Trials@uspto.gov
`571.272.7822
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` Paper No. 52
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` Entered: May 18, 2015
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, N.A.,
`PNC FINANCIAL SERVICES GROUP, INC., and PNC BANK, N.A.,
`Petitioner,
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00028
`Patent 8,083,137 B2
`
`_____________
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 52
`
` Entered: May 18, 2015
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, N.A.,
`PNC FINANCIAL SERVICES GROUP, INC., and PNC BANK, N.A.,
`Petitioner,
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00028
`Patent 8,083,137 B2
`
`_____________
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
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`CBM2014-00028
`Patent 8,083,137 B2
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`Bank of America, N.A., PNC Financial Services Group, Inc., and
`PNC Bank, N.A. (“Petitioner”) filed a Petition (Paper 9, “Pet.”) requesting
`institution of a covered business method patent review of claims 1–24 of
`U.S. Patent No. 8,083,137 B2, issued December 27, 2011 (Ex. 1001, “the
`’137 patent”), pursuant to 35 U.S.C. § 321. Patent Owner, Intellectual
`Ventures I LLC, filed a preliminary response. Paper 16 (“Prelim. Resp.”).
`Based on these submissions, we instituted trial as to all claims of the ’137
`patent. Paper 18 (“Institution Dec.”).
`After institution, Patent Owner filed a Response (Paper 26, “PO
`Resp.”) and Petitioner filed a Reply (Paper 35, “Pet. Reply”). In addition,
`the parties rely upon expert testimony. Petitioner proffered the Declaration
`of Brad Myers, Ph.D. (Ex. 1005, “Myers Decl.”) with the Petition. Patent
`Owner proffered the Declaration of Bradley O. Walton (Ex. 2003, “Walton
`Decl.”) with its Response. In addition, a transcript of Mr. Walton’s
`deposition (Ex. 1026, “Walton Dep.”) was submitted by Petitioner. No
`deposition transcript was filed for Dr. Myers.
`Patent Owner filed a Motion to Exclude Evidence. Paper 37 (“PO
`Mot. Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
`Exclude Evidence. Paper 44 (“Opp. Mot. Exclude”).
`Oral Hearing was held on March 2, 2015. A transcript of the
`argument is entered in the record as Paper 51 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 328(a). We conclude for the
`reasons that follow that Petitioner has shown by a preponderance of the
`evidence that claims 1–24 of the ʼ137 patent are unpatentable.
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`I. INTRODUCTION
`A. The ’137 Patent (Ex. 1001)
`The ’137 patent, titled “Administration of Financial Accounts,” issued
`on December 27, 2011, based on Application 12/472,177, filed May 26,
`2009.
`The ’137 patent describes a credit facility for allowing a user to place
`self-imposed limits on the user’s spending in selected transaction categories.
`Ex. 1001, Abstract. When the limit is reached the user is notified. Id. at
`1:67–2:1. The user may set the self-imposed spending limits on a category
`by category basis. Id. at 2:9–12.
`Figure 1 of the ’137 patent is reproduced below.
`
`
`Figure 1 is a block diagram showing user 100 with credit card 11 and
`
`card reader 12 which are used to complete a sales transaction at a point of
`sale. Ex. 1001, 3:41–44. Communications links 14-1 and 14-2 convey card
`information over network 101 to central processor 15. Id. at 3:45–47. The
`processor categorizes the various purchases being made and stores those
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`purchase amounts and categories in database 17 according to the profiles of
`the user. Id. at 3:47–52. If the amounts in a category exceed a certain
`amount, the user or a third party as identified in the user’s profile, would be
`required to give specific approval for a particular purchase. Id. at 4:1–5.
`B. Related Matters
`Petitioner has been charged with infringement of the ’137 patent in
`the following cases: Intellectual Ventures I LLC v. PNC Financial Services,
`Inc., No. 2:13-cv-00740 (W.D. Pa., filed May 29, 2013) and Intellectual
`Ventures I LLC v. Bank of America, N.A., No. 3:13-cv-00358 (W.D.N.C.
