Trials@uspto.gov
`571-272-7822
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` Paper No. 47
` Entered: September 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SALESFORCE.COM, INC.,
`Petitioner,
`
`v.
`
`VIRTUALAGILITY, INC.,
`Patent Owner
`____________
`
`Case CBM2013–00024
`Patent 8,095,413 B1
`____________
`
`
`
`
`Before JAMESON LEE, GEORGIANNA W. BRADEN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Salesforce.com, Inc. (“Petitioner”) filed a Petition (Paper 4, “Pet.”)
`
`requesting covered business method patent review of claims 1–21 of U.S.
`
`Patent No. 8,095,413 B1 (Ex. 1001, “the ’413 patent”) pursuant to § 18(a) of
`
`the Leahy-Smith America Invents Act (“AIA”).1 VirtualAgility, Inc.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 13, “Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 324, we instituted this proceeding as to claims 1–21
`
`on fewer than all of the grounds of unpatentability alleged in the Petition.
`
`(Paper 16, “Dec. to Inst.”).
`
`After institution of this proceeding, Patent Owner filed a Response
`
`(Paper 25, “Resp.”) to the Petition and a contingent motion to amend the
`
`claims (Paper 26, “Mot. to Amend”). Petitioner filed a Reply (Paper 29) to
`
`Patent Owner’s Response and an opposition to the contingent motion to
`
`amend the claims (Paper 30, “Opp.”). Patent Owner filed a Reply in support
`
`of its motion to amend the claims. Paper 32 (“PO Reply”).
`
`Counsel for both Petitioner and Patent Owner were present and
`
`presented argument at an oral hearing held on July 14, 2014. 2
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). In this final
`
`written decision, issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R.
`
`§ 42.73, we hold that challenged claims 1–21 of the ’413 patent are
`
`unpatentable under 35 U.S.C §§ 101 and 102. We also deny Patent Owner’s
`
`contingent motion to amend the claims.
`
`
`
`
`
`
`1 Pub. L. No. 112–29, 125 Stat. 284, 329 (2011).
`2 A transcript (“Tr.”) of the oral hearing is included in the record. Paper 46.
`
`
`
`2
`
`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`B. The ’413 Patent
`
`The ’413 patent is directed generally to a method and apparatus for
`
`managing collaborative activity (e.g., strategic planning and project
`
`management). Ex. 1001, col. 1, ll. 32–33, col. 5, ll. 25–31. As clarified in
`
`the prosecution history, the ’413 patent aids in the management of
`
`collaborative activity by using a computer database created with data, where
`
`the data represents models of the collaborative activity. Ex. 1004, 116. The
`
`models, which include model entities, are then arranged into hierarchies, and
`
`the data regarding collaborative activity can be shared between different
`
`people. Ex. 1001, col. 1, ll. 27–31; col. 5, ll. 25–33.
`
`For one embodiment, the specification describes a method of
`
`acquiring a first set of data that can represent a first model entity. Ex. 1001,
`
`col. 2, ll. 50–54. The first model entity can represent an organization of
`
`people (id. at col. 2, ll. 39–40), customer relationships (id. at col. 2, ll. 51–
`
`52), a program management office (id. at col. 3, ll. 38–39), or a scalable
`
`process (id. at col. 4, ll. 29–30). The first set of data can include data related
`
`to customer information (id. at col. 2, ll. 62–67), company capability
`
`information (id. at col. 3, ll. 16–26), or economic information (id. at col. 3,
`
`ll. 25–34; col. 3, l. 65–col. 4, l. 4; col. 4, ll. 15–20). The data can also be a
`
`list of goals for an organization or for a project. Id. at col. 5, ll. 42–44.
`
`The claimed method associates the first set of data (i.e., first model
`
`entity) with a second set of data, so that the two model entities are
`
`considered related. Ex. 1001, col. 2, ll. 43–44. The second set of data
`
`represents a second model entity. Id. The second model entity can represent
`
`a portfolio of management concepts. Id.
