trials@uspto.gov
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`
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`571-272-7822
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`
`CBM2014-00028, Paper 51; CBM2014-00029, Paper 37;
`CBM2014-00030, Paper No. 31; CBM2014-00033,
`Paper 46
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`
`
`April 1, 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.,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I, LLC,
`and INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Cases CBM2014-00028, CBM2014-00029,
`CBM2014-00030, CBM2014-00033
`Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`____________
`
`Held: March 2, 2015
`____________
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG and GREGG I
`ANDERSON, Administrative Patent Judges.
`
`
`The above-entitled matter came on for hearing on Monday, March 2, 2015,
`commencing at 10:10 a.m., at the U.S. Patent and Trademark Office, 600
`Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DONALD R. STEINBERG, ESQUIRE
`
`
`GREGORY H. LANTIER, ESQUIRE
`
`
`MONICA GREWAL, ESQUIRE
`
`
`Wilmer, Cutler, Pickering, Hale & Dorr, LLP
`
`
`60 State Street
`
`
`Boston, Massachusetts 02109
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`HENRY A. PETRI, Jr., ESQUIRE
`
`JAMES MURPHY, ESQUIRE
`
`Novak, Druce, Connolly, Bove & Quigg, LLP
`
`1875 I Street, N.W.
`
`Eleventh Floor
`
`Washington, D.C. 20006
`and
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`
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`JOHN R. KING, ESQUIRE
`TED M. CANNON, ESQUIRE
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street
`Fourteenth Floor
`Irvine, California 92614
`
`
`
`
`
` 2
`
`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
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`P R O C E E D I N G S
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`- - - - -
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`JUDGE GIANNETTI: Good morning everyone. We are here for
`
`a final hearing in four covered business method patent reviews for CBM
`
`reviews. CBM2014-00028, 2014-00029 and 2014-00030, Bank of America,
`
`PNC Financial Services and PNC Bank versus Intellectual Ventures I, and
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`the fourth CBM, 2014-00033, Bank of America versus Intellectual Ventures
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`II.
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`The panel today is myself, Judge Giannetti. To my right is Judge
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`Jung and appearing remotely, participating remotely from Denver is Judge
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`Anderson on the screen to my left.
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`Let me begin by thanking the parties for their cooperation. This
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`hearing was postponed from last Monday. We had a weather shutdown here
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`in the USPTO. I appreciate the cooperation of parties in rescheduling the
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`hearing to today.
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`Let me get appearances of counsel. Who is appearing today for the
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`petitioner?
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`MR. STEINBERG: For the petitioner, I'm Donald Steinberg.
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`With me to my right is Greg Lantier, who is admitted pro hac vice, and
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`Monica Grewal as well.
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`JUDGE GIANNETTI: Welcome, counsel. Who will be making
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`the presentation today, Mr. Steinberg?
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`
`
` 3
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`MR. STEINBERG: I will be presenting as to the 0028, 0030 and
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`0033 proceedings, and Mr. Lantier as to the 0029.
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`JUDGE GIANNETTI: And who is appearing for the patent owner
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`today?
`
`MR. PETRI: Good morning, Your Honor. My name is Henry
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`Petri on behalf of the patent owner and with me here today is my partner,
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`James Murphy. And I will be speaking with respect to the 00029 and 00030
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`proceedings.
`
`MR. KING: Good morning, Your Honor. I'm John King. I'll be
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`representing the patent owner and with me will be Ted Cannon.
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`JUDGE GIANNETTI: You'll have to speak up, Mr. King. In fact,
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`everybody will have to keep their voices up. We have Judge Anderson
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`appearing remotely. Make sure we try to keep close to the microphones. So
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`go ahead, Mr. King.
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`MR. KING: And with me is Ted Cannon and we'll be presenting
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`0028 and 0033.
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`JUDGE GIANNETTI: And we have Mr. Coulman on the
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`telephone line; is that correct?
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`MR. COULMAN: Yes, I'm here. Thank you.
