Trials@uspto.gov Paper No. 10 Paper No. 61
`
`571-272-7822
`Filed: September 18, 2014
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
` LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2013-00013
`Patent 8,037,158 B2
` ____________
`
`
`
`Before, KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`

`

`CBM2013-0013
`Patent 8,037,158 B2
`
`
`BACKGROUND
`
`On September 19, 2013, we entered a Decision to Institute (“Dec. to
`
`Inst.”) a trial in each of the following related proceedings: SAP America, Inc.
`
`v. Pi-Net International, Inc., Case IPR2013-00195, which concerns U.S.
`
`Patent No. 8,108, 492 B2 (“the ’492 Patent”), SAP America, Inc. v. Pi-Net
`
`International, Inc., Case IPR2013-00195, which concerns U.S. Patent No.
`
`5,987,500 (“the ’500 Patent”), and SAP America, Inc. v. Pi-Net
`
`International, Inc., Case CBM2013-00013, which concerns U.S. Patent No.
`
`8,037,158 B2 (“the ’158 Patent”). The ’492, ’500, and ’158 Patents have
`
`since been assigned by Pi-Net International to the inventor Lakshmi
`
`Arunachalam (“Patent Owner”).1 On September 10, 2014, Patent Owner
`
`filed a Mandatory Disclosure indicating that she is now acting pro se. Paper
`
`62. The ’492, ’500, and ’158 Patents share substantially the same
`
`specification.
`
`In this proceeding, we instituted trial on the following grounds
`
`asserted by Petitioner: Claims 1–3 and 11 as unpatentable under 35 U.S.C. §
`
`101; claims 1–6 and 11 as unpatentable under 35 U.S.C. § 112(b);2 claims
`
`1–3 and 11 as unpatentable under 35 U.S.C. § 103 over the combination of
`
`Computerworld3 and Lawlor;4 claims 1–3 and 11 as unpatentable under 35
`
`U.S.C. § 103 over the combination of EB5 and SFCU.6
`
`
`1 Assignment recorded at Reel/Frame 033684/0252 on September 9, 2014.
`2 35 U.S.C. § 112(b) applies to any patent application filed on or after
`September 16, 2012. We treat Petitioner’s challenge as one under 35 U.S.C.
`§ 112, second paragraph, which is substantially the same as 35 U.S.C.
`§112(b).
`3 The Cyberbanks, Computerworld, 80 (June 26, 1995) ProQuest
`Telecommunications, (“Computerworld”). Ex. 1007.
`
`
`
`2
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`

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`CBM2013-0013
`Patent 8,037,158 B2
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`
`In this Final Written Decision, we conclude that claims 1–3 and 11 do
`
`not recite patentable subject matter under 35 U.S.C. § 101 and are
`
`unpatentable under 35 U.S.C. § 103. We further conclude that claims 1–6
`
`and 11 are unpatentable under 35 U.S.C. § 112 ¶2.
`
`
`
`THE ’158 PATENT
`
`The Specification of the ’158 Patent is the same as the ’492 Patent,
`
`which we address in IPR2013-00194. Column and line references in this
`
`section are to the ’492 Patent.
`
`The ’492 Patent purports to provide “a method and apparatus for
`
`providing real-time, two-way transactional capabilities on the Web.” Ex.
`
`’492 Patent, Abstract. The ’492 Patent Specification states that “[a]
`
`‘transaction’ for purposes of the present invention includes any type of
`
`commercial or other type of interaction that a user may want to perform.”
`
`Id. at col. 5, ll. 32–35. The ’492 Patent also states that Figure 4A illustrates
`
`conceptually the user value chain, depicting the types of transactions and the
`
`channels through which the transactions are performed “today,” i.e., at least
`
`as early as the priority date of the application that led to the ’492 Patent. Id.
`
`at col. 5, ll. 29–35. Thus, Figure 4A represents a prior art value chain, rather
`
`than the invention.
`
`
`4 Lawlor et al., U.S. Patent No. 5,220,501, issued Jun. 15, 1993 (“Lawlor”).
`Ex. 1006.
