`Tel: 571-272-7822
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`
`Paper 12
`Entered: September 17, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD COMPANY,
`Patent Owner.
`____________
`
`Case CBM2015-00077
`Patent 7,925,981 B2
`____________
`
`
`Before JAMES B. ARPIN, CHRISTOPHER L. CRUMBLEY, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
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`ServiceNow, Inc. filed a Petition seeking a covered business method
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`patent review of claims 1, 22, and 23 of U.S. Patent No. 7,925,981 B2 (Ex.
`
`1001, “the ’981 patent”). Paper 2, “Pet.” The owner of the ’981 patent,
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`CBM2015-00077
`Patent 7,925,981 B2
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`Hewlett-Packard Company (“HP”), filed a Patent Owner’s Preliminary
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`Response. Paper 11, “Prelim. Resp.” Pursuant to 35 U.S.C. § 324(a), we
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`may not institute a covered business method review “unless the Director[1]
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`determines that the information presented in the petition . . . , if such
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`information is not rebutted, would demonstrate that it is more likely than not
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`that at least 1 of the claims challenged in the petition is unpatentable.”
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`Upon consideration of the Petition, Preliminary Response, and the
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`evidence of record, we decline to institute a covered business method patent
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`review as to claims 1, 22, and 23 of the ’981 patent.
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`A. The ’981 Patent
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`1. Background
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`The ’981 patent, entitled “Systems and Methods for Managing Web
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`Services Via a Framework of Interfaces,” relates to a Web service
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`management system comprising service managed objects. Ex. 1001, 3:41–
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`43. The specification explains that Web services are “an approach to
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`distributed computing in which interactions are carried out through the
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`exchange of eXtensible Markup Language (XML) messages.” Id. at 1:55–
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`58. The distributed nature of Web services presents challenges, including
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`“[t]he problem of managing disparate IT resources . . . deployed in remote
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`locations and accessed via information networks, such as the Internet” and
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`the fact that “Web services have been designed to be extensible at all
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`levels.” Id. at 1:42–45, 3:5–7.
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`
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`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
`
`2
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`CBM2015-00077
`Patent 7,925,981 B2
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`According to the specification, managed objects are “management
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`representation[s] of a resource,” that implement “managed object interfaces
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`to provide a common set of basic management capabilities.” Id. at 7:25–35.
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`Figure 1A, depicting an embodiment of a web service management system,
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`is reproduced below:
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`In Figure 1A, web service management system 100 has service
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`managed objects 104, 110 that have service interfaces 112, 114 that allow
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`manager 102 to access information regarding the state of services 104, 110.
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`Id. at 4:51–60. In this embodiment, the specification describes that:
`
`
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`Service managed objects 108, 110 represent the management
`features of resource(s)
`that perform services 104, 106.
`Interfaces in one or more categories can be included in service
`interfaces 112, 114 for each service managed object 108, 110.
`Service interfaces 112, 114 can allow manager 102 to access
`information regarding the state of services 104, 106, as well as
`to control the operation of services 104, 106.
`
`Id. at 4:51–60.
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`Patent 7,925,981 B2
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`The specification also provides examples of applications of the
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`claimed invention, for example in Figure 2, reproduced below:
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`
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`Figure 2 depicts a “Service Management Example,” comprising
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`online shopping service system 200 in which client 202 accesses online
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`ordering service 204 at online store 206, for example over the Internet. Id. at
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`14:27–33. A third party implements payment processor 212 with billing
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`service 210, and information regarding transactions (for example, credit card
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`authorizations) can be exchanged via conversations 214, 216. Id. at 14:37–
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`41. Manager 102 may be configured to manage one or more of services 204,
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`208, 210 and conversations 214, 216. Id. at 14:48–49.
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`
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`The ’981 patent provides an additional embodiment using managed
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`objects to manage Web services, entitled “Distributed Business Process
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`Example,” pertaining to an online auction manager. Id. at 16:44–52. The
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`specification notes, however, that the described embodiments are illustrative
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`and not limiting on the scope of the invention. Id. at 19:15–18.
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`Patent 7,925,981 B2
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`2. Illustrative Claim
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`Petitioner challenges claims 1, 22, and 23 of the ’981 patent. Claims
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`1 and 22 are independent; claim 23 depends from claim 22. Claim 1 is
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`directed to a system for managing a web service; claim 22 is directed to a
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`computer program product tangibly embodied in a computer storage
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`readable medium, comprising a service interface and a managed object
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`interface. Claim 1 is illustrative of the claimed subject matter and reads as
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`follows:
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`1. A system for managing a Web service, comprising:
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`
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`a computer processor; and
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`a service managed object executable on the computer
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`processor, wherein:
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`the service managed object is associated with the Web
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`service and includes at least one interface configured to allow a
`manager to access management features for the Web service;
`and
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`the at least one interface is configured to provide a list of
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`conversations associated with the Web service.
