Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 10
` Entered: September 15, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TRAVELOCITY.COM L.P., PRICELINE.COM INC.,
`and EXPEDIA, INC.,
`Petitioner,
`
`v.
`
`CRONOS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00082
`Patent 5,664,110
`____________
`
`
`
`
`Before JENNIFER S. BISK, JAMES B. ARPIN, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
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`
`I. BACKGROUND
`Travelocity.com L.P., Priceline.com Inc., and Expedia, Inc.
`(collectively, “Petitioner”) filed a Petition (Paper 8, “Pet.”) requesting
`institution of a covered business method patent review of claims 1–3, 8–19,
`22–28, 31–36 and 41–44 of U.S. Patent No. 5,664,110 (Ex. 1001, “the ’110
`Patent”) pursuant to 35 U.S.C. §§ 321–329. Cronos Technologies, LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324.
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a):
`THRESHOLD.—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`Petitioner challenges claims 1–3, 8–19, 22–28, 31–36, and 41–44 of
`the ’110 Patent as unpatentable under 35 U.S.C. § 103(a) over various
`combinations of references. Pet. 16. For the reasons that follow, the
`Petition is denied.
`
`A. The’110 Patent (Ex. 1001)
`The ’110 Patent generally relates to a remote ordering terminal that
`provides a user the ability to create or edit, or both, one or more order lists
`that are resident in memory within a user device and the further ability to
`review a user-interpretable display of the contents of such lists. Ex. 1001,
`col. 1, ll. 38–42. The remote ordering terminal provides multiple merchant
`stock databases, a data format/transfer computer (DFTC) as an interface
`
`
`
`2
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`between customers and the merchant databases, and a user device referred to
`as a display/processor unit (DPU) at each of multiple customer sites for
`creating and transmitting order lists. Id. at col 1, ll. 42–47.
`Figure 2 of the ’110 patent is reproduced below:
`
` 
`Figure 2 is a schematic representation of the remote ordering
`system according to the ’110 Patent.
`
`
`As illustrated in Figure 2, each DPU 10 includes data entry device 16
`which provides coded information to the rest of DPU 10. Id. at col. 3, ll. 5–
`7. In the embodiment of Figure 2, data entry device 16 includes optical
`
`
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`scanning wand 20 having RF transmitter 22 in communication with RF
`receiver 24, and also includes bar code decoder 26. Id. at col. 3, ll. 7–11.
`Scanning wand 20 may be passed over some form of bar code 41, whether
`displayed on a screen, printed on packaging for a desired product, in a
`catalog of codes, on coupons, or printed on a credit-card sized identification
`control card. Id. at col. 3, ll. 11–15. “The specific bar code employed may
`be Code 128, Codabar, or one of the UPC (UPC-A, UPC-E) or EAN (EAN-
`8, EAN-13) codes, or any other code including system specific code.” Id. at
`col. 3, ll. 15–18.
`Regardless of the detection means or the code read, “the received code
`is interpreted by bar code decoder 26 to provide a common representation of
`the coded information, such as in ASCII format.” Id. at col. 3, ll. 18–21.
`The code may be user identification means, a merchant identification means,
`or a product bar code scanned from a list or screen. Id. at col. 3, ll. 5–21; see
`id. at col. 10, ll. 30–41. The user may create a list for local storage and
`review and for provision to a remotely-located order processing system. See
`id. at col. 7, ll. 1–13. When the list is provided to the order processing
`system, the order processing system returns new or replacement user-
`discernible information data, or both, relating to the items on the list. Id. at
`col. 1, ll. 54–58.
`
`B. Related Matters
`The ’110 Patent has been asserted in proceedings listed in the Petition.
`
`Pet. 67–70; see Paper 6, 1–2. The ’110 Patent currently is being asserted
`against Petitioner in Cronos Technologies LLC v. Travelocity.com L.P., Case
`No. 1:13-cv-01544-LPS (D. Del.); Cronos Technologies LLC v.
`Priceline.com, Case No. 1:13-cv-01541-LPS (D. Del.); and Cronos
`4
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`Technologies LLC v. Expedia Inc., Case No. 1:13-cv-01538-LPS (D. Del.).
`Exs. 1002–1004.
