Trials@uspto.gov
`Tel: 571-272-7822
`
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` Paper 12
`
` Entered: March 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00100
`Patent 8,805,825 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge MEDLEY.
`
`Opinion Concurring by Administrative Patent Judge TURNER.
`
`Opinion Concurring by Administrative Patent Judge ARPIN.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`I. INTRODUCTION
`Ford Motor Company, (“Petitioner”) filed a Petition requesting a
`covered business method patent review of claims 1–20 of U.S. Patent No.
`8,805,825 B1 (Ex. 1001, “the ’825 patent”). Paper 1 (“Pet.”). In response,
`Versata Development Group, Inc. (“Patent Owner”) filed a Patent Owner
`Preliminary Response. Paper 6 (“Prelim. Resp.”). In its Patent Owner
`Preliminary Response, Patent Owner asserts, with supporting evidence, that it
`filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a), disclaiming
`claims 5, 10, 15, 16, and 20. See Prelim. Resp. 13–14; Ex. 2009.
`Accordingly, no covered business method patent review will be instituted for
`claims 5, 10, 15, 16, and 20. See 37 C.F.R. § 42.207(e).
`Subsequent to the parties’ submissions, we authorized Petitioner to file
`a Reply, addressing (1) the impact of Unwired Planet, LLC v. Google Inc.,
`841 F.3d 1376 (Fed. Cir. 2016), decided after Petitioner filed its Petition and
`cited by Patent Owner in its Preliminary Response, and (2) whether certain
`claims of the challenged patent, which were disclaimed statutorily by Patent
`Owner, should be considered in determining whether the challenged patent is
`eligible for covered business method patent. Paper 7. We authorized Patent
`Owner to file a sur-reply. Id. The parties submitted their respective papers
`on these issues. Paper 10 (“Reply”); Paper 11 (“Sur-Reply”).
`Under 35 U.S.C. § 324, a post-grant review may not be instituted
`“unless . . . the information presented in the petition . . . would demonstrate
`that 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 do not institute a covered business
`method patent review of claims 1–4, 6–9, 11–14, or 17–19 of the ’825 patent.
`
`
`
`2
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`A. Related Matters
`The ’825 patent is involved in the following lawsuit: Ford Motor Co.
`v. Versata Software, Inc., No. 2:15-cv-10628 (E. Mich.). Pet. iv; Paper 4, 2.
`In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it has been
`sued for infringement of the ’825 patent. Pet. 17. Patent Owner does not
`challenge Petitioner’s certification that it has been sued for infringement of
`the ’825 patent.
`
`B. The ’825 Patent
`The Specification of the ’825 patent describes a system and method for
`“prioritizing configuration using a combined configuration-attribute data
`model.” Ex. 1001, 1:10–12. In particular, a method is described for using
`computer assisted configuration technology to generate one or more attribute
`prioritized configuration answers to one or more configuration queries. Id. at
`4:40–42. The method further includes processing the one or more
`configuration queries using a combined configuration rules-attributes model
`to determine valid configuration answers prioritized by one or more
`predetermined attributes and providing a subset of valid configuration
`answers to a client system. Id. at 4:43–48.
`
`C. Illustrative Claim
`Claim 1 is representative and is reproduced below:
` A method for using computer assisted configuration
`1.
`technology to generate one or more attribute prioritized
`configuration answers to one or more attribute-based
`configuration queries, the method comprising:
`
`
`
`performing by a computer system programmed with code
`stored in a memory and executable by a processor of the
`
`
`
`3
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`computer system to configure the computer system into a
`machine for:
`
`receiving one or more attribute-based configuration
`queries from a client system, wherein the attribute-based
`configuration queries include a selection of one or more
`parts of a product;
`
`processing the one or more attribute-based configuration
`queries, configuration rules, and attribute based
`preference algorithm using a combined configuration
`rules-attributes model and a configuration-rules
`processing engine to calculate valid confirmation answers
`in accordance with the combined configuration rules-
`attributes model, wherein a plurality of the configuration
`rules define relationships between parts of the product
`and a plurality of attributes represent details about the
`parts;
`
`predetermining values of one or more combinations of
`attributes associated with respective configuration
`answers;
`
`storing the predetermined values;
`
`retrieving the stored predetermined values associated with
`a particular valid configuration answer if the particular
`valid configuration is an answer to one or more of the
`attribute-based configuration queries;
`
`receiving a selection of at least one of the one or more
`product attributes to be prioritized;
`
`prioritizing the valid configuration answers by one or
`more of the plurality of attributes in the combined
`configuration rules-attribute model; and
`
`
`
`
`4
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`providing at least a subset of the valid configuration
`answers to the client system, wherein the provided valid
`configuration answers are prioritized by one or more of
`the plurality of attributes.