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`JUDGE GIANNETTI: All right. So we have appearances. Let
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`me just make a comment about exhibits. We've received demonstratives
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`from both sides. The procedure that the panel has discussed and the
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`procedure that we are going to follow is that the demonstratives will not be
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`entered in the record unless otherwise ordered, but you can use them as aids
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`to your arguments here today. But I want to remind you that the official
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`
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`
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` 4
`
`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`record of the proceeding will be the transcript and not the exhibits.
`
`Understood, counsel?
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`MR. STEINBERG: Yes.
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`JUDGE GIANNETTI: We have one hour per side. The petitioner
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`may reserve time for rebuttal to rebut arguments that are made by the patent
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`owner. You can either reserve time now or at the end of your presentation.
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`One other thing, if you do refer to your demonstrative presentation,
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`please make sure to identify the page number so that Judge Anderson can
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`follow along. He does not have access to the screen that you are seeing here
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`in the hearing room. So you'll have to identify the page numbers that you
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`are referring to in your presentation.
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`And just one other reminder. Please stay close to the microphone
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`so that we have the ability to hear you both here in the hearing room and
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`remotely with Judge Anderson.
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`Let me set the timer and then, Mr. Steinberg, you can proceed
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`when you are ready.
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`MR. STEINBERG: Thank you.
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`JUDGE GIANNETTI: Just give me a second here. We'll just use
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`the clock on the wall. Why don't you proceed. It's 10:16. Do you want to
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`reserve time now, Mr. Steinberg, or at the end?
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`MR. STEINBERG: The intent is to reserve about 15 minutes at
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`the end for rebuttal. We'll see how this plays out.
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`JUDGE GIANNETTI: I'll try to give you a warning when you get
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`close to that.
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`MR. STEINBERG: Thank you, very much.
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` 5
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`JUDGE GIANNETTI: So you may proceed when you are ready.
`
`MR. STEINBERG: Thank you. So we are going to go through the
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`four patents in numerical order. So I'll start with the '137 patent. And
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`jumping just to slide 2, a little outline of what we intend to cover. First a
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`quick overview of the '137 patent and then we'll go through the Alice test,
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`first that the claims are directed to an abstract idea and, second, the claims
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`recite only generic computer components performing conventional
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`functions. So no inventive concept. We're going to generally hold points
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`about whether the Board properly instituted CBM review unless there are
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`questions for rebuttal.
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`So if we can jump to slide 4, please, the '137 patent, as you can
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`see, is titled Administration of Financial Accounts as two independent
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`system claims with some means plus function limitations and two
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`independent method claims.
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`The specification of the patent, as we show on slide 5, explains that
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`the patent allows consumer users to establish self-imposed limits on the
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`user's spending or borrowing such that when the limit is reached, the
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`consuming user is notified. And these spending limits are informational.
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`They do not impact the user's ability actually to complete a transaction.
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`As we'll discuss, the patent merely computerizes what can be done
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`manually or mentally or by hand. It discloses no new technology to
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`implement the basic idea of budgeting by categories of spending. In fact, the
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`patent emphasizes, as we show in the last bullet on slide 5, that it is not tied
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`to any specific technology.
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` 6
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`On slide 6 we show that the patent discusses that a user establishes
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`a preset spending limit in a particular category. And on slide 7, we have the
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`paragraph where the patent also discusses tracking transactions against the
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`preset spending limit.
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`But these are just two basic steps of budgeting. The patent does
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`not describe any particular way to use technology to establish spending
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`limits or track transactions.
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`Now, Alice establishes a two-part test, as we're all very familiar.
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`We have it on slide 8, but I think we can just jump right into the test. On
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`slide 10, we'll jump to step 1 of the Alice test. The Board adopted the
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`following as the abstract idea in the institution decision, storing information
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`about a user's preferences for a credit limit and presenting, that is the
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`notifying the user of the credit limit when providing the user a transaction
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`summary based on categories.
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`So we want to look to start with on claim 1, and it has two means
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`limitations. The corresponding structure for the means for storing, the first
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`one, is identified by the Board as a central processor programmed to perform
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`the algorithm steps of Figures 3A and 3B working in conjunction with a
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`database and a profile.
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`But the relevant steps from the algorithm from Figures 3A and B
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`do no more than restate the claim language. They provide no additional
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`meaningful structure and don't keep the claim from being directed to just the
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`abstract idea.