`filed June 12, 2013). Pet. 1 (citing Exs. 1006 & 1009). In addition,
`Petitioner advises us of six additional lawsuits where Patent Owner alleges
`the ’137 patent is infringed. Pet. 64–65.
`C. Illustrative Claims
`Of the challenged claims, claims 1, 5, 12, and 19 are independent
`claims. Claims 1 and 19 are system claims and claims 5 and 12 are method
`claims. Claims 1 and 5 are reproduced below:
`1. A system comprising:
`means for storing a profile keyed to a user identity and
`containing one or more user-selected categories to track
`transactions associated with said user
`identity, wherein
`individual user-selected categories include a user pre-set limit;
`and
`
`means for presenting transaction summary data for at
`least one of the one or more user-selected categories, said
`transaction summary data containing said at least one user-
`selected category's user pre-set limit.
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`5. A method comprising:
`storing, in a database, a profile keyed to a user identity
`and containing one or more user-selected categories to track
`transactions associated with said user
`identity, wherein
`individual user-selected categories include a user pre-set limit;
`and
`
`causing communication, over a communication medium
`and to a receiving device, of transaction summary data in the
`database for at least one of the one or more user selected
`categories, said transaction summary data containing said at
`least one user-selected category's user pre-set limit.
`
`D. Ground Upon Which Trial Was Instituted
`Trial was instituted on the ground that claims 1–24 of the ’137 patent
`are unpatentable under 35 U.S.C. § 101. Institution Dec. 25–26.
`E. Claim Interpretation
`The Board will interpret a claim of an unexpired patent using the
`broadest reasonable construction in light of the specification of the patent in
`which it appears. See 37 CFR § 42.300(b); In re Cuozzo Speed Techs., LLC,
`778 F.3d 1271, 1279–83 (Fed. Cir. 2015); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under that standard,
`claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definition for a claim term must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Furthermore, claim construction is “is not an
`inviolable prerequisite to a validity determination under § 101.” Content
`Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1349
`(Fed. Cir. 2014) (citations omitted).
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`In instituting trial, we determined constructions for seven terms,
`including some in means-plus-function form. Institution Decision 5–13.
`With the exception of three terms, Patent Owner agrees with the Board’s
`prior constructions and, in any event, asserts they are “immaterial” as to
`whether the claims are patent eligible under § 101. PO Resp. 42–45.
`Accordingly, unless otherwise addressed below, we incorporate our
`constructions from the Decision on Institution. Patent Owner requests that
`the Board reconsider its construction of two means plus function terms and
`one term not construed in the Decision on Institution. Id.
`Construction of a means-plus-function limitation involves two steps.
`“First, the court must determine the claimed function. Second, the court
`must identify the corresponding structure in the written description of the
`patent that performs the function.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d
`1302, 1311 (Fed. Cir. 2012)(citing Applied Med. Res. Corp. v. U.S. Surgical
`Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (internal citations omitted)).
`Furthermore, in a means-plus-function claim where “‘the disclosed structure
`is a computer, or microprocessor, programmed to carry out an algorithm, the
`disclosed structure is not the general purpose computer, but rather the
`special purpose computer programmed to perform the disclosed algorithm.’”
`Noah Sys., 675 F.3d at 1312 (citing WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d 1339, 1348 (Fed.Cir.1999)); see Aristocrat Techs Austl. Pty Ltd. v.
`Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
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`1. “a profile keyed to a user identity and containing one or more user-
`selected categories to track transactions associated with said user
`identity” (Claims 1, 5, And 12)
`
`The Decision on Institution did not construe the “profile keyed to a
`user identity” term above. Patent Owner proposes that the broadest
`reasonable interpretation of this claim language is “a computerized database
`record of parameters including user-created control information identifiable
`by a computer using a unique value associated with a user identity.” PO
`Resp. 42–43. Petitioner has no separate proposal for the term but contends
`Patent Owner’s proposal is not the broadest reasonable interpretation. Pet.
`Reply 14.
`The term “profile keyed” does not appear in the Specification.
`However, we agree with Patent Owner that “profile” is described as a user
`identity in both the Specification and in the dictionary definitions provided.
`See Ex. 1001, 3:47–526:45–51, 7:48–50; IBM DICTIONARY OF COMPUTING
`725 (International Business Machines Corp., 1994), Ex. 2017. According to
`Patent Owner, a “key” is “the sequence of symbols or characters that defines
`the makeup of an encoding mechanism.” PO Resp. 43 (citing MICROSOFT
`ENCARTA COLLEGE DICTIONARY 795 (Bloomsbury Publishing Plc, 1991,
`2001), Ex. 2016. Patent Owner also relies on Mr. Walton’s testimony that a
`“key” is a “field in a database that identifies the record in that database.” Id.
`(citing Ex. 2003 ¶ 136). Mr. Walton’s testimony is persuasive because it is
`consistent with the plain meaning of the term.
`Thus, we construe “profile” as a “user identity” and “key” as “a field
`in a database that identifies the record in that database.” Given these
`constructions, we determine that the remainder of the term, as identified by
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`Patent Owner, should be given its plain meaning and requires no additional
`construction.
`2. “means for presenting transaction summary data for at least
`one of the one or more user-selected categories, said
`transaction summary data containing said at least one
`user-selected category’s user pre-set limit” (Claim 1)
`
`Both parties agreed and the Board found the claimed function for this
`means-plus-function term is “presenting transaction summary data for at
`least one of the one or more user-selected categories, said transaction
`summary data containing said at least one user-selected category’s user pre-
`set limit.” Institution Dec. 8. The corresponding structure was determined
`to be a “central processor programmed to perform the algorithm steps of
`figures 3A-B and 4, working in conjunction with a database and a profile.”
`Id. at 9.
`Patent Owner argues the corresponding structure should further
`include “communications link (e.g., pager network, cellular network,
`satellite network, web portal, phone operator, or other similar type of
`communications link), printer or auxiliary communication path (e.g., phone,
`pager, or other similar devices), and equivalents.” PO Resp. 43–44. Patent
`Owner argues its proposal is supported by the Specification and was adopted
`by the district court in one of the related cases listed above.1 Petitioner
`states no position regarding this term beyond the general statement that
`Patent Owner is not giving any of the terms their broadest reasonable
`construction. Pet. Reply 14.
`
`
`1 Intellectual Ventures I LLC v. Capital One Fin. Corp., Case No. 1:13-cv-
`00740 (AJT/TRJ) (E.D. Va.). PO Resp. 44.
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`Although we must consider the Specification in construing claim
`terms, an extraneous limitation should not be read into the claims from the
`specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
`whose presence in a claim is unnecessary for the purpose of making sense of
`the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
`a means-plus-function claim, we look to the written description for the
`corresponding structure that performs the function. Noah Sys., 675 F.3d at
`1311. But that does not alter the fact that extraneous structure from the
`written description is not added.
`We are not persuaded we should change our prior construction from
`the Decision on Institution. The additional structure proposed by Patent
`Owner is not necessary to the understanding of the claim or to define the
`structure for the recited function. Nor are we persuaded to follow the district
`court’s construction. We note the district court applies a different standard
`for claim construction than the broadest reasonable interpretation standard
`we apply.
`We, therefore, determine that the function of the “means for
`presenting” term is “presenting transaction summary data for at least one of
`the one or more user-selected categories, said transaction summary data
`containing said at least one user-selected category’s user pre-set limit” and
`the corresponding structure is “central processor programmed to perform the
`algorithm steps of figures 3A-B and 4, working in conjunction with a
`database and a profile.”
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`3. “means for listing financial transactions for a user which
`occurred during a last accounting period,” (Claim 19)
`
`
`In the Decision on Institution, the Board analyzed the “means for
`listing” term as a means-plus-function term. Institution Dec. 11–12. We
`determined that the function is “listing financial transactions for a user
`which occurred during a last accounting period.” Id. at 11. At that time,
`Patent Owner proposed the corresponding structure clearly linked and
`associated with the function is “a central processor 15, programmed to
`perform the algorithm steps of elements 303, 306, 307, and 330 of Fig. 3A-
`B, working in conjunction with database 16 and profile 17, and equivalents.”