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–4, 6–9, 11–14, and 17–19 of the ’825
`patent are unpatentable under 35 U.S.C. § 101.1
`
`E. Claim Interpretation
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). For purposes of this Decision, we
`determine that no claim term requires interpretation.
`
`II. DISCUSSION
`A covered business method patent is “a patent that claims a method or
`corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`service, except that the term does not include patents for technological
`inventions.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”) § 18(d)(1) (emphasis added); see 37 C.F.R.
`§ 42.301(a).
`
`
`1 As explained above, Patent Owner filed a statutory disclaimer, disclaiming
`claims 5, 10, 15, 16, and 20.
`
`
`
`5
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`The U.S. Court of Appeals for the Federal Circuit recently held the
`following regarding the scope of covered business method (CBM) patent
`review:
`CBM patents are limited to those with claims that are directed to
`methods and apparatuses of particular types and with particular
`uses “in the practice, administration, or management of a financial
`product or service.” The patent for a novel lightbulb that is found
`to work particularly well in bank vaults does not become a CBM
`patent because of its incidental or complementary use in banks.
`Likewise, it cannot be the case that a patent covering a method and
`corresponding apparatuses becomes a CBM patent because its
`practice could involve a potential sale of a good or service. All
`patents, at some level, relate to potential sale of a good or service.
`Take, for example, a patent for an apparatus for digging ditches.
`Does the sale of the dirt that results from use of the ditch digger
`render the patent a CBM patent? No, because the claims of the
`ditch-digging method or apparatus are not directed to “performing
`data processing or other operations” or “used in the practice,
`administration, or management of a financial product or service,”
`as required by the statute. It is not enough that a sale has occurred
`or may occur, or even that the specification speculates such a
`potential sale might occur.
`Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016)
`(footnote omitted) (citations omitted); see also Secure Axcess, LLC v. PNC
`Bank Nat’l Ass’n, No. 2016-1353, 2017 WL 676601, at *9 (Fed. Cir. Feb. 21,
`2017) (“Necessarily, the statutory definition of a CBM patent requires that
`the patent have a claim that contains, however phrased, a financial activity
`element.”); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed.
`Cir. 2016) (approving of prior Board decisions that “properly focuse[d] on
`the claim language at issue and, finding nothing explicitly or inherently
`financial in the construed claim language, decline[d] to institute CBM
`review,” and finding that the challenged patent was eligible for review
`
`
`
`6
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`because the claims recited “an express financial component in the form of a
`subsidy” that was “central to the operation of the claimed invention”);
`Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir.
`2015) (stating that “the definition of ‘covered business method patent’ is not
`limited to products and services of only the financial industry” and “on its
`face covers a wide range of finance-related activities”).
`A patent need have only one claim directed to a covered business
`method to be eligible for review. 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). Petitioner must demonstrate that the patent for which review is
`sought is a covered business method patent. 37 C.F.R. § 42.304(a).
`Petitioner focuses on claims 1, 5, 6, 10, 11, and 15 to demonstrate that the
`’825 patent is a covered business method patent. Pet. 10–11; Reply 2–3.
`
`Disclaimed Claims 5, 10, and 15
`Claim 5 depends from claim 1 and recites “wherein the one or more
`attribute-based configuration queries comprise attribute-based configuration
`queries to configure at least one of the products from the group comprising:
`vehicles, computers, and financial products.” Claim 10, which depends from
`independent claim 6, and claim 15, which depends from independent claim
`11, recite similar language.
`Petitioner argues that claims 5, 10, and 15 cover the data processing of
`financial products. Pet. 10. Petitioner further argues that although claims 5,
`10, and 15 have been disclaimed, they may still be considered in determining
`whether a pending independent claim encompasses finance-related subject
`matter, which here would include attribute-based configuration queries used
`7
`
`
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`to configure and prioritize financial products. Reply 2–3 (citing Great West
`Cas. Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip op. at 8
`(PTAB Feb. 9, 2016) (Paper 10); Am. Express Co. v. Maxim Integrated
`Prods., Inc., Case CBM2015-00098, slip op. at 8–9 (PTAB Sept. 22, 2015)
`(Paper 17)).