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`Ex. 1001, 19:34–43 (claim 1).
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`A. The Asserted Grounds
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`ServiceNow presents the following grounds of unpatentability:
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`1. Whether claims 1, 22, and 23 are unpatentable under 35 U.S.C. § 101
`as directed to patent-ineligible subject matter; and
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`2. Whether claims 1, 22, and 23 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over the combined disclosures of
`Hoffman2 and eBay for Dummies.3
`
`ServiceNow contends that Hoffman and eBay for Dummies are prior
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`art to the ’981 patent under 35 U.S.C. § 102(b). Pet. 39. At this stage of the
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`proceeding, HP does not dispute the prior art status of the applied references.
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`II. ANALYSIS
`
`Section 18 of the America Invents Act created a transitional program,
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`limited to persons or their privies that have been sued or charged with
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`infringement of a “covered business method patent,” which does not include
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`patents for “technological inventions.” Leahy-Smith America Invents Act,
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`§§ 18(a)(1)(B), 18(d)(1), Pub. L. No. 112-29, 125 Stat. 284, 329–331
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`(2011); see 37 C.F.R. § 42.302. As discussed below, we conclude that the
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`question of whether the ’981 patent is a covered business method patent is
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`dispositive to this case.
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`A covered business method patent is one that “claims a method or
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`corresponding apparatus for performing data processing or other operations
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`used in the practice, administration, or management of a financial product or
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`service.” AIA § 18(d)(1) (emphasis added); see 37 C.F.R. § 42.301(a). The
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`“legislative history explains that the definition of covered business method
`
`patent was drafted to encompass patents ‘claiming activities that are
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`financial in nature, incidental to a financial activity or complementary to a
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`financial activity.’” See Transitional Program for Covered Business Method
`
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`2 U.S. Published Patent Application No. 2002/0049664 A1 to Hoffman et al.
`(published Apr. 25, 2002) (Ex. 1004).
`3 MARSHA COLLIER, ET AL., EBAY FOR DUMMIES (2d ed.), Hungry Minds,
`Inc., (2001) (excerpts, Ex. 1005).
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`Patents—Definitions of Covered Business Method Patent and Technological
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`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (quoting
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`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)
`
`(emphasis added)). The focus is on what the patent claims, but a patent need
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`only have one claim directed to a covered business method to be eligible for
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`review. Id.; see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
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`1306, 1327 (Fed. Cir. 2015) (affirming PTAB decision that used a single
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`claim to determine eligibility for covered business method patent review).
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`ServiceNow contends that the ’981 patent is eligible for covered
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`business method patent review, because it claims a system for monitoring a
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`Web service, and the specification explains that Web services can be used to
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`implement “functions such as language translation or currency conversion,
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`performing calculations for medical claims processing, and handling certain
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`aspects of travel planning.” Pet. 5–6 (citing Ex. 1001, 1:60–64). In
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`particular, ServiceNow directs our attention to an illustrative embodiment in
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`the specification, depicted in Figure 2, which pertains to an online ordering
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`system. Pet. 6–8; Ex. 1001, 14:47–16:40. According to ServiceNow,
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`“[e]ach of the limitations from claim 1 is reflected in the online ordering
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`system.” Pet. 6–8. ServiceNow also notes that the specification describes
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`an additional illustrative embodiment, directed to an online auction system.
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`Id. at 8 (citing Ex. 1001, 16:44–52). Based on these disclosures,
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`ServiceNow argues that “the ’981 patent expressly contemplates using the
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`system of claim 1 to manage a financial product or service,” thereby meeting
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`the definition of covered business method patent. Pet. 8 (underlining
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`omitted).
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`HP disagrees that the ’981 patent claims a covered business method,
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`arguing that covered business method patent review “is not available for
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`patents that claim generally useful technologies that happen to be also useful
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`to financial applications.” Prelim. Resp. 17. HP first argues that none of the
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`challenged claims of the ’981 patent “contains a single limitation that is
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`financial in nature,” thus the claims “are directed to generally useful
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`technologies that may be applied to various industries and processes.” Id. at
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`18–19. HP further argues that ServiceNow’s Petition ignores the general
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`nature of the claims, instead focusing on illustrative embodiments set forth
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`in the specification whose financial aspects are not required by the claims.