`5 Allen H. Lipis, et al., Electronic Banking, The Stock Market, 4th Edition,
`1-220, (1985) John Wiley & Sons, New York (“EB”). Ex. 1004.
`6 www.thefreelibrary.com/_/print/PrintArticle.aspx?id=17104850, (last
`visited Mar. 15, 2013) Stanford Federal Credit Union Pioneers Online
`Financial Services, (“SFCU”). Ex. 1005.
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`
`Figure 4B illustrates an embodiment of the invention in which a Web
`
`merchant provides real-time transactional capabilities to users who access a
`
`merchant’s services through switching sites on Web servers or on non-Web
`
`network computer sites and cellular provider sites. Id. at col. 5, l. 55–col. 6,
`
`l. 1. The ’492 Patent Specification states that the embodiment shown in
`
`Figure 4B includes a service network running on top of a facilities network,
`
`namely the Internet, the Web, or e-mail networks. Id. at col. 5, ll. 59–60.
`
`The Specification further states that the following five components interact
`
`to provide the service network functionality: an exchange, an operator agent,
`
`a management agent, a management manager, and a graphical user interface.
`
`Id. at col. 6, ll. 1–5.
`
`The difference between the prior art subject matter of Figure 4A and
`
`embodiment of the invention in Figure 4B is shown in the “Service
`
`Channels.” In addition to the service channels in Figure 4A, Figure 4B
`
`illustrates a TransWeb7 Exchange that includes a Web page and point-of-
`
`service (POSvc) applications. The ’492 Patent states that “[a] POSvc
`
`application is an application that can execute the type of transaction that the
`
`user may be interested in performing.” Id. at col. 6, ll. 41–43. The type of
`
`services offered by a POSvc application is determined by each Web
`
`merchant. Id. at col. 7, ll. 10–11, 24–25.
`
`The Exchange can reside on a web server or on a separate computer
`
`system on the Internet with an Internet address. Id. at col. 6, ll. 25–28, ll.
`
`58–64. The Exchange conceptually includes a switching component and an
`
`
`7 The ’492 Patent refers to a TransWeb Exchange in Figure 4 and at column
`7, lines 63-65, describes the TransWeb™ Exchange as a proprietary
`protocol. Elsewhere the ’492 Patent uses the term Exchange.
`
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`object routing component, id. at col. 6, ll. 20–21, and may also include an
`
`operator agent that interacts with a management manager,id. at col. 6, ll. 28–
`
`30. As previously noted, the switching site need not be a Web server but
`
`may include non-Web network computer sites and cellular provider sites.
`
`Id. at col. 5, l. 64–col. 6, l. 1.
`
`When the Exchange receives a consumer's request for a transactional
`
`application, a graphical user interface displays on a Web page, a list of
`
`POSvc applications from which the user may select. Id. at col. 6, ll. 39–55.
`
`The ’492 Patent discloses that the embodiment of the invention supports
`
`hypertext markup language (HTML), Virtual Reality Markup Language,
`
`Java™, and other graphical user interface standards. Id. at col. 6, ll. 45–50.
`
`By selecting a POSvc to activate, the user can access services and
`
`perform transactions offered by that POSvc application, which can access
`
`back-office data repositories. Id. at col. 6, l. 65–col. 7, l. 4, ll. 10–50.
`
`The ’492 Patent states that the connection between the user and the
`
`services is managed by the Exchange, through an operator agent on a Web
`
`server that ensures the availability of distributed functions and capabilities.
`
`Id.at col. 7, ll. 4–9. However, as noted above, the ’492 Patent emphasizes
`
`that the Exchange may reside on a Web server or on a separate computer
`
`system with an Internet address. Id. at col. 6, ll. 25–28, 58–64. The ’492
`
`Patent also states that a management manager, which may be on the
`
`Exchange or on a separate computer system on the Internet, interacts with
`
`the operator agent on the Exchange. Id. at col. 7, ll. 56–61.
`
` The Exchange and a management agent may act in various roles,
`
`including client-server, peer-to-peer, or master-slave roles and constitute a
`
`value-added network (VAN) switch. Id. at col. 7, ll. 52–56. The VAN
`
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`switch provides multiprotocol object routing, depending on the VAN
`
`services chosen, using a proprietary protocol, the TransWeb™ Protocol
`
`(TMP). Id. at col. 7, ll. 62–65. However, the ’492 Patent does not describe
`
`TMP, except to state that it incorporates the same security features as the
`
`traditional Simple Network Management Protocol (SNMP). Id. at col. 7, ll.
`
`62–66. In addition, according to the ’492 Patent, TMP can incorporate s-
`
`HTTP, Java™, the WinSock API, or ORB with distributed on-line service
`
`information bases (DOLSIBs) to perform object routing. Id. at col. 8, ll. 4–
`
`7. Thus, object routing in the ’492 Patent is not limited to a specific
`
`implementation. The ’492 Patent, however, does not provide a description
`
`of the proprietary TMP or how TMP incorporates these alternative
`
`technologies.
`
`In describing the DOLSIB, the ’492 Patent states that networked
`
`object identities, each of which is assigned an Internet address based on the
`
`IP address of the node at which the networked object resides, identify
`
`information entries and attributes in the DOLSIB. Id. at col. 8, ll. 8–15. The
`
`Internet address assigned to a networked object identity branches in a
`
`hierarchical tree structure from a node, such as a Web server, and establishes
`
`the object as IP reachable. Id. at col. 8, ll. 16–23. The proprietary TMP
`
`utilizes this Internet address to uniquely identify and access the object from
`
`the DOLSB, although the mechanism TMP uses to accomplish this task is
`
`not described. Id. at col. 8, ll. 25–27. Each object has a name, a syntax that
`
`defines the abstract data structure corresponding to that object and encoding
`
`that defines how the object is represented by the object type syntax while
`
`being transmitted over the network. Id. at col. 8, ll. 27–39. The ’492 Patent
`
`does not describe the syntax or encoding of objects.
`
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`The ’492 Patent also discusses a conceptually layered architecture of
`
`the VAN switch in the context of “services.” Id. at col. 8, ll. 41–43. It is not
`
`clear if the “services” in this conceptually layered architecture constitute the
`
`“service network” previously discussed. However, the ’492 Patent provides
`
`no physical description of such a network.
`
`A “boundary service” interfaces the VAN switch, the Internet and the
`
`Web and end user media devices, e.g., PCs, television, telephones, as well as
`
`interfacing to an on-line service provider. Id. at col. 8, ll. 43–48. As an OSI
`
`application layer switch, the “switching service” represents the core of the
`
`VAN switch and facilitates connectivity with the Internet (a public switched
`
`network) and private networks, including back office networks. Id.at col. 8,
`
`ll. 52–60. The switching service routes user connections to remote VAN
`
`switches, multiplexes, and prioritizes requests and provides flow control. Id.
`
`at col. 8, ll. 54–59. Users use “management services” to manage network
`
`resources and perform administrative and maintenance functions. Id. at col
`
`8, l. 64–col. 9, l. 8.
`
`The “application service” contains application programs that deliver
`
`customer services, such as POSvc applications. Id. at col. 9, ll. 9–12. We
`
`note that the terms “application service” and “VAN service” are referenced
`
`in the ’492 Patent using reference designator 704. As mentioned above, the
`
`’492 Patent describes “services” of the layered architecture of a VAN
`
`switch. The description of the “VAN service” as providing functions
`
`including communication services for both management and end users of the
`
`network (id. at col. 9, ll. 20–23), indicates that the functions carried out by
`
`the VAN switch may be carried out in a POSvc application. However, the
`
`type of customer services offered by a POSvc application is determined by
`
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`each Web merchant. Id. at col. 7, ll. 10–11, 24–25. Thus, as opposed to the
`
`VAN service, we understand the “application service” is the service being
`
`provided by the application, e.g., desired banking functions, rather than a
`
`switching or communications functions.
`
`ILLUSTRATIVE CLAIM
`
`Claim 1 of the ’158 Patent, reproduced
`
`below, is illustrative.
`
`1. A method for performing a real time Web transaction from a
`Web application over a digital network atop the Web, the
`method comprising:
`providing a Web page for display on a computer system
`coupled to an input device;
`providing a point-of-service application as a selection
`within the Web page, wherein the point-of-service
`application provides access to both a checking and
`savings account, the point-of-service application
`operating in a service network atop the World Wide
`Web;
`accepting a first signal from the Web user input device to
`select the point-of-service application;
`accepting subsequent signals from the Web user input
`device; and
`transferring funds from the checking account to the
`savings account in real-time utilizing a routed
`transactional data structure that is both complete and
`non-deferred, in addition to being specific to the
`point-of-service application, the routing occurring in
`response to the subsequent signals.
`
`CLAIM CONSTRUCTION
`
`We address claim constructions that are material to this Final Written
`
`Decision as follows:
`
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`
`Web application
`
`We addressed the construction of this term in our Final Written
`
`Decision in IPR2013–00194. See SAP Am., Inc. v. Arunachalam, Case
`
`IPR2013-00194, slip op. at 11-14 (PTAB Sep. 18, 2014) (Paper 67). We
`
`apply the same construction in this proceeding. For the reasons discussed in
`
`IPR2013-00194, we construe “Web application” to mean a computer
`
`program to perform a certain type of work using the Web.
`
`Point-of-service (POSvc) application
`
`We addressed the construction of this term in our Final Written
`
`Decision in IPR2013–00194. See SAP Am., Inc. v. Arunachalam, Case
`
`IPR2013-00194, slip op. at 14-16 (PTAB Sep. 18, 2014) (Paper 67). We
`
`apply the same construction in this proceeding. Thus, we construe POSvc
`
`application to mean a software program that facilitates execution of
`
`transactions requested by a user.
`
`Service network atop the Web
`
`We addressed the construction of “service network (running on top of
`
`a facilities network)” in our Final Written Decision in IPR2013-00194. See
`
`SAP Am., Inc. vArunachalam, Case IPR2014-00194, slip op. at 16-18
`
`(PTAB Sep. 18, 2014) (Paper 67). In that proceeding we construed that
`
`“service network” to mean a network on which services, other than
`
`underlying network communication services, are provided. We apply a
`
`similar construction to this similar term in this proceeding. We construe
`
`“service network running atop the World Wide Web” to mean a network on
`
`which services other than underlying network communications services are
`
`provided over the Web.
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`
`Utilizing a routed transactional data structure that is both complete
`and non-deferred
`
`In our Decision to Institute, we construed this term to mean using a
`
`data structure that facilitates switching a user who selects a transactional
`
`application to a service provider program that provides immediate
`
`processing. Dec. to Institute 15–16. We apply this broadest reasonable
`
`construction for purposes of our analysis under 35 U.S.C. § 101 and 35
`
`U.S.C. §103. However, as discussed further herein, we conclude that the
`
`term is indefinite under 35 U.S.C. § 112, second paragraph.
`
`Patent Owner proposes to construe this term to mean “Using a type of
`
`transactional object that is routed and which contains the information
`
`necessary for a complete, real-time transaction.” Paper 33 (“PO Resp.”) 28.
`
`Patent Owner’s attempt to parse this term into individual elements is flawed
`
`by its contention that the term “data structure” means a type of object. PO
`
`Resp. 32–33. The Specification states that that the syntax of an object
`
`defines the abstract data structure corresponding to that object type. Ex.
`
`1001, col. 8, ll. 27-29. Thus, while an object has a data structure and that
`
`object’s data structure depends upon the object’s type, the Specification does
`
`not state that a data structure is an object. Instead, the Specification states
`
`that different types of objects may have different data structures. Patent
`
`Owner further argues that the terms “routed” and “transactional” do not
`
`require further construction. PO Resp. 33-34. However, the Specification
`
`does not explain what it means for a structure to be “routed” or
`
`“transactional,” e.g., as opposed to non-routed or non-transactional.
`
`Therefore, we decline to adopt Patent Owner’s proposed construction.
`
`Patent Owner argues that “routed” does not mean switching a user,
`
`but instead means routing an object and its corresponding data structure. Id.