`
`
`
`3
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`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`The model entities are organized into a plurality of hierarchies, and a
`
`model can belong to more than one hierarchy. Ex. 1001, col. 9, ll. 33–37;
`
`col. 11, ll. 12–14; claims 1, 8. For example, once data regarding project
`
`goals or cost have been loaded into a model entity, the information can be
`
`presented as a goal and/or cost hierarchy. According to the ’413 patent, the
`
`plurality of hierarchies can be managed by a manager hierarchy (i.e., a
`
`manager module). Id. at col. 5, l. 44–col. 6, l. 58. The manager hierarchy
`
`can be used to oversee a project, organize project goals, and allocate
`
`resources for a project. Id. at col. 5, l. 49–col. 6, l. 32. The manager
`
`hierarchy presents a constant view of a hierarchy of goals and contributing
`
`goals, and updates the goals based on changing circumstances. Figure 3 of
`
`the ’413 patent is reproduced below:
`
`As shown in Figure 3, the goal hierarchy can list (i) an organization’s
`
`total goals and any contributing goals affecting the enterprise, or (ii) an
`
`organization’s priorities, such as top goals (see Fig. 14) or a specific goal
`
`
`
`
`
`4
`
`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`(see Fig. 15). Ex. 1001, col. 11, ll. 12–18. According to the ’413 patent, if
`
`an organization is addressing budget issues, then a user can use the claimed
`
`method to sort by goal or project cost (see Fig. 19), or by priority or return
`
`on investment (“payback”) (see Fig. 20). Id. at col. 11, ll. 27–31. The
`
`sorted information can be provided to help the user decide where to commit
`
`resources based on factors such as benefit and risk. Id.
`
`The ’413 patent also discloses facilitating strategic planning by using
`
`a company comparison module and a baseline module that facilitates users
`
`setting new goals, displaying already existing goals, and/or identifying and
`
`developing potential new goals. Id. at col. 10, ll. 11–44.
`
`C. Illustrative Claims
`
`Claims 1, 7, 8, and 20 are independent claims. Claims 1 and 8,
`
`reproduced below, are illustrative of the challenged claims:
`
`1. A system for supporting management of a collaborative activity
`by persons
`involved
`therein,
`the persons not being
`specialists in information technology, the system being
`implemented using a processor and a storage device
`accessible to the processor, and the system comprising:
`a representation of a model of the collaborative activity in the
`storage device, the model of the collaborative activity
`including model entities, the model entities providing access
`to information concerning the collaborative activity, being
`organized into a plurality of hierarchies having a plurality of
`types, and a given model entity being capable of
`simultaneously belonging to a hierarchy having one of the
`types and a hierarchy having another of the types; and
`said processor being configured to provide a graphical user
`interface to a person of the persons for providing outputs to
`the person and responding to inputs from the person by
`performing operations on a model entity as limited by a type
`of access which the person has to the model entity, the
`operations including controlling access to the model entity,
`
`
`
`5
`
`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`creating, modifying, and/or deleting the model entity,
`assigning the model entity to a location in a hierarchy,
`accessing and/or modifying the information concerning the
`collaborative activity via the model entity, viewing model
`entities as ordered by a hierarchy to which the entities
`belong, and viewing model entities as ordered by a value in
`the information concerning the collaborative activity to
`which the entities give access.
`
`
`
`8. A method of supporting management of a collaborative activity
`
`by persons
`involved
`therein,
`the persons not being
`specialists in information technology and the method being
`performed in a system which includes a processor and a
`storage device accessible to the processor, the storage device
`containing a model of the collaborative activity, the model
`including representations of model entities, a given
`representation of a model entity being capable of
`simultaneously belonging
`to hierarchies
`including a
`hierarchy and another hierarchy, and the representations of
`model entities providing access to information relating to the
`collaborative activity, the processor providing an interface
`for a person of the persons, and the method comprising the
`steps performed in the system of:
`receiving a definition of a model entity belonging to the model
`of the collaborative activity from a person of the persons via
`the interface and responding thereto by producing a
`representation of the model entity in the storage device; and
`receiving a first indication of a first hierarchical relationship
`between
`the model entity and another model entity
`belonging to the hierarchy from the person via the interface
`and responding thereto by relating the model entity to the
`other model entity in the hierarchy and
`receiving a second
`indication of a second hierarchical
`relationship between the model entity and a third model
`entity belonging to the other hierarchy from the person via
`the interface and responding thereto by relating the model
`entity to the third model entity in the other hierarchy.