`
`C. Illustrative Claims
`Petitioner challenges claims 1–3, 8–19, 22–28, 31–36, and 41–44 of
`the ’110 Patent. Pet. 1. Claims 1 and 22 are independent. Claims 2, 3, and
`8–19 depend from independent claim 1; and claims 23–28, 31–36, and 41–
`44 depend from independent claim 22. See Ex. 1001, col. 14, l. 46–col. 18,
`l. 28. Independent claim 1 is directed to a remote ordering terminal (id. at
`col. 14, l. 46–col. 15, l. 22), and independent claim 22 is directed to a
`method for remote ordering (id. at col. 16, 1. 23–col. 17, l. 4). Claims 1 and
`22 of the ’110 Patent are illustrative of the claims at issue:
`1.
`A remote ordering terminal for providing at least one list
`of at least one item or group of items to a remotely located
`order processing system associated with one or more merchants
`on each of a plurality of occasions, each item or group of items
`having an item code associated therewith, said remote ordering
`terminal comprising:
`
`user and/or merchant identifier means;
`
`at least one data entry device for providing said terminal with
`said item associated item codes and with data from said user
`and/or merchant identifier means;
`
`
`
` a
`
` database unit providing a user-specific database including
`user-discernable item data associated with item codes for user-
`selected items or groups of items;
`
`memory to provide storage for said user-specific database, said
`memory in communication with said at least one data entry
`device for storing said at least one list;
`
`communication means for associating said memory and said
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`order processing system upon user command for remotely
`accessing said order processing system over a multi-user
`network, for transmitting said at least one list to said order
`processing system using said data from said user and/or
`merchant identifier means, and for receiving new and/or
`replacement user-discernable item data from said order
`processing system during association of said memory and said
`order processing system, said new and/or replacement user-
`discernable item data corresponding only[1] to said at least one
`item or group of items of said at least one list;
`
` a
`
` message display portion in communication with said memory
`and said user-specific database for displaying order pertinent
`information including said user-discernable item data from said
`memory; and
`
`at least one command entry device responsive to user selection
`of items from said order pertinent information for assembling
`said at least one list and for enabling said user command,
`resulting in said transmitting of said at least one list to said
`order processing system,
`
`wherein said at least one list is comprised of an order to be
`processed by said order processing system, or a provisional
`order list transmitted to said order processing system,
`transmission of either resulting in on-demand receipt of said
`new and/or replacement user-discernable item data within said
`user-specific database for said at least one item or group of
`items.
`Id. at col. 14, l. 46–col. 15, l. 22 (emphasis added).
`
`
`22. A method for remote ordering at least one desired item
`by a user from one of a plurality of merchants using a system
`having a user device, a central computer, one of a plurality of
`
`1 Prior to issuance of a Notice of Allowance, the Examiner amended each
`of claims 1 and 22 to include the word “only.” Ex. 1012, 225–6. Neither
`party addresses this added word in its claim construction.
`6
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`merchant databases, and a communications link including a
`multi-user network, said at least one desired item having a
`unique identifying code associated therewith, the method
`comprising:
`
`storing for a plurality of user-specific items, in an identifier
`database accessible at said user device for user perception at
`said user device, a user-cognizable identifier of said at least one
`item corresponding to said identifying code;
`
`user inputting said identifying code corresponding to said at
`least one desired item into said user device by machine
`recognition of said user input identifying code;
`
`
`accumulating from said identifier database selected ones of said
`user-cognizable
`identifiers corresponding
`to
`said
`input
`identifying codes in at least one list of desired items;
`
`selectively associating a transaction identifier having user
`and/or merchant identifications with said user device to identify
`a selected merchant database and/or to identify said user to a
`selected merchant database;
`
`
`remote
`establish
`to
`device
`user
`said
`commanding
`communication between said user device and said selected
`merchant
`database
`corresponding
`to
`said merchant
`identification
`through said central computer over said
`communications link including said multi-user network;
`
`interactively updating only said selected one of said user-
`cognizable identifiers in said identifier database of user-specific
`items with current information provided by said merchant
`database over said communications link in response to a user
`action at said user device, said user action including
`
`
`the communication of a provisional list of desired items
`transmitted to said selected merchant database for the purpose
`of providing said interactive updating, or the communication of
`
`
`
`
`
`7
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`an order list of desired items transmitted to said selected
`merchant database for the purpose of providing said interactive
`updating and remote ordering said desired items comprising
`said order list; and
`
`said
`over
`information
`specific
`transaction
`passing
`communications link including said identifying codes between
`said user device and said selected merchant database.
