Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Date: June 18, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AMERICAN EXPRESS CO., AMERICAN EXPRESS TRAVEL CO.,
`EXPEDIA, INC., ORBITZ WORLDWIDE, INC., PRICELINE.COM INC.,
`TRAVELOCITY.COM LP, YAHOO! INC., HOTELS.COM LP,
`HOTELS.COM GP, LLC, HOTWIRE, INC.
`Petitioner,
`
`v.
`
`HARVEY LUNENFELD
`Patent Owner.
`
`____________
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`____________
`
`
`
`Before KARL D. EASTHOM, MIRIAM L. QUINN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`571-272-7822
`
`Paper 17
`Date: June 18, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AMERICAN EXPRESS CO., AMERICAN EXPRESS TRAVEL CO.,
`EXPEDIA, INC., ORBITZ WORLDWIDE, INC., PRICELINE.COM INC.,
`TRAVELOCITY.COM LP, YAHOO! INC., HOTELS.COM LP,
`HOTELS.COM GP, LLC, HOTWIRE, INC.
`Petitioner,
`
`v.
`
`HARVEY LUNENFELD
`Patent Owner.
`
`____________
`
`Case CBM2014-00050
`Patent 8,239,451 B1
`____________
`
`
`
`Before KARL D. EASTHOM, MIRIAM L. QUINN, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`CBM2014-00050
`Patent 8,239,451 B1
`
`
`I. INTRODUCTION
`
`Petitioner American Express Company, American Express Travel
`Company, Expedia, Inc., Orbitz Worldwide, Inc., Priceline.com Inc.,
`Travelocity.com LP, Yahoo.com LP, Yahoo! Inc., Hotels.com LP,
`Hotels.com GP, LLC, Hotwire, Inc. (collectively, “Petitioner”) filed a
`Petition to institute a covered business method patent review of claims 1, 5,
`15, 21, 31, and 35 (“the challenged claims”) of U.S. Patent No. 8,239,451
`(“the ’451 patent”) pursuant to 35 U.S.C. §§ 321-322. (Paper 1, “Pet.”).
`Patent Owner Harvey Lunenfeld (“Patent Owner”) filed a Preliminary
`Response (Paper 16, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324. The standard for
`instituting a covered business method review is set forth in 35 U.S.C.
`§ 324(a):
`THRESHOLD—The Director may not authorize a post-
`grant review to be instituted unless the Director determines
`that the information presented in the petition filed under
`section 321, if such information is not rebutted, would
`demonstrate that it is more likely than not that at least 1 of
`the claims challenged in the petition is unpatentable.
`
`We are persuaded that the ’451 patent is a covered business method
`patent. Further, upon consideration of the Petition and Preliminary
`Response, we also are persuaded that it is more likely than not that Petitioner
`would prevail on the assertion that the challenged claims of the ’451 patent
`are unpatentable on the grounds authorized and discussed below.
`
`A. Petitioner’s Standing
`Petitioner represents that the ’451 patent is involved in district court
`
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`2
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`CBM2014-00050
`Patent 8,239,451 B1
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`proceedings as follows:
`
`MetaSearch Sys., LLC v. Am. Express Co., No. 1:12-cv-01225-
`LPS (D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. TravelZoo Inc., No. 1:12-cv-01222-
`LPS (D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Yahoo! Inc., No. 1:12-cv-01223-LPS
`(D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. KAYAK Software Corp., No. 1:12-cv-
`01224-LPS (D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Bookit.com Inc., No. 1:12-cv-01226-
`LPS (D. Del. filed Sept. 28, 2012);
`
`MetaSearch Sys., LLC v. Expedia Inc. et al., No. 1:12-cv-
`01188-LPS (D. Del. filed Sept. 21, 2012);
`
`MetaSearch Sys., LLC v. Orbitz Worldwide, Inc., No. 1:12-cv-
`01190-LPS (D. Del. filed Sept. 21, 2012);
`
`MetaSearch Sys., LLC v. Priceline.com Incorporated, No. 1:12-
`cv-01191-LPS (D. Del. filed Sept. 21, 2012); and
`
`MetaSearch Sys., LLC v. Travelocity.com, LP, No. 1:12-cv-
`01189-LPS (D. Del. filed Sept. 21, 2012).