`We are not persuaded by Petitioner’s arguments. Petitioner has not
`shown sufficiently why we should consider disclaimed claims 5, 10, or 15 at
`all in determining whether the ’825 patent qualifies as a covered business
`method patent. Our reviewing court has held that disclaimed claims should
`be treated as if they never existed. See Vectra Fitness, Inc. v. TNWK Corp.,
`162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term
`‘considered as part of the original patent’ in section 253 to mean that the
`patent is treated as though the disclaimed claims never existed.”); Guinn v.
`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35
`U.S.C. § 253 has the effect of canceling the claims from the patent and the
`patent is viewed as though the disclaimed claims had never existed in the
`patent.”); see also Genetics Inst., LLC v. Novartis Vaccines and Diagnostics,
`Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) (holding that the Board’s
`interference jurisdiction under 35 U.S.C. § 291 required “the existence of an
`interference, and a claim that ‘never existed’ [due to a statutory disclaimer]
`cannot form the basis for an interference” (citation omitted)); Blue Calypso,
`815 F.3d at 1340 (citing previous Board decisions that “properly focuse[d] on
`the claim language at issue”). We decline Petitioner’s apparent invitation to
`depart from Federal Circuit precedent. Accordingly, Petitioner’s arguments
`regarding claims 5, 10, and 15 are not persuasive.
`
`
`
`8
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`Claims 1, 6, and 11
`Petitioner argues that claims 1, 6, and 11 include the term “attribute,”
`
`which encompasses the attribute of “price,” directing attention to examples in
`the Specification of the ’825 patent that describe that the attribute may be of
`price. Pet. 7–10 (citing Ex. 1001, 3:1–8, 3:18–21, 6:12–29, 7:46–48). In
`addition, Petitioner argues, directing attention to a description in the
`Specification of the ’825 patent, that “the claimed inventions of the ‘825
`Patent are applicable to sales of products and ‘financial services’ as well as
`other financial applications such as sales.” Id. at 10 (citing Ex. 1001, 10:18–
`24). Petitioner concludes that the configuration systems and methods
`claimed in the ’825 patent are at least “incidental to” or “complementary to”
`a financial activity, such as the purchase of an automobile. Id. at 11–12.
`
`Petitioner’s arguments made in its Petition are not persuasive because
`the arguments are based on the incorrect “incidental to” or “complementary
`to” language stemming from the AIA legislative history that was rejected by
`the Federal Circuit in Unwired Planet. See id. at 11–12; 841 F.3d at 1380–
`82. The issue is whether the ’825 patent “claims a method or corresponding
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service.”
`AIA § 18(d)(1). We evaluate Petitioner’s arguments based on that statutory
`language.
`In its Reply, Petitioner essentially makes the same arguments
`presented in the Petition, that the claims cover attributes such as price, and
`that the claimed inventions of the ’825 patent are applicable to sales of
`products and ‘financial services’ as well as other financial applications such
`as sales. Reply 1. Petitioner argues that claims 1, 6, and 11, when read in
`
`
`
`9
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`light of the ’825 patent’s Specification, involve pricing/cost data, and,
`therefore, are directed to “finance-related activities” covered by the CBM
`statute. Id. (citing Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1325
`(Fed. Cir. 2015). We agree with Patent Owner, however, that claims 1, 6,
`and 11 are “agnostic to the specific data with the attribute field.” See Prelim.
`Resp. 12. Moreover, claims 1, 6, and 11 do not recite anything with respect
`to selling products or services. Specifically, there is nothing in the claims
`themselves that specifies that the attribute is price, or that claims 1, 6, and 11
`are applicable to sales of products, financial services, or are directed to other
`financial applications, such as sales. Petitioner also does not provide any
`proposed interpretation for the terms of the claims, such that they would
`include any of these features, and, thus, be financial in nature. See Pet. 18–
`19. Nor do we find any other language in claims 1, 6, or 11 relating to
`pricing, financial products, or services. Versata is inapposite to the facts
`before us, because the claims involved in that case are not generic, as are the
`ones before us, but rather include terms directed to “finance-related
`activities.”
`While we agree with Petitioner that the Specification of the ’825 patent
`does describe that an attribute may be price, the Specification also describes
`many examples of attributes that are non-financial in nature, such as whether
`a part for a product is standard or optional, how much a part weighs, a
`description of a part, etc. Ex. 1001, 6:12–29. We also agree with Petitioner
`that the Specification of the ’825 patent describes that the invention has
`application to financial services. Id. at 10:18–24. The Specification also
`describes, however, that the invention has application to “a wide range of
`industries and products” such as manufacturing and construction. Id. In
`
`
`
`10
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`evaluating Petitioner’s arguments and evidence, we must focus on the claims,
`not on embodiments described in the Specification, some of which are related
`to price or financial services and some of which are not. See Secure Axcess,
`2017 WL 676601, at *6 (“the written description alone cannot substitute for
`what may be missing in the patent ‘claims,’ and therefore does not in
`isolation determine CBM status”). We have considered each of Petitioner’s
`arguments, but do not find them persuasive given the generic, broad claims,
`and the corresponding broad disclosure in the Specification of the ’825
`patent.
`For the foregoing reasons, based on the record presented and the
`particular facts of this proceeding, Petitioner has not established that the ’825
`patent claims a method or apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service. Therefore, the ’825 patent does not qualify as a “covered
`business method patent” under § 18(d)(1) of the AIA, and we do not institute
`a covered business method patent review on any of the asserted grounds as to
`any of the challenged claims.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of the
`’825 patent.
`
`
`
`11
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00100
`Patent 8,805,825 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge, concurring.
`
`
`I agree with our determination that U.S. Patent No. 8,805,825 B1 (Ex.
`1001, “the ’825 patent”) does not qualify as a “covered business method
`patent” under § 18(d)(1) of the AIA. I am troubled, however, by the current
`state of the law that does not adequately allow this panel to review the cited
`patent that the patentee clearly intended to be directed to financial products
`and services.
`I concur that disclaimed claims 5, 10, and 15 should be treated as if
`they never existed; I find the jurisprudence to be settled. I also acknowledge
`that independent claims 1, 6, and 11 are not specific with respect to the
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`attribute limitation, or how that limitation could reasonably be construed, and
`do not recite explicitly anything directed to selling products or services.
`However, the clear intent of the patentee, at the time the ’825 patent issued,
`was for the independent claims to be directed to financial products.
`Disclaimed claim 5, for example, recited that the method of claim 1
`was “to configure at least one of the products from the group comprising:
`vehicles, computers, and financial products.” This claim was fully supported
`in the’825 patent, detailing that “[m]any embodiments of the present
`invention have application to . . . financial services.” Ex. 1001, 10:18–24.
`The clear intent at issuance was for the method of claim 1 to be directly
`applicable to financial products. Had claim 5 not been disclaimed, it is
`readily apparent that claim 5 would have been found to be a method or
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service. A
`similar analysis can be applied to independent claims 6 and 11, based on the
`same subject matter that supported disclaimed claims 10 and 15.
`Because of Secure Axcess, LLC v. PNC Bank National Association,
`No. 2016-1353, 2017 WL 676601 (Fed. Cir. Feb. 21, 2017), correctly
`interpreted and applied above, we cannot interpret what may be explicitly
`absent from independent claims by looking to the written description. Thus,
`even though independent claims 1, 6, and 11 are sufficiently broad to cover
`their use with financial products, and the clear intent was for them to be
`applied to financial products, they cannot render the ’825 patent to be subject
`to a covered business method patent review. A proper claim construction of
`“product,” recited in the subject independent claims, does not require it to be
`a financial product, so that any inquiry must end at that point.
`
`
`
`2
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`Although I agree with our reviewing court that “a patent covering a
`method and corresponding apparatuses [cannot become] a CBM patent
`because its practice could involve a potential sale of a good or service,”
`Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016),
`the instant written description and the prosecution history of the ’825 patent
`make clear that this is not a mere potentiality, but a stated intent. This result
`allows for a broader claim, intended to be directed to a financial product, to
`escape review, but would force a narrower claim, explicitly directed to a
`same financial product to cause its patent to be eligible for CBM review.
`Such a result should be troubling for accused infringers, utilizing such
`financial products, who cannot avail themselves of post-grant proceedings for
`patents directed to what such reviews were intended to cover.
`
`
`
`3
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`CBM2016-00100
`Patent 8,805,825 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge, concurring.
`
` I
`
` join the Opinion as it determines that Petitioner has not met its
`burden to prove that U.S. Patent No. 8,805,825 B1 (Ex. 1001, “the ’825
`patent”) claims a method or apparatus for performing data processing or
`other operations used in the practice, administration, or management of a
`financial product or service, and I concur in the Opinion’s ultimate denial of
`institution of a covered business method patent review on any of the asserted
`grounds as to any of the challenged claims. See 37 C.F.R. § 42.304(a).
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`
`However, I write separately to discuss the relationship between the
`term “product,” as recited in independent claims 1, 6, and 11, and the phrase
`“at least one of the products,” as recited in disclaimed, dependent claims 5,
`10, and 15, and the proper construction of the term “product” in the
`independent claims. Ex. 1001, 10:42 (claim 1), 11:19 (claim 5), 11:40 (claim
`6), 12:8–9 (claim 10), 12:27 (claim 11), 12:62–63 (claim 15). While neither
`the Petition nor Petitioner’s Reply to Patent Owner’s Preliminary Response is
`a model of clarity, Petitioner generally asserts that claims 1, 5, 6, 10, 11, and
`15 of the ’825 patent expressly cover “financial products.” Pet. 10–11; see
`Reply 3 (“Dependent claims 5, 10 and 15 make it clear that each independent
`claim of the ‘825 Patent includes attribute-based configuration queries used
`to configure and prioritize financial products.”). In response, Patent Owner
`contends that
`[Petitioner] argues generically that claims 1, 6, and 11
`“expressly cover the data processing . . . of financial products.”
`(Petition, p. 11.) But [Petitioner] never identifies specific claim
`language that is directed to methods and apparatuses of particular
`types and with particular uses “in the practice, administration, or
`management of a financial product or service,” as required by the
`statute, and fails to show that claims 1, 6, and 11 are directed to
`CBM review eligible subject matter.
`Prelim. Resp. 9 (second alteration in original). I agree with Patent
`Owner.
`
`The statutory language governing the institution of a covered
`business method patent review requires that, in order to determine
`whether “a patent . . . claims a method or corresponding apparatus for
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service.”
`
`
`
`2
`
`

`

`CBM2016-00100
`Patent 8,805,825 B1
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284,
`329 (2011) (“AIA”) § 18(d)(1) (emphasis added). Thus, as our
`reviewing court has instructed, we first must construe the claims of the
`patent, on which Petitioner asserts eligibility for covered business
`method review, to determine the proper “scope of the patentee’s
`rights.” Secure Axcess, LLC v. PNC Bank National Ass’n, 2017 WL
`676601, at *6 (Fed. Cir. Feb. 21, 2017). In particular, our reviewing
`court has explained that “[w]hen properly construed in light of the
`written description, the claim need only require one of a ‘wide range of
`finance-related activities,’ examples of which can be found in the cases
`which we have held to be within the CBM provision.” Id. at *8
`(quoting Versata Development Grp., Inc. v. SAP Am., Inc., 793 F.3d
`1306, 1325 (Fed. Cir. 2015)).
`Although the phrase “at least one of the products” is introduced first in
`disclaimed claims 5, 10, and 15, the term “a product” or “product” appears in
`each of independent claims 1, 6, and 11, from which claims 5, 10, and 15
`depend, respectively. Initially, I note that it is a long accepted principle of
`claim construction that “a” or “an” can mean “one or more.” Baldwin
`Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir.
`2008); see Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011). Here, I am
`persuaded that the recitation of “a product” or “product” in the independent
`claims provides antecedent basis for the recitation of “at least one of the
`products” in the disclaimed, dependent claims. See also SuperGuide Corp. v.
`DirecTV Enters., Inc., 358 F.3d 870, 886 (Fed. Cir. 2004) (“We conclude
`that the plain and ordinary meaning of the disputed language supports the
`district court’s construction and that the phrase ‘at least one of’ means ‘one
`
`
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`3
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`or more.’” (quoting Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir.
`1999))). Moreover, but for the fact that claims 5, 10, and 15 are disclaimed
`and, therefore, treated as if they never existed,2 I would find that the word
`“products,” as recited in those dependent claims, illuminates the construction
`of the term “product” in the independent claims. Chamberlain Grp., Inc. v.
