Trials@uspto.gov
`571-272-7822
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` Paper 47
` Entered: May 18, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, NATIONAL ASSOCIATION,
`
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-00033
`Patent 7,260,587 B2
`_____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`571-272-7822
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` Paper 47
` Entered: May 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, NATIONAL ASSOCIATION,
`
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-00033
`Patent 7,260,587 B2
`_____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`CBM2014-00033
`Patent 7,260,587 B2
`
`
`Bank of America, N.A. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of a covered business method patent review of claims
`1–18 of U.S. Patent No. 7,260,587 (“the ’587 patent”) pursuant to 35 U.S.C.
`§ 321. Patent Owner, Intellectual Ventures II LLC, filed a Preliminary
`Response. Paper 10 (“Prelim. Resp.”). Based on these submissions, we
`instituted trial as to all claims of the ’587 patent. Paper 11 (“Institution
`Dec.”).
`After institution, Patent Owner filed a Response (Paper 21, “PO
`Resp.”) and Petitioner filed a Reply (Paper 31, “Pet. Reply”). In addition,
`the parties rely upon expert testimony. Petitioner proffered the Declaration
`of William T. Freeman, Ph.D. (Ex. 1005, “Freeman Decl.”) with the
`Petition. Patent Owner proffered the Declaration of K. Bradley Paxton
`Ph.D. (Ex. 2007, “Paxton Decl.”) with its Response. In addition, a transcript
`of Dr. Paxton’s deposition (Ex. 1024, “Paxton Dep.”) was submitted by
`Petitioner. No deposition transcript was filed for Dr. Freeman.
`Patent Owner filed a Motion to Exclude Evidence. Paper 33 (“PO
`Mot. Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
`Exclude. Paper 39 (“Opp. Mot. Exclude”). Oral Hearing was held on
`March 2, 2015. A transcript of the argument is entered in the record as
`Paper 46 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 328(a). We conclude for the
`reasons that follow that Petitioner has shown by a preponderance of the
`evidence that claims 1–18 of the ʼ587 patent are unpatentable.
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`I. INTRODUCTION
`A. The ’587 Patent (Ex. 1001)
`The ’587 patent, titled “Method for Organizing Digital Images” issued
`on August 21, 2007. Ex. 1001. Figure 1 of the ’587 patent is reproduced
`below.
`
`
`Figure 1 is a flow chart of the method of the ’587 patent. Ex. 1001, 2:44–45.
`First step 14 comprises obtaining and organizing the images. Id. at 3:36–37.
`The images are obtained by scanning hard copy or from digital sources. Id.
`at 3:37–44.
`At step 16, the goods are ordered. Id. 3:62–64. The output of the
`order may be by CD, photo-album pages, or images uploaded to the Internet.
`Id. at 3:64–67. At step 18, the digital images of the images provided at step
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`14 are obtained by a service provider by scanning or from digital memory
`devices. Id. at 4:12–18.
`Once the images are obtained by the service provider, they are
`processed per the customer order at step 20. Id. at 4:21–27. Processing
`includes removing red-eye, adding texturing or adding content, after which
`the images are stored at step 22. Id.
`A product is produced or service performed at step 23, after which the
`customer has access to the image for review at step 24. Id. at 4:28–32. The
`image is then sent to storage at step 25. Id. at 4:38–39. The ordered goods
`are produced or provided at step 26. Id. at 4:40–43.
`Documents are received by the customer at step 28. Id. at 4:46–47.
`Additional orders may be placed at step 30 for images stored at step 25. Id.
`at 4:50–52.
`B. Related Matters
`Petitioner has been sued for infringement of the ’587 patent in the
`following case: Intellectual Ventures I LLC v. Bank of America Corp. No.
`3:13-cv-00358 (W.D.N.C.). Pet. 4. (citing Ex. 1006 and 1007).
`In addition, Petitioner advises us of four additional lawsuits where
`Patent Owner alleges the ’587 patent is infringed. Id. at 47.
`C. Illustrative Claim
`Of the challenged claims, claims 1, 10, and 18 are independent
`method claims. Claim 1 is reproduced below:
`1.
`A method of automatically organizing digital
`images obtained from a plurality of hard copy prints, each of
`said hard copy prints having an image thereon, comprising the
`steps of:
`
`digitally scanning a plurality of hard copy prints that
`have been grouped into one or more categories, each category
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`separated by an associated machine readable instruction form as
`to obtain a digital file of each of said images and digitally
`associating said one or more categories with said digital images
`in accordance with said associated machine readable instruction
`form executed by a computer;
`storing said digital images files and associated categories
`on a digital storage medium; and
`producing a product incorporating images from one or
`more of said categories as requested by a customer.
