Paper 35
`
`Trials@uspto.gov
`571.272.7822 Entered: August 18, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`BETTER FOOD CHOICES LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00071
`Patent 5,841,115
`
`
`Before MICHAEL P. TIERNEY, GLENN J. PERRY, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822 Entered: August 18, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`BETTER FOOD CHOICES LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00071
`Patent 5,841,115
`
`
`Before MICHAEL P. TIERNEY, GLENN J. PERRY, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`
`I. INTRODUCTION
`
`In this covered business method patent review, instituted pursuant to
`35 U.S.C. § 324, Petitioner Google Inc. (“Petitioner”) challenges the
`patentability of claims 1–20 (the “challenged claims”) of U.S. Patent No.
`5,841,115 (Ex. 1001, “the ’115 patent”), owned by Better Food Choices
`LLC (“Patent Owner”). The Board has jurisdiction under 35 U.S.C. § 6(c).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 328(a) and
`37 C.F.R. § 42.73. With respect to the grounds instituted in this trial, we
`have considered the papers submitted by the parties and the evidence cited
`therein. For the reasons discussed below, we determine Petitioner has
`shown by a preponderance of the evidence that claims 1–20 of the ’115
`patent are unpatentable.
`
`A. Procedural History
`On February 4, 2015, Petitioner filed a Petition (Paper 1, “Pet.”)
`requesting a covered business method patent review of claims 1–20 of the
`’115 patent under Section 18 of the Leahy-Smith America Invents Act, Pub.
`L. No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”). On August 20, 2015, we
`instituted a covered business method patent review based on the following
`specific grounds (Paper 10, “Dec. on Inst.,” 30–31):
`
`Claims Challenged
`
`Statutory Basis
`
`Ground
`
`1–20
`
`1–10
`
`
`
`§ 101
`
`Lack of patent-eligible subject
`matter
`
`§ 112, ¶ 2
`
`Indefiniteness
`
`2
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 14, “PO Resp.”), to which Petitioner filed a Reply (Paper 18, “Pet.
`Reply”). The parties also briefed whether certain exhibits submitted by
`Patent Owner should be excluded from the record. See Papers 21, 25, 27.
`An oral hearing was held on May 19, 2016. A transcript of the
`hearing is included in the record as Paper 34 (“Tr.”).
`
`B. Related Proceedings
`Petitioner indicates that the ’115 patent has been asserted against
`Petitioner in the following patent infringement case: Better Food Choices,
`LLC v. MyNetDiary, Inc., No. 14-cv-00204-CWD (D. Idaho). Pet. 4.
`According to Petitioner, the case has been transferred to the United States
`District Court for the Northern District of California as Case No. 3:15-cv-
`00198-EDL. Id.
`Patent Owner indicates that the ’115 patent is also the subject of the
`following patent infringement case: Better Food Choices, LLC v. Amazon,
`Inc., No. 3:15-cv-00198 (N.D. Cal.). Paper 9, 2.
`
`II. THE ’115 PATENT
`A. Described Invention
`The ’115 patent describes a computerized method and system to
`provide personalized nutritional information to consumers. Ex. 1001,
`Abstract, col. 5, ll. 40–43. The computerized apparatus and method
`correlate personal data—such as age, height, weight, medical conditions,
`nutritional preferences, and demographic data—with the food products the
`person seeks to purchase or consume, or has purchased or consumed. Id. at
`col. 5, ll. 43–48. In an embodiment, personal data may be provided or
`
`
`
`3
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`entered by using a magnetic card reader, a barcode reader, a keypad entry
`device, or a touch screen entry system. Id. at col. 5, ll. 60–63. The data
`input regarding an individual may include the individual’s age, gender, and
`weight; the existence of dietary regulated conditions such as high cholesterol
`level or diabetes; and the existence of medical conditions such as heart
`disease. Id. at col. 5, l. 64–col. 6, l. 3. In another embodiment, a shopper at
`a supermarket may provide personal and product information by using a
`barcode scanner available on a shopping cart to scan a user identification
`card and the barcodes on packaged food. Id. at col. 7, ll. 16–19. The system
`accesses a nutritional database (NDB)—which contains a listing of foods,
`the UPC barcode number for prepackaged food products, and nutritional
`information regarding those foods—and correlates the personal data input by
`the individual with the nutritional data pertaining to the food products the
`individual intends to purchase. Id. at col. 6, ll. 24–28; col. 7, ll. 19–26. The
`correlated data output may include information and/or recommendations
`regarding the particular food choices of the individual—e.g., if an individual
`is a diabetic, the system will inform the person whether any of the chosen
`food items contain sugars or glucose. Id. at col. 6, ll. 37–41. By using the
`claimed system, the food shoppers can obtain individualized nutritional
`information while they shop, allowing them to make better informed food
`choices. Id. at col. 7, ll. 31–35.
