Paper 10
`
`Trials@uspto.gov
`571.272.7822 Entered: August 20, 2015
`
`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.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`

`
`CBM2015-00071
`Patent 5,841,115
`
`
`I. INTRODUCTION
`
`Google Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`
`a covered business method patent review of claims 1–20 (the “challenged
`
`claims”) of U.S. Patent No. 5,841,115 (Ex. 1001, “the ’115 patent”). Better
`
`Food Choices LLC (“Patent Owner”) filed a Preliminary Response (Paper 8,
`
`“Prelim. Resp.”).1 We have jurisdiction under 35 U.S.C. § 324. See Section
`
`18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`
`Stat. 284, 329 (2011) (“AIA”).
`
`The standard for instituting a covered business method patent review
`
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`
`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.
`
`Upon consideration of the information presented in the Petition and
`
`Preliminary Response, we conclude Petitioner has demonstrated all of the
`
`
`1 The Preliminary Response appears to suffer from various formatting
`deficiencies, including using a 12-point proportional font instead of the
`required 14-point or larger proportional font. See 37 C.F.R.
`§ 42.6(a)(2)(ii)(A). Block quotations may be 1.5 spaced, but must be
`indented from both the left and right margins. Id. The Preliminary
`Response, however, appears to use single spacing, instead of 1.5 spacing, for
`block quotations. For these reasons, the Preliminary Response is not
`compliant with 37 C.F.R. § 42.6. Patent Owner is reminded that non-
`compliance with the Board’s rules may lead to adverse consequences,
`including rejection of any non-compliant filings. Patent Owner is advised to
`consult the Board’s trial rules and the Office Patent Trial Practice Guide
`(available at http://www.uspto.gov/patents-application-process/appealing-
`patent-decisions/resources/board-trial-rules-and-practice) for future filings.
`
`
`
`2
`
`

`
`CBM2015-00071
`Patent 5,841,115
`
`challenged claims are more likely than not unpatentable under 35 U.S.C.
`
`§ 101 or § 112. Accordingly, we institute a covered business method patent
`
`review of claims 1–20.
`
`A. 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. Id.
`
`Patent Owner indicates that the above-mentioned case has been
`
`terminated but is on appeal before the United States Court of Appeals for the
`
`Federal Circuit as Better Food Choices, LLC v. MyNetDiary, Inc.,
`
`No. 15-1304. Paper 9, 2. According to Patent Owner, the ’115 patent is also
`
`the subject of the following pending patent infringement case: Better Food
`
`Choices, LLC v. Amazon, Inc., No. 3:15-cv-00198 (N.D. Cal.). Id.
`
`B. The ’115 Patent
`
`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
`
`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
`
`
`
`3
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`

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`CBM2015-00071
`Patent 5,841,115
`
`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
`
`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.
`
`
`
`4
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`

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`CBM2015-00071
`Patent 5,841,115
`
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 4, and 11 are independent. Claim
`
`11 is illustrative of the challenged claims and is reproduced below:
`
`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
`
`(d) outputting information pertinent to the at least one
`food product and the personal data of the individual.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 19–
`
`39):
`
`Claims Challenged
`
`Statutory Basis
`
`Ground
`
`1–20
`
`1–10
`
`
`
`
`
`§ 101
`
`Lack of patent-eligible subject
`matter (id. at 19–36)
`
`§ 112, ¶ 2
`
`Indefiniteness (id. at 36–39)
`
`5
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`

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`CBM2015-00071
`Patent 5,841,115
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`
`II. ANALYSIS
`
`A. Standing
`
`The parties disagree as to whether Petitioner has standing to file a
`
`petition for a covered business method review of the ’115 patent. See Pet. 5,
`
`Prelim. Resp. 3–4. Section 18 of the AIA governs the transitional program
`
`for reviewing covered business method patents, which is limited 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 discussed below, we conclude 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 that it 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. Thus, Petitioner has been
`
`sued for infringement for purposes of AIA § 18(a)(1)(B).
`
`2. Financial Service or Product
`
`Petitioner bears the burden of demonstrating that the ’115 patent
`
`claims a method “used in the practice, administration, or management of a
`
`financial product or service.” AIA § 18(d)(1); 37 C.F.R. § 42.304(a). In
`
`promulgating rules for covered business method reviews, the Office
`
`
`
`6
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`