`
`D. Ground Upon Which Trial Was Instituted
`Trial was instituted on the ground that claims 1–18 of the ’587 patent
`are unpatentable under 35 U.S.C. § 101. Institution Dec. 18.
`E. Claim Interpretation
`The Board will interpret a claim of an unexpired patent using the
`broadest reasonable construction in light of the specification of the patent in
`which it appears. See 37 C.F.R. § 42.300(b); In re Cuozzo Speed Techs.,
`LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under that standard,
`claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definition for a claim term must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`In instituting trial, we determined constructions for the following
`terms: “digitally scanning a plurality of hard copy prints”/ “scanning a
`plurality of hard copy prints;” and “machine readable instruction form”/
`“instruction form.” Institution Dec. 5–8. In its Response, Patent Owner
`argues for a different construction of the following terms: “machine readable
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`instruction form” (claims 1 and 6) and “instruction form” (claims 10 and
`18). PO Resp. 7–12. Patent Owner does not present any other terms for
`construction. Beyond what it is argued for in the Petition, Petitioner does
`not seek construction of any additional claims terms in its Reply.
`Therefore, after reviewing the record, we see no reason to change our
`prior construction for “digitally scanning a plurality of hard copy
`prints”/“scanning a plurality of hard copy prints” from the Decision on
`Institution, as set forth there and immediately below. We then address
`Patent Owner’s arguments relating to “machine readable instruction
`form”/“instruction form.”
`1. “digitally scanning a plurality of hard copy prints”(claims 1 and
`18)/“scanning a plurality of hard copy prints”(claim 10)
`
`In the Decision on Institution we determined that “digitally scanning a
`plurality of hard copy prints” / “scanning a plurality of hard copy prints”
`means “using a scanner to create digital images of hard copy prints.” The
`differences between the parties’ proposed construction of the terms were in
`the inclusion of a scanner in Petitioner’s proposal (Pet. 17) and in Patent
`Owner’s use of “converting,” instead of “scanning” (Prelim. Resp. 5).
`Otherwise, both parties proposed the inclusion of “scanning” or
`“converting” the hard copy prints into digital images. See Prelim. Resp. 5.
`No technology other than a scanner is described in the ’587 patent.
`Patent Owner confirmed this with an unambiguous statement in the
`prosecution history that “[t]he specification clearly discloses scanning by a
`scanner (see page 5, lined 9–21, and page 20, lines 6–9).” Ex. 1008,
`Amendment, Jan. 15, 2007, 6, lines 19–21. We agree, and thus our
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`construction includes the use of the scanner for scanning, as set forth in the
`Decision on Institution.
`2. “machine readable instruction form” (claims 1 and 6)/“instruction
`form” (claims 10 and 18)
`
`In the Decision on Institution we determined that “machine readable
`instruction form”/“instruction form” means “a form, configured to be
`scanned and read by a machine, that provides information regarding the
`organization and ordering of the images.” Institution Dec. 8. Petitioner
`originally proposed a construction of “a form, configured to be scanned with
`a category of hard copy prints and read by a machine, that provides
`information regarding the organization of the images that follow.”1 Pet. 20
`(citing Ex. 1005 ¶ 52). Patent Owner’s proposal in the Preliminary
`Response, and again in its Response, is “a set of machine readable
`instructions that govern how the computer should process the images.” PO
`Resp. 7–8 (citing Ex. 2007 ¶¶ 28–33).
`Patent Owner frames the remaining construction issue as whether the
`phrase “configured to be scanned” in our preliminary construction “requires
`a machine-readable form to be in hard copy form.” PO Resp. 8. Patent
`Owner contends that ’587 patent teaches that the “instruction form” can be
`in another medium besides hard copy, i.e., computer instructions. Id.
`Further, the claims recite a “machine readable instruction form” where
`“machine readable” means in “a format that a computer can accept or
`understand.” Id. at 8, 11 (citing Ex. 1013, RANDOM HOUSE WEBSTER’S
`COMPUTER & INTERNET DICTIONARY 328 (3d ed. 1999); Ex. 1016, THE
`
`
`1 Patent Owner contends, incorrectly, that we adopted Petitioner’s proposed
`interpretation. PO Resp. 8.