`
`
`
`6
`
`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`D. Prior Art Reference Alleged to Support Unpatentability
`
`The following prior art reference is asserted in the instituted ground:
`
`Name
`
`Description
`
`Date
`
`Exhibit
`
`Ito
`
`
`US 5,761,674
`
`June 2, 1998
`
`Ex. 1007
`
`E. Alleged Grounds of Unpatentability Instituted in Trial
`
`The following table summarizes the challenges to patentability that
`
`were instituted for covered business method patent review:
`
`Reference(s)
`
`Basis
`
` § 101
`§ 102(a)
`
`Claims
`Challenged
`1-21
`1-21
`
`
`Ito
`
`
`F. Covered Business Method Patent
`
`We determined, in the Decision on Institution, that the ’413 patent is a
`
`covered business method patent as defined in § 18(a)(1)(E) of the AIA and
`
`37 C.F.R. § 42.301, because at least one claim of the ’413 patent is directed
`
`to a covered business method. Dec. to Inst. 9–18. Accordingly, we
`
`concluded the ’413 patent is eligible for a covered business method patent
`
`review. Id.
`
`In its Response, Patent Owner contends the Board does not have
`
`jurisdiction over the ’413 patent, because the ’413 patent is not directed to a
`
`financial product or service (Resp. at 14–20; Tr. 35:19–23), but is an
`
`invention that implements a technological solution (id. at 20–22). Patent
`
`Owner asserts that, although the claimed invention could be used by
`
`financial institutions for managing financial services, covered business
`
`method patent review is inappropriate for inventions directed to basic
`
`business activities that might be used merely to support activities of a
`
`
`
`7
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`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`financial institution. Resp. at 15. According to Patent Owner, Congress
`
`intended covered business method patent reviews to apply only to a narrow
`
`class of patents. Id. at 15–16. Patent Owner reasons that claims should not
`
`be subject to covered business method patent review “simply because [the
`
`claims] might be used by those that offer financial products or services, even
`
`though they are not a necessary component of a financial activity.” Id.
`
`We are not persuaded by Patent Owner’s contention. The ’413 patent
`
`discloses use of the claimed method and apparatus for the practice,
`
`administration, or management of collaborative activity that can include
`
`financial aspects or activities of an organization (Ex. 1001, col. 5, ll. 1–8;
`
`col. 11, ll. 27–31; col. 14, ll. 21–31; Figs. 19–20), thereby meeting the
`
`requirements of the AIA for covered business method patent review (AIA
`
`§ 18(d)(1)). Several examples from the ’413 patent specification,
`
`reproduced below, include financial aspects or activities of an organization:
`
`[I]f the topic is budgets, the user can sort by goal or project cost
`(see FIG. 19), or by priority or return on investment
`(“payback”) (see FIG. 20) and can be provided with
`information that can help the user decide where to commit
`resources based on factors such as benefit and risk.
`
`Ex. 1001, col. 11, ll. 27–31; Figs. 19–20 (emphasis omitted).
`
`The fundamental components may include an economics
`component . . . [which] may include a description of a profit
`and loss aspect of the scalable process or a description of an
`investments aspect of the scalable process.
`
`Id. at col. 5, ll. 1–8.
`
`[A] user can readily access financial information related to
`decision making and priorities.
`.
`.
`. [E]conomic return
`anticipated for achievement of the particular goal or initiative.
`
`
`
`8
`
`

`

`CBM2013–00024
`Patent 8,095,413 B1
`
`Id. at col. 14, ll. 21–27.
`
`Access to information, such as that described above, that is
`organized in a usable manner allows people within the
`organization to assess the relative value of one goal versus
`another or the potential profit or loss of a project.
`
`Id. at col. 14, ll. 29–31; col. 5, ll. 1–8.
`
`The specification also discloses that the hierarchy organization allows
`
`goals or initiatives to be sorted by category, such as costs, thereby helping
`
`people decide whether the level of investment required can be afforded. Id.