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`Id. at 20. According to HP, the specification indicates that the claims have
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`broad application in fields—such as translation and travel planning—which
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`are non-financial. Id. at 22. Even in the financial embodiments cited by
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`ServiceNow, HP argues, the relevance of the claims is to managing the Web
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`services, as opposed to performing any particular financial transaction. Id.
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`We agree with HP that ServiceNow has not established that the ’981
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`patent claims a method or apparatus for performing data processing or other
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`operations used in the practice, administration, or management of a financial
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`product or service. At the outset, we note the similarity of this case to
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`another Petition filed by ServiceNow, in which the panel recently denied
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`institution of review because it had not been established that the patent at
`
`issue therein was a covered business method patent. ServiceNow, Inc. v.
`
`BMC Software, Inc., Case CBM2015-00107, slip op. at 10–15 (PTAB Sept.
`
`11, 2015) (Paper 12) (“ServiceNow ’107”). Although not binding authority,
`
`we find the panel’s reasoning persuasive and adopt it herein.
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`In ServiceNow ’107, the panel noted that the claims at issue were
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`directed to a method for fault analysis, and did not recite any step that
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`involved a financial activity. Id. at 10. While the specification of the
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`challenged patent provided a single illustrative embodiment directed to the
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`use of the claimed method in an automatic teller machine network, and
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`ServiceNow explained how the claims encompassed that embodiment, the
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`panel found the claims were “of general applicability for fault analysis.” Id.
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`at 11. The panel also found instructive that the problem addressed by the
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`patent was non-financial in nature, and that a significant portion of the
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`specification described the claimed method in general terms, before turning
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`to the illustrative ATM network embodiment. Id. at 11–12. With respect to
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`the ATM network embodiment, the panel stated that “[n]otably, the
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`Specification does not attribute any significance to the choice of an ATM
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`network as the illustrative enterprise.” Id. at 13.
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`We are presented with a similar set of facts in the instant case. The
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`challenged claims of the ’981 patent are directed to a system for managing a
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`Web service, and contain no finance-related terminology or limitations. Cf.
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`MaxMind, Inc. v. Fraud Control Systems.com Corp., Case CBM2015-
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`00094, slip op. at 5–6 (PTAB Sept. 11, 2015) (Paper 7) (claim reciting
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`method for “computerized fraud control” including the step of receiving a
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`“transaction request”); Square, Inc. v. Unwired Planet, LLC, Case CBM
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`2014-00156, slip op. at 9–10 (PTAB Dec. 24, 2014) (Paper 11) (claim
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`reciting method for “controlling transactions” including the step of charging
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`the correlated transaction amount to a source of funds”); see also Symphony
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`Health Solutions Corp. v. IMS Health Inc., Case CBM2015-00085, slip op.
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`at 10–11 (PTAB Sep. 10, 2015) (Paper 7) (“[E]ach claim recites a ‘health
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`care field’ relating to ‘health care data,’ which is described in the
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`specification as including claims data, such as pharmaceutical, medical and
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`hospital claims data, i.e., claims for receiving payment or reimbursement.”).
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`We agree with HP that the claims are of general utility—the
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`specification of the ’981 patent supports such a conclusion, stating that Web
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`services may be used to implement language translation or travel planning
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`functions, as well as financial functions. Ex. 1001, 1:55–67. As in
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`ServiceNow ’107, a considerable portion of the specification of the ’981
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`patent is devoted to a general description of the claimed Web service
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`management system, without any reference to particular application to
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`financial activities. Id. at 4:51–14:23. In addition, we note that the problem
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`addressed by the ’981 patent is not financial in nature:
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`The problem of managing disparate IT resources is becoming
`more acute as systems are increasingly developed using IT
`resources that are deployed in remote locations and accessed
`via information networks, such as the Internet. Generally, the
`resources to be managed are not readily identifiable when the
`resources are highly distributed and independent of one another.
`Further, it is difficult to obtain information regarding properties
`and attributes of the resources, and protocols for exchanging
`management
`information with
`the resources. A further
`difficulty lies in determining the relationships among the
`resources used in a system to pinpoint operational problems
`when one or more of the resources do not respond as expected.
`
`Id. at 1:42–54.
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`Subsequent portions of the specification refer to management
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`challenges particular to Web services, such as the fact that they may “form a
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`distributed application that may extend across an enterprise or even the
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`Internet,” and “have been designed to be extensible at all levels.” Id. at
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`2:48–56; 3:5–18. These problems and challenges are applicable to
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`applications generally; the specification does not describe any specific
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`challenges that are presented by financial applications. The clear
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`implication is that the ’981 patent is directed to solving a problem of general
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`applicability.