`
`Id. at col. 16, l. 23 – col. 17, l. 4 (emphasis added).
`
`
`D. Asserted References and Declaration
`In its Petition, Petitioner refers to the following references and
`declaration:
`
`1004
`
`1005
`
`1006
`
`1010
`
`1011
`
`Exhibit References and Declaration
`1002
`Infringement Contentions, Cronos Technologies, LLC
`v. GNC
`U.S. Patent No. 5,347,632, issued to Filepp et al. on
`Sep. 13, 1994, from an application filed July 28, 1989
`(“Filepp”)
`Viescas, J., The Official Guide to the Prodigy Service,
`Microsoft Press, 1991 (excerpted Introduction, Chs. 1,
`2, 6, and 7) (“Viescas”)
`Peapod, Inc., Peapod User Manual v. 3.1, Aug. 1992
`(“Peapod”)
`
`U.S. Patent No. 4,654,482, issued to DeAngelis on
`Mar. 31, 1987 (“DeAngelis”)
`Declaration of Richard Taylor, Ph.D. (“Declaration of
`Dr. Taylor”)
`
`
`Pet. vi.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts “[w]hile these references individually may render
`the claims unpatentable, Petitioner[] rel[ies] on 35 U.S.C. § 103[(a)] to
`
`
`
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`simplify the number of grounds for trial.” Pet. 19. Therefore, Petitioner
`challenges the patentability of claims 1–3, 8–19, 22–28, 31–36, and 41–44
`of the ’110 Patent based only on the following three grounds of
`unpatentability:
`
`Claims challenged
`Basis
`References
`Viescas, Filepp, and Peapod § 103(a) 1–3, 8–15, 17–19, 22, 24, 26–
`28, 31–36, 41, and 43–44
`§ 103(a) 1–3, 8–19, 22–28, 31–36, and
`41–44
`§ 103(a) 1–3, 8–19, 22–28, 31–36, and
`41–44
`
`Viescas, Filepp, Peapod,
`and DeAngelis
`Viescas, Peapod, and the
`admitted prior art of
`DeAngelis
`
`
`Pet. 16.
`
`II. ANALYSIS
`A. Financial Product or Service
`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, § 18(d)(1), 125 Stat. 284 (2011) (“AIA”); see 37 C.F.R.
`§ 42.301(a). For purposes of determining whether a patent is eligible for a
`covered business method patent review, the focus is on the claims. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
`
`
`
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`48,734, 48,736 (Aug. 14, 2012). A patent need have only one claim directed
`to a covered business method to be eligible for review. Id.
`In promulgating rules for covered business method patent reviews, the
`Office considered the legislative intent and history behind the AIA’s
`definition of “covered business method patent.” Id. at 48,735–36.
`Specifically, the legislative history of the AIA provides that:
`The plain meaning of ‘‘financial product or service’’
`demonstrates that section 18 is not limited to the financial
`services industry. At its most basic, a financial product is an
`agreement between two parties stipulating movements of
`money or other consideration now or in the future.
`. . .
`Rather, because the patents apply to administration of a
`business transactions, such as financial transactions, they are
`eligible for review under this section. To meet this
`requirement, the patent need not recite specific financial
`product[s] or service[s].
`
`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)(statement of Sen. Schumer);
`see Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. at 47,736. Thus, the legislative history indicates that
`“financial product or service” should be interpreted broadly. Id.
`Petitioner contends that the patent describes a remote ordering system
`“that enables customers to order goods and services from merchants. . . . For
`example, claim 22 recites such a business method: identifying one or more
`products that a customer desires to purchase, obtaining information about the
`product, such as its price and placing an order for the item(s).” Pet. 2–3
`(citing Ex. 1001, col. 1, ll. 5–47). We are persuaded that the ’110 Patent
`describes a “financial product or service” consistent with the governing
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`statute.2 We also are persuaded by Petitioner that the e-commerce
`transactions recited in claims 1 and 22 represent the type of activities “that
`are financial in nature, incidental to a financial activity or complementary to
`a financial activity.” Transitional Program for Covered Business Method
`Patents—Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. at 48,736.