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`at 30. However, the claim does not recite routing an object, it recites a
`
`routed transactional data structure. Thus, we are not persuaded by Patent
`
`Owner’s arguments that “routing” means “the selective flow of data in the
`
`application layer of the OSI model.” Id. at 33-34. Patent Owner argues that
`
`a “complete” data structure is one that has all the information necessary for
`
`the transaction. PO Resp. 35. There is no support in the Specification for
`
`Patent Owner’s assertion. As discussed above, the syntax of an object type
`
`defines the abstract data structure corresponding to that object type. Ex.
`
`1001, col. 8, ll. 27-29. Thus, a data structure that is “complete” has the
`
`elements corresponding to the syntax of an object type. In this way, a data
`
`structure, which may vary among object types, facilitates the processing of
`
`information. The Specification does not require that any particular object or
`
`object type have all the information for a transaction. The example in the
`
`Specification of an object type, i.e., a car, and an instantiation of that object,
`
`a particular model car, does not contain all the information necessary for a
`
`transaction, e.g., pricing, options, buyer, seller. Id. at col. 8, ll. 20-27.
`
`As discussed further in this decision, based on Patent Owner’s
`
`contentions and the language of the Specification, we conclude that the term
`
`“routed transactional data structure” fails to inform a person of ordinary skill
`
`in the art of the scope of the claim with reasonable certainty and is therefore
`
`indefinite under 35 U.S.C. § 112 , second paragraph. See, Nautilus, Inc. v.
`
`Biosig, Insts., Inc., 134 S. Ct. 2120, 2129–30 (2014) . However, to the
`
`extent that the claim can be construed in order to analyze its relationship to
`
`the prior art in this proceeding and whether the claim recites patent eligible
`
`subject matter under 35 U.S.C. § 101, we have reconsidered our use of the
`
`expression “switching a user” in the construction we applied in our Decision
`
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`CBM2013-0013
`Patent 8,037,158 B2
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`to Institute. Dec. to Inst. 15-16. Claim 1 recites that the “routed
`
`transactional data structure” is specific to a POSvc application, which is a
`
`software program that facilitates execution of transactions requested by a
`
`user. Upon reconsideration, we conclude that “utilizing a routed transaction
`
`data structure” encompasses using a data structure that facilitates switching
`
`the processing of information associated with a user selected transactional
`
`application that provides immediate processing.
`
`Object routing
`
`We construed “object routing” in claim 4 to mean the use of
`
`individual network objects to route a user from a selected transactional
`
`application to the processing provided by the service provider. Dec. to Inst.
`
`17. Patent Owner contends that we should further limit the construction of
`
`this term to routing of individual networked objects from a selected
`
`transactional application on a Web page. PO Resp. 38. Object routing is
`
`recited in claim 4. Independent claim 1, from which claim 4 depends,
`
`already recites providing POSvc applications for selection on a Web page.
`
`Patent Owner further contends that the claim is drawn to routing of objects,
`
`not users, and that “routing” requires no construction. Id. at 3839.
`
`However, claim 4 recites that “object routing” is used to complete the
`
`transfer of funds in a Web application. The claim does not recite that
`
`“objects” are routed. In addition, as we noted in our discussion of the term
`
`“utilizing a routed transaction data structure that is both complete and non-
`
`deferred,” networked objects are associated with IP addresses. The
`
`Specification appears to disclose processing that transfers and retrieves
`
`information from various IP addresses, but it is not clear that objects
`
`themselves are routed from one IP address to another. In addition, the
`
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`Specification discloses multi-protocol object routing that can incorporate
`
`several technologies, Ex. 1001, col. 7, ll.55–63, and that the Exchange that
`
`forms part of the VAN switch may be on the same or a different computer as
`
`that of the Web merchants, id. at col. 6, ll. 49–55. Thus, we decline to adopt
`
`Patent Owner’s construction and apply the above construction we adopted in
`
`our Decision to Institute.
`
`TECHNICAL INVENTION
`
`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. 37 C.F.R. § 42.301(a). A covered business method patent “does not
`
`include patents for technological inventions.” Id. A technological invention
`
`is determined by considering whether the subject matter of a particular claim
`
`as a whole recites a technical 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).