`
`See Pet. 1 (citing Ex. 1050 (Order staying district court proceedings pending
`CBM2014-00050 and CBM2014-00001)). Patent Owner does not challenge
`Petitioner’s representation. See Paper 13, 2. Patent Owner also indicates
`that Harvey Lunenfeld owns the ’451 patent, and Metasearch Systems, LLC
`is the real party-in-interest “as it is the exclusive licensee of the ’451 patent.”
`Paper 13, 2.
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`
`B. The’451 Patent (Ex. 1001)
`The ’451 patent, titled “Metasearch Engine for Ordering Items
`Returned in Travel Related Search Results Using Multiple Queries on at
`Least One Host Comprising a Plurality of Server Devices,” issued on
`August 7, 2012, based on U.S. Patent Application No. 13/436,957.
`The ’451 patent is directed to a method and system for client-server
`multitasking or metasearching. Ex. 1001, col. 111, l. 64 – col. 112, l. 6.
`One embodiment described in the ’451 patent employs a metasearch engine,
`which the ’451 patent describes as “a search engine that sends user requests
`to several other search engines, servers, clients, and/or databases, and other
`suitable systems and/or devices, groups, sorts, and returns the results from
`each one.” Id. at col. 111, ll. 58-63. The described system may “search or
`metasearch a plurality of queries or keyword phrases of a plurality of sites,”
`and receive, place, and process orders from users “based upon selections
`from the returned grouped and sorted results.” Id. at col. 112, ll. 30-39. The
`’451 patent adds that users of the described metasearch system should be
`able to place orders, such as purchases, and other types of orders either
`directly or through servers or sites on the network. Id. at col. 3, l. 65-col. 4,
`l. 2; see id. at col. 113, ll. 1-4. The ’451 patent further teaches that
`substantially any item can be ordered or purchased using the disclosed
`metasearch system, including an airline ticket. Id. at col. 114, ll. 50-64.
`Figure 1 of the ’451 patent (reproduced below) illustrates client-server
`metasearch system 10 on network 24. Ex. 1001, col. 20, ll. 47-53.
`
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`Figure 1 depicts client-server metasearch system 10 having requestors or
`users 12, user interfaces 14, clients 16, server PS 18, servers 20, and optional
`servers 22. Id. In operation, each user 12 enters user inputs or requests into
`user interfaces 14. Id. at col. 20, ll. 57-60. User requests are communicated
`from user interfaces 14 to clients 16. Id. at col. 20, ll. 60-62. Clients
`communicate the user requests to servers such as server PS 18. Id. at col.
`21, ll. 36-38. If the request is communicated to server PS 18, then server PS
`18 may communicate it to servers 20. Id. at col. 22, ll. 8-11. Servers 20
`reply to server PS 18 and communicate responses associated with the user
`requests to server PS 18. Id. at col. 22, ll. 18-21. Server PS 18 then
`communicates the responses to clients 16, which then communicate
`responses to user interfaces 14. Id. at col. 22, ll. 39-44. Users review the
`responses (e.g., search results) at the user interfaces. Id. at col. 22, ll. 49-52.
`In some cases, server PS 18 (or clients 16) may parse, process, format,
`sort, group, or organize the responses into “corresponding service and/or
`
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`information responses” acceptable to clients 16 and user interfaces 14.
`Ex. 1001, col. 22, ll. 27-35. These organized responses may incorporate
`links and selected advertising according to selectable search query, sorting,
`or grouping criteria into the information delivered to user interfaces. Id. at
`col. 8, ll. 24-28. These responses may also include purchasing and price
`comparisons, product availability information such as the pricing and
`availability of airline tickets, and ordering features. Id. at col. 8, ll. 29-40;
`figs. 122A-H (showing an “Order Quantity Below” box in the search result
`report that allows the user to order a desired number of items from some of
`the listed results.)
`
`C. Related Matters
`The ’451 patent is the subject matter of district court proceedings
`above-listed in the standing section.