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`CBM2015-00071
`Patent 5,841,115
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`considered the legislative intent and history behind the AIA’s definition of
`
`“covered business method patent.” See Transitional Program for Covered
`
`Business Method Patents—Definitions of Covered Business Method Patent
`
`and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,735–36
`
`(Aug. 14, 2012). The legislative history of the AIA “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. (quoting
`
`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.; see Versata Dev. Grp., Inc. v.
`
`SAP Am., Inc., No. 2014-1194, 2015 WL 4113722, at *16 (Fed. Cir. July 9,
`
`2015) (“We agree with the USPTO that . . . the definition of ‘covered
`
`business method patent’ is not limited to products and services of only the
`
`financial industry, or to patents owned by or directly affecting the activities
`
`of financial institutions such as banks and brokerage houses. The plain text
`
`of the statutory definition . . . covers a wide range of finance-related
`
`activities.”). To determine whether a patent is eligible for a covered
`
`business method patent review, the focus is on the claims. See 77 Fed. Reg.
`
`at 48,736. A patent is eligible for review if it has at least one claim directed
`
`to a covered business method. Id. at 48,736; see Versata at *17–18
`
`(accepting the Board’s use of a single claim to determine whether a patent is
`
`eligible for covered business method patent review).
`
`Petitioner contends claims 1–20 of the ’115 patent are incidental to or
`
`complementary to the practice, administration, or management of a financial
`
`transaction because the claims are directed to performing data processing or
`
`
`
`7
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`

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`CBM2015-00071
`Patent 5,841,115
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`other operations that complement a grocery shopper’s experience when
`
`purchasing groceries at the grocery store by helping the shopper select which
`
`products to purchase. Pet. 5–6. Petitioner argues each claim of the ’115
`
`patent recites a purchase of food by a shopper, which is a financial
`
`transaction in the consumer food or grocery industry. Id. at 6. Petitioner
`
`also contends that the Specification of the ’115 patent describes preferred
`
`embodiments “in a supermarket setting” which “provide supermarket food
`
`shoppers with the ability to obtain individualized nutritional information
`
`while they shop, thereby allowing them to make better informed food
`
`choices” in conducting financial transactions for purchasing groceries at the
`
`grocery store. Id. at 8 (internal quotation marks omitted) (citing Ex. 1001,
`
`col. 7, ll. 30–35). Petitioner contends the ’115 patent is subject to covered
`
`business method review because purchasing food at a grocery store is a
`
`shopping activity that is “financial in nature, incidental to a financial activity
`
`or complementary to a financial activity.” Id. at 12 (internal quotation
`
`marks omitted).
`
`Patent Owner contends the ’115 patent is not subject to covered
`
`business method review because “[t]he legislative history makes it clear that
`
`[Section 18 of the AIA] was intended to address a narrow class of business
`
`method patents issued after State Street Bank and Trust Company v.
`
`Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)” and the
`
`’115 patent predates State Street. Prelim. Resp. 3–4.2 Patent Owner,
`
`
`2 Patent Owner contends Petitioner’s request for “reexamination” should be
`denied. Patent Owner also refers to this proceeding as “reexamination”
`throughout its Preliminary Response. For purposes of this Decision, we
`evaluate Patent Owner’s arguments as directed to a covered business method
`review, not a reexamination.
`
`
`
`8
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`