`In another embodiment, the claimed system may provide personalized
`nutritional information at the check-out counter of a food market. Id. at
`col. 7, ll. 64–66. The information provided to the shopper would be in the
`form of a printed report the shopper receives at the time of purchase, and
`
`
`
`4
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`may be based on a single purchase of food items or based upon weekly food
`purchases. Id. at col. 7, ll. 66–67; col. 8, ll. 4–5.
`
`B. Illustrative Claim
`Of the challenged claims, claims 1, 4, and 11 are independent.
`Claims 1 and 11 are illustrative of the challenged claims and are reproduced
`below:
`for generating personalized nutritional
`Apparatus
`1.
`information for a shopper comprising:
`(a) means for inputting personal data relating to an
`individual;
`(b) barcode means for inputting data identifying at least
`one food product which said shopper has selected or specified,
`or has purchased or consumed;
`(c) processor means under the control of a prestored
`computer program for correlating the personal data with
`prestored nutritional data,
`including a barcode address,
`pertinent to the at least one food product which said shopper
`has selected or specified, or has purchased or consumed; and
`(d) means for outputting information pertinent to the at
`least one food product and the personal data of the individual.
`
`11. A method for providing a shopper with personalized
`nutrition information regarding food purchased or consumed, or
`food selected or specified by said shopper, comprising the
`following steps:
`(a) inputting personal data relating to an individual;
`(b) selecting or specifying at least one food product
`which said shopper is interested in, or has purchased or
`consumed, and inputting data identifying said food product;
`(c) correlating the personal data with prestored nutritional
`data including a barcode address, pertinent to the at least one
`food product which said shopper has specified or selected, or
`has purchased or consumed; and
`
`
`
`5
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`
`(d) outputting information pertinent to the at least one
`food product and the personal data of the individual.
`
`III. ANALYSIS
`A. Standing
`Section 18 of the AIA limits filing of petitions for a covered business
`method patent review to persons or their privies that have been sued or
`charged with infringement of a covered business method patent. AIA,
`§ 18(a)(1)(B); see 37 C.F.R. § 42.302(a). 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 technological inventions.” AIA
`§ 18(d)(1); see 37 C.F.R. § 42.301(a). For the reasons described below, we
`determine that Petitioner has standing to file the Petition for covered
`business method patent review of the ’115 patent.
`
`1. Sued for Infringement
`As discussed above, Petitioner represents, and Patent Owner does not
`dispute, that Petitioner has been sued for infringement of the ’115 patent in
`Better Food Choices, LLC v. MyNetDiary, Inc., No. 14-cv-00204-CWD (D.
`Idaho). Pet. 4; Paper 9, 2. Thus, Petitioner has been sued for infringement
`for purposes of AIA § 18(a)(1)(B).