`Related U.S. Patent No. 8,326,924, which claims continuity to the
`’451 Patent, is involved in a covered business method review designated
`CBM2014-00001. Ex. 1050 ¶ 3.
`
`D. Illustrative Claims
`All challenged claims 1, 5, 15, 21, 31, and 35 are independent claims.
`Claims 1 and 35 of the ’451 patent, reproduced below, are illustrative of the
`challenged claims.
`1. A process for metasearching on the Internet, wherein
`the steps of the process are performed by a metasearch engine
`executing on a hardware device, the process comprising the
`steps of:
` (a) receiving a Hypertext Transfer Protocol request from
`a client device for the metasearch engine to send a plurality of
`
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`search queries to at least one host that comprises a plurality of
`server devices that provide access to information to be
`searched, wherein the Hypertext Transfer Protocol request from
`the client device is associated with a plurality of travel related
`items that may be ordered comprising at least one airline ticket
`and at least one other type of travel related item;
`
`(b) sending the plurality of search queries to the at least
`one host in response to the Hypertext Transfer Protocol request
`received from the client device;
`
`(c) receiving search results from the at least one host in
`response to the plurality of search queries sent to the at least
`one host;
`
`(d) incorporating the received search results into a
`response;
`
`(e) communicating the response from the metasearch
`engine to the client device;
`
`(f) receiving another Hypertext Transfer Protocol request
`from the client device for placing an order for at least one of the
`plurality of travel related items;
`
`(g) processing the order.
`
`
`
`35. A process for metasearching on the Internet, wherein
`the steps of the process are performed by a metasearch engine
`executing on a hardware device, the process comprising the
`steps of:
` (a) receiving a Hypertext Transfer Protocol request from
`a client device for the metasearch engine to send a plurality of
`search queries to at least one host that comprises a plurality of
`server devices that provide access to information to be
`searched, wherein the Hypertext Transfer Protocol request from
`the client device is associated with a plurality of travel related
`
`
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`7
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`items that may be ordered comprising at least one airline ticket
`and at least one other type of travel related item from the group
`consisting of a hotel reservation and a car rental;
`
`(b) sending the plurality of search queries to the at least
`one host in response to the Hypertext Transfer Protocol request
`received from the client device;
`
`(c) receiving search results from the at least one host in
`response to the plurality of search queries sent to the at least
`one host;
`
`(d) incorporating the received search results into a results
`list and incorporating the results list into a response;
`
`(e) incorporating at least one universal resource locator
`link into the response;
`
`(f) communicating the response from the metasearch
`engine to the client device, wherein the universal resource
`locator link causes at least one advertisement associated with at
`least a portion of the plurality of travel related items to be
`communicated to the client device;
`
`(g) receiving another Hypertext Transfer Protocol request
`from the client device for placing an order for the plurality of
`travel related items;
`
`(h) processing the order.
`
`Covered Business Method Patent
`E.
`A “covered business method patent” is a patent that “claims a method
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, except that the term does not include patents for
`
`
`
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`technological inventions.” Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284 (2011) (“AIA”) § 18(d)(1); see 37 C.F.R. § 42.301(a).
`For purposes of determining whether a patent is eligible for a covered
`business method patent review, the focus is on the claims. See Transitional
`Program for Covered Business Method Patents—Definitions of Covered
`Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”). A patent need have
`only one claim directed to a covered business method to be eligible for
`review. Id.
`
`1. Financial Activity
`In promulgating rules for covered business method reviews, the Office
`considered the legislative intent and history behind the AIA’s definition of
`“covered business method patent.” Id. at 48,735-36. The “legislative
`history explains that the definition of covered business method patent was
`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Id. at 48,735 (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)). The legislative history indicates that
`“financial product or service should be interpreted broadly.” Id.
