends that we applied the wrong standard in determining
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`whether the ’077 patent is a covered business method patent eligible for
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`review. Req. Reh’g 8. According to Plaid, the correct standard does not
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`include determining whether the challenged claims have some “explicit or
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`inherent finance-related terminology or limitations,” but rather includes
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`determining whether the specification discloses using a financial product or
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`service, even without expressly or implicitly limiting the challenged claims.
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`Id. To support its argument, Plaid directs us to previous Board decisions
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`that purportedly hold that the specification can show the use of the claimed
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`embodiment in a financial product or service. Id. at 10–12.
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`We do not agree with Plaid that we applied the wrong standard in
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`determining covered business method patent eligibility. As we explained in
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`5
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`CBM2016-00037
`Patent 6,199,077 B1
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`the Decision not to Institute, the proper focus for determining covered
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`business method patent eligibility is on the claims. Dec. 6 (citing Blue
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`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016)
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`(stating that Ҥ 18(d)(1) directs us to examine the claims when deciding
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`whether a patent is a [covered business method] patent”)). Consistent with
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`§ 18(d)(1) of the AIA and the guidance from the U.S. Court of Appeals for
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`the Federal Circuit, our analysis began by focusing on the language of
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`independent claims 1 and 7, followed by our analysis of the description of
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`the invention in the specification of the ’077 patent. See Dec. 9–10. In its
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`Request for Rehearing, Plaid does not acknowledge the Federal Circuit’s
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`decision in Blue Calypso, much less attempt to distinguish how our analysis
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`in this case departs from the Federal Circuit’s guidance in that case.
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`We also do not agree with Plaid’s argument that previous Board
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`decisions have applied a different standard for determining covered business
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`method patent eligibility. Coincidentally, the Federal Circuit addressed a
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`similar argument made by the appellant in Blue Calypso that the Board
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`unpredictably applies the definition of a covered business method patent.
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`See Blue Calypso, 815 F.3d at 1340. When explaining why it disagreed with
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`the appellant’s argument, the Federal Circuit reasoned that “each [Board
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`case identified by appellant] properly focuses on the language at issue and,
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`finding nothing explicitly or inherently financial in the construed claim
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`language, declines to institute [a covered business method] review.” Id.
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`(emphasis added). As we noted above, we performed the same analysis in
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`this case—specifically, we properly focused on the language of the
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`independent claims, and upon determining that the challenged claims are of
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`general utility with no explicit or inherent finance-related terminology or
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`6
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`CBM2016-00037
`Patent 6,199,077 B1
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`limitations, we declined to institute a covered business method review. See
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`Dec. 9–12.
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`Plaid spent a significant portion of its Request for Rehearing
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`discussing a recent Board decision, which is not binding authority. Req.
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`Reh’g 10–11 (citing Southside Bancshares, Inc. v. St. Isidore Research,
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`LLC, Case CBM2016-00027, slip op. at 10–11 (PTAB Aug. 1, 2016) (Paper
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`28) (“Southside”)). Nonetheless, we take this opportunity to explain how the
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`circumstances presented in this case are distinguishable. In Southside, the
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`Board panel began its analysis by focusing on the language of the
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`independent claims, followed by its analysis of the description of the
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`invention in the specification of the involved patent. Unlike this case,
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`however, because the challenged claims included an explicit finance-related
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`limitation, i.e., “the authenticity of the account access request,” the Board
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`panel determined that the Petitioner had demonstrated that at least one
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`challenged claim met the financial prong of the definition of a covered
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`business method patent set forth in § 18(d)(1) of the AIA. Southside, slip
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`op. at 10–12.
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`C.
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`Plaid contends that the Board does not have a uniform standard as to
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`the requirements for demonstrating covered business method patent
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`eligibility. Req. Reh’g 13. In particular, Plaid argues that we established a
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`new requirement that the challenged claims must include an explicit or
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`inherent finance-related terminology or limitation, whereas no other Board
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`panel has imposed such a requirement in previous cases. Id. at 13–15.
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`As we explained above, our analysis in this case is consistent with
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`§ 18(d)(1) of the AIA and the Federal Circuit’s guidance in Blue Calypso.
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`7
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`CBM2016-00037
`Patent 6,199,077 B1
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`That is, we properly focused on the language of the independent claims, and
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`upon determining that the challenged claims are of general utility with no
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`explicit or inherent finance-related terminology or limitations, we declined
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`to institute a covered business method review. See Dec. 9–12.
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`We also do not agree with Plaid’s argument that we established a new
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`requirement for demonstrating covered business method patent eligibility
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`that has never been imposed in previous Board decisions. Although Plaid
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`directs us to a number of previous Board decisions that address covered
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`business method patent eligibility (see Req. Reh’g 10–12), our review of
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`these decisions reveals that each panel began their analysis by properly
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`focusing on the claim language at issue. Contrary to Plaid’s argument, our
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`analysis in this case does not depart from these previous Board decisions,
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`but instead continues to focus on the claim language at issue and determines
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`whether such language, in light of the specification, includes explicit or
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`inherent finance-related terminology or limitations.
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`
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`IV. CONCLUSION
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`For the foregoing reasons, Plaid has not demonstrated that we abused
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`our discretion in determining not to institute a covered business method
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`patent review of claims 1–12 of the ’077 patent. In particular, Plaid has not
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`persuaded us that we misapprehended or overlooked certain aspects of
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`Plaid’s argument as to whether the challenged claims satisfy the financial
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`prong of the definition of a covered business method patent set forth in
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`§ 18(d)(1) of the AIA.
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`
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`8
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`CBM2016-00037
`Patent 6,199,077 B1
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`Accordingly, it is ORDERED that Plaid’s Request for Rehearing is
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`V. ORDER
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`denied.
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`9
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`
`10
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`CBM2016-00037
`Patent 6,199,077 B1
`
`For PETITIONER:
`
`Brian Buroker
`Omar Amin
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`oamin@gibsondunn.com
`
`
`
`For PATENT OWNER:
`
`David Hoffman
`Fish & Richardson P.C.
`CBM12233-0048CP1@fr.com
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