`Patent Owner argues that the patent is not related to a “financial
`product or service.” Prelim. Resp. 2. Patent Owner’s arguments, however,
`are not persuasive. As noted above, the presence of claimed embodiments
`directed to e-commerce transactions makes clear that the method claims
`have utility to financial processes. See, e.g., Ex. 1001, col. 14, l. 62–col. 15,
`l. 6 (claim 1), col. 16, ll. 48–53 (claim 22); see also id. at col. 1, ll. 42–47
`(“The present invention provides multiple merchant stock databases, a data
`format/transfer computer (DFTC) as an interface between customers and the
`merchant databases, and a user device referred to as a display/processor unit
`(DPU) at each of multiple customer sites for creating and transmitting order
`lists.”). Consequently, we are not persuaded by Patent Owner that the ’110
`Patent is not related to a financial product or service. See Prelim. Resp. 2.
`As such, we are persuaded that the challenged claims of the ’110 Patent
`meet the “financial product or service” component of § 18(d)(1) of the AIA.
`B. Technological Invention
`The definition of “covered business method patent” in § 18(d)(1) of
`the AIA does not include patents for “technological inventions.” To
`determine whether a patent is for a technological invention, we consider two
`
`2 See Apple, Inc. v. Sightsound Techs, LLC, CBM2013-00019, slip op. at 12
`(PTAB October 8, 2013) (Paper 17).
`
`
`
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`factors: “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.” 37 C.F.R.
`§ 42.301(b) (emphases added). A patent is ineligible for covered business
`method patent review only if both factors of this test are satisfied. The
`following claim drafting techniques, for example, typically do not render the
`claimed subject matter of 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. 48,756, 48,763–64 (Aug.
`14, 2012).
`
`Petitioner contends that the method for remote ordering recited in
`challenged claim 22 of the ’110 Patent is not directed to a technological
`invention. Pet. 5–7. First, Petitioner contends that, during prosecution of
`the ’110 Patent, Patent Owner distinguished its claims over the cited art
`based only on the features of the business process, instead of any
`“technological feature” recited in the claims. Id. Thus, we are persuaded
`that Petitioner demonstrates that at least challenged claim 22 was not
`distinguished over the applied art based on a novel and non-obvious
`technological feature.
`
`
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`Second, Petitioner contends that claim 22 of the ’110 Patent does not
`
`recite any novel and unobvious technological feature, and does not solve a
`technical problem. Id. at 5. Referring to claim 22, Petitioner contends that
`this claim “recites only known technologies, such as a central computer,
`databases, a communications link, a network, and a user device.” Id.
`Petitioner contends that recitation of these “known technologies” does not
`render this challenged claim of the ’110 Patent a “technological invention.”
`Id. Patent Owner does not argue that challenged claim 22 recites unknown
`technologies or combinations of known technologies to achieve abnormal,
`unexpected, or unpredictable results. Thus, we are persuaded that Petitioner
`demonstrates that at least challenged claim 22 does not solve a technical
`problem using a technical solution.
`
`For purposes of this decision, we are persuaded that at least
`challenged claim 22 of the ’110 Patent is directed to a covered business
`method, and, therefore, the ’110 Patent is eligible for review under AIA
`§ 18(d)(1).
`
`
`
`C. Asserted Grounds of Unpatentability
`1. Claim Construction
`Under 37 C.F.R. § 42.300(b), “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” The application, from which the ’110 Patent
`issued, was filed December 8, 1994; and the ’110 Patent issued on
`September 2, 1997. Prelim. Resp. 3. Because the application was pending
`on June 8, 1995, the ’110 Patent is entitled to the longer of a term of
`seventeen (17) years from the date of issue, i.e., September 2, 2014, or
`twenty (20) years from the filing date, i.e., December 8, 2014. 35 U.S.C.