`
`at col. 16, ll. 48–53. Additionally, according to the specification, the
`
`claimed invention allows management teams “to quickly plan, design, and
`
`work on a common portfolio of strategic goals and initiatives” in order to
`
`“make the business grow and prosper.” Id. at col. 5, ll. 28–31. The multiple
`
`disclosures in the ’413 patent of activity that includes financial aspects or
`
`activities of an organization indicates the claimed methods and apparatus
`
`can be used in the practice, administration, or management of a financial
`
`product or service. Thus, we determine a covered business method patent
`
`review of the challenged claims is appropriate.
`
`Furthermore, contrary to Patent Owner’s view of the legislative
`
`history, the legislative history of the AIA indicates that the phrase “financial
`
`product or service” is not limited to the products or services directly related
`
`to the financial services industry and is to be interpreted broadly. See 37
`
`C.F.R. § 42.301(a). Senator Schumer, for example, stated that a “patent
`
`need not recite a specific financial product or service. Rather the patent
`
`claims must only be broad enough to cover a financial product or
`
`service. . . . Likewise, if a patent holder alleges that a financial product or
`
`service infringes its patent, that patent shall be deemed to cover a ‘financial
`
`
`
`9
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`

`

`CBM2013–00024
`Patent 8,095,413 B1
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`product or service’. . . .” 157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011)
`
`(statement of Sen. Schumer).
`
`Patent Owner also contends covered business method patent review is
`
`not appropriate for patent claims grouped in class 705 during prosecution by
`
`the United States Patent and Trademark Office (“USPTO”). Resp. 16–17;
`
`Tr. 36:7–25. Class 705 is the USPTO’s classification for patents directed to
`
`data processing in the following areas: financial, business practice,
`
`management, or cost/price determination. See Class 705 (Jan. 2012) at
`
`http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf
`
`(classification schedule listing subclass titles within Class 705 Data
`
`Processing: Financial, Business Practice, Management, or Cost/Price
`
`Determination). Patent Owner’s position is unsupportable, because a
`
`determination of whether a patent is eligible for covered business method
`
`patent review is governed by 35 U.S.C. § 324(a), 37 C.F.R. § 42.301, and §
`
`18 of the AIA, not by the classification of the patent. Moreover, contrary to
`
`Patent Owner’s contention, the legislative history of the AIA, indicates that
`
`“patents subject to covered business method patent review are anticipated to
`
`be typically classifiable in Class 705.” 77 Fed. Reg. at 48,739; see 157
`
`Cong. Rec. S1368, S1379 (daily ed. March 8, 2011) (statement of Sen. Kyl).
`
`Thus, we are unpersuaded by Patent Owner’s position.
`
`Patent Owner lastly contends covered business method patent review
`
`is intended only for patents that did not undergo thorough review by the
`
`USPTO for prior art and other issues. Resp. 15 (citing Ex. 2004, 3). The
`
`
`
`10
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`

`CBM2013–00024
`Patent 8,095,413 B1
`
`standard for instituting a covered business method patent review is set forth
`
`in 35 U.S.C. § 324(a):3
`
`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.
`
`The statute does not allow for review of patent applications; instead,
`
`review may only be instituted for issued patent claims. Thus, the claims
`
`necessarily would have been reviewed and allowed by an examiner.
`
`Moreover, the statue does not recite a presumption of validity for issued
`
`patent claims. Rather, we are directed to institute a covered business method
`
`patent review if, after consideration of both the petitioner and patent owner’s
`
`preliminary response, we determine it is more likely than not at least one of
`
`the challenged patent claims is unpatentable. Therefore, we find Patent
`
`Owner’s position to be unsupportable in light of the plain language of the
`
`statute.
`
`For the foregoing reasons, we disagree with Patent Owner and find no
`
`error in the covered business method patent determination set forth in the
`
`Decision on Institution.
`
`
`3 See Section 18(a)(1) of the AIA, which provides that the transitional
`program for covered business method patents will be regarded as a post-
`grant review under chapter 32 of title 35 United States Code and will employ
`the standards and procedures of a post-grant review, subject to certain
`exceptions.