`Prelim. Resp. 19. However, we were unable to identify a specific algorithm
`for performing the function as required. Id. at 12 (see Noah Sys., 675 F.3d at
`1311). In order to proceed on the grounds asserted by Petitioner, we adopted
`Petitioner’s proposal of “a central processor in conjunction with a database
`and profile.” Institution Dec. at 11.
`We asked Patent Owner to direct the Board, in its Patent Owner
`Response, to the specific portions of the Specification that clearly link or
`associate a computer program or algorithm to the function corresponding to
`the “means for listing.” Institution Dec. 12. Patent Owner responds to this
`request at pages 44 and 45 of its Patent Owner Response. Patent Owner
`points to the same blocks, 330, 306, and 307 of Figure 3A and Figure 7, that
`we found insufficient in the Decision on Institution. Institution Dec. 12.
`Additional description of Figure 7 is provided as well as testimony of the
`Walton Declaration. PO Resp. 44, Ex. 2003 ¶ 155. The Walton Declaration
`does not identify specifically any algorithm in connection with the table of
`Figure 7. Although Figures 3A and 3B are algorithms for other means-plus-
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`function elements, we are not persuaded by any of Patent Owner’s cites to
`the Specification or by the Walton Declaration (see ¶ 156, discussing Figs.
`3A and 3B) that an algorithm for the “means for listing” is disclosed.
`Absent any identifiable algorithm, we determine that the function of
`the “means for listing” term is “listing financial transactions for a user which
`occurred during a last accounting period” and the corresponding structure is
`“a central processor in conjunction with database and profile.”
`II. ANALYSIS
`A. Patentability Under 35 U.S.C. § 101
`Section 101 of 35 U.S.C. defines what constitutes patentable subject
`matter: “Whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new and useful
`improvement thereof, may obtain a patent therefor, subject to the conditions
`and requirements of this title.”
`There are, however, three specific exceptions to the broad categories
`of § 101: laws of nature, physical phenomena, and abstract ideas. Bilski v.
`Kappos, 561 U.S. 593, 601 (2010). “The abstract ideas category embodies
`the longstanding rule that ‘[a]n idea of itself is not patentable.’” Alice Corp.
`Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Gottschalk
`v. Benson, 409 U.S. 63, 67 (1972) (internal quotation marks and citation
`omitted)).
`In Alice, the Supreme Court followed the two-step framework set
`forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
`S. Ct. 1289 (2012), “for distinguishing patents that claim laws of nature,
`natural phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts.” Alice, 134 S. Ct. at 2355. In the first step,
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`“we determine whether the claims at issue are directed to one of those
`patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in
`the claims before us?’” Id. (quoting Mayo, 132 S. Ct. at 1297). In the
`second step, we consider the elements of each claim both individually and as
`an ordered combination to determine whether the additional elements
`transform the nature of the claim into a patent-eligible application. Id.
`Step two of the analysis may be described as a search for an
`“inventive 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 upon the ineligible concept itself. Id. (citing Mayo, 132 S. Ct.
`at 1294).
`B. Are the ʼ137 Patent Claims Directed to Abstract Ideas?
`In our Institution Decision, we determined that the ʼ137 patent claims
`are directed to the abstract idea of storing information about a user’s
`preferences for a credit limit and presenting, i.e., notifying, the user of the
`limit when providing the user a transaction summary based on categories.
`Institution Dec. 19, 21, and 23–24.2 Patent Owner responds that the claims
`are not directed to abstract ideas under Supreme Court precedent. PO
`Resp. 7–11. Patent Owner contrasts what has been found to be an abstract
`
`2 Patent Owner contends that the Petition lacks any evidence proving the
`claims are directed to an abstract idea. PO Resp. 6. We credit the testimony
`of Dr. Myers as evidence that the ʼ137 patent claims an abstract idea.