`
`2. Whether the ’115 Patent is a Covered Business Method Patent
`Subject to Covered Business Method Patent Review
`
`Petitioner asserts that the ’115 patent is a covered business method
`patent as defined in Section 18(d)(1) of the AIA. Pet. 5–18. Patent Owner
`
`
`
`6
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`disagrees and asserts that the ’115 patent is not subject to covered business
`method patent review. See Prelim. Resp. 3–4, 6–9. In the Decision on
`Institution, we determined, upon considering the arguments and evidence
`submitted by the parties, Petitioner has met its burden of demonstrating that
`the ’115 patent is a covered business method patent under AIA § 18(d)(1)
`and is eligible for review under the transitional covered business method
`patent program. Dec. on Inst. 6–14. We determined that Petitioner has
`demonstrated sufficiently that claims 1, 4, and 11 of the ’115 patent recite a
`method or apparatus for performing data processing or other operations used
`in the practice, administration, or management of a financial product or
`service, as required by Section 18(d)(1) of the AIA (id. at 6–11) and that the
`’115 patent is not a patent for a technological invention under Section
`18(d)(1) of the AIA (id. at 11–14). Patent Owner and Petitioner do not
`dispute whether the ’115 patent is subject to covered business method patent
`review in the Patent Owner Response and Petitioner’s Reply, and we do not
`perceive any reason or evidence that compels deviation from our earlier
`determination. Accordingly, we adopt our previous analysis for purposes of
`this Final Written Decision. See id. at 6–14.
`In paragraph 41 of the Declaration of Kenneth J. Shepley (Ex. 2005)
`submitted during trial, Mr. Shepley, the inventor of the ’115 patent, asserts
`that our Decision on Institution did not consider the remarks by Senator Kyl
`in the legislative history of the AIA reproduced below.
`As the proviso at the end of the definition makes clear, business
`methods do not include “technological inventions.” In other
`words, the definition applies only to abstract business concepts
`and their implementation, whether in computers or otherwise,
`but does not apply to inventions relating to computer operations
`
`
`
`7
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`
`for other uses or the application of the natural sciences or
`engineering.
`
`157 Cong. Rec. S1379 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl)
`(emphasis added). Paragraph 41 of the Shepley Declaration is not
`referenced or discussed in the Patent Owner Response. Nonetheless, Mr.
`Shepley’s assertion does not change our analysis because, contrary to Mr.
`Shepley’s assertion and as discussed in the Decision on Institution, 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.” Dec. on Inst. 6–7 (citing Transitional
`Program for Covered Business Method Patents—Definitions of Covered
`Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`Reg. 48,734, 48,735–36 (Aug. 14, 2012)). Following Congress’s
`instructions, the promulgated rules include the definition of “technological
`inventions.” See AIA § 18(d)(2). In the Decision on Institution, we applied
`the definition provided in the final rules to determine that the ’115 patent is
`not a patent for a technological invention. See Dec. on Inst. 11–14.
`For purposes of this Final Written Decision, we adopt Petitioner’s
`contentions as summarized in the Decision on Institution. See Dec. on Inst.
`7–8, 11–13. For instance, the record supports, and we adopt, Petitioner’s
`contention that the ’115 patent admits that the claimed technological features
`were generic, well-known, existing, and conventional at the time of
`invention. See Dec. on Inst. 11–12 (citing Pet. 13–17). The record also
`supports, and we adopt, Petitioner’s contention that the ’115 patent does not
`solve a technical problem because the problem addressed by the ’115 patent
`is “sift[ing] through possible misleading health claims, other advertising
`
`
`
`8
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`influences and complicated food label information to make a wise choice”
`when shopping for groceries, which does not present a technical problem.
`See id. at 13 (citing Pet. 17–18). Hence, we determine for the reasons
`discussed in the Decision on Institution and notwithstanding Mr. Shepley’s
`assertion or Patent Owner’s arguments in the Preliminary Response, that
`Petitioner has demonstrated sufficiently that the ’115 patent is not a patent
`for a technological invention under Section 18(d)(1) of the AIA. Id. at 11–
`14. As discussed in the Decision on Institution, we have determined,
`notwithstanding Patent Owner’s arguments in the Preliminary Response, the
`claims of ’115 patent recite activities that are, at a minimum, complimentary
`or incidental to a financial activity—i.e., purchase of food by a shopper. Id.