`Petitioner contends that the claims of the ’451 patent “all directly
`cover a financial product or service because they include order placement
`and order processing steps, which include purchasing items (e.g., airline
`tickets) for money.” Pet. 15. Petitioner further observes that the ’451 patent
`refers to purchase as a type of “order.” Id. (citing Ex. 1001, col. 8, ll. 24-28,
`
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`col. 104, ll. 49-53). Petitioner additionally contends that the claims recite
`“travel related items,” which is a broad term that includes “financial
`products and services such as foreign currency, travel insurance, payment
`plans, travelers’ checks, currency exchange services, credit card
`applications, cash back bonuses and frequent flyer miles/points . . . .” Id. at
`16-17. Petitioner asserts that the ’451 patent describes “several pricing-
`related financial products/services” that relate to travel, which can be paired
`with an airline ticket, “including ‘purchasing and/or price comparisons,
`viewing and/or reviewing prices/values and trends for different sites,
`determining lowest costs and lowest cost analyses for wholesale and retail
`purposes.’” Id. (citing Ex. 1001, col, 4, ll. 9-12; col. 8, ll. 35-38; col. 104, ll.
`60-63).
`Patent Owner contends that Petitioner has not met the burden of
`demonstrating that the ’451 patent is a covered business method patent.
`Prelim. Resp. 31. Patent Owner contends the “mere fact that the claims
`include a step of ‘processing an order’” is not enough to demonstrate that the
`’451 patent is a covered business method patent. Id. at 32. Patent Owner
`further contends that the ’451 patent is not directed to a financial product or
`service because the claims “relate generally to performing a metasearch and
`associating an advertisement with the results shown to the user.” Id.
`We are not persuaded by Patent Owner’s arguments. Here, the
`challenged claims require the financial activity of placing an order for travel
`related items and processing the order. As Petitioner points out, orders
`include purchases or payments, and travel related items may include
`financial products or services such as travel insurance, currency exchange
`
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`services, etc. Pet. 16-17. As such, we are persuaded that each of the
`challenged claims covers activities (e.g., purchasing travel related items) that
`are financial in nature, incidental to a financial activity or complementary to
`a financial activity. Moreover, we note that Patent Owner has not explained
`how the claims in the ’451 patent relate to associating an advertisement with
`the results shown to the user. For example, claims 1 or 21 do not recite
`advertising or advertisement. Therefore, we are persuaded that
`the’451 patent qualifies as a covered business method patent under § 18 of
`the AIA.
`
`2. Technological Invention
`The definition of “covered business method patent” in § 18(d)(1) of
`the AIA excludes patents for “technological inventions.” To determine
`whether a patent is for a technological invention, we consider “whether the
`claimed subject matter as a whole recites a technological feature that is
`novel and unobvious over the prior art; and solves a technical problem using
`a technical solution.” 37 C.F.R. § 42.301(b). The following claim drafting
`techniques, for example, typically do not render a patent a “technological
`invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
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`11
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`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64
`(Aug. 14, 2012).
`Petitioner argues that the ’451 patent is not for a technological
`invention, but to a metasearch engine that includes only technology that was
`conventional in the 1990s. Pet. at 20-21. Patent Owner responds that the
`’451 patent is for a “technological invention” because it relates to a
`metasearch engine “that is capable of conducting a metasearch on the
`Internet for items to be ordered, associating an advertisement with the
`response, and processing an order.” Prelim. Resp. 33. We understand
`Patent Owner’s position to be that the “metasearch engine” recited in each of
`the challenged claims 1, 5, 15, 21, 31, and 35 is itself the technical feature
`that renders the ’451 patent a technological invention.
`We are persuaded that metasearch engines were well known at the
`relevant time period. Petitioner provides a journal article titled “Subject
`Access on Internet: Highlights of the Metasearch Engines” dated 1998,
`which states “[m]etasearch engines make it possible to perform an Internet
`search through many search engines [at] once.” Ex. 1014, 20. This article
`further describes several metasearch engines available as of 1998, including
`Mamma.com. Id. at 20-29.
`We further note that other components recited in the challenged
`claims also were known in the prior art. For example, claim 1 recites
`components such as “a client device,” “server devices,” “at least one host
`that comprises a plurality of server devices,” and the “Internet.” The
`
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`Patent 8,239,451 B1
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`’451 patent discloses that “[c]lients, servers, and client-server systems have
`been known.” Ex. 1001, col. 2, ll. 12-13. Therefore, because at least claim
`1 of the ’451 patent recites the use of known prior art technology, on this
`record, the ’451 patent is not exempt from covered business method patent
`review due to a “technological invention” exception.