`Ex. 1005 ¶ 25 (citing Ex. 1001, 1:65–2:1(“The ’137 patent is directed to the
`abstract idea of sending a notification to a person when he or she has
`reached a self-imposed spending limit on a particular category of
`transactions.”)). On their face the claims are drawn to creating a budget,
`which is an abstract idea relating to a fundamental economic practice. See
`Alice, 134 S.Ct. at 2350.
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`idea in other Supreme Court cases and differentiates the claims of the ’137
`patent as not falling into those categories. Id. at 8–10. Patent Owner argues
`that “the claims of the ’137 patent are not drawn to a “fundamental
`economic practice”—such as intermediated settlement or risk hedging—
`“long prevalent in our system of commerce and taught in any introductory
`finance course.” Id. at 8 (citing Ex. 2003 ¶ 53; Alice, 134 S. Ct. at 2356).
`Further, Patent Owner argues there is no evidence the idea claimed was
`“ever a common practice.” Id. at 9.
`Patent Owner contends the claims of the ’137 patent are more like the
`claims in the Diehr case, where the inventor “sought only to foreclose others
`from using systems and methods that include the specific structural
`limitations.” PO Resp. 10–11 (citing Diamond v. Diehr, 450 U.S. 175, 177–
`178 (1981). “Similar to the inventors in Diehr, she sought only to foreclose
`others from using systems and methods that include the specific structural
`limitations of her claims.” Id. at 11. Therefore, Patent Owner asserts, the
`claims of the ’137 patent are not directed to an abstract idea. Id.
`Petitioner responds that the claims are directed to “tracking
`transactions by categories of spending against a user’s own pre-set limit (i.e.,
`budgeting by categories).” Pet. Reply 2. Petitioner contends Patent
`Owner’s reliance on the Walton Declaration, that the claims are not directed
`to a fundamental economic practice, is an unsupported conclusion. Id. In
`addition, Petitioner asserts there is evidence that the idea of setting limits on
`spending and tracking spending against those limits has been commonly
`known. Id. at 3 (citing Chip Heath et al., Mental Budgeting and Consumer
`Decisions, THE JOURNAL OF CONSUMER RESEARCH, Vol. 23, No. 1, 41, 45
`(Jun. 1996), Ex. 1027; Ex. 1026, 96:25–27:5 and 98:19–99:5). Petitioner
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`contends the claimed idea is abstract, in part, because it involves mental
`steps which can be performed by a human using pen and paper. Id. at 5–6
`(citing cases). Concerning Patent Owner’s reliance on Diehr, Petitioner
`argues the claims here neither involve a “technological problem” nor do they
`effect a “transformation of an article . . . into a different state or thing.” Id.
`at 6 (citing Diehr, 450 U.S. at 184).
`The Supreme Court in Alice concluded that: “In any event, we need
`not labor to delimit the precise contours of the ‘abstract ideas’ category in
`this case.” 134 S. Ct. at 2357; accord Content Extraction, 776 F.3d at 1347.
`Thus, we are not persuaded that the categories used by the Supreme Court in
`past cases are exclusive and necessarily require us to reach the conclusion
`that a claimed idea is, or is not, abstract.
`We are not persuaded that the claims relate to a “technological
`invention,” as in Diehr, but are rather directed to mental steps that can be
`performed by a human. Petitioner rebuts Patent Owner’s contention that
`there is no evidence of the mental steps having been previously performed
`(PO Resp. 34) with evidence that spending limits by category and
`notification concerning self-imposed spending limits have been known for
`decades. Pet. Reply 3–4 (citing Ex. 1027,3 41, 43).
`Further, the Background section of the ’137 patent acknowledges that
`most key elements of the claims were known prior to the effective filing date
`of the ’137 patent. The Background section lists as previously known
`spending limits, categorizing expenses, and outstanding balance and
`purchase information on credit cards as all available over the Internet.
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`3 Patent Owner’s Motion to Exclude is directed to Exhibit 1027, which is
`discussed below.
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`Ex. 1001, 1:28–47; Tr. 45:24–25 (Patent Owner admits “automated financial
`notification systems existed before the invention.”). That these concepts
`were known previously supports our determination that the claims are
`directed to an abstract idea that was known before the effective date of the
`’137 patent.