`at 6–11. Therefore, the challenged claims recite a method or apparatus for
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service, as required
`by Section 18(d)(1) of the AIA. Id. at 11. Accordingly, we determine
`Petitioner has demonstrated sufficiently that the ’115 patent is a covered
`business method patent under AIA § 18(d)(1) and is eligible for review
`under the transitional covered business method patent program. See Dec. on
`Inst. 6–14.
`
`B. Claim Construction
`Petitioner asserts that it is not necessary to construe any claim
`limitations of the ’115 patent for the purposes of the patentability analysis
`under 35 U.S.C. § 101. Pet. 21. Nonetheless, Petitioner asserts that the
`limitations of claims 1 and 4 reciting the word “means” should be
`interpreted as means-plus-function limitations under 35 U.S.C. § 112, ¶ 6,
`especially for the purposes of determining definiteness of claims 1–10 under
`
`
`
`9
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`35 U.S.C. § 112, ¶ 2.1 Pet. 23–25, 37–38. In particular, Petitioner asserts
`that the term “processor means under the control of a prestored computer
`program for correlating the personal data with prestored nutritional data”
`recited in claims 1 and 4 should be construed as a means-plus-function
`limitation subject to § 112, ¶ 6. Id. at 37–38. In the Decision on Institution,
`we preliminarily determined that this term is a means-plus-function
`limitation and that § 112, ¶ 6 applies. Dec. on Inst. 27–28. Patent Owner
`disagrees and argues that this term should not be construed according to
`§ 112, ¶ 6. PO Resp. 39–40. We will address the construction under § 112,
`¶ 6 in Section III.D below for the purposes of determining definiteness of
`claims 1–10 under § 112, ¶ 2. No express construction is necessary for any
`other claim term of the ’115 patent. See, e.g., Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are
`in controversy need to be construed, and only to the extent necessary to
`resolve the controversy).
`
`C. Asserted Ground Based on 35 U.S.C. § 101
`Petitioner asserts that claims 1–20 of the ’115 patent are unpatentable
`under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
`Pet. 19–36. Upon review of all of the parties’ papers and supporting
`evidence discussed in those papers, we are persuaded that Petitioner has
`demonstrated, by a preponderance of evidence, that claims 1–20 are
`unpatentable under 35 U.S.C. § 101.
`
`
`1 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶¶ 2 and 6, as
`35 U.S.C. § 112 (b) and (f), respectively. Because the ’115 patent has a
`filing date prior to September 16, 2012, the effective date of § 4(c) of the
`AIA, we refer to the pre-AIA version of 35 U.S.C. § 112. See AIA § 4(e).
`
`
`
`10
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`
`Section 101 provides that “[w]hoever 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.” The Supreme Court has “long
`held that this provision contains an important implicit exception: Laws of
`nature, natural phenomena, and abstract ideas are not patentable.” Alice
`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting
`Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
`2116 (2013) (internal quotation marks and brackets omitted)). “The
`‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
`itself is not patentable.’” Alice, 134 S. Ct. at 2355 (quoting Gottschalk v.
`Benson, 409 U.S. 63, 67 (1972) (quotations omitted)). Notwithstanding that
`an abstract idea, by itself, is not patentable, the practical application of an
`abstract idea may be deserving of patent protection. Mayo Collaborative
`Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). To be
`patent-eligible, a claim cannot simply state the abstract idea and add the
`words “apply it.” Id. at 1294. The claim must incorporate enough
`meaningful limitations to ensure that it claims more than just an abstract idea
`and is not merely a “drafting effort designed to monopolize the [abstract
`idea] itself.” See id. at 1297.