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`So we want to look at this a little bit more closely. If we move to
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`slide 12, storing a profile, the first part of the function is simply store in
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` 7
`
`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`database, as we see in step 20 from the figure. And if we move to slide 13,
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`which shows the rest of the first function, it's really identified in the figures
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`as set categories and limits for main user at step 307 and possibly also it's
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`some part of established new user profile or edit profile.
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`But the point is there are no details here beyond the function itself
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`such as how the function is actually performed. And even if we look at the
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`"wherein" clause at the end of the limitation, that's really subsumed within
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`step 307's setting of limits.
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`If we look at the second limitation of claim 1 on slide 14, the
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`corresponding structures is similar to what we have for the first limitation.
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`The means for presenting structure is a central processor programmed to
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`perform the algorithm steps of Figures 3A and B; and 4, working in
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`conjunction with the database and a profile.
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`But as for the first limitation, the relevant steps from the algorithm
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`from the figures really do little more than restate the claim language and,
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`therefore, do not keep the claim from being directed to an abstract idea.
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`Similar to what we just did with the prior slide, slides 15 and 16
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`show it here. So in the interest of time, I'm going to skip over those but it's
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`really the same point and it is in our petition. The other independent claims
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`as well, as we addressed in our petition, add no more detail. So I'm not
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`going to discuss those unless there are questions.
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`Now, if we move on to slide 17, the patent owner argues that we
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`are attempting to expand the abstract ideas exception to encompass a new
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`type of claim. But the categories, as we say in our reply, of abstract idea
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`identified in Alice are illustrative. They are not exhaustive. This was taken
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` 8
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`right from Alice. As we talked about in the Dell case, the Board has already
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`found that the categories are exemplary and not exhaustive.
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`And we had no obligation to use the particular categories identified
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`in Alice in our petition, which seems to be what the patent owner has
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`argued. But even if we were to look at the particular types of abstract ideas
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`specifically discussed in Alice, patent owner is still wrong about whether
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`they are just an abstract idea.
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`If we move on to slide 18, Alice identified as a category of abstract
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`idea a method of organizing human activity. And the abstract idea from the
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`'137 patent claims is, in fact, a method of organizing human activity. The
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`patent owner emphasized in their response the patent's budgeting by
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`categories, but this is just a fundamental economic practice. Budgeting by
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`categories of spending, not surprisingly, has been performed by hand for
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`decades.
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`So I want to move on to the second step from Alice, the lack of an
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`inventive step. I already talked about claim 1 and there isn't really anything
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`more in claim 1. So I want to address some of the other claim elements.
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`The patent owner's expert, as we show on slide 20, admitted that databases
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`were known. He admitted, as we show on slide 21, communication medium
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`was known. If we look in slide 22, we can see that the patent itself describes
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`the receiving device in terms of known structures which, as we know, cannot
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`provide an inventive concept.
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`The patent owner's expert also admitted, as we have on slide 23,
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`that creating user-selected categories and preset limits were functions that
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`can be done by a person. No technology is required to do that. And their
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` 9
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`expert admitted, as we show on slide 24, that a person can also determine
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`transaction summary data in their head. As we discussed in the petition, the
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`dependent claims do not add anything beyond routine ways of collecting and
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`organizing transactions and significant post-solution activity, things like
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`that, sometimes particular technological environments such as the Internet or
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`e-mail, all things that the Board and the Federal Circuit have said are not
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`enough. Throughout the claims there's no particular machine or
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`transformation that would render the patented claims patent-eligible.
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`So how does the patent owner respond to all this? They argue, if
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`we could move to slide 25, that the recited profile key to a user identity is a
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`structural limitation that renders the claim somehow patent-eligible.
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`But this provides no inventive concept. Their expert could not
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`identify any place where the specification discusses the keying of the
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`database. And in fact, neither the claims nor the specification provide any
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`detail on how the keying is accomplished. Moreover, if we look to the next
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`slide, 26, keying a profile to a user identity was known, as we discussed in
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`our reply.
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`Finally, if you could jump to slide 32, please, just want to note that
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`two district courts have already found the '137 claims invalid under
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`Section 101.
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`I'm going to switch it over to Mr. Lantier to address the '701
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`patent.
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`JUDGE GIANNETTI: Before you do, I would like you to finish
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`that thought. What do you think the impact is of these two district court
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`decisions?
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` 10
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
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`MR. STEINBERG: I think they are informative. Obviously, you
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`are not bound by them, but they have addressed the same points. They have
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`looked at it and said it's just an abstract idea with no inventive concept. And
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`I think it is fairly informative to see how two other courts have already
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`looked at the same issues.
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`Now, they looked at -- didn't necessarily look at all the claims. So
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`there is a difference between what the Board is going to do with its decision
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`and what the district courts have done.
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`JUDGE GIANNETTI: Are those decisions on appeal right now?
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`MR. STEINBERG: That's my understanding, yes.
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`JUDGE GIANNETTI: What is the status?
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`MR. STEINBERG: I believe they are in briefing.
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`JUDGE GIANNETTI: They are being briefed?
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`MR. STEINBERG: Yes.
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`JUDGE GIANNETTI: What is the impact, if any, of the Federal
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`Circuit's DDR decision on this patent?
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`MR. STEINBERG: I don't think the DDR case is particularly
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`relevant to this case. We'll talk about it more when we get to the '382 patent.
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`JUDGE GIANNETTI: Why not?
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`MR. STEINBERG: Because I think the DDR specifically
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`emphasizes that the claims in that case described a specific way how to
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`implement the invention, and there is simply no way or how to implement
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`the invention that's described in the claims or even really the specification of
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`the '137 patent. Therefore, the DDR analysis, which really found detailed
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` 11
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`claims, doesn't really apply here. If anything, I think it shows what it takes
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`to make a claim patent-eligible, and that is simply not in the '137 patent.
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`JUDGE GIANNETTI: Thank you, Mr. Steinberg.
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`MR. STEINBERG: Thank you.
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`MR. LANTIER: Thank you, Your Honors. Good morning. I'm
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`Greg Lantier and will be presenting on behalf of petitioners in the 29
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`proceeding. This is the proceeding that concerns the '701 substitute billing
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`data patent.
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`Slide 2 of the slide presentation sets forth an outline of what I
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`would like to cover over about the next ten minutes. After providing a brief
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`overview of the '701 patent I'll address the client construction issue that was
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`raised by the patent owner in its patent owner response, but I hope to spend
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`the majority of the time discussing why the claims in the '701 patent are
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`unpatentable under Alice regardless of whether the word "client" is
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`understood in the way that the patent owner advocates and the way that we
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`advocate.
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`As Mr. Steinberg noted, I don't plan to address separately whether
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`the Board had the authority to institute this proceeding on the basis of
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`Section 101 unless there are specific questions.
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`Slide 5 shows the abstract of the '701 patent. And that abstract
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`states that the '701 patent describes a method and apparatus for shielding a
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`user's private billing data such as credit card information or other billing
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`arrangements but distributing different billing data to businesses during
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`commerce therewith.
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`
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` 12
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`And the problem the '701 patent aims to solve is that credit card
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`and other personal account information is vulnerable to theft from merchants
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`who keep that information on file. That's a problem that existed prior to the
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`existence of the Internet and it's a problem that still exists today.
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`Moving to slide 6, the solution that the '701 patent proposes is the
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`use of a concept -- is the concept of using something called substitute billing
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`data. And substitute billing data is akin to an alias that allows a purchaser to
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`make a purchase from a merchant without disclosing his or her actual credit
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`card or other account information. That way even if the merchant's files or
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`computer systems are later compromised, the purchaser's actual credit card
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`number of is safe. The patent states that the substitute billing data is owned
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`or controlled by something called a billing service.
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`Turning to slide 7, the billing service is an intermediary. It's, in
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`effect, a middleman that provides the consumer with substitute billing data
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`to use with a specific business. As the patent states at column 3, lines 8 to
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`11, in one embodiment the billing service facilitates commercial transactions
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`by generating substitute billing data that the Client 100 can use when
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`engaging in commercial transactions with Businesses 102.
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`Turning then to a representative claim which we've displayed on
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`slide 8, this is claim 1 of the patent, claim 1 describes a method for a user to
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`provide substitute billing data in lieu of personal billing data by way of an
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`electronic device, and it contains four steps. The first step is that the device
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`requests distinct substitute billing data for use to make purchases from two
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`distinct businesses.
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`
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` 13
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
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`The second step is that a billing service provide substitute billing
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`data to the user for use with those two businesses. And the third and fourth
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`steps are that the user uses the electronic device to make a purchase from
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`each of the two different businesses.
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`There is nothing else in this claim. It does not specify how the
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`electronic device identifies the first or second businesses. It doesn't specify
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`how the billing service generates the substitute billing data. And it doesn't
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`specify how the billing service associates the substitute billing data with
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`each of the two distinct businesses.
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`That brings us to the two disputed issues and those are shown on
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`slide 9. The first is whether the term "client" means only a computing
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`device or encompasses something broader that would also include a user of
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`that device. And the second issue is whether the claims describe
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`patent-eligible subject matter under Alice.
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`I will pause here to note that this Board is not the first adjudicator
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`to reach this issue. There is one Court that has decided the issue of whether
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`the patented claims in the '701 are valid or invalid under Section 101, and
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`that was the decision in Delaware in December finding all claims invalid.
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`If we could turn to slide 11, I will briefly address the client issue,
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`but I would like to note that I am only addressing this issue because it's the
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`only argument effectively that the patent owner raised. In our view, whether
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`or not the term "client" is limited to a computing device doesn't impact the
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`Alice analysis. Of course in Alice the parties stipulated that all claims
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`required the use of a computer.
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` 14
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`Turning then to slide 11, after the Board instituted this proceeding,
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`the patent owner asserted that the Board fundamentally misunderstood the
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`'701 patent because it failed to grasp that the word "client" is strictly limited
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`to a client computing device.
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`Now, that is incorrect for a couple of reasons. The first is, as an
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`initial matter, the word "client" is not a claim term and the Board need not
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`and should not engage in the exercise of construing that.
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`But if we turn to slide 13, in the event that the Board does reach
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`the issue of what the word "client" means in the '701 patent specification,
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`that specification cannot fairly be read as limiting a client strictly to a
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`computer device. For example, at column 4, lines 47 to 49, the client has
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`interests. In column 5, lines 52 to 55, the client has an intent. At column 6,
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`lines 18 to 21, the client owns a bank account. And beginning at column 6,
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`line 62, the client receives and reviews a paper billing statement. All of
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`these attributes are distinctly human and not something that one would
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`ordinarily expect a computer could do.
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`Moving then to slide 16, consistent with the disclosures of the '701
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`patent specification, computer science professor Greg Morrisett offered
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`testimony that "client" was often used in the art to refer to at least a human
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`user of a device and the patent owner never even challenged Dr. Morrisett's
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`opinions in a deposition.
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`In summary, especially under the broadest reasonable construction
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`standard, the term "client" in the '701 specification encompasses a human
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`user.
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` 15
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
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`Unless there are questions on that client issue, I will then turn to
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`the Alice analysis, the second issue presented, and we'll begin that on slide
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`22.
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`I'm going to jump right into the steps of Alice. Under step 1 of
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`Alice, the claims of the '701 patent are directed to an abstract idea, and that's
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`true whether or not the word "client" is a human or strictly a computing
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`device. That abstract idea is protecting personal billing data through the use
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`of substitute billing data which is provided by an intermediary called the
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`billing service.
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`Turning to slide 24, this is exactly the type of abstract concept that
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`the Board found abstract in Fidelity, that the Federal Circuit found abstract
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`in buySAFE and that the Supreme Court found abstract in Alice.
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`In Alice, for example, the claims were directed to mediated
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`settlement performed using computers. The claims described the creation
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`and use of shadow accounts by an intermediary that facilitated that
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`computerized settlement transaction. In the '701 patent, the abstract concept
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`is a different abstract concept. It's not the same abstract concept but it's of
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`the same type. It involves a business arrangement that's facilitated by
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`computers.
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`Here the patent claims to have improved the security of online
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`shopping through the use of an entirely non-technological innovation, and
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`that is the use of substitute account numbers supplied by a third-party billing
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`service. This is again precisely the type of abstract concept that is not
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`eligible for patenting.
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` 16
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`Turning then to slide 29 and step 2 of the Alice analysis, there is
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`nothing in the remainder of the claims but the use of conventional computer
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`network components performing ordinary tasks. And this is once against
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`true whether the term "client" is a computing device or not. Neither the
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`specification nor the claims provide any implementation level detail for the
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`aspects of the claims that the patent owner now argues are relevant for the
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`Alice analysis. They don't specify how substitute billing data is generated.
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`They don't specify how substitute billing data is associated with a business.
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`Turning to slide 30, what the limitations of the '701 patent do recite
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`are well-known conventional computing components performing
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`well-known tasks such as the use of electronic devices to communicate over
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`a network.
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`Now, in its arguments, the patent owner has failed to identify a
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`single claim limitation in any of the claims that it can reasonably contend
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`reflect a technologically unconventional use of computers or the Internet.
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`Instead, the patent owner's arguments are all directed to contentions that the
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`limitations reflect unconditional business relationships between a purchaser,
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`a merchant and this third-party billing service performed over the Internet in
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`the context of online shopping.
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`As held in Alice and in numerous other cases, the addition of such
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`conventional computing components performing conventional tasks is
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`insufficient to meet step 2.
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`Turning to slide 31, then, in conclusion, as, Judge Robinson has
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`already held, the '701 patent claims fail both steps of the Alice analysis and
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`are therefore invalid. That's the conclusion of the presentation as to this
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`
`
`
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` 17
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`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`case. And I would like to thank the Board for its time and attention to this
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`patent. Mr. Steinberg will address the following two cases.
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`JUDGE GIANNETTI: Mr. Lantier, before you sit down, I want to
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`ask you the same question that I asked your colleague. What effect, if any,
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`does DDR have on this patent -- the patentability of this claim?
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`MR. LANTIER: The short answer, Your Honor, is I don't think
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`the DDR in its facts is very relevant at all to the '701 claims. They are
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`fundamentally different. DDR involved claims that the Federal Circuit
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`described as altering the way in which the Internet worked.
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`Here there's no contention. Their expert has acknowledged, the
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`patent acknowledges, the briefing acknowledges that the way in which the
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`'701 claims function does not impact the ordinary operation of a consumer
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`transaction over the Internet except that it introduces this substitution of -- of
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`a substitute account number for another. There's no claim, as there was in
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`DDR, that somehow the way in which the Internet operates is now
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`technologically changed because of the patent.
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`I think the DDR does help illustrate why the '701 claims are
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`directed to unpatentable subject matter and that is because the DDR claims
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`demonstrate that if you have a technological invention that is directed to
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`improving the technology itself, improving the way in which a computer
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`functions or the way in which the Internet operates technologically, that
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`remains patent-eligible subject matter. But what you cannot do under
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`Section 101 is patent an abstract concept, a way of organizing human
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`activity. And that's exactly what was held in Alice.
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` 18
`
`

`

`Cases CBM2014-00028, CBM2014-00029, CBM2014-00030,
`CBM2014-00033; Patent Nos. 8,083,137, 7,664,701, 7,603,382, 7,260,587
`
`
`I would like to correct one small statement that was made earlier
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`and this is just a factual statement about the status of the appeal of the other
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`two cases. Mr. Steinberg was correct that the Capital One case is on appeal.
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`The briefing is, in fact, concluded and they are awaiting oral argument being
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`set in that case. The M&T Bank case has not yet been appealed.
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`JUDGE GIANNETTI: Has not been appealed?
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`MR. LANTIER: Has not yet been appealed. There's not a final
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`order in that case yet, Your Honor.
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`JUDGE GIANNETTI: Thank you. Mr. Steinberg?
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`MR. STEINBERG: Thank you. So I'll move on to the '382 patent.
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`As with the other patents, if we move on to slide 2, we provide an overview
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`of the '382 patent and then go through the Alice test. Both the abstract idea
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`and that the claims lack an inventive concept and then address some of the
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`patent owner's arguments. For example, I think as we'll show, they have
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`read the standard too narrowly and contrary to precedent.
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`So we move on, please, to slide 4. The '382 patent was filed in
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`November of 2004 claiming priority to a provisional fro