`We therefore conclude that the first step in the Alice/Mayo test is met.
`C. Are the Claims Patentable Because They Include Limitations That
`Represent Sufficiently Inventive Concepts?
`
`The second step of our analysis requires us to determine whether the
`claims do more than describe the abstract idea identified supra.
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). In this
`step we must examine the limitations of the claims to determine whether the
`claims contain an “inventive concept” to “transform” the claimed abstract
`idea into patentable subject matter. Id. “A claim that recites an abstract idea
`must include additional features to ensure that the claim is more than a
`drafting effort designed to monopolize the abstract idea.” Id. (quoting
`Mayo, 132 S. Ct. at 1297) (internal quotation marks and brackets omitted).
`Not every included feature will suffice. Those “additional features”
`must be more than “well-understood, routine, conventional activity.” Mayo,
`132 S. Ct. at 1298. See Ultramercial, 772 F.3d at 716 (“[E]ach of those
`eleven steps merely instructs the practitioner to implement the abstract idea
`with ‘routine, conventional activit[ies],’ which is insufficient to transform
`the patent-ineligible abstract idea into patent-eligible subject matter.”
`(Second alteration in original)); Content Extraction, 776 F.3d at 1348
`(“[Patentee] conceded at oral argument that the use of a scanner or other
`digitizing device to extract data from a document was well-known at the
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`time of filing, as was the ability of computers to translate the shapes on a
`physical page into typeface characters.”); buySAFE, Inc. v. Google, Inc., 765
`F.3d 1350, 1355 (Fed. Cir. 2014)(holding that the subject of the patent
`claims was “beyond question of ancient lineage”).
`Patent Owner contends generally that the claims of the ʼ137 patent
`“do not preempt the alleged abstract idea and are transformed by an
`inventive concept.” PO Resp. 12–14. Indeed, Patent Owner contends that
`the second step of Alice “focuses on the question of preemption—that is,
`whether the claim would preempt or monopolize all uses of the recited
`abstract idea.” Id. at 14–15; see Tr. 50:4–25. Patent Owner concludes
`generally that because the claims are narrower than the abstract idea we
`identified above, there is no preemption and the claims are patentable. Id. at
`16–17 (citing Alice, 134 S. Ct. at 2354–55; Ex. 2003 ¶¶ 60–61).
`We are not persuaded by Patent Owner’s arguments relative to all the
`claims. PO Resp. 30–36. The arguments are no more than a denial that the
`claims recite generic computer technology. Id. Petitioner argues generally
`that “the asserted “features” amount to “implement[ing] the abstract idea . . .
`on a generic computer” using “purely conventional” computer functions.
`Pet. Reply 7 (citing Alice, 134 S. Ct. at 2359). Petitioner’s position is
`supported by the Myers Declaration. (Exhibit 1005 ¶¶ 30–43). Dr. Myers
`testifies that the computer components for the claimed limitations are well-
`known and conventional. Pet. 20–21 (citing Ex. 1005 ¶¶ 49–50).
`We have reviewed the Myers Declaration and are convinced by
`Petitioner’s argument that the ʼ137 patent claims do not contain an
`“inventive concept” sufficient to transform the claimed abstract idea into a
`patentable invention. Stated another way, we determine that the claims fail
`
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`16
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`to do “significantly more than simply describe that abstract method.”
`Ultramercial, 772 F.3d at 715. Instead, “the claims simply instruct the
`practitioner to implement the abstract idea with routine, conventional
`activity.” Id. Our analysis of individual claims follows.
`1. Claims 1, 5, and 12
`Patent Owner contends the claim 1 “limitations are common to claims
`1, 5, and 12.” PO Resp. 17 and 23. Independent claim 1 is a system claim
`including two elements: means for storing; and means for presenting.
`Independent claims 5 and 12 are method claims; both recite a “storing” step
`and a “causing communication step.” Petitioner alleges both functions of
`claim 1 are performed by structural components in the specification that are
`generic and conventional—i.e., a processor and a database. Pet. 20–21,
`(citing Ex. 1005 ¶ 47 and 50).