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`CBM2015-00071
`Patent 5,841,115
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`however, does not explain which portion or portions of the legislative
`
`history demonstrate or support Patent Owner’s contention. Hence, Patent
`
`Owner’s contention is not supported by evidence at this time, and, therefore,
`
`does not rebut Petitioner’s contentions.
`
`Patent Owner additionally contends “unambiguous statutory language
`
`[of Section 18 of the AIA] requir[es] actual use in the financial industry.”
`
`Id. at 7 n.2. As discussed above, the Court of Appeals for the Federal
`
`Circuit has rejected this argument. Versata at *16 (“[T]he definition of
`
`‘covered business method patent’ is not limited to products and services of
`
`only the financial industry, or to patents owned by or directly affecting the
`
`activities of financial institutions such as banks and brokerage houses. The
`
`plain text of the statutory definition . . . covers a wide range of finance-
`
`related activities.”) (emphases added). Patent Owner’s arguments that the
`
`’115 patent is not subject to covered business method review because the
`
`patent “addresses and solves problems in the field of human nutrition, which
`
`is a branch of biology, a natural science” (Prelim. Resp. 4) and is directed to
`
`“personal matters, not business matters” (id. at 6) fail for similar reasons.
`
`Patent Owner further asserts that Petitioner “relies on pure speculation
`
`of what might happen after the claimed invention is used, not what happens
`
`while the invention is being used,” which is “irrelevant to the analysis.” Id.
`
`Patent Owner alleges that Petitioner has made the argument that “a shopper
`
`will, at some future point in time, purchase something, and that future,
`
`speculative purchase that might be made might also have been influenced by
`
`the claimed invention and so therefore . . . the claimed invention is
`
`sufficiently related to a financial service - a prospective retail purchase.” Id.
`
`(citing Pet. 10–12). The cited portion of the Petition, however, appears
`
`
`
`9
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`

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`CBM2015-00071
`Patent 5,841,115
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`unrelated to the argument Patent Owner alleges Petitioner has made. Rather,
`
`pages 10–12 of the Petition presents Petitioner’s argument that purchasing
`
`food at a store falls within the scope of “financial product or service” under
`
`AIA § 18(d)(1). Further, Petitioner has argued claims 1, 4, and 11 all recite
`
`that “the food product at issue can be one that said ‘shopper’ ‘has
`
`purchased,’ or ‘is interested in’ purchasing.” Pet. 6 (emphasis added).
`
`Patent Owner does not point to, nor do we discern, where Petitioner has
`
`argued “the claimed invention is sufficiently related to a financial service”
`
`because it is directed to “a prospective retail purchase.” Prelim. Resp. 6–7.
`
`Hence, Patent Owner’s argument fails because it appears to be based on
`
`misunderstanding or mischaracterization of Petitioner’s argument.
`
`Patent Owner further contends that the ’115 patent is an “anti-
`
`financial” patent because “the claimed invention teaches away from the
`
`concept of using price as a basis for purchasing.” Id. at 7. Patent Owner
`
`does not provide any explanation or citation to supporting authority or
`
`evidence for its contention. Hence, Patent Owner’s argument does not rebut
`
`Petitioner’s contentions. Further, Patent Owner’s argument fails because
`
`Section 18(d)(1) of the AIA does not require a financial product or service to
`
`“us[e] price as a basis for purchasing.”
`
`Patent Owner does not dispute independent claims 1, 4, and 11 recite
`
`a “shopper . . . has purchased” at least one “food product,” nor does it
`
`dispute Petitioner’s contention that purchasing food by a shopper at a store is
`
`a financial transaction in the consumer food or grocery industry. See Pet. 6,
`
`Prelim. Resp. 6–7. Based on the foregoing and the record presented, we are
`
`persuaded that the claims of ’115 patent claim activities that are, at a
`
`minimum, complimentary or incidental to a financial activity—i.e., purchase
`
`
`
`10
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`

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`CBM2015-00071
`Patent 5,841,115
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`of food by a shopper. Accordingly, we are persuaded that claims 1, 4, and
`
`11 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.
`
`3. Technological Invention Exception
`
`The definition of “covered business method patent” in Section
`
`18(d)(1) of the AIA excludes patents for “technological inventions.” In
`
`determining 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.
`(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.
`
`Petitioner contends none of the claims of the ’115 patent recites a
`
`single novel or nonobvious technological feature. Pet. 13. Petitioner asserts,
`
`to the extent that any of the claims recites technological features, they are
`
`well-known prior art technologies used in their ordinary ways. Id. at 14–17.
`
`Petitioner argues that the ’115 patent, in fact, admits the claimed
`
`
`
`11
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`

