Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Entered: June 25, 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,
`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.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 CFR § 42.71(d)
`
`
`571-272-7822
`
`Paper 34
`Entered: June 25, 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,
`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.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Request for Rehearing
`37 CFR § 42.71(d)
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`INTRODUCTION
`Bank of America, N.A., PNC Financial Services Group, Inc., and
`
`PNC Bank, N.A. (“Petitioners”) requested 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. Paper 6 (“Petition” or “Pet.”). Patent
`Owner, Intellectual Ventures I LLC, filed a preliminary response. Paper 12
`(“Prelim. Resp.”). We granted the Petition and instituted a trial as to all
`challenged claims. Paper 14 (“Institution Decision”).
`After institution, Patent Owner filed a Response (Paper 19, “PO
`Resp.”), and Petitioners filed a Reply (Paper 22, “Pet. Reply”). In addition,
`both parties relied 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 was entered in the record as Paper 31 (“Hearing Tr.”).
`In our Final Written Decision entered April 24, 2015 (Paper 32, “Final
`Decision”), we determined that Petitioners had shown by a preponderance of
`the evidence that all claims of the ʼ382 patent are unpatentable because they
`are directed to patent-ineligible subject matter under 35 U.S.C. § 101.
`
`Patent Owner requests rehearing of our Final Written Decision.
`Paper 33 (“Req. Reh’g”). Patent Owner challenges the conclusion that the
`claims of the ʼ382 patent are not patentable under § 101. Req. Reh’g 1.
`
`2
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`Patent Owner’s grounds for rehearing are that: (1) the Board
`
`misapprehended or overlooked “unrebutted expert testimony” in determining
`that the claims are not eligible under § 101 (Req. Reh’g 1) and (2) the Board
`“misapprehended or overemphasized” certain testimony from Patent
`Owner’s expert, Peter Martin. Id. at 2.
`
`
`For at least the reasons that follow, Patent Owner’s Request for
`Rehearing is denied.
`
`ANALYSIS
`1. Overview
`The applicable standard for a request for rehearing is set forth in
`
`37 C.F.R. § 42.71(d), which provides in relevant part:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify
`all matters
`the party believes
`the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, opposition, or a
`reply.
`
`In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
`
`(2014), 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. (citing Mayo, 132 S. Ct. at 1296–1297). In
`
`3
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`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).
`
`2. Evidence of “Inventiveness” Was Not Overlooked
`According to Patent Owner’s rehearing request, we overlooked the
`
`argument, from Patent Owner’s response, that “there was no evidence to
`support a finding that the combination of tailoring a web page based on web
`site navigation data was conventional.” Req. Reh’g 3. According to Patent
`Owner, “Petitioners never rebutted these points in Reply or in oral
`argument.” Id. Without such evidence, according to Patent Owner, the
`patentability of claims 1–6 and 16–23 should have been upheld. Id. at 4.
`
`We disagree that Patent Owner’s “inventive concept” argument was
`“never rebutted” (Req. Reh’g 3); in fact, it was challenged in Petitioners’
`Reply:
`[Patent Owner’s] supposed “inventive concept”—“delivering
`tailored web pages through an interactive interface as a function
`of web site navigation history”—fails to meet this standard. It
`is merely a restatement of the ’382 patent’s abstract idea (i.e.,
`“tailoring an information provider’s web pages based on data
`about a particular information user”). This “concept” fails to
`include how to tailor web pages or use the web site navigation
`data. It therefore cannot “ensure that the patent in practice
`amounts to significantly more than a patent upon the ineligible
`
`4
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`concept itself,” as required by Alice Corp.
`
`
`Pet. Reply 5–6 (footnote omitted). Nor are we persuaded that the argument
`was overlooked or misapprehended by the Board. The Board considered all
`arguments presented. The Board was not persuaded by Patent Owner’s
`argument on this issue. In fact, this argument was rejected by the Federal
`Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir.
`2014). The patent owner there argued “abstract ideas remain patent-eligible
`under §101 as long as they are new ideas, not previously well known, and
`not routine activity.” Ultramercial, 772 F.3d at 714. The Federal Circuit
`rejected this argument, concluding “[w]e agree with [defendant] that the
`claims of the ʼ545 patent are not directed to patent-eligible subject matter.”
`Id. Petitioners cite this very holding of Ultramercial in their response to
`Patent Owner’s “inventive concept” argument. Pet. Reply 5, n.1.
`
`We, therefore, did not overlook or misapprehend the “inventive
`concept” argument put forth by Patent Owner. We simply found Petitioners’
`argument more persuasive under the prevailing legal authorities, including
`Ultramercial.
`
`Finally, we are not persuaded by Patent Owner’s attempt to reargue
`the applicability of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
`(Fed. Cir. 2014), to the facts of this case. Req. Reh’g 5–7. DDR Holdings
`was discussed in our Final Decision at pages 15–17. There, we concluded
`that the facts of this case are closer to Ultramercial than DDR Holdings. Id.
`at 16. Patent Owner’s Rehearing Request takes issue with our conclusion
`but does not point to anything that was misapprehended or overlooked in our
`analysis. We, therefore, do not grant rehearing on that basis.