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`§ 154(c)(1). Although currently “unexpired,” the ’110 Patent will expire on
`December 8, 2014, and, therefore, is likely to expire before a final decision
`is due in any trial that might have been instituted in this proceeding. See
`AIA § 18(a)(1). Nevertheless, the decision on institution is due before the
`patent will expire. See also 35 U.S.C. § 324 (in post grant review, a decision
`on petition is due within three months of the filing of a preliminary response
`or of the deadline for filing a preliminary response).
`Petitioner argues that the challenged claims are to be given their
`broadest reasonable interpretation in light of the Specification. Pet. 8.3
`Patent Owner argues that, because the ’110 Patent will expire before we are
`able to render any final decision regarding the merits of the Petition, we
`should not rely on the broadest reasonable construction of the terms of the
`challenged claims in analyzing the Petition. Prelim. Resp. 4. As noted
`above, however, the ’110 Patent currently is unexpired, and our regulations
`provide that we are to apply the broadest reasonable construction to the
`claims of an unexpired patent. 37 C.F.R. § 42.300(b). Further, Patent
`Owner incorrectly argues that the ability to amend is “the sole rubric behind
`the use of the broadest reasonable interpretation claim construction.”
`Prelim. Resp. 4. Thus, Patent Owner argues that, because no amendment of
`an expired patent is possible, we should apply the same standard applied by
`
`
`3 Petitioner argues that we should look to Patent Owner’s contentions in
`litigation regarding the ’110 Patent as evidence of the broadest reasonable
`interpretation for the claims. Pet. 8. Patent Owner’s infringement
`contentions are, at best, extrinsic evidence of the meaning of the claim
`terms, and extrinsic evidence is not favored over intrinsic evidence. See
`Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-
`00424, slip op. at 15 (PTAB Jan. 14, 2014) (Paper 16).
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`the United States district courts in construing the terms of these challenged
`claims. Id. at 4–5. As explained by another panel of the Board, however,
`the difference in claim construction standards arises from the ability of a
`patent owner in a covered business method proceeding to amend its claims
`and from the fact that there is no presumption of validity before the Office.
`See SAP America, Inc. v. Versata Software, Inc., CBM2012-00001, slip op.
`at 7–19 (PTAB June 11, 2013) (Paper 70). Therefore, Patent Owner does
`not persuade us that, at this point in the proceeding, we should apply a
`standard other than broadest reasonable construction when construing the
`challenged claims of the ’110 Patent.
`Petitioner argues the construction for various claim terms, including
`the preambles of claims 1 and 22; certain non-functional descriptive material
`in claims 13–15, 31, and 44; “user and/or merchant identifier means” in
`claim 1; and “communications means” in claim 1. Pet. 9–15. Apart from
`general objections to Petitioner’s proposed claim constructions, Patent
`Owner does not specifically contest Petitioner’s proposed claim
`constructions. See Prelim. Resp. 2–5.
`After reviewing the Petition, including its supporting evidence, and the
`Preliminary Response, we are not persuaded by Petitioner’s arguments
`regarding the preambles of claims 1 and 22. Pet. 10–11. The preamble of
`claim 1 provides antecedent basis for the following terms that appear in the
`body of the claim: “at least one list,” “at least one item or group of items,”
`“a remotely located order processing system,” “one or more merchants,” and
`“an item code.” Ex. 1001, col. 14, ll. 46–51. Similarly, the preamble of
`claim 22 provides antecedent basis for “at least one desired item,” “a user,”
`“a user device,” “a plurality of merchant databases,” “a communications
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`link,” and “a unique identifying code.” Id. at col. 16, ll. 23–29. “When
`limitations in the body of the claim rely upon and derive antecedent basis
`from the preamble, then the preamble may act as a necessary component of
`the claimed invention.” Proveris Scientific Corp. v. Innovasystems, Inc.,
`739 F.3d 1367, 1372 (Fed. Cir. 2014). Nevertheless, we are persuaded by
`Petitioner’s argument that the term “user and/or merchant identifier means”
`in claim 1 is not a means-plus-function limitation. Pet. 13–14. For purposes
`of this decision and to the extent express claim construction is required here,
`we determine that Petitioner’s proposed constructions of the remaining claim
`terms reflect the broadest reasonable interpretation of those terms, consistent
`with the Specification of the ’110 Patent.