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`CBM2015-00071
`Patent 5,841,115
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`technological features were generic, well-known, existing, and conventional
`
`at the time of invention. Id. at 15 (citing Ex. 1001, col. 3, ll. 54–67, col. 5,
`
`ll. 54–63, col. 6, ll. 20–28, Fig. 1). For example, according to Petitioner,
`
`the ‘115 patent describes the “means for inputting personal data
`relating to an individual” as a “well known system for data
`entry,” such as “a magnetic card reader, keypad entry device,
`touch screen entry system, or barcode reader.” ’115 Patent,
`Col. 5:60-63 (emphasis added). The “barcode means” was
`likewise “well known” at the time. Id. Similarly, the ‘115
`patent describes the “output means” as “a CRT monitor, printer
`or audible message speaker,” which were certainly well-known.
`’115 Patent, Col. 6:35-36.
`
`Pet. 15–16. Petitioner further contends that the ’115 patent describes no
`
`algorithm for “[a prestored computer program for] correlating the personal
`
`data with prestored nutritional data” and, hence, cannot be deemed a patent
`
`for a technological invention based on this limitation. Id. at 16–17 (citing
`
`Callidus Software, Inc. v. Versata Software, Inc., Case CBM2013-00053,
`
`slip. op. at 8–9 (PTAB Mar. 4, 2014) (Paper 16) for the proposition that
`
`technological invention is not claimed by disclosure of “machine understood
`
`to include software, [where] no specific software computer program is
`
`disclosed”).
`
`Patent Owner contends Petitioner has not carried its burden of making
`
`the requisite showing because Petitioner has not cited any prior art in the
`
`Petition. Prelim. Resp. 9. As discussed above, however, Petitioner has cited
`
`various portions of the ’115 patent which, according to Petitioner, admit that
`
`the claimed technological features were well-known, existing, and
`
`conventional at the time of invention. See Pet. 15–16. Patent Owner also
`
`contends Petitioner improperly engages in a limitation-by-limitation analysis
`
`because “[t]he correct standard is to analyze the claim as a whole.” Prelim.
`
`
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`12
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`Resp. 8 (citing MPEP § 2106, ¶ II). Patent Owner’s argument is unfounded
`
`because Section 2106 of MPEP is directed to subject matter eligibility
`
`analysis under 35 U.S.C. § 101, not the technological invention analysis
`
`under Section 18(d)(1) of the AIA. Contrary to Patent Owner’s contention,
`
`as discussed above, even if the claimed method, as a whole, is novel and
`
`nonobvious, reciting the use of known prior art technology to accomplish
`
`that method does not render a patent a technological invention. See 77 Fed.
`
`Reg. at 48,763–64. Further, Patent Owner identifies no novel or nonobvious
`
`technological feature recited by the ’115 patent claims. See Prelim. Resp. 8–
`
`9. Therefore, Patent Owner does not rebut Petitioner’s contentions. Based
`
`on the foregoing and the record presented, we are persuaded none of the
`
`claims of the ’115 patent recites a novel or nonobvious technological
`
`feature.
`
`Regarding the second prong of 37 C.F.R. § 42.301(b), Petitioner
`
`contends that the ’115 patent does not solve a technical problem using a
`
`technical solution. Pet. 17–18. According to Petitioner, the problem
`
`addressed by the ’115 patent is “sift[ing] through possible misleading health
`
`claims, other advertising influences and complicated food label information
`
`to make a wise choice” when shopping for groceries. Id. at 17 (internal
`
`quotation marks omitted) (citing Ex. 1001, col. 4, ll. 40–44). Petitioner
`
`contends that, although reading and assessing food labels may be time-
`
`consuming, it does not present a technical problem. Id. at 18. Patent Owner
`
`does not present a rebuttal argument responding to Petitioner’s argument.
`
`See Prelim. Resp. 7–9. Patent Owner does not specifically identify the
`
`problem addressed by the ’115 patent or explain why it is a technical
`
`problem under § 42.301(b). Based on the foregoing and the record
`
`
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`13
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`presented, we are persuaded the claimed subject matter as a whole does not
`
`solve a technical problem using a technical solution. Accordingly, we are
`
`persuaded Petitioner has demonstrated sufficiently that the ’115 patent is not
`
`a patent for a technological invention under Section 18(d)(1) of the AIA.
`
`For the foregoing reasons, we are persuaded that 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.
`
`B. Claim Construction
`
`Petitioner contends that it is not necessary to construe any claim
`
`limitations of the ’115 patent for the purposes of this Petition. Pet. 21.
`
`Patent Owner also contends no claim terms of the ’115 patent need
`
`construction. Prelim. Resp. 11. As discussed in Section II.D below, we will
`
`address the construction under 35 U.S.C. § 112, ¶ 63 of the term “processor
`
`means under the control of a prestored computer program for correlating the
`
`personal data with prestored nutritional data” for the purposes of
`
`determining definiteness of claims 1–10 under 35 U.S.C. § 112, ¶ 2. We
`
`need not interpret any other claim term of the ’115 patent at this time. 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).
`
`
`3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). 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.
`
`
`
`14
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`
`C. Asserted Ground Based on 35 U.S.C. § 101
`
`Petitioner contends that claims 1–20 of the ’115 patent are directed to
`
`patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 19–36. Patent
`
`Owner disagrees. Prelim. Resp. 9–14. Upon review of the arguments and