`The first step in the analysis is to “determine whether the claims at
`issue are directed to one of those patent-ineligible concepts.” Alice, 134
`S. Ct. at 2355. If so, a second step in the analysis is warranted to consider
`the elements of the claims “individually and ‘as an ordered combination’” to
`determine whether there are additional elements that “‘transform the nature
`of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132
`
`
`
`11
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`S. Ct. at 1298, 1297). In other words, the second step is to “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 on the [ineligible concept] itself.’” Id. (alteration in original)
`(quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an
`abstract idea “cannot be circumvented by attempting to limit the use of the
`formula to a particular technological environment or adding insignificant
`postsolution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
`(citation and internal quotation marks omitted). Following this framework,
`we analyze Petitioner’s asserted ground of unpatentability based on § 101.
`As an initial matter, Patent Owner asserts that Petitioner has not met
`its burden of proof because Petitioner relies only on the ’115 patent and its
`prosecution history to argue unpatentability and does not present any other
`evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues
`that Petitioner has presented no evidence of unpatentability because the ’115
`patent and its file history “shows the Patent Owner has a valid, issued patent
`and nothing more.” Id. at 7. We are not persuaded because, as discussed
`below, in this case we need to look only to the ’115 patent and its
`prosecution history to support a finding of unpatentability under §§ 101 and
`112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed.
`Cir. 2016) (the patent alone is sufficient to sustain a finding of
`unpatentability under § 101).
`
`1. Abstract Idea
`Petitioner asserts that the challenged claims are “directed to the
`abstract idea of providing shoppers with information about their potential
`food purchases that is relevant to their own personal nutritional needs.” Pet.
`
`
`
`12
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`25. Analyzing claim 11 as a representative claim, Petitioner discusses the
`steps recited in the claim and the corresponding disclosure in the
`Specification and argues that the recited steps are, viewed as a whole,
`directed to an awareness of personal information, shopping for food, and
`correlating personal needs with the characteristics of the food, and, hence,
`“cover the abstract idea of paying attention to nutrition while grocery
`shopping.” Id. at 25–27. Petitioner argues that claim 11 recites nothing
`more than “the typical, routine nutritional analysis that grocery shoppers
`have been performing on their own for decades.” Id. at 2. According to
`Petitioner, “shoppers have selected groceries based upon their nutritional
`needs and goals for at least as long as there have been nutritional labels” and
`that “this fundamentally abstract concept” is unpatentable under § 101. Id.
`at 27–28. Petitioner asserts that a district court has reached a similar
`conclusion in a case concerning customized meal-planning using a food
`database. Id. at 28 (citing DietGoal Innovations LLC v. Bravo Media LLC,
`33 F. Supp. 3d 271, 283–84 (S.D.N.Y. 2014), aff’d, 599 F. App’x 956 (Fed.
`Cir. 2015)).
`Petitioner further asserts that the challenged claims recite data
`operations that replicate a series of tasks that could be otherwise
`accomplished with the human mind and a pen and paper and are, therefore,
`directed to an abstract idea because claims covering nothing more than
`receiving, storing, processing, and/or transmitting data, are inherently
`abstract. Pet. Reply 6–7 (citing Digitech Image Techs., LLC v. Elecs. for
`Imaging, Inc., 758 F.3d 1344, 1349–51 (Fed. Cir. 2014)). Petitioner
`additionally argues that “providing personalized nutritional information of
`food products to shoppers based on their nutritional needs” can be performed
`
`
`
`13
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`with a pen and paper and/or in the human mind and that claims directed to
`human activities that can be accomplished with pen and paper have been
`found to be abstract by several courts. Id. at 7 (citing CyberSource Corp. v.
`Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); OpenTV,
`Inc. v. Apple, Inc., No. 14-cv-1622, 2015 WL 1535328, at *4 (N.D. Cal.
`Apr. 6, 2015)). Petitioner also asserts that the challenged claims are drawn
`to “method[s] of organizing human activity” or longstanding practices, and,
`therefore, are abstract. Id. (citing Alice, 134 S. Ct. at 2356).