`
`
`
`11
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`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`
`claims are unpatentable under §§ 101 and 102. We begin our analysis with
`
`claim construction. Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
`
`Canada, 687 F.3d 1266, 1273–74 (Fed. Cir. 2012) (“[I]t will ordinarily be
`
`desirable—and often necessary—to resolve claim construction disputes prior
`
`to a § 101 analysis, for the determination of patent eligibility requires a full
`
`understanding of the basic character of the claimed subject matter.”).
`
`In a covered business method patent review, claim terms in an
`
`unexpired patent are given their broadest reasonable construction in light of
`
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b).
`
`Under the broadest reasonable construction standard, claim terms are given
`
`their ordinary and customary meaning as would be understood by one of
`
`ordinary skill in the art at the time of the invention in the context of the
`
`entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007). An inventor may rebut that presumption by providing a
`
`definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). In the absence of such a definition, limitations are not to be read
`
`from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993).
`
`Neither Petitioner nor Patent Owner contends that the specification of
`
`the ’413 patent, as filed, coined a new meaning for any term, different from
`
`the ordinary recognized meaning for any term.
`
`
`
`12
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`

`CBM2013–00024
`Patent 8,095,413 B1
`
`
`1. “system being implemented using a processor
`and a storage device accessible to the processor”
`
`The preamble of claim 1 recites a “system being implemented using a
`
`processor and a storage device.” Petitioner contends that the recited
`
`processor and storage device need not be components of the claimed system
`
`because they are not positively recited elements. Pet. 11 (citing Ex. 1002
`
`¶ 39). We are not persuaded by Petitioner’s reasoning, because the
`
`processor and storage device recited in the preamble of each independent
`
`claim of the ’413 patent serve as the antecedent basis for “said processor”
`
`and “the storage device” recited in the body of each claim. Dec. to Inst. 18–
`
`19 (citing C.W. Zumbiel Co., Inc., v. Kappos & Graphic Packaging Int’l,
`
`702 F.3d 1371, 1385 (Fed. Cir. 2012) (noting that a preamble constitutes a
`
`limitation when the elements in the body of a claim depend on it for
`
`antecedent basis)). Furthermore, if the plain language of a claim indicates
`
`that a system is implemented by certain components, then those components
`
`constitute required parts of the system. “Implemented,” in that setting, can
`
`mean “constituted” or “formed.” Therefore, we construe the clause as
`
`setting forth that the processor and the storage device are both components
`
`of the claimed system.
`
`2. “model entities”
`
`The ’413 patent specification indicates that “model entity” is a set of
`
`assembled computer data or data item that represents fundamental
`
`components of a model. See Ex. 1001, col. 2, ll. 37–42. Therefore, the
`
`phrase “model entity,” which is recited in all independent claims, is
`
`construed to mean “a set of assembled computer data or data item that
`
`represents fundamental components of a model.” In its Response, Patent
`
`
`
`13
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`

`CBM2013–00024
`Patent 8,095,413 B1
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`Owner challenges our construction of this term, arguing that a data set only
`
`qualifies as a “model entity” if the data set provides a user with the
`
`capability to perform specified operations on the model. Resp. 11–12.
`
`According to the Patent Owner, its proposed construction for the term
`
`“model entity” is consistent with the understanding of one of ordinary skill
`
`in the computer and software arts. In support of its construction, the Patent
`
`Owner cites The IEEE Standard Dictionary of Electrical and Electronics
`
`Terms, 6th Edition, published in 1997 (hereinafter IEEE dictionary). Resp.
`
`11. The IEEE dictionary defines “model” in the computer context as “[a]n
`
`approximation, representation, or idealization of selected aspects of the
`
`structure, behavior, operation, or other characteristics of a real-world
`
`process, concept, or system.” Ex. 2001, 660 (dictionary entry for “model”).
`
`The IEEE dictionary defines “entity” as “[i]n an open system, an element in
`
`a hierarchical division” that “has attributes that describe it, a name that
`
`identifies it, and an interface that provides management operations.” Id. at
`
`361 (dictionary entry for “entity”).