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`COMPUTER DESKTOP ENCYCLOPEDIA 537 (2d ed. 1991). Patent Owner
`argues that our prior construction “requires” that the form be hard copy and
`is not the broadest reasonable interpretation because it “excludes disclosed
`embodiments,” including audio and visual formats. Id. at 9–10 (citing
`Ex. 1001, 5:61–6:4). Pointing out claim 18, Patent Owner argues the claim
`recites “digitally scanning a plurality of hard copy prints,” which is not
`limited to an instruction form “configured to be scanned,” as in our
`preliminary construction. Id. at 10–11. Patent Owner argues the
`Specification supports its position, citing to disclosures of a computer screen
`and a kiosk which show the “instruction form” may be visually displayed on
`either. Id. at 10 (citing Ex. 1001, 5:36–39, 6:41–49, 12:14–23, 12:58–62).
`Petitioner finds support for its construction in the claim language.
`Pet. 20–21. Petitioner also argues the Specification supports the
`interpretation by explaining the instruction form is configured to be scanned
`with a category of hardcopy prints, and the scanner must be able to read the
`instructions on the form when scanning the form. Id.at 21 (citing Ex. 1001,
`2:22–32). Petitioner also alleges that Patent Owner’s arguments made in
`overcoming prior art rejections during prosecution support its proposed
`construction. Id. at 21–22 (citing Ex. 1009, 2–3, Ex. 1008, 2–6).
`There is no description of any computer program or algorithm in the
`Specification’s description of what “machine readable instructions” are or
`their function. The words “machine readable” appear only in the context of
`labels for photographs, e.g., elements 210 (Ex. 1001, Fig. 5, i.e., bar code
`labels) and 326 (Ex. 1001, Fig. 21, “Customer Order Form”). In the
`description of Figure 5, the Specification states that “the order form 72
`includes the ability for providing instructions in a machine readable form so
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`that it can be scanned and automatically implemented.” Ex. 1001, 6:38–40.
`Claim 1 recites that the “hard copy prints” are “separated by an associated
`machine readable form.” Ex. 1001, 20:17–21.
`Turning to “instruction form,” the Specification of the ’587 patent
`specifically explains that the claimed “instruction form” is “preferably” both
`“human readable and machine readable,” so that it can be carried out by
`either a human or a computer. Ex. 1001, 10:23–26. The claim 10 language
`states the “instruction form” is grouped with the “hard copy prints,” i.e.,
`both are hard copy. Ex. 1001, 20:53–59. Claim 18 also recites that the
`“hard copy prints” are associated with the “instruction form,” which
`provides the category information for the digital images. Id. at 22:5–13.
`The dictionary evidence cited by Patent Owner (Exs. 1013 and 1016)
`is consistent with a hard copy form. The dictionaries, respectively, recite
`that “machine readable” includes optical character recognition (“OCR”) and
`scanning of paper, i.e., hard copy.
`Patent Owner’s citations to the Specification do describe other means
`for categorizing the hard copy prints. However, the Specification is neither
`reasonably clear nor consistent in its description of either “machine readable
`form” or “instruction form.” See Lear Siegler, Inc. v. Aeroquip Corp., 733
`F.2d 881, 889 (Fed. Cir. 1984)). That the Specification also discloses audio
`and visual formats (Ex. 1001, 5:61–6:4), in addition to hard copy, does not
`require us to include those disclosures in the broadest reasonable
`interpretation when the claim language is more limited. Absent a definitive
`description in the Specification, the claim language recited above, as well as
`numerous supporting references in the Specification to a hard copy form,
`leads us to determine that the broadest reasonable interpretation of the claim
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`language is a form that may be scanned and read by a machine, such as a
`scanner.
`Thus “machine readable instruction form”/ “instruction form” means
`“a form, configured to be scanned and read by a machine, that provides
`information regarding the organization and ordering of the images.”
`3. Other terms
`Neither party identifies any additional terms for construction and we
`determine that no further claim construction is required.
`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, 130 S. Ct. 3218, 3225 (2010). “The abstract ideas category
`embodies the longstanding rule that ‘[a]n idea of itself is not patentable.’”
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing
`Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (internal quotation marks and
`citation omitted)).
`In Alice, the Supreme Court followed the two-step framework set
`forth in Mayo Collaborative Servs. v. Prometheus Labs., 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
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`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
`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 ʼ587 Patent Claims Directed to Abstract Ideas?