`Petitioner contends that claims 1 and 4 are drawn to the same abstract
`idea as method claim 11, “differing only insofar as they attempt to expressly
`tie the idea to a computerized environment using generic means-plus-
`function claiming.” Pet. 31. Petitioner argues claims 1 and 4 meet the first
`part of the Alice test because adding common components claimed in means-
`plus-function form to the underlying abstract idea does not make the claims
`less abstract. Id. (citing Indeed, Inc. v. Career Destination Development,
`LLC, Case CBM2014-00068, slip. op. at 16–17 (PTAB Aug. 20, 2014)
`(Paper 11)).
`Patent Owner criticizes Petitioner’s choice of claim 11 as a
`representative claim as being arbitrary and focuses instead on claim 1 as the
`“primary reference claim.” PO Resp. 32 & n.15. Patent Owner also
`disputes Petitioner’s characterization of the challenged claims and asserts
`that determining whether the claims are directed to an abstract idea at step
`one of the Alice framework requires identifying the “core invention” of the
`’115 patent. Id. at 30. Patent Owner asserts that this “core invention” must
`include “three essential primary elements,” defined by Patent Owner as “#1
`a barcode entry device, #2 personal data related to the individual, and #3
`
`
`
`14
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`prestored nutritional data.” Id. at 31. Hence, Patent Owner argues that
`claim 1 is directed to “the combination of a barcode entry device, personal
`data related to the individual, and prestored nutritional data, combined and
`correlated to allow a shopper to avoid relying on product labels for
`nutritional information.” Id. Patent Owner asserts that the claim is,
`therefore, not drawn to a long prevalent practice because “the number of
`shoppers carrying a barcode reader and their own data into a store is a very
`small number.” Id. at 24. Patent Owner argues that Petitioner’s challenge
`under § 101 fails at step one because Petitioner has provided no evidence
`that the “core invention,” as defined by Patent Owner, is directed to an
`abstract idea or a prevalent practice. Id. at 52.
`Patent Owner further asserts that the use of a barcode reader and
`“prestored nutritional data” must be considered in step one of the Alice
`analysis because these elements are part of the purported “core invention” as
`defined by Patent Owner. Patent Owner asserts that Petitioner subjectively
`recasts the claimed invention overly broadly by leaving out these elements to
`favor a finding of abstractness. PO Resp. 47–49. Patent Owner argues our
`consideration of these elements in step two, rather than step one, of the Alice
`framework in the Decision on Institution was unfair and erroneous. Id. at
`27, 50–51.
`As noted by Petitioner, the Specification describes the barcode reader
`as one of the well-known systems for data entry. Ex. 1001, col. 5, ll. 61–63;
`Pet. 15. The Specification also describes “prestored nutritional data” and
`“personal data related to [an] individual” as well-known and conventional in
`the Background of the Invention section. See, e.g., Ex. 1001, col. 3, ll. 39–
`41 (“Variations of these three primary methods [of collecting nutrition
`
`
`
`15
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`intake data] also exist. Some of these include personal-, telephone-, and
`mail-assisted reporting, with retrospective and prospective variations of
`each.”), 54–64 (“Most of these methods usually convert food consumption
`information into nutrient intake data via the coding of various foods for
`entry into computer programs. . . . Variations in the nutrient databases used
`to define the nutrient composition of foods pose another problem in
`assessing data.”) (emphases added).
`Including these well-known and conventional components does not
`render the claims any less abstract for purposes of step one of the Alice
`analysis. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
`F.3d 1363, 1367 (Fed. Cir. 2015) (noting that including technical elements
`does not render the claims any less abstract). For example, in Content
`Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
`(Fed. Cir. 2014), although the patentee argued that the claims at issue require
`a scanner and therefore are distinguishable from the claims found to be
`abstract in Alice, the Federal Circuit nonetheless determined that the claims
`were directed to the abstract concept of data recognition and storage that is
`patent ineligible. Id. at 1347–48. The patentee in Content Extraction
`conceded that the use of a scanner was well-known at the time of filing,
`similar to the barcode reader and other components of the “three essential
`primary elements” defined by Patent Owner in this case. Id. at 1348.