`
`evidence presented in the Petition and Preliminary Response, we determine
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`that Petitioner has established that the claims are more likely than not
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`unpatentable under § 101 for the reasons explained below.
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`Section 101 provides that “[w]hoever invents or discovers any new
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`and useful process, machine, manufacture, or composition of matter, or any
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`new and useful improvement thereof, may obtain a patent therefor, subject to
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`the conditions and requirements of this title.” The Supreme Court has “long
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`held that this provision contains an important implicit exception: Laws of
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`nature, natural phenomena, and abstract ideas are not patentable.” Alice
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`Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (citing
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`Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
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`2116 (2013) (internal quotation marks and brackets omitted)). “The
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`‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
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`itself is not patentable.’” Alice, 134 S. Ct. at 2355 (citing Gottschalk v.
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`Benson, 409 U.S. 63, 67 (1972) (quotations omitted)). Notwithstanding that
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`a law of nature or an abstract idea, by itself, is not patentable, the practical
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`application of these concepts may be deserving of patent protection. Mayo
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`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94
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`(2012). To be patent-eligible, a claim cannot simply state the abstract idea
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`and add the words “apply it.” See Mayo, 132 S. Ct. at 1294. The claim must
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`incorporate enough meaningful limitations to ensure that it claims more than
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`just an abstract idea and is not merely a “drafting effort designed to
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`monopolize the [abstract idea] itself.” See id. at 1297.
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`In Alice, the Supreme Court reaffirmed the framework set forth
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`previously in Mayo “for distinguishing patents that claim laws of nature,
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`natural phenomena, and abstract ideas from those that claim patent-eligible
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`applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
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`the analysis is to “determine whether the claims at issue are directed to one
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`of those patent-ineligible concepts.” Id. If the claims are directed to a
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`patent-ineligible concept, the second step in the analysis is to consider the
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`elements of the claims “individually and ‘as an ordered combination’” to
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`determine whether there are additional elements that “‘transform the nature
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`of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
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`Ct. at 1298, 1297). In other words, the second step is to “search for an
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`‘inventive concept’—i.e., an element or combination of elements that is
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`‘sufficient to ensure that the patent in practice amounts to significantly more
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`than a patent on the [ineligible concept] itself.” Id. (alteration in original)
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`(quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an
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`abstract idea “cannot be circumvented by attempting to limit the use of the
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`formula to a particular technological environment or adding insignificant
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`post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
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`(citation and internal quotation marks omitted). Following this framework,
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`we analyze this asserted ground of unpatentability based on § 101.
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`1. Abstract Idea
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`As the first step of our analysis, we determine whether the claims at
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`issue are directed to a patent-ineligible concept, such as an abstract idea. See
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`Alice, 134 S. Ct. at 2355. Petitioner contends that claims 1–20 are directed
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`to the abstract idea of “providing shoppers with information about their