`
`We agree with Patent Owner that the specification of the ’413 patent
`
`teaches that “model entity” is a set of assembled computer data or data item
`
`that represents fundamental components of a model. See Ex. 1001, col. 2, ll.
`
`37–42. Patent Owner, however, does not (1) point to any disclosure in the
`
`specification that requires a data object to provide the capability for a user to
`
`perform specified operations on the model in order for the data object to
`
`qualify as a “model entity,” or (2) offer any persuasive evidence regarding
`
`the meaning of “model entity.” Therefore, we construe the phrase “model
`
`entity” as “a set of assembled computer data or data item that represents
`
`fundamental components of a model.”
`
`
`
`
`
`14
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`

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`Patent 8,095,413 B1
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`
`3. “hierarchies having a plurality of types”
`
`Independent claims 1 and 7 recite “hierarchies having a plurality of
`
`types.” Petitioner contends the broadest reasonable construction of the term
`
`“hierarchy” includes at least two levels, with a lower level having a
`
`subordinate relationship to a higher level. Pet. 13. The Patent Owner
`
`contends that, in the computer and software arts, a hierarchy is understood to
`
`be “[a] structure in which components are ranked into levels of
`
`subordination.” Prelim. Resp. 13 (citing Ex. 2001, 485). The parties’
`
`constructions for “hierarchy” are consistent and we agree that “hierarchy”
`
`means “a structure that includes at least two levels, with the levels ranked
`
`into subordination.”
`
`The Petitioner then contends that with regard to hierarchies, a
`
`“plurality of types” includes two or more identical or distinct hierarchies.
`
`Id. (citing Ex. 1002 ¶ 46). The Patent Owner contends that the term “type”
`
`is understood in the computer and software arts as a “category into which
`
`attribute values are placed on the basis of their purpose.” Id. (citing Ex.
`
`2001, 1155). Thus, Patent Owner concludes that “hierarchies having a
`
`plurality of types” means “a grouping of data structures [ ] according to their
`
`subject matter or purpose, with each grouping being ranked into levels of
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`subordination.” Id. According to the Patent Owner, such a construction is
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`consistent with how the term is used in the specification of the ’413 patent.
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`See, e.g., Ex. 1001, Figs. 3, 8, 16 (illustrating “goal,” “plan,” and “domain”
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`hierarchies). We are not persuaded by Petitioner’s contention that a
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`“plurality of types” includes identical hierarchies. “Identical” simply is not
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`consistent with a contrast in type. We are persuaded by Patent Owner’s
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`contention as it accounts for multiple levels of subordination and different
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`subject matter. Furthermore, it is consistent with the specification.
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`Therefore, we adopt Patent Owner’s proposed construction. Thus,
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`“hierarchies having a plurality of types” is construed to mean “a grouping of
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`data structures [ ] according to their subject matter or purpose, with each
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`grouping being ranked into levels of subordination.”
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`4. “model entities as ordered by a value in the information
`concerning the collaborative activity”
`
`Claims 1, 7, and 16 of the ’413 patent recite the limitation “model
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`entities as ordered by a value in the information concerning the collaborative
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`activity.” Patent Owner contends this phrase should be construed as “model
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`entities sorted into an order according to the value in the information
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`concerning the collaborative activity,” and that such a construction is
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`consistent with the plain and ordinary meaning of the term “ordered” and
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`“sorted” and with the ’413 patent specification, which provides examples of
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`sorting model entities according to cost, payback, priority, domain, or due
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`date. Resp. 12–13 (citing Ex. 1001, col. 16, ll. 48–57, Fig. 17) (emphases
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`added).
`
`Petitioner originally argued in the Petition that “[w]hile an ordered or
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`sorted arrangement may require some modicum of organization, nothing in
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`the ’413 patent limits an ‘ordered’ or ‘sorted’ arrangement to any particular
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`arrangement.” Resp. 13 (citing Pet. at 15). According to Patent Owner,
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`however, Petitioner’s original proposed construction would mean that “a
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`deck of cards that is thrown across a room such that the cards land on the
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`floor in a completely random order would nonetheless be ‘ordered’ because
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`the cards would have a modicum of organization.” Resp. 13. We disagree
`
`with Patent Owner’s characterization of Petitioner’s proposed construction
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`of “order,” because a completely random order is not “ordered by a value.”