`We have considered whether the claimed invention solves a technical
`problem using a technical solution. Nevertheless, because we conclude that
`the ’451 patent does not recite a technological feature that is novel and
`unobvious, we determine that the ’451 patent is a covered business method
`patent and is eligible for the transitional covered business method patent
`review program.
`
`F. Prior Art
`WO01/63406 A1, published on Aug. 30, 2001 (Ex. 1004) (“the
`Lunenfeld PCT”);
`
`U.S. Patent Application No. 09/510,749 (Ex. 1002) (“the Lunenfeld
`2000 App.”);
`
`Mamma.com website captured by Internet Archives Wayback
`Machine (May 5, 1998) (Ex. 1012) (“Mamma.com”);
`
`Wendy Tan, Subject Access on Internet: Highlights of the Metasearch
`Engines, 36 J. OF EDUC. MEDIA & LIBRARY SCIENCES 20-29,
`(September 1998) (Ex. 1014) (“Metasearch Engines”);
`
`
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`13
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`Uwe M. Borghoff et al., Agent-Based Document Retrieval for the
`European Physicists: A Project Overview, Proc. 2nd Int’l Conf. on the
`Practical Application of Intelligent Agents & Multi-Agent Tech.
`(PAAM ’97), Apr. 21-23, 1997 (Ex. 1015) (“Knowledge Broker”);
`and
`
`Travelscape website1 as captured by Internet Archives Wayback
`Machine and described by Exhibits 1008, 1017, and 1019-1046. Pet.
`40.
`
`G. The Alleged Grounds of Unpatentability
`Petitioner seeks to cancel the challenged claims of the ’451 patent based
`on the alleged grounds of unpatentability set forth below.
`Challenged
`Basis
`References and Descriptions
`Claim(s)
`1, 5, 15, 21, 31,
`and 35
`1, 5, 15, 21, 31,
`and 35
`
`for lack of patentable subject matter
`
`Mamma.com, Metasearch Engines,
`Knowledge Broker, and Travelscape
`website
`Lunenfeld PCT, Lunenfeld 2000 App,
`Mamma.com, and Travelscape
`website
`
`§ 101
`
`§ 103
`
`1, 5, 15, 21, 31,
`and 35
`
`§ 103
`
`
`
`II. ANALYSIS
`Claim Interpretation
`A.
`Consistent with the statute and legislative history of the AIA, the
`
`
`1 Petitioner refers to Exhibits 1008, 1017, and 1019-1046 collectively as
`“Travelscape.” Pet. 40. However, Exhibit 1008 is the declaration of Mr. Joe
`Wild. For clarity, we refer to Exhibit 1008 separately as the declaration of
`Mr. Joe Wild.
`
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`Board interprets claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.300(b); see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Under the broadest reasonable construction standard, claims 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 Technology Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A
`particular embodiment appearing in the written description typically does
`not limit a claim term that is broader than the embodiment. In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Petitioner proposes constructions for the following terms/phrases:
`“metasearching,” “metasearch engine,” “client device,” “plurality of search
`queries,” “request from a client device…to send…to at least one host that
`comprises a plurality of server devices that provide access to information to
`be searched,” “a plurality of travel related items that may be ordered,”
`“incorporating the received search results into a results list,” and “processing
`the order.” Pet. 24-31.
`Patent Owner proposes constructions for the following claim
`terms/phrases: “metasearching on the Internet,” “metasearch engine,” “client
`device,” “plurality of search queries,” “host,” and “results list.” Prelim.
`Resp. 17-25. Patent Owner additionally contends that Petitioner’s
`construction is unnecessary for the following claim terms/phrases: “request
`from a client device…to send…to at least one host that comprises a plurality
`of server devices that provide access to information to be searched,”
`
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`“plurality of travel related items that may be ordered,” and “processing the
`order” in light of the plain claim language. Id. at 22, 25-26, 28.