`
`5
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`2. Peter Martin’s Testimony Was Not “Misapprehended”
`Patent Owner contends that the Board misapprehended the testimony
`
`of its expert, Mr. Martin, in two respects. First, Mr. Martin’s statement that
`“the patent is described at what may appear to be a fairly high abstract level”
`was “misinterpreted” by the Board. Req. Reh’g 8. Second, the Board cited
`Mr. Martin’s testimony that the ʼ382 patent “does not describe software.”
`Id. According to Patent Owner, Mr. Martin made “clear statements to the
`contrary.” Id. at 8–9.
`
`The statements by Mr. Martin were not the only basis for the Final
`Decision. The first statement, regarding “abstract level,” was cited twice in
`the Final Decision. In the first instance, the citation followed a discussion of
`the first element of the Alice test. Final Dec. 9. Patent Owner’s main
`argument was that the ʼ382 patent did not fall within the categories of
`unpatentable, abstract ideas enumerated in Alice. Without reference to Mr.
`Martin’s testimony, the Board agreed with Petitioners that these enumerated
`categories are not exclusive. Id. The Board went on to state in a sentence
`that they were “influenced” by Mr. Martin’s testimony, which is then quoted
`in full, in determining that the patent is directed to an abstract idea. But the
`Board also had before it Dr. Myers’ testimony to the same effect. Myers
`Decl. ¶¶ 24–27. The second citation of this statement by Mr. Martin, also in
`a single sentence,1 follows a lengthy discussion of the patent claims based on
`the oral argument and Dr. Myers’ analysis. Final Dec. 11–14.
`
`Patent Owner’s rehearing request explains that in testifying, Mr.
`
`1 “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.’” Final Dec. 15.
`
`6
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`Martin was using the term abstract “in its colloquial sense.” Req. Reh’g 9.
`Patent Owner then proceeds to cite other portions of the Martin transcript,
`without showing where they appear in Patent Owner’s prior submissions.
`Id. at 9–12. Finally, Patent Owner invites the Board to “reevaluate what Mr.
`Martin meant” in his testimony. Id. at 12.
`
`Patent Owner’s explanation of Mr. Martin’s statements regarding
`disclosure of software in the ʼ382 patent follows the same pattern. Patent
`Owner tries to explain what Mr. Martin really meant: “Mr. Martin clearly
`meant that the ʼ382 patent did not provide the name of a specific piece of
`software (e.g., Microsoft Word).” Id. at 13. Patent Owner also quotes
`additional testimony of Mr. Martin without citing to where it appears in its
`prior submissions. Id.
`
`We are not persuaded by these arguments that anything has been
`overlooked or misapprehended regarding this testimony. Patent Owner
`neither denies that Mr. Martin gave the testimony cited by the Board nor
`challenges the accuracy of the quotations. Instead, Patent Owner provides
`additional citations and explanations without showing they were previously
`provided. The Board, therefore, could not have overlooked these new
`arguments or additional citations.
`
`In reaching its Final Decision, the Board looked at the record as
`presented by the parties. That included the testimony of Petitioners’ expert,
`Dr. Myers, the statements of counsel at the Final Hearing, the cited exhibits,
`and the ʼ382 patent itself. The Board concluded that the testimony of Dr.
`Myers on patentability of specific claims should be credited over that of Mr.
`Martin:
`
`7
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`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.
`
`Final Dec. 15. Likewise, the Board concluded that the Martin testimony did
`not support Patent Owner’s other arguments.
`
`It is within the Board’s discretion to assign the appropriate weight to
`testimony offered by the witnesses. Yorkey v. Diab, 601 F.3d 1279, 1284
`(Fed. Cir. 2010) (Board has discretion to give more weight to one item of
`evidence over another “unless no reasonable trier of fact could have done
`so”). Insofar as Patent Owner’s argument challenges the credit that the
`Board assigned to the evidence presented by Mr. Martin, the Board declines
`to reweigh the evidence in considering a motion for rehearing. Ex parte
`NTP, Inc., Appeal No. 2008-004594, 2010 WL 429233, at *1 (BPAI Feb. 4,
`2010).
`
`Furthermore, the fact that the Board was more persuaded by
`Petitioners’ arguments and expert testimony than by Patent Owner’s is not
`grounds for rehearing. The Board has considerable discretion in how it
`weighs evidence. NTP, Inc., 2010 WL 429233, at *1-2 (citing In re Am.
`Acad., 367 F.3d 1359, 1368 (Fed. Cir. 2004)).
`
`
`
`CONCLUSION
`Patent Owner has not carried its burden of demonstrating that our
`
`Final Decision determining that claims 1–23 of the ʼ382 patent are
`
`8
`
`
`
`CBM2014-00030
`Patent 7,603,382 B2
`
`
`unpatentable under 35 U.S.C. § 101 misapprehended or overlooked any
`matters or that the Board abused its discretion. 37 C.F.R. § 42.71(d).
`
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`PETITIONERS:
`
`Donald Steinberg
`Monica Grewal
`WILMER CUTLER PICKERING HALE AND DORR LLP
`don.steinberg@wilmerhale.com
`Monica.Grewal@wilmerhale.com
`
`PATENT OWNER:
`
`Henry A. Petri
`James P. Murphy
`NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
`henry.petri@novakdruce.com
`james.murphy@novakdruce.com
`
`
`
`Don Coulman
`dcoulman@intven.com
`
`
`9
`
`
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