`In our Decision on Institution, we agreed with Petitioner and
`determined that the claims of the ’587 patent are directed to the abstract idea
`of organizing digital images of hard copy prints according to an instruction
`form. Pet. 29; Institution Dec. 15.
`Patent Owner disputes that the claimed invention is an abstract idea
`because it does not “fall within any of the categories of abstract ideas
`enumerated by the Supreme Court.” PO Resp. 14. Citing Alice, Patent
`Owner asserts that the claims are not directed to “an idea itself, or any of the
`other category of abstract idea found by the Supreme Court or Federal
`Circuit.” Id. Patent Owner contends that the claims are directed to an
`“inventive method for organizing digital images based on customer-defined,
`category-specific, machine-readable instructions associated with hard copy
`prints.” Id. As characterized by Patent Owner, the “inventive concept”
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`cannot be performed by a human and is not a mental process because
`digitizing hard copy prints and organizing the prints according to an
`instruction form requires a machine. Id. at 15–16. Therefore, Patent Owner
`asserts, the first step in the Alice/Mayo test is not met.2 Id. at 12–18.
`Petitioner responds that in Alice, the Supreme Court expressly
`declined to limit the categories of unpatentable abstract ideas as suggested
`by Patent Owner. Pet. Reply 2. Petitioner also argues that the recitation of
`“generic general purpose computer hardware” or other conventional tangible
`components does not avoid making a claimed invention abstract. Id. at 4
`(citing SAP Am., Inc. v. Versata Dev. Grp., Inc., Case CBM2012-00001, slip
`op. at 30 (PTAB June 11, 2013) (Paper 70)). Similarly, Petitioner argues
`Patent Owner’s contention that the claimed invention cannot be performed
`by mental steps is also wrong because use of conventionally used computer
`components alone does not make a claim patent-eligible under § 101. Id. at
`5.
`
`We are persuaded by the Supreme Court’s opinion in Alice that
`Petitioner is 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.” Alice, 134 S. Ct. at 2357: accord Content Extraction &Transmission
`LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). We
`
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`2 Patent Owner argues separately that the claims do not preempt the abstract
`idea and, as such, are patent-eligible. PO Resp. 18–21 (citing Alice, 134 S.
`Ct. 2354, 2355, 2358). Patent Owner does not persuade us that preemption
`is a separate part of the analysis under Alice.
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`are persuaded by Petitioner’s argument, and therefore conclude that the first
`step in the Alice/Mayo test is met for claims 1–18.
`While Patent Owner’s arguments that the abstract idea is an
`“inventive concept” are more properly a part of Alice’s step 2, we also agree
`with Petitioner that conventional use of computer components does not
`make an abstract idea into an inventive concept. Ultramercial, Inc. v. Hulu,
`LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). In that same regard, we also note
`the testimony of Patent Owner’s expert, which Petitioner relies on to argue
`the claimed process can be done “manually” 3 by a human using a computer,
`mouse, and keyboard, as opposed to “automatically.”4 Pet. Reply 6 (citing
`Ex. 1024, 55:8–19). Petitioner argues the claimed invention is nothing more
`than automating a manual process with a computer. Id. at 7.
`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, 772 F.3d at 715. In this step we must examine the limitations
`of the claims to determine whether the claims contain an “inventive concept”
`
`3Q. Okay. But the concept of digitally associating a category with an image
`on a computer we can both agree was known before 2000, right?
`A. Again, you have to define the terms of -- when you say “digitally,” you
`mean there is no human intervention? What do you mean by it?
`Q. You could go -- prior to 2000, you could go onto a computer and put an
`image into one category and another image into another category?
`A. Using a mouse.
`Q. You could do it using a mouse, right?
`A. That would be a manual method. Ex. 1024, 55:8–19.
`4Q. Okay. And so what is different about the ’587 invention that it did that
`process automatically?
`A. That’s one of the inventive features, yes. Ex. 1024, 56:6–9.
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`to “transform” the claimed abstract idea into patentable subject matter. Id.
`citing Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298).
`“A claim that recites an abstract idea must include additional features to
`ensure that the claim is more than a drafting effort designed to monopolize
`the abstract idea.” Id. (quoting Mayo, 132 S. Ct. at 1297) (internal quotation
`marks and brackets omitted).
`Not every included feature will suffice. Those “additional features”
`must be more than “well-understood, routine, conventional activity.” Mayo,
`132 S. Ct. at 1298. See Ultramercial, 772 F.3d at 716 (“[E]ach of those
`eleven steps merely instructs the practitioner to implement the abstract idea
`with ‘routine, conventional activit[ies],’ which is insufficient to transform
`the patent-ineligible abstract idea into patent-eligible subject matter.”