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`Although we acknowledge the inclusion in the specification of two
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`illustrative embodiments directed to applications of the claimed system in
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`financial systems, we agree with the ServiceNow ’107 panel’s reasoning that
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`such examples are insufficient to convert the ’981 patent into a covered
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`business method patent. First, the specification gives no indication that the
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`selection of these financial applications has any special significance.
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`Indeed, the online shopping service example is titled “Service Management
`
`Example,” while the auction manager example is titled “Distributed
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`Business Processes Example.” Ex. 1001, 14:25, 16:42. Second, the
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`specification expressly states that “these embodiments are illustrative and
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`. . . the scope of the invention is not limited to them.” Id. at 19:15–18.
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`Finally, we agree with the ServiceNow ’107 panel that it is insufficient
`
`to simply show how the claims may be mapped to a financial embodiment in
`
`the specification, as ServiceNow does in its Petition. Pet. 6–8. At most, this
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`shows that the claimed system could be used in a financial product or
`
`service; the Board has held recently that this is insufficient to confer covered
`
`business method review eligibility. Sony Corp. of Am. v. Network-1 Techs.,
`
`Inc., Case CBM2015-00078, slip op. at 11–12 (PTAB July 1, 2015) (Paper
`
`7). Congress defined a covered business method patent as one that claims “a
`
`method or corresponding apparatus for performing data processing or other
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`operations used in the practice, administration, or management of a financial
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`product or service,” not a method or apparatus that “can be used,” “may be
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`used,” or “is capable of being used” in such a manner. AIA § 18(d)(1)
`
`(emphasis added). As the Board explained in Sony:
`
`[T]he fact that [the claimed] devices may have uses . . .
`pertaining to banking, does not mean that claim 23 ‘covers’
`such activities. Petitioner’s position, in essence, would mean
`that any patent claiming something that can be used in
`connection with a financial service (e.g., an Ethernet cable, a
`generic computer monitor, or even a ballpoint pen) would be
`eligible for covered business method patent review, regardless
`of what the patent claims.
`
`Id. (emphasis added).
`
`The primary justification for covered business method review
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`eligibility provided by ServiceNow is that the illustrative embodiments in
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`the specification of the ’981 patent show that the invention may be used in a
`
`financial system. Financially-related illustrative embodiments in the
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`specification may be sufficient in cases where the specification indicates
`
`particular advantages or applicability to financial embodiments, where the
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`specification makes clear that claim limitations are interpreted expressly to
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`cover financial embodiments, or where there is not extensive evidence that
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`the claimed invention has general utility. The present case, however,
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`presents us with none of these supporting facts—the facts before us, as
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`outlined above, establish that the claimed system is one of general utility,
`
`and weigh heavily in favor of finding the ’981 patent not eligible for covered
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`business method patent review. As in ServiceNow ’107, “the absence of any
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`finance-related limitation in the claims is the primary driver of our
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`determination,” and is supported by the general nature of the problem
`
`addressed and the illustrative nature of the embodiments.
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`III. CONCLUSION
`
`As the Office has stated, the legislative history of the America Invents
`
`Act indicates that “financial product or service” should be interpreted
`
`“broadly.” 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012). But “broadly”
`
`does not mean “without limits.” As the Federal Circuit recently explained,
`
`“[t]he plain text of the statutory definition contained in § 18(d)(1)—
`
`‘performing . . . operations used in the practice, administration, or
`
`management of a financial product or service’—on its face covers a wide
`
`range of finance-related activities.” Versata, 793 F.3d at 1325 (emphasis
`
`added). Petitioner has not established that the activities covered by the
`
`claims of the ’981 patent—managing a Web service—are any more
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`“finance-related” than they are “language translation-related” or “travel
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`planning-related.” For these reasons, we conclude that the ’981 patent does
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`not “claim[] 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,” and is ineligible for covered
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`business method patent review under Section 18 of the America Invents Act.
`
`ServiceNow’s Petition, therefore, is denied on all asserted grounds.
`
`
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`For the reasons given, it is
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`IV. ORDER
`
`ORDERED that the Petition is denied, and no covered business
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`method patent review is instituted.
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`CBM2015-00077
`Patent 7,925,981 B2
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`FOR PETITIONER:
`
`Heidi L. Keefe
`hkeefe@cooley.com
`Andrew C. Mace
`amace@cooley.com
`Phillip E. Morton
`pmorton@cooley.com
`Mark Weinstein
`mweinstein@cooley.com
`COOLEY LLP
`
`FOR PATENT OWNER:
`
`Evelyn Mak
`Evelyn.Mