Paper 32
`
`Trials@uspto.gov
`Date: April 24, 2015
`
`571-272-7822
`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,
`Patent Owner.
`____________
`
`Case CBM2014-00030
`Patent 7,603,382 B2
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`Trials@uspto.gov
`Date: April 24, 2015
`
`571-272-7822
`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,
`Patent Owner.
`____________
`
`Case CBM2014-00030
`Patent 7,603,382 B2
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`Bank of America, N.A., PNC Financial Services Group, Inc., and
`PNC Bank, N.A. (“Petitioners”) filed a Petition (Paper 6, “Pet.”) requesting
`institution of a covered business method patent review of claims 1–23 of
`U.S. Patent 7,603,382 B2 (“the ’382 patent”) pursuant to 35 U.S.C. § 321.
`Patent Owner, Intellectual Ventures I LLC, filed a preliminary response.
`Paper 12 (“Prelim. Resp.”). Based on these submissions, we instituted trial
`as to all claims of the ’382 patent. Paper 14 (“Institution Dec.”).
`After institution, Patent Owner filed a Response (Paper 19, “PO
`Resp.”), and Petitioners filed a Reply (Paper 22, “Pet. Reply”). In addition,
`the parties rely upon expert testimony. Petitioners proffered the Declaration
`of Brad Myers, Ph.D. (Ex. 1004, “Myers Decl.”) with the Petition. Patent
`Owner proffered the Declaration of Peter Martin (Ex. 2003, “Martin Decl.”)
`with its Response. In addition, a transcript of Mr. Martin’s deposition (Ex.
`1037, “Martin Dep.”) was submitted by Petitioners. No deposition transcript
`was filed for Dr. Myers.
`Oral Hearing was held on March 2, 2015. A transcript of the
`argument is entered in the record as Paper 31 (“Hearing 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 Petitioners have shown by a preponderance of the
`evidence that claims 1–23 of the ʼ382 patent are unpatentable.
`
`
`I. INTRODUCTION
`A. The ’382 Patent (Ex. 1001)
`The ’382 patent, titled “Advanced Internet Interface Providing User
`Display Access of Customized Webpages” issued on October 13, 2009.
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`The ’382 patent describes a system for delivering information from an
`information provider to an information user that is selectively tailored
`toward the capabilities of the information provider and the needs of the
`information user. Ex. 1001, 2:3–6.
`Figure 3 of the ’382 patent is reproduced below.
`
`
`
`Figure 3 is a block diagram of the interface between information users
`
`and information providers over the Internet according to the invention. Id. at
`2:35–37. Information users may tailor their information user profile as
`needed to acquire specific information. Id. at 3:40–49. The user profile is a
`file that includes a plurality of fields containing information specific to the
`user. Id. at 3:53–55. This profile is stored in computer memory and
`transferred to an information provider when a Web page is accessed. Id. at
`4:11–14.
`B. Related Matters
`Petitioners state that they have been sued for infringement of the ’382
`patent in the following cases: Intellectual Ventures I LLC v. PNC Financial
`Services Group, Inc., No. 2:13-cv-00740 (W.D. Pa. filed May 29, 2013) and
`Intellectual Ventures I LLC v. Bank of America Corp., , No. 3:13-cv-00358
`
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`(W.D.N.C. filed June 12, 2013). Pet. 1 (citing Exhibits 1006 and 1007).
`Patent Owner has identified four additional lawsuits involving the ’382
`patent. Paper 9.
`In addition, Petitioners have submitted two memorandum decisions
`entered in co-pending lawsuits. Petitioners have submitted an April 16,
`2014, Memorandum Opinion in Intellectual Ventures I LLC v. Capital One
`Financial Corp., Civil Action No. 1:13-cv-00740 (E.D. Va.) (Ex. 1032) and
`a December 18, 2014 Memorandum Opinion in Intellectual Ventures I LLC
`v. Manufacturers & Traders Trust Co., Civil Action No. 13-1274-SLR (D.
`Del.)(Ex. 1039).