`(second alteration in original)); Content Extraction, 776 F.3d at 1348
`(“[Patentee] conceded at oral argument that the use of a scanner or other
`digitizing device to extract data from a document was well-known at the
`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 ʼ587 patent “require
`using a digital scanner to transform the hard copy prints into a digital
`format” and do not preempt the alleged abstract idea and are “transformed
`by an inventive concept.” PO Resp. 24. Further, Patent Owner contends
`digital instructions need to be read, understood, and interpreted by a
`computer, which then associates the digital prints generated with the correct
`file. Id. These steps are neither “insignificant” nor “routine.” Id. Patent
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`Owner concludes that specific computer hardware is required to perform the
`recited methods, which Patent Owner contends takes the claims out of the
`patent-ineligible generic computer category. Id. at 25–26. Patent Owner
`argues “[a] general purpose computer could not interpret and execute the
`instruction form associated with the hard copy prints in order to associate the
`category information with the digital images.” Id. at 26 (citing Ex. 2007
`¶¶ 48, 59, 64, 72).
`In response, Petitioner contends Patent Owner’s expert conceded that
`that the “concept of automatically organizing images into categories using
`an instruction form—what [Intellectual Ventures II] has characterized as
`‘the most fundamental aspect of the inventive concept’ [citing PO
`Resp. 28] —was known at least five years before the ’587 patent
`application’s priority date.” Pet. Reply 8 (citing Ex. 1024, 110–111, 114–
`115) (emphasis in Reply). The basis for Petitioner’s argument is the
`testimony of Dr. Paxton concerning his work on the Kodak ImageLink
`scanner.5 Id. at 8 n.7 (see Ex. 2007 ¶ 8). The testimony cited by Petitioner
`from Dr. Paxton’s cross-examination is reproduced below:
`Q. And so we can agree that at least as of 1995, scanners could
`digitally scan categories of hard copy documents with each
`category separated by an associated machine readable
`instruction form; right?
`A. Well, they certainly don’t call it an instruction form, but
`there’s a – you could read the bar code and know what category
`the documents were in.
`Q. Right. And based on that, and understanding of an
`instruction form, you would agree that that patch document is
`an instruction form; right? …
`
`5 The Kodak ImageLink scanner is described in Exhibits 1020–1022. These
`exhibits are the subject of Patent Owner’s Motion to Exclude discussed
`below.
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`A. In a limited sense, yes.
`
`Ex. 1024, 114–115.
`Petitioner asserts Dr. Paxton admitted that each of the other claim
`elements that Patent Owner argues meaningfully limit the claims was well
`known prior to the filing date of the ’587 patent. Pet. Reply 10.
`Petitioner disagrees that carrying out the method claims requires a
`specifically programmed computer, as Patent Owner contends. Pet.
`Reply 11 (citing PO Resp. 26). Petitioner argues that no special
`programming is mentioned or disclosed, and that Dr. Paxton admitted the
`method of the ’587 patent could be carried out by a “simple computer, a host
`computer.” Id. at 11–12 (citing Ex. 1024, 162–164).
`In view of the foregoing, we are convinced by Petitioner’s argument
`that the ʼ587 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. Independent Claims 1, 10, and 18
`Patent Owner argues Petitioner’s showing regarding the independent
`claims, claims 1, 10, and 18 relies impermissibly on dictionary definitions to
`show that the claim elements are conventional. PO Resp. 27–29. Patent
`Owner next argues the claim elements are specific components, i.e. not
`conventional. Id. at 29–31 (citing Ex. 2007 ¶¶ 48, 50).
`Petitioner contends claim 1 includes nothing beyond conventional
`hardware components performing their known functions. Pet. 31–32 (citing
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`Ex. 1005 ¶¶ 33, 34). Petitioner argues the claimed machine readable
`instructions can be human-readable and are, thus, mental steps. Id. at 34
`(citing Ex. 1001, 10:23–26). The “storing” step, asserts Petitioner, is the
`computer equivalent of storing images in a photo album. Id. (citing
`Ex. 1001, 1:59–62). Petitioner also contends the “producing” step is
`“insignificant post[-]solution activity.” Id. (citing Bilski, 130 S. Ct. at 3230).