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`Petitioner now asserts that the Board’s applied construction of “value” to
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`mean more than “cost” and “order” to include “providing an organized [or]
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`ordered display” is correct and should be maintained. Reply 1 (citing Dec.
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`to Inst. 36–37).
`
`
`
`We agree with Patent Owner that “ordered” and “sorted into an order”
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`are consistent terms; the use of these terms is supported by the ’413 patent
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`specification. We do not agree with Patent Owner, however, that “by a
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`value” means “according to the value,” because Patent Owner’s proposed
`
`construction appears to require a single, defined numerical figure (e.g., cost,
`
`payback, priority, domain, or due date). The ’413 patent specification does
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`not appear to dictate, however, that value must be (i) one single number,
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`(ii) a fixed number, or (iii) a number. Rather, “a value in the information”
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`can include subject information, such as project status or who is responsible
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`for a project. Ex. 1001, col. 11, ll. 32–36. Patent Owner fails to offer
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`sufficient reasoning or evidence for adopting a narrow (i.e., number
`
`oriented) view of the term “value.” We, therefore, decline to read narrowing
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`limitations into the claims, and we construe the phrase “model entities as
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`ordered by a value in the information concerning the collaborative activity”
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`to mean “model entities sorted into an order based on any value in the
`
`information concerning the collaborative activity.”
`
`B. Claims 1–21 — Unpatentable Under 35 U.S.C. § 101 as Directed to Non-
`Statutory Subject Matter
`
`Petitioner challenges claims 1–21 of the ’413 patent, under 35 U.S.C.
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`§ 101, as directed to patent-ineligible subject matter. Pet. 15–20. Patent
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`Owner maintains that its claims are directed to patent-eligible processes and
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`machines, because the claims require “a specific series of necessary steps,
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`i.e., a specialized algorithm, that limits the [claimed] activity” and removes
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`the claims from the realm of being an abstract idea. Resp. 26.
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`1.
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`Statutory Class of Subject Matter
`
`For claimed subject matter to be patent eligible, it must fall into one of
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`four statutory classes set forth in 35 U.S.C. § 101: a process, a machine, a
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`manufacture, or a composition of matter. The Supreme Court recognizes
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`three categories of subject matter that are ineligible for patent protection:
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`“laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos,
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`130 S. Ct. 3218, 3225 (2010) (internal quotations and citation omitted). A
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`law of nature or an abstract idea by itself is not patentable; however, a
`
`practical application of the law of nature or abstract idea may be deserving
`
`of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
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`132 S. Ct. 1289, 1293–94 (2012).
`
`In Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347
`
`(2014), the Supreme Court recently clarified the process for analyzing
`
`claims to determine whether claims are directed to patent-ineligible subject
`
`matter. In Alice, the Supreme Court applied the framework set forth
`
`previously in Mayo, “for distinguishing patents that claim laws of nature,
`
`natural phenomena, and abstract ideas from those that claim patent-eligible
`
`applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
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`the analysis is to “determine whether the claims at issue are directed to one
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`of those patent-ineligible concepts.” Id. If they are directed to a patent-
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`ineligible concept, the second step in the analysis is to consider the elements
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`of the claims “individually and ‘as an ordered combination’” to determine
`
`whether there are additional elements that “‘transform the nature of the
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`claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
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`1291, 1297). In other words, the second step is to “search for an ‘inventive
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`concept’—i.e., an element or combination of elements that is ‘sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent
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`upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
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`Mayo, 132 S. Ct. at 1294).
`
`The patents at issue in Alice claimed “a method of exchanging
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`financial obligations between two parties using a third-party intermediary to
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`mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of
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`hedging risk in Bilski v. Kappos, 130 S. Ct. at 3240—which the Court
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`deemed “a method of organizing human activity”—Alice’s “concept of
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`intermediated settlement” was held to be “‘a fundamental economic practice
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`long prevalent in our system of commerce.’” Alice, 134 S.