`
`Patent Owner contends that claim limitations such as a Web
`
`application, a point-of-service (“POSvc”) application operating in a service
`
`network atop the World WideWeb, and a routed transactional data structure,
`
`indicate that the claim is directed to a technological invention. Patent
`
`Owner’s contentions are based on claim constructions that we have declined
`
`to adopt.
`
`Claim 1 is directed to performing a real-time Web transaction. The
`
`fact that the claim recites the transaction is performed from a Web
`
`application or over a particular network does not mean that the claim is
`
`drawn to a technological invention. Claim 1 is not drawn to the Web
`
`
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`application or the network. It is drawn to a method of performing the
`
`transaction. We do not find that the recited limitations include technical
`
`features that result in claim 1 being drawn to a technological invention.
`
`The steps of the method recited in claim 1 include providing a
`
`webpage for display, providing at least one application the user can select to
`
`access checking and savings accounts, accepting signals from an input
`
`device, and transferring funds. There is no technological invention in these
`
`steps. Patent Owner argues, however, that certain elements of these steps
`
`transform the claim into a technological invention. For example, Patent
`
`Owner contends that, because claim 1 recites a “Web application” and a
`
`“POSvc application” operating over “a service network atop the web,” claim
`
`1 recites a network that does not involve underlying network communication
`
`services and hence is a technological invention. PO Resp. 6. Patent Owner
`
`further argues that claim 1 solves a technological problem because the ’158
`
`Patent describes limitations in the prior art as lacking a mechanism for
`
`performing a robust, real-time transaction with a bank. Id. Patent Owner’s
`
`citations to the Specification, however, describe purported shortcomings,
`
`e.g., disadvantages of CGI scripts, in performing transactions. The
`
`discussion of such shortcomings in the prior art does not change the nature
`
`of claim 1 as being drawn to a method of performing a transaction by
`
`carrying out certain non-technical steps. As we have construed the claim,
`
`the recited POSvc application is a software program that facilitates
`
`execution of transactions requested by a user and the recited service network
`
`is a network on which services other than underlying network
`
`communications services are provided over the Web. Utilizing a routed
`
`transactional data structure that is both complete and non-deferred means
`
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`
`using a data structure that facilitates switching the processing of information
`
`associated with a user selected transactional application that provides
`
`immediate processing. A user’s selection of a transactional application
`
`transfers processing to a service provider program which, in turn, provides
`
`immediate processing. None of these features changes the non-
`
`technological nature of claim 1. Thus, the subject matter of claim 1 is
`
`directed to a non-technical invention, i.e., simply transferring funds.
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`CHALLENGES UNDER 35 U.S.C. § 101
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`Patent Owner disputes Petitioner’s asserted ground that claims 1–3
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`and 11 recite subject matter that cannot be patented under 35 U.S.C. § 101.
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`To determine whether a claim recites patent-ineligible subject matter,
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`the first step is to determine whether the subject claim is drawn to a law of
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`nature, a natural phenomenon, or an abstract idea. Alice Corp. Pty, Ltd. v.
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`CLS Bank Intern, 134 S. Ct. 2347, 2356 (2014) (citing Mayo Collaborative
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`Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1296–97 (2012)).
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`If the claim is directed to patent-ineligible subject matter, the second step is
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`to consider the elements of each claim both individually and “as an ordered
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`combination” to determine whether the additional elements “transform the
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`nature of the claim” into a patent-eligible application. Id. This second step
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`of the analysis searches for an element or combination of elements that is
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`“sufficient to ensure that the patent in practice amounts to significantly more
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`than a patent upon the [ineligible concept] itself.” Id. (internal quotations
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`omitted).
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`Applying the broadest reasonable construction, claim 1 recites a
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`method of carrying out a transaction from a Web application (a computer
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`program to perform a certain type of work on the Web) in which a user
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`selects a POSvc application (a software program that facilitates execution of
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`transactions requested by a user). Thus, claim 1 recites an abstract method,
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`i.e., performing a real-time Web transaction by displaying and providing at
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`least one application a user selects to access checking and savings accounts,
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`and transferring funds (i.e., debiting or crediting) in response to user signals
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`from an input device. Noting our conclusion in the Decision to Institute that
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`claims limited to “object routing” recite statutory subject matter, Patent
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`Owner argues that claims 1–3 and 11 also recite statutory subject matter
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`because they recite a “routed transactional data structure.” PO Resp. 13–14.