`Relying on our construction of the means-plus-function elements,
`Patent Owner argues the algorithm steps shown in Figures 3A and 3B are
`not conventionally known. PO Resp. 23; see Institution Dec. 5–8 (“means
`for storing”), see above (“means for presenting”). Both constructions
`include a “central processor” to perform the disclosed algorithm steps.
`Patent Owner focuses our attention on four claim limitations. PO
`Resp. 17. The first two limitations are “structural” and the last two are
`“functional.” Id. at 17–18.
`The structural limitations are (1) storing user profiles “keyed to a user
`identity” in a database; and (2) user profiles that contain “user-selected
`categories” to track spending within the categories and “user pre-set limits”
`associated with the categories are physical structure of a computer system.
`PO Resp. 17. Patent Owner argues that claim 1 includes an inventive step
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`Patent 8,083,137 B2
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`because it is a computer system claim. Id. Patent Owner argues method
`claims 5 and 12 include the same meaningful structural limitations because
`the method steps are tied to a particular computer. Id.
`Following Patent Owner’s numerical designations, Patent Owner next
`relies on two functional claim limitations: (3) using the user-selected
`categories to track transactions associated with the user identity; and (4)
`communicating “transaction summary data,” including at least a “pre-set
`limit,” to a receiving device. PO Resp. 17. Patent Owner argues these are
`“meaningful functional limitations that define with specificity what the
`computer system does.” Id. (citing Ex. 2003 ¶ 63).
`With respect to the structural limitations 1 and 2 above, Petitioner
`argues, in connection with the construction of “profile keyed to a user
`identity” (limitation 1), that “nothing in the claims or specification describes
`how the profile is ‘keyed to a user identity,’ let alone restricts this limitation
`to the particular manner of keying Patent Owner describes.” Pet. Reply 14.
`Citing to the lack of any description of structure in the Specification,
`Petitioner argues the cited limitation is “purely functional.” Concerning the
`“user selected categories” (limitation 2), Petitioner argues these are simply
`selected by the user for budgeting purposes. Id. at 9–10 (citing Ex. 1001,
`2:9–11, Ex. 1026, 87:2–6).
`Petitioner contends functional limitation 3, regarding tracking
`transactions, is a patent-ineligible “method of organizing human activity”
`necessary for budgeting. Pet. Reply 10 (citing Ex. 1027, 41 (“[T]here are
`two major parts of the budgeting process: setting a budget and tracking their
`ongoing expenses against the budget.”)). Petitioner argues the “transaction
`summary data” of limitation 4 is unpatentable as just manipulation of
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`information. Id. (citing buySAFE, Inc., 765 F.3d at 1355 (“That a computer
`receives and sends the information over a network—with no further
`specification—is not even arguably inventive.”)).
`As to claim 1, Patent Owner further argues, based on our construction
`of the means-plus-function limitations, that “the detailed algorithm of
`Figures 3A and 3B” are additional structure preventing the claim from
`preempting the abstract idea.” PO Resp. 23–24. Petitioner argues that
`Patent Owner’s expert was unable to state how the algorithm of Figures 3A
`and 3B would be developed into a specialized computer algorithm. Pet.
`Reply 11 (citing Ex. 1026 at 107:9–19). Petitioner argues the identified
`“algorithms” are conventional steps of the functions performed. Id.
`We are persuaded that these are conventional elements. Ex. 1005
`¶ 26; see, e.g., Ex. 1026, 128:11–14. The elements are either well known or
`mental steps performed by a human. Routine or conventional use of a
`computer, or well-known computer related technologies, e.g., processors,
`databases, and the Internet, does not invoke an “inventive concept” and does
`not make a claim patent eligible. See Ultramercial, 772 F.3d at 716.
`The “algorithms” of Figures 3A and 3B are steps set out in a flow
`chart. Ex. 1001, Figs. 3A and 3B. The components for accomplishing the
`steps, a telephone, a database, a processor, and the Internet, are well known.
`See Pet. 3. Patent Owner’s unsupported arguments do not persuade us that
`disclo
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