`C. Illustrative Claims
`The ʼ382 patent has 23 claims, all of which are being challenged in
`this proceeding. Claims 1, 7, 16, and 21 are independent. Claim 1 is a
`system claim and claims 7, 16, and 21 are method claims. Illustrative claims
`1 and 7 are reproduced below:
`1. A system for providing web pages accessed from a
`web site in a manner which presents the web pages tailored to
`an individual user, comprising:
`an interactive interface configured to provide dynamic
`web site navigation data to the user, the interactive interface
`comprising:
`a display depicting portions of the web site visited by the
`user as a function of the web site navigation data; and
`a display depicting portions of the web site visited by the
`user as a function of the user’s personal characteristics.
`
`7. A method of generating a web page comprising:
`generating a plurality of data streams, wherein each data
`stream is associated with a particular portion of the web page,
`and wherein each data stream is stored in a computer memory;
`and
`
`
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`4
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`changing at least one of the particular portions of the web
`
`page as a function of time.
`
`D. The Asserted Ground
`Trial was instituted on the sole ground advanced by Petitioners: that
`claims 1–23 are unpatentable as directed to patent-ineligible subject matter
`under 35 U.S.C. § 101. Pet. 13; Institution Dec. 15.
`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 Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR § 42.300(b); In re Cuozzo
`Speed Techs., LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015).
`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).
`In instituting trial, we determined that, at that stage, only two terms
`required construction. Institution Dec. 5–7. Patent Owner agrees that the
`terms not previously construed by the Board do not require construction. PO
`Resp. 6. Patent Owner requests that the Board reconsider its construction of
`the two terms. Id. 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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`
`1. “interactive interface”— Independent Claims 1, 16, and 21
`The Board adopted the construction of “interactive interface” as “an
`Internet interface that provides a medium for information users to
`communicate with information providers.” Institution Dec. at 5–6; Pet. 15.
`Patent Owner contends that neither Petitioners nor the Board provides
`any evidence that “interactive” and “Internet” have the same meaning,
`“either in the ʼ382 patent or as understood by one of skill in the art.” PO
`Resp. 7. Patent Owner further contends that Board should adopt a
`construction requiring the interface to be a “selectively tailored medium.”
`Id. at 8–9.
`Petitioners respond that there are not any claim terms “that could
`reasonably be construed in a manner that would impact the 35 U.S.C. § 101
`analysis.” Reply 11. Petitioners further contend that the Board’s
`construction was nevertheless correct because the patent specification and
`claims make it clear that it is the information that is “selectively tailored,”
`not the information medium. Id. at 11–12.
`We are not convinced of any error in our initial construction of
`“interactive interface” as an Internet interface. Institution Dec. 6.
`Petitioners’ reliance on the Myers Declaration and the ʼ382 patent’s
`interchangeable use of interactive and Internet to describe the interface are
`persuasive. Pet. 15, 17 (citing Myers Dec., Ex. 1004 ¶ 52), 18 (citing Ex.
`1001, Title, Abstract). We, therefore, determine that the correct construction
`of “interactive interface” is “an Internet interface that provides a medium for
`information users to communicate with information providers.”
`
`
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`2. “display depicting portions of [the/a] web site visited by the user
`as a function of [the] web site navigation data”— Independent Claims 1, 16,
`and 21
`
`The Board adopted the parties’ position that “web site navigation
`data” should be interpreted as “data representing portions of the web site
`visited by the user.” Institution Dec. 7. However, the Board construed the
`entire limitation as “data representing portions of the web site visited by the
`user and display of same.” Id.
`Patent Owner contends that to the extent this construction “requires
`the depicted portions of the website to be the exact same as the website
`navigation data,” it is improper. PO Resp. 10. Patent Owner, therefore,
`contends that “website navigation data” should be replaced by “data
`representing portions of the web site visited by the user.” Id. at 10–11.
`Petitioners contend that even if Patent Owner’s construction were
`adopted the claims are unpatentable under 35 U.S.C. § 101. Reply 12–13.
`We are not persuaded by Patent Owner’s argument that there is a need to
`change our original construction. We agree also with Petitioners that this
`construction is not necessary to our decision.
`3. Other terms
`Several other claim terms are discussed in Patent Owner’s Response
`“in case Petitioner contests the Board’s finding on these terms.” PO Resp. 6.
`As Petitioners have not contested these terms, in light of Patent Owner’s
`statement we see no need to consider them further.
`
`
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`
`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) (quoting
`Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
`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,
`“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
`
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`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 ʼ382 Patent Claims Directed to Abstract Ideas?
`
`In our Institution Decision, we determined that the ʼ382 patent claims
`
`are directed to the abstract idea of tailoring an information provider’s web
`page based on data about a particular user. Institution Dec. 12. Patent
`Owner responds that the claims do not fall within any of the “categories of
`abstract ideas enumerated by the Supreme Court.” PO Resp. 15. Citing
`Alice, Patent Owner asserts that the claims are not directed to “an idea itself,
`a mathematical formula or algorithm, a fundamental economic practice long
`prevalent in our system of commerce, or a method of organizing human
`activity.” Id. (internal quotation marks omitted). Therefore, Patent Owner
`asserts, the first step in the Alice/Mayo test is not met. Id. at 15–21.
`Petitioners respond that in Alice, the Supreme Court expressly
`
`declined to limit the categories of unpatentable abstract ideas as suggested
`by Patent Owner. Reply 3. We are persuaded by the Supreme Court’s
`opinion in Alice that Petitioners are correct, and that these enumerated
`categories were not intended as exclusive. Specifically, the Court wrote:
`“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.
`
`We are influenced also by the evidence from Patent Owner’s expert,
`who testified as follows:
`
`I’m trying to make clear that the patent is described at
`what may appear to be a fairly high abstract level, because it
`was generally known by persons of skill in the art that there are
`
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`multiple ways to go about reducing the invention to practice
`depending upon the technologies that they have at hand. And it
`wasn’t the patent’s job to be that specific at the time.
`
`I shouldn’t say it wasn’t the patent’s job. The inventor
`did not choose to describe at that level of detail.
`
`
`Ex. 1037, 47:12–23 (emphasis added). We therefore conclude that the first
`step in the Alice/Mayo test is met for claims 1–23.
`
`
`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
`
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`digitizing device to extract data from a document was well-known at the
`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 that the claims of the ʼ382 patent “do not
`preempt the alleged abstract idea and are transformed by an inventive
`concept.” PO Resp. 21. Claims 1–6 and 16–23 use the claimed interactive
`interface to provide tailored content based upon the user’s personal
`characteristics and the user’s website navigation data. Id. at 23. For these
`claims, Patent Owner contends there is no preemption because “there are a
`near infinite number of ways to tailor a web page based on data about a
`particular information user without tailoring based on the website navigation
`data.” Id. at 24. In addition, Patent Owner challenges the assertion that the
`“inventive concept” of these claims was conventional and routine by the
`filing date of the ʼ382 patent. Id. at 25–30. Similarly, as to claims 7–15,
`which tailor a web page as a function of time, Patent Owner asserts that
`there is no preemption. Id. at 24–25.
`
`In response, Petitioners contend that the ʼ382 patent fails to indicate
`how to tailor web pages or use website navigation data. Reply 5–6.
`Petitioners rely in part on alleged admissions by Patent Owner’s expert on
`cross-examination. Id. at 6–7. For example, Petitioners assert that Patent
`Owner’s expert admits that the prior art depicted web navigation data for
`multiple web sites and showed creating a visitation history. Id. at 6.
`
`Petitioners assert also that the Patent Owner’s expert agreed that all
`technical aspects of the claims were well-known in the art before the
`
`
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`provisional application that led to the ʼ382 patent was filed. Id. at 7 (citing
`
`Ex. 1037 at 18:17–23 (web pages); 20:5–10 (web sites); 21:12–15
`(displays); 21:23–25 (data files); 22:13–16 (memory); 23:2–7, 23:20–24:14
`
`(user profiles)). Responding to Patent Owner’s argument that there is no
`preemption, Petitioners assert “[b]ecause the claims lack any implementation
`details . . . preemption remains an issue.” Reply 9 (citing Ex. 1037 103:11–
`20). Citing testimony from Patent Owner’s expert, Petitioners assert “[t]he
`limitless nature of the ʼ382 patent claims raises a serious preemption
`concern.” Id. at 9 (citing Gottschalk, 409 U.S. at 68 ).
`
`We are convinced by Petitioners’ argument that the ʼ382 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 do not “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.