`
`2. Obviousness Over Combined Prior Art
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are “such
`that the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`Petitioner’s declarant, Dr. Taylor, states that
`
`[i]n patent cases involving information storage and
`retrieval over a network (including electronic commerce
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`implementations), the “person having ordinary skill in the art”
`in the early 1990’s is frequently determined to be a person
`having a 4-year degree in computer science (or its equivalent)
`with approximately two years of post-graduate study or
`equivalent work experience.
`
`
`Ex. 1011 ¶ 8; see Pet. 20. Patent Owner does not contest this description of
`a person of ordinary skill in the art. Therefore, for purposes of this decision,
`we accept Dr. Taylor’s description of a person of ordinary skill in the art.
`Under 37 C.F.R. § 42.304(b)(4), Petitioner must state in the Petition
`
`“[h]ow the construed claim is unpatentable under [35 U.S.C. § 103(a), and
`w]here the grounds for unpatentability are based on prior art, the petition
`must specify where each element of the claim is found in the prior art.” As
`noted above, Petitioner asserts the following three grounds of
`unpatentability:
`i.
`claims 1–3, 8–15, 17–19, 22, 24, 26–28, 31–36, 41, and 43–44
`are unpatentable under 35 U.S.C. § 103(a), over the combined
`teachings of Viescas, Filepp, and Peapod;
`ii.
`claims 1–3, 8–19, 22–28, 31–36, 41–44 are unpatentable under
`35 U.S.C. § 103(a), over the combined teachings of Viescas, Filepp,
`Peapod, and DeAngelis; and
`iii.
`claims 1–3, 8–19, 22–28, 31–36 and 41–44 are unpatentable
`under 35 U.S.C. § 103(a), over the combined teachings of Viescas,
`Peapod, and the admitted prior art of DeAngelis.
`In particular, Petitioner contends that each of the references—Viescas,
`
`Filepp, and Peapod—teaches or suggests all of the limitations of each of
`
`
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`independent claims 1 (Pet. 25–30) and 22 (id. at 42–51).4 Unlike the other
`asserted grounds, however, Petitioner contends that the combination of
`Viescas, Peapod, and the admitted prior art of DeAngelis does not rely on
`Filepp, because Filepp antedates the filing of the ’110 Patent by only about
`three months. Petitioner expresses concern that Patent Owner might swear
`behind Filepp. Pet. 66. Therefore, Petitioner requests that we consider the
`combination of Viescas, Peapod, and the admitted prior art of DeAngelis as
`an alternative ground of unpatentability for trial. Id. at 67.
`
`Petitioner contends that a person of ordinary skill in the art would
`have reason to combine these references because (1) Manual of Patent
`Examining Procedure (MPEP) 2143 teaches numerous reasons consistent
`with KSR for combining references (id. at 21–25) and (2) because Dr. Taylor
`opines that a person of ordinary skill in the art would find it obvious to
`combine these references (Ex. 1011 ¶¶ 49–55). We note, however, that (1)
`citation to the MPEP is insufficient rationale to combine the teachings of the
`cited references in an adjudicative proceeding, such as a covered business
`method patent review, and (2) Dr. Taylor provides no evidence to support
`this opinion. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763
`(“Affidavits expressing an opinion of an expert must disclose the underlying
`facts or data upon which the opinion is based.”). Thus, we find Dr. Taylor’s
`
`4 Petitioner does not contend expressly that Filepp teaches certain limitations
`of the preamble of claim 1 of the ’110 Patent. Pet. 25; cf. id. at 42–45
`(corresponding elements of claim 22 taught by Filepp). Nevertheless, Filepp
`describes the “internals” of the Prodigy system (see Ex. 1004) and Viescas
`describes “how-to-use” the Prodigy service for the prospective user (see Ex.
`1005). Pet. 18–19. Therefore, we understand Petitioner to contend
`implicitly that Filepp also teaches those limitations of the preamble of claim
`1 of the ’110 Patent.
`
`
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`opinion on this issue conclusory. Moreover, because neither Petitioner nor
`Dr. Taylor specifies what teachings of each reference a person of ordinary
`skill in the art would combine, we find Petitione