`1. metasearching
`Petitioner submits that the broadest reasonable interpretation of
`“metasearch” is sending a user’s unstructured keyword query(ies) to one or
`more hosts, as requested by a user, and grouping, sorting, and returning to
`the user the results received from each host. Pet. 24. Patent Owner contends
`that the broadest reasonable interpretation is sending at least one search
`query to one or more information sources “substantially simultaneously.”
`Prelim. Resp. 17.
`Patent Owner argues that the definition of the term should include
`“substantially simultaneously” because client-server multitasking or
`metasearching described in the ’451 patent allows for information and
`service retrieval from servers substantially simultaneously and on-the-fly.
`Prelim. Resp. 18. We are not persuaded because the challenged claims do
`not use the term “substantially simultaneously” or “on-the-fly.” Although an
`inventor is free to define the specific terms used to describe the invention,
`“this must be done with reasonable clarity, deliberateness, and precision.”
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`To act as its own lexicographer, a patentee must “clearly set
`forth a definition of the disputed claim term” other than its plain
`and ordinary meaning. It is not enough for a patentee to simply
`disclose a single embodiment or use a word in the same manner in
`all embodiments, the patentee must “clearly express an intent” to
`redefine the term.
`
`Thorner v. Sony Computer Entm’t. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (citations omitted).
`
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`Patent Owner also points to a portion of the prosecution history of
`U.S. Application No. 09/510,7492, where the applicant used the term
`“substantially simultaneously” in discussing a preliminary amendment.
`Prelim. Resp. 19; Ex. 2002 at 29 (Preliminary Amendment filed Aug.
`25, 2003). According to Patent Owner, those statements made during
`prosecution “are relevant and controlling as to the scope of the claimed
`inventions in the ’451 Patent.” Prelim. Resp. 19.
`However, the evidence suggests otherwise. Although the applicant
`did use the term “substantially simultaneously” in remarks accompanying
`the preliminary amendment, the claims presented in the preliminary
`amendment specifically recited the language. See Ex. 2002 at 5 (claim 99,
`step (c)), 16 (claim 128, step (c)), 20 (claim 135, step (c)), 24 (claim 142,
`step (c)). Thus, the applicant, now patentee, knew how to limit the claims
`commensurate with the scope of “substantially simultaneously” but chose
`not to in the claims of the ’924 patent.
`Based on the current record, we construe “metasearching” as not
`limited to “substantially simultaneously” or “on-the-fly.” Any other aspects
`of metasearching need not be construed expressly for purposes of this
`decision.
`
`
`
`2 The ’451 patent claims benefit of the earlier filing date of Application No.
`09/510,749 pursuant to 35 U.S.C. § 120. Prelim. Resp. 19.
`
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`17
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`2. results list
`Petitioner submits that the broadest reasonable interpretation of the
`claim phrase “incorporating the received results into a results list” is
`“including the results received from each host into one or more lists,
`including (when so requested) removing duplicates and ranking the results
`across the hosts by order of relevance.” Pet. 29. Patent Owner, on the other
`hand, submits that construction of the entire phrase is unnecessary because
`one of ordinary skill in the art would understand the meaning, with the only
`term that might need construction being “results list.” Prelim. Resp. 27.
`Patent Owner contends that “results list” should be interpreted in accordance
`with the plain and ordinary meaning of the term—simply, “a list of
`information.” Id. at 27-28.
`We are persuaded that Patent Owner’s interpretation is consistent with
`the broadest reasonable interpretation of the term. Although Petitioner
`points to various descriptions of various operations in the ’451 patent (Pet.
`29-30), Petitioner has not identified sufficient reason to depart from the plain
`and ordinary meaning of a “results list.” The term “list” is not at issue.
`Accordingly, on this record, we interpret “results list” as a list of
`information. The phrase “incorporating the received results into a results
`list” means incorporating the results into a list of information.