`Lear Corp., 516 F.3d 1331, 1337 (Fed. Cir. 2008) (“At the outset, this court
`examines the meaning of ‘code’ as used in the claims. In this context, the
`’544 patent’s term ‘trinary code’ is relevant to construing ‘binary code’
`because the term ‘code’ presumptively should carry the same meaning
`throughout the patent.”); see Rexnord Corp. v. Laitram Corp., 274 F.3d
`1336, 1342 (Fed. Cir. 2001); Phillips v. AWH Corp., 415 F.3d, 1303, 1314
`(Fed. Cir. 2005) (en banc) (“claim terms are normally used consistently
`throughout the patent.”).
`Despite the requirement that we treat the disclaimed claims as though
`they never existed, in the context of claim construction, it is a difficult fiction
`to observe. The disclaimed claims clearly did exist, and, while the disclaimer
`unquestionably removes those claims from the patent, for purposes of claim
`construction, it cannot remove them from the originally-filed Specification
`(e.g., original claims 6, 12, and 18 (Ex. 3001 (claims as originally filed on
`Jan. 12, 2005))), the prosecution history (e.g., amendments to originally-filed
`independent claims to include recitations regarding “product” (Ex. 3002
`(claims as first amended on Jan. 2, 2008))), or from my mind. See
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063 (Fed. Cir. 2016) (“Any
`
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`2 See, e.g., Vectra Fitness, 162 F.3d at 1383 (“This court has interpreted the
`term ‘considered as part of the original patent’ in section 253 to mean that the
`patent is treated as though the disclaimed claims never existed.”).
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`explanation, elaboration, or qualification presented by the inventor during
`patent examination is relevant, for the role of claim construction is to
`‘capture the scope of the actual invention’ that is disclosed, described, and
`patented.” Accordingly, disclaimer “ensures that claims are interpreted by
`reference to those ‘that have been cancelled or rejected.’” (citations
`omitted)); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`Cir. 2015) (“The PTO should also consult the patent’s prosecution history in
`proceedings in which the patent has been brought back to the agency for a
`second review.”); In re Koller, 613 F.2d 819, 823 (CCPA 1980) (original
`claims constitute their own description).
`Nevertheless, in construing the term “product” in the independent
`claims, we apply the broadest reasonable interpretation of the words in their
`ordinary usage, as those words would be understood by one of ordinary skill
`in the art, taking into account any definitions supplied by the ’825 patent’s
`Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
`Fortunately, even in the absence of claims 5, 10, and 15, we find guidance in
`the Specification of the ’825 patent for construing the term “product” in
`claims 1, 6, and 11. The Specification states that “[a] product can be a
`physical product such as a vehicle, computer, or any other product that
`consists of a number of configurable features such as an insurance product.
`Additionally, a product can also represent a service such as financial
`services, insurance services, or consulting services.” Ex. 1001, 1:44–49
`(emphasis added). Further, the Specification states that “[m]any
`embodiments of the present invention have application to a wide range of
`industries and products including the following: computer hardware and
`software manufacturing and sales, professional services, financial services,
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`automotive sales and manufacturing, telecommunications sales and
`manufacturing, medical and pharmaceutical sales and manufacturing, and
`construction industries.” Id. at 10:18–24 (emphases added). Thus, initially, I
`would find that the broadest reasonable interpretation of the term “product,”
`in independent claims 1, 6, and 11, encompasses “financial services.” See
`Symphony Health Solutions Corp. v. IMS Health Inc., Case CBM2015-
`00085, slip op. at 10–11 (PTAB Sept. 10, 2015) (Paper 7) (“[E]ach claim
`recites a ‘health care field’ relating to ‘health care data,’ which is described in
`the specification as including claims data, such as pharmaceutical, medical
`and hospital claims data, i.e., claims for receiving payment or
`reimbursement.”). Moreover, each of the independent claims describes the
`manipulation of “attributes” related to the “product.” See, e.g., Ex. 1001,
`10:49–52 (claim 1), 11:38–41 (claim 6), 12:26–28 (claim 11).
`The construction of the term “product” in claims 1, 6, and 11,
`however, is not complete until the effect of the disclaimer of dependent
`claims 5, 10, and 15 is considered. As part of the prosecution history, the
`disclaimer of those claims bears on the “scope of the patentee’s rights,” at
`least for purposes of