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`potential food purchases that is relevant to their own personal nutritional
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`needs.” Pet. 25. Petitioner asserts that the steps recited in claim 11 are,
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`viewed as a whole, directed to an awareness of personal information,
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`shopping for food, and correlating personal needs with the characteristics of
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`the food, and, hence, “cover the abstract idea of paying attention to nutrition
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`while grocery shopping.” Id. at 26–27. Petitioner argues that claim 11
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`recites nothing more than “the typical, routine nutritional analysis that
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`grocery shoppers have been performing on their own for decades.” Id. at 2.
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`According to Petitioner, “shoppers have selected groceries based upon their
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`nutritional needs and goals for at least as long as there have been nutritional
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`labels” and that “this fundamentally abstract concept” is unpatentable under
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`§ 101. Id. at 27–28. Petitioner contends a district court has reached a
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`similar conclusion in a case concerning customized meal-planning using a
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`food database. Id. at 28 (citing DietGoal Innovations LLC v. Bravo Media
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`LLC, 33 F. Supp. 3d 271, 283–84 (S.D.N.Y. 2014), aff’d, 599 F. App’x 956
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`(Fed. Cir. 2015)).
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`Patent Owner contends Petitioner improperly confuses obviousness
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`with abstraction. Prelim. Resp. 9–10. Patent Owner asserts that Petitioner’s
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`argument that the challenged claims are directed to an abstract idea because
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`the claimed method “has been used for decades” is an “attack on novelty,
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`not on abstractness.” Id. The Supreme Court has held that “a fundamental
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`. . . practice long prevalent in our system of commerce,” such as
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`intermediated settlement and risk hedging, is “squarely within the realm of
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`‘abstract ideas’” beyond the scope of § 101. Alice, 134 S. Ct. at 2356–57
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`(emphasis added). Thus, contrary to Patent Owner’s contention, whether the
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`claimed method is directed to a practice long prevalent in business or
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`commerce is directly relevant to the abstract idea analysis under § 101.
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`Indeed, “[a]t step one of the Alice framework, it is often useful to determine
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`the breadth of the claims in order to determine whether the claims extend to
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`cover a ‘fundamental . . . practice long prevalent in our system . . . .’.”
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`Intellectual Ventures I LLC v. Capital One Bank (USA), No. 2014-1506,
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`2015 WL 4068798, at *5 (Fed. Cir. July 6, 2015) (emphases added) (citing
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`Alice, 134 S. Ct. at 2356). Thus, although Patent Owner’s impression of
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`blurring standards of obviousness and abstraction is understandable,
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`Petitioner’s analysis is not improper as it is consistent with the Supreme
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`Court precedents on the subject matter eligibility analysis under § 101.
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`Patent Owner further contends that Petitioner’s citation to DietGoal
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`for the proposition that “selecting nutritional meals and ‘calculating the
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`dietary impact of the addition or subtraction of certain foods’ are
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`conventional tasks that can be performed without the need of any
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`technology” (Pet. 18) is “unhelpful” in evaluating the Petition. Prelim.
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`Resp. 14. To the extent Patent Owner’s remark is directed to the
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`patentability analysis under § 101, the issue addressed by the cited passage
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`of DietGoal is highly relevant. As the Federal Circuit explained, “methods
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`which can be performed mentally, or which are the equivalent of human
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`mental work, are unpatentable abstract ideas—the ‘basic tools of scientific
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`and technological work’ that are open to all.” CyberSo