`1. Claim 1
`
`
`Taking claim 1 as an example, the system defined by that claim
`comprises three elements: an interactive interface and two displays. When
`asked at oral argument to respond to Petitioners’ argument that everything in
`the claim was known, Patent Owner’s counsel argued that Petitioners
`provided no evidence that an “interactive interface” was known. Hearing Tr.
`42:3–11.
`
`Petitioners assert that the interactive interface provides a way for
`interaction between user and the web server and is a basic functionality of
`the Internet. Id. at 21:11–21:15. Petitioners further contend the Internet is
`
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`by its nature is an interactive interface. Id. at 21:16–18. Petitioners assert
`also that the claim provides no details about performing the display elements
`of the claim. Id. at 20:21–21:2. Unchallenged testimony from Petitioners’
`expert supports this argument.1 Ex. 1004, ¶¶ 30–31. We are persuaded that
`these are conventional elements.
`
`2. Claim 7
`Claim 7 includes the method step of generating a plurality of data
`
`streams. During oral argument, in response to a question from the panel
`asking him to identify which elements in claim 7 were not conventional
`technology, Patent Owner’s counsel pointed to this feature. Hearing
`Tr. 37:19–38:4. However, Petitioners respond that the patent does not
`describe how the streams are generated. Id. at 65:14–23. This is confirmed
`by Patent Owner’s expert. Ex. 1037, 36:21–37:16. Furthermore,
`Petitioners’ expert, Dr. Myers, testified that the only technological
`component in the claim, a computer memory, was “a well-known and
`standard computer component long before the earliest filing date of the ʼ382
`patent.” Ex. 1004 ¶ 36.
`3. Claims 2–4, 5, and 6
`
`
`For the dependent claims 2–4 and 6, we credit Dr. Myers’s testimony
`that the additional elements are conventional. Ex. 1004 ¶ 32. Similarly as to
`claim 5, we are persuaded by Petitioners’ argument that the added “data file”
`is used for the purpose of gathering data. Pet. 31; Ex. 1004 ¶ 33. This
`conventional means for data gathering is not a meaningful limitation on the
`abstract idea. Pet. 31; Content Extraction, 776 F.3d at 1348 (no inventive
`
`
`1 As no deposition transcript was filed (see supra), the record contains no
`cross-examination of Dr. Myers’s testimony.
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`concept in use of “generic” scanner and computer).
`4. Claims 8, 9, 10, 11–14, and 15
`
`
`For the dependent claims 8, 9, and 15, we credit Dr. Myers’s
`testimony that the added elements were conventional web page content as of
`the earliest filing date of the ʼ382 patent. Ex. 1004 ¶ 37. Likewise, for
`dependent claims 10 and 11–14, we credit Dr. Myers’s testimony that the
`features added were conventional features of web pages or information that
`was commonly provided on web pages at the earliest filing date of the ʼ382
`patent. Ex. 1004 ¶¶ 38, 39.
`5. Claims 16–20
`
`
`Independent claim 16 is a method claim similar to system claim 1
`discussed supra. We, therefore, credit Dr. Myers’s testimony that the
`claimed method uses “conventional computing components and web site
`features in their conventional ways.” Id. ¶¶ 42–43. We likewise credit his
`testimony regarding dependent claims 17–20. Id. ¶ 44. We conclude that
`those claims add elements that are well known and conventional and which
`do not meaningfully limit the scope of the claims. Id.
`6. Claims 21–23
`
`
`Independent claim 21 is a method claim similar to method claim 16.
`We credit Dr. Myers’s testimony that the ʼ382 patent specification does not
`describe how the user’s “web site navigation data” and the “received data
`from the user profile” are used. Id. ¶ 46. We also credit Dr. Myers’s
`testimony that the claim uses “conventional computing components and web
`site features in their conventional ways.” Id. ¶¶ 47–48. Finally, we credit
`Dr. Myers’s testimony that dependent claims 22 and 23 add steps that were
`well-known as of the earliest filing date of the ʼ382 patent. Id. ¶ 49.
`
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`Patent Owner’s expert does not rebut convincingly Dr. Myers’s claim-
`
`by-claim analysis. Instead, Patent Owner’s expert addresses the claims in
`two groups only. Ex. 2003, ¶¶ 26–28. We find this approach unconvincing,
`and therefore, credit Dr. Myers’s testimony as to specific claims over the
`testimony of Patent Owner’s expert.
`
`We are therefore persuaded, by a preponderance of the evidence, that,
`like the claims considered in Ultramercial, claims 1–23 of the ʼ382 patent
`simply instruct the practitioner to implement the abstract idea with routine,
`conventional activity. Ultramercial, 772 F.3d at 715. For the reasons stated
`above, none of the elements recited in the claims, including the “interactive
`interface” and the “plurality of data streams,” transforms the nature of the
`claims into patent-eligible subject matter. We credit the cited testimony of
`Patent Owner’s expert that the ʼ382 patent lacks implementation details
`because it is written at a “fairly high abstract level.” See supra. As a result
`of this choice by the patentee, the risk of preemption is great.
`Finally, Patent Owner relies on the Federal Circuit’s decision in DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR
`Holdings, the Federal Circuit decided that although the patent claims at issue
`there involved conventional computers and the Internet, the claims
`addressed the problem of retaining website visitors who, if adhering to the
`routine, conventional functioning of Internet hyperlink protocol, would be
`instantly transported away from a host’s website after “clicking” on an
`advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
`“[T]he claimed solution is necessarily rooted in computer technology in
`order to overcome a problem specifically arising in the realm of computer
`networks.” Id.
`
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`The DDR Holdings Court went on to distinguish the invention from
`
`that in Ultramercial:
`Unlike the claims in Ultramercial, the claims at issue here
`specify how interactions with the Internet are manipulated to
`yield a desired result—a result that overrides the routine and
`conventional sequence of events ordinarily triggered by the
`click of a hyperlink. . . . When the limitations of the ’399
`patent’s asserted claims are taken together as an ordered
`combination, the claims recite an invention that is not merely
`the routine or conventional use of the Internet.
`
`DDR Holdings, 773 F.3d at 1258–59. As the Court went on to explain:
`It is also clear that the claims at issue do not attempt to
`preempt every application of the idea of increasing sales by
`making two web pages look the same, or of any other variant
`suggested by [defendants]. Rather, they recite a specific way to
`automate the creation of a composite web page by an
`“outsource provider” that incorporates elements from multiple
`sources in order to solve a problem faced by websites on the
`Internet.
`Id. at 1259 (emphasis added).
`This case involves an invention more similar to that in Ultramercial
`
`than DDR Holdings. As discussed supra, the claims in the ʼ382 patent
`describe conventional activity and technology and provide no
`implementation details. The Internet is used in its normal, expected, and
`routine manner. The claims contain little more than a directive to “use the
`Internet” to implement the abstract idea embraced by the claims. The
`transformation of an abstract idea into patent-eligible subject matter
`“requires ‘more than simply stat[ing] the [abstract idea] while adding the
`words ‘apply it.’’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at
`1294). In contrast, the patent claims in DDR Holdings, as described by the
`Court, “specify how interactions with the Internet are manipulated to yield a
`
`
`
`16
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`desired result.” DDR Holdings, 773 F.3d at 1258.
`
`D. Patent Owner’s Argument that the ʼ382 Patent is Not a Covered Business
`Method Patent
`
`This argument was addressed in the Institution Decision at pages 8–
`
`11. Patent Owner contends that the specification and claims of the ʼ382
`patent are directed to a technological invention, namely, “to improve the
`interface and display of information for web pages by dynamically tailoring
`select portions of the web page.” PO Resp. 31.
`
`In our Institution Decision, we determined that the ʼ382 patent is a
`covered business method patent because at least one claim (claim 11) is not
`directed to a technological invention and meets the other requirements of the
`statute. Institution Dec. 9. Our reasoning was that the only technology
`mentioned in the claim is a computer memory, which is generic in nature.
`Id. Patent Owner challenges this determination. PO Resp. 31–43. We have
`reviewed Patent Owner’s arguments and are persuaded that our
`determination is supported by a preponderance of the evidence, including
`testimony from Patent Owner’s expert that computer memory was well
`known by May 1998 by those of ordinary skill in the art. Ex. 1037, 22:13–
`16. Thus, there is no technological feature in that claim that is novel and
`unobvious. See 37 C.F.R. § 42.301(b).
`
`Patent Owner’s other arguments are unavailing. For instance, Patent
`Owner asserts that the underlying software was overlooked. PO Resp. 32.
`Patent Owner’s expert testified, however, that the patent does not describe
`software or algorithms. Ex. 1037, 30:12–22; 70:7–21. Patent Owner
`contends there is insufficient evidence that certain elements in the claims are
`
`
`
`17
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`not novel or obvious. PO Resp. 33–34. As discussed above, there was
`persuasive evidence from both experts that the patent claim elements were
`conventional. See supra. Finally, Patent Owner’s discussion is
`unconvincing to the extent that it focuses on claims other than claim 11,
`which was the basis for instituting trial. PO Resp. 35 (discussing claims 1,
`16, and 21).
`
`
`E. Patent Owner’s Arguments that Section 101 Is Not a Proper Ground
`Upon Which a Covered Business Method Patent Review May Be Maintained
`
`This argument was addressed in the Institution Decision at pages 10–
`
`11. Patent Owner relies on legislative history of the AIA to demonstrate the
`existence of two alleged exclusions from covered business patent review.
`PO Resp. 44–48.
`The first is an exception for “novel software tools.” Id. at 44. Patent
`
`Owner contends that the ʼ382 patent claims are directed to such tools, and
`they are novel tools because Petitioners have not challenged them as
`unpatentable under 35 U.S.C. §§ 102 or 103 in this proceeding. Id. at 44–
`45. We do not need to reach the question of whether such an exception
`exists, because we are not convinced that the ʼ382 patent is directed to a
`“software tool.” Nor do we reach the question of what “novel” means in this
`context. Patent Owner points to no persuasive evidence that the ʼ382 patent
`claims are directed to developing software tools as described in the
`legislative history quoted. To the contrary, the expert testimony of record
`establishes that the patent does not describe software or algorithms.
`Ex. 1037, 30:12–22; 70:7–21.
`
`Nor is there any persuasive evidence that the second alleged exception
`
`
`
`18
`
`
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`CBM2014-00030
`Patent 7,603,382 B2
`
`urged by Patent Owner, for patents related to business “across sectors,”
`would apply, if such an exception exists. PO Resp. 46–48. From the quoted
`statement by Senator Leahy, it appears that the so-called exception is merely
`a restatement of the “financial products or services” requirement of the
`statute. Id. at 46. In any event, the exception would not be applicable to at
`least claim 11, which includes explicit recitation of a condition “associated
`with the price of products sold by the company.” The Board relied on this
`claim language as meeting the financial products or services requirement
`(and not merely the assertion of the ʼ382 patent against the financial
`industry) in instituting review. Institution Dec. 8–9.
`
`Finally, Patent Owner asserts that the Board may not consider subject
`matter eligibility challenges under 35 U.S.C. § 101 as part of a covered
`business method patent review because § 101 is not a “condition for
`patentability.” PO Resp. 48–49. For the reasons stated in our Institution
`Decision (at 10–11) we are not convinced by Patent Owner’s argument.
`
`
`
`
`19
`
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`CBM2014-00030
`Patent 7,603,382 B2
`
`
`III. CONCLUSION
`We determine that Petitioners have demonstrated, by a preponderance
`
`of the evidence, that claims 1–23 of the ʼ382 patent are not patentable
`because they are directed to ineligible subject matter under 35 U.S.C § 101.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`
`ORDERED that claims 1–23 of U.S. Patent No. 7,603,382 B2 have
`
`been shown to be unpatentable; and
`
`FURTHER ORDERED that this is a Final Decision. Parties to the
`proceeding seeking judicial review of the decision must comply with the
`notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`20
`
`
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`CBM2014-00030
`Patent 7,603,382 B2
`
`
`
`
`
`PETITIONERS:
`
`Donald R. Steinberg
`Monica Grewal
`WILMER CUTLER PICKERING
`don.steinberg@wilmerhale.com
`monica.grewal@wilmerhale.com
`
`PATENT OWNER:
`
`Henry A. Petri, Jr.
`James P. Murphy
`NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
`henry.petri@novakdruce.com
`james.murphy@novakdruce.com
`
`Don Coulman
`dcoulman@in
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