`Whether these conventional components, individually or as an ordered
`combination, transform the claims into patent-eligible subject matter is a
`question to be considered in step two of the Alice analysis. Alice, 134 S. Ct.
`at 2355. Accordingly, we are not persuaded by Patent Owner’s argument
`that the challenged claims are not directed to an abstract idea predicated
`
`
`
`16
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`upon Patent Owner’s definition of the purported “core invention” of the ’115
`patent.
`Moreover, Patent Owner’s “core invention” analysis is inconsistent
`with the Supreme Court and Federal Circuit precedents on step one analysis
`under the Alice framework. In step one of the Alice analysis, to determine
`whether the challenged claims are directed to an abstract idea, the inquiry is
`to ask, considered in light of the Specification, whether “their character as a
`whole” is directed to an abstract idea, not, as Patent Owner contends,
`identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft
`Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
`v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on
`the distinction made in Alice between, on one hand, computer-functionality
`improvements and, on the other, uses of existing computers as tools in aid of
`processes focused on “abstract ideas,” the court in Enfish clarified that a
`relevant inquiry in step one of the Alice framework is to ask whether the
`“focus” of the claims is on the specific asserted improvement in computer
`capabilities or, instead, on a process that qualifies as an “abstract idea” for
`which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36
`(citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an
`improvement in the functioning of a computer” are contrasted with claims
`“simply adding conventional computer components to well-known business
`practices” or “generalized steps to be performed on a computer using
`conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish,
`822 F.3d at 1338). The Federal Circuit further clarified recently and
`described the first-stage inquiry as “looking at the ‘focus’ of the claims, their
`‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-
`
`
`
`17
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`1778, __ F.3d __ , 2016 WL 4073318, at *3 (Fed. Cir. Aug. 1, 2016) (citing
`Enfish, 822 F.3d at 1335–36; Internet Patents, 790 F.3d at 1346).
`Under the approach described in Alice and clarified in Enfish, TLI,
`and Electric Power Group, the challenged claims in this case, contrary to
`Patent Owner’s assertion, are not directed to a barcode entry device,
`personal data related to the individual, and prestored nutritional data,
`because the claims are not focused on any specific improvement in the
`functioning of a barcode reader or a nutritional database. The Specification
`does not describe a new barcode reader or new database technology. Rather,
`as discussed above, the Specification describes the barcode reader as one of
`the well-known systems for data entry. Ex. 1001, col. 5, ll. 61–63. The
`Specification also describes “prestored nutritional data” and “personal data
`related to [an] individual” as well-known and conventional components.
`See, e.g., Ex. 1001, col. 3, ll. 39–41. Moreover, the Specification does not
`provide any technical details for the barcode reader, the nutritional database,
`the processor, or correlating personal data with nutritional data, but instead
`mostly describes the system and the method in purely functional terms. See
`Ex. 1001, col. 5, l. 56–col. 6, l. 63.
`Based on the disclosure in the Specification and the claim language,
`we determine that the “focus” of the challenged claims in this proceeding,
`including claims 1 and 11,2 is on collecting and correlating information—
`i.e., collecting personal data of a shopper and data identifying selected food
`
`
`2 We note that, in this case, whether the claim is drafted as a method claim
`or in a means-plus-function format is immaterial in evaluating the “focus” of
`the claims or their “character as a whole.” Hence, for purposes of step one
`of the Alice analysis in this proceeding, we consider both claims 1 and 11 as
`representative claims.
`
`
`
`18
`
`
`
`CBM2015-00071
`Patent 5,841,115
`
`products, correlating the collected information with prestored nutritional
`data, and presenting the results of the data collection and correlation. In
`other words, the focus of the challenged claims is on collecting and
`correlating information, a process that qualifies as an “abstract idea” for
`which conventional components, such as a barcode reader, data input
`devices, a processor, and a nutritional database, are merely invoked as tools
`used in their ordinary and conventional
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