`Turning to claims 10 and 18, Petitioner repeats its contentions made in
`connection with claim 1. Pet. 37–39 (claim 10), 40–41 (claim 18). In sum,
`Petitioner argues claims 10 and 18 recite steps which require a computer to
`do what a computer does, “accelerate an ineligible mental process,” which is
`patent-ineligible under § 101. Id. at 39, 41 (citing Bancorp Servs., L.L.C. v.
`Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
`2012).
`Relative to claim 1, Patent Owner contends Petitioner does not
`address the claim 1 step that the machine readable instruction form
`associates categories of the digitally scanned hard copy prints. PO Resp.
`31–32 (citing Ex. 2007 ¶¶ 44, 51). Patent Owner argues that just because
`the instruction form may be human-readable, as well as machine-readable,
`does not make the form a step that could be performed by a human. Id. at
`32–33. The additional recited step of “producing a product” is, according to
`Patent Owner, unique because the step requires “incorporating images from
`one or more of said categories” into the produced product. Id. at 34.
`As it did in connection with claim 1, Patent Owner argues a human
`cannot perform the steps recited in claim 10. PO Resp. 35–37. Further, the
`steps were not conventional at the effective filing date of the ’587 patent. Id.
`at 35. Patent Owner disputes that the claim recites conventional image
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`processing steps because of the combining step, “combining said digital
`record of said image with said digital record of . . . said instruction form.”
`Id. at 36 (citing Ex. 2007 ¶ 61).
`Claim 18 is the last independent claim. Patent Owner argues
`Petitioner’s showing regarding scanning of the instruction form fails to
`establish it was a “well-known, routine activity.” PO Resp. 37. Patent
`Owner also contends that the “automatically grouping” the image files in
`accordance with the instructions is not a conventional computer activity and
`could not otherwise be performed by a human. Id. at 38.
`We agree with Petitioner that claim 1 includes nothing beyond
`conventional hardware components performing their known functions.
`Claims 1, 10, and 18 all use conventional computer components in a well
`understood way to produce, as Petitioner states, a photo album. Pet. 34. We
`credit the Freeman Declaration that scanning hard copy and categorizing the
`resulting files is something that was done conventionally by a computer and
`associated peripheral equipment. See Ex. 1005 ¶¶ 28–32. Dr. Freeman’s
`testimony is corroborated by Patent Owner’s expert, Dr. Paxton. See Pet.
`Reply 10 (table including computer elements compared to Dr. Paxton
`Deposition Testimony, Ex. 1024).
`The factual background here is similar to that in Content Extraction.
`There, the Federal Circuit concluded the “claims merely recite the use of this
`existing scanning and processing technology to recognize and store data
`from specific data fields such as amounts, addresses, and dates.” Content
`Extraction, 776 F.3d at 1348. The Content Extraction court
`determined“[t]here is no ‘inventive concept’ in CET's use of a generic
`scanner and computer to perform well-understood, routine, and conventional
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`activities commonly used in industry.” Id. (citing Alice, 134 S. Ct. at 2359).
`Similar to Content Extraction, here Patent Owner’s expert testified to direct
`knowledge that the scanning technology recited in the claims was previously
`known. Ex. 1024, 120.
`2. Dependent Claims 2–9 and 11–17
`Petitioner characterizes claims 2–5 as limiting “the generic ‘product’
`of claim 1 to well-known media: an ‘album page’ in claim 2; ‘computer
`storage media’ in claim 3; a ‘CD’ in claim 4; and a ‘digital image file’ in
`claim 5.” Pet. 36 (citing Ex. 1005 ¶ 35). Petitioner contends further that
`claims 6–9 add nothing inventive: claim 6, adds “ordering;” claim 7 adds
`“additional information” about the images to the instruction form; claim 8
`adds “personal information” to the form; and claim 9 adds providing a
`“product or service.” Id. at 36–37. Petitioner argues the additional steps of
`dependent claims 2–9 are patent-ineligible mental steps or insignificant post-
`solution activity. Id. at 35 (citing Mayo, 132 S. Ct. at 1294). Claims 11–17
`recite similar steps and, according to Petitioner, are like claims 2–9 either
`additional mental steps or insignificant post solution activity. Id. at 39–40.
`We disagree with Patent Owner that the dependent claims add
`additional inventive concepts to the independent claims. PO Resp. 38–44.
`Patent Owner’s arguments do not meaningfully distinguish the dependent
`claims from the basic steps we found conventional in connection with the
`independent claims and are repetitions of arguments made in connection
`with the independent claims. For the reason stated above, we are not
`persuaded by those arguments.
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`C
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