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`Patent Owner’s arguments are based on a claim construction of
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`“routed transactional data structure” that we declined to adopt, and on a
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`misapprehension of our reasons for concluding claims reciting object routing
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`are not barred under 35 U.S.C. § 101. Patent Owner argues that the “data
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`structure” of claim 1 is a physical software structure. PO Resp. 14. The
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`only mention of “data structure” in the Specification is a statement that
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`“[t]he syntax of an object type defines the abstract data structure
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`corresponding to that object type.” Ex. 1001, col. 8, ll. 27–39 (emphasis
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`added). Thus, the Specification states that, even if an object is considered to
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`be physical, its data structure is abstract. In addition, although the syntax of
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`an object type may impose a data structure on objects of a particular type,
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`the Specification does not mention a transactional object type.
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`In our Decision to Institute, we noted that “object routing” requires
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`the use of individual networked objects to route a user from a selected
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`transactional application to the processing provided by the service provider.
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`In contrast, the limitation “routed transactional data structure,” does not
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`impose a meaningful limit on the scope of claims 1–3 and 11 because it does
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`not play a significant part in permitting the claimed method to be performed.
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`See SiRF Tech. Inc. v. Int’l Trade Comm., 601 F.3d 1319, 1333 (Fed. Cir.
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`2010). For example, as explained below in our 35 U.S.C. § 112 , second
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`paragraph analysis, the Specification does not describe clearly how a data
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`structure is transactional, as opposed to non-transactional, or routed, as
`
`opposed to non-routed. As discussed above, to the extent that “utilizing a
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`routed transactional data structure that is both complete and non-deferred,”
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`can be construed, we have interpreted it to mean using a data structure that
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`facilitates switching the processing of information associated with a user–
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`selected a transactional application that provides immediate processing.
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`Switching the processing of information from one resource to another, such
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`as from one program or data base to another, is a well-known abstract
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`concept that is not limited to any particular technical approach, such as
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`object routing, as recited in claim 4.
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`The remaining limitations in claim 1 do not contribute any patent–
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`eligible subject matter. The service network atop the Web, which we have
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`construed to mean a network on which services other than underlying
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`network communications services are provided over the Web, is an abstract
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`concept under which customers and service providers communicate over a
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`network so that the service provider can service the customer, in this case to
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`allow the user to transfer funds between checking and savings accounts.
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`This does not impose a meaningful limitation on the scope of the claim. See
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`SiRF Tech, 601 F.3d at 1333. Thus, we conclude that claim 1 does not recite
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`patent–eligible subject matter.
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`Claims 2, 3, and 11 do not add limitations that contribute to patent
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`eligibility. Thus, we conclude that Petitioner has demonstrated that claims
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`1–3 and 11 do not recite patentable subject matter under 35 U.S.C. § 101.
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`
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`CHALLENGES UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
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`There is no dispute that the term “routed transactional data structure”
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`is not used or discussed in the Specification. In our Decision to Institute, we
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`instituted trial on the basis that the term “routed transactional data structure,”
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`which is used in all the challenged claims, is indefinite under 35 U.S.C. §
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`112 because we were persuaded that a potential competitor could not
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`determine whether or not he is infringing. Dec. to Institute 34 (citing
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`Morton Int’l. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993)).
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`Patent Owner argues that the constituent parts of the term are individually
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`easily construed, and as such, the phrase is easily construed as well PO
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`Resp. 66 However, Patent Owner acknowledges that the construction of this
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`term may be difficult and that reasonable minds may differ. Id. at 67-68.
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`Patent Owner argues that a claim is ambiguous only if it is “insolubly
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`ambiguous.” PO Resp. 67. That standard, however, has been rejected by
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`the Supreme Court. In Nautilus, the Court held that § 112, second paragraph
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`requires that a patent’s claims, viewed in light of the specification and
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`prosecution history, inform those skilled in the art about the scope of the
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`invention with reasonable certainty. Nautilus, 134 S. Ct. at 2129-30. The
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`court not