`3. the universal resource locator link causes at least one advertisement
`associated with at least a portion of the plurality of travel related
`items to be communicated to the client device
`
`Petitioner and Patent Owner do not provide an explicit construction
`for this phrase (recited in claim 35). Nonetheless, we understand Patent
`Owner’s response to Petitioner’s asserted grounds of unpatentability to be
`
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`that the universal resource locator link must cause at least one advertisement
`to be associated with at least a portion of the plurality of travel related items.
`See Prelim. Resp. 79 (distinguishing the applied prior art as not disclosing
`the advertisement “caused to be associated by the universal resource locator
`[link].”).
`A plain meaning of this phrase does not carry the requirement argued
`by Patent Owner. Claim 35 does not require the URL to cause an
`association. Rather, the universal resource locator link causes the
`advertisement “to be communicated” to the client device. Therefore, the
`phrase “associated with at least a portion of the plurality of travel related
`items” modifies “advertisement,” and it describes a relationship between
`advertisement and a travel-related item in the result list, which includes a
`URL. The claim does not require, however, the URL to either be or cause
`the association between the advertisement and a travel-related item in the
`results list.” The Specification supports this interpretation because it does
`not require a URL to cause the association of an advertisement. For
`example, the Specification describes server PS 18 and clients 16 as
`organizing, sorting, formatting, and grouping responses to include
`advertisements and links. Ex. 1001, col. 54, l. 61-67. Col. 55, ll. 14-38; see
`fig. 61.
`4. Other Terms
`All other terms in the challenged claims need not be construed
`expressly for purposes of this decision.
`B.
`Subject Matter Eligibility Under § 101
`Petitioner contends that the challenged claims of the ’451 patent are
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`unpatentable under 35 U.S.C. § 101. Pet. 31-40. Petitioner adds that each of
`the challenged claims seeks to preempt an abstract marketing idea without
`meaningfully restricting how this abstract idea is implemented. Id. at 32.
`Petitioner further contends that the challenged claims do not satisfy the
`machine-or-transformation test. Id. at 38-40.
`Upon consideration of Petitioner’s arguments and supporting
`evidence, and taking into consideration Patent Owner’s arguments submitted
`in its Preliminary Response, we are persuaded by Petitioner’s contention for
`purposes of this decision.
`Claims 1, 5, 15, 21, 31, and 35 are directed to a “process for
`metasearching on the Internet” that fits within one of the four statutory
`classes set out in § 101. The Supreme Court has set forth three exceptions of
`subject matter ineligible for patent protection: “laws of nature, physical
`phenomena, and abstract ideas.” Bilski v. Kappos, 130 S. Ct. 3218, 3225
`(2010). As explained by the Court, “[p]henomena of nature, though just
`discovered, mental processes, and abstract intellectual concepts are not
`patentable, as they are the basic tools of scientific and technological work.”
`Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
`The issue before us is whether the claimed process amounts to no
`more than an abstract idea. A preemption analysis determines whether the
`challenged claims pose “any risk of preempting an abstract idea.” CLS Bank
`Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282 (Fed. Cir. 2013) (plurality
`opinion).
`This analysis first focuses on the central idea represented in the
`claims. See CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1282
`
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`(Fed. Cir. 2013) (plurality opinion). Claims 1 and 21 include the steps of
`receiving a request associated with a plurality of travel related items that
`may be ordered, sending “a plurality of search queries to at least one host
`that comprises a plurality of server devices,” “receiving search results from
`the at least one host in response to the plurality of search queries,” receiving
`a request “for placing an order for at least one of a plurality of travel related
`items” (e.g., airline ticket, hotel reservation, car rental, etc.), and “processing
`the order.” Claims 1, 21. In essence, claims 1 and 21 are each directed to
`the abstract idea of searching for travel information from multiple sources
`and ordering travel items from the search results. This reading of claims 1
`and 21 is consistent with the Specification, which describes the disclosed
`metasearch system as “search[ing] or metasearch[ing] a plurality of queries
`or keyword phrases of a plurality of sites,” (Ex. 1001, col. 112, ll. 30-39),
`and allowing the user to order substantially any item, including an airline
`ticket. Id. at col. 114, ll. 50-64. Thus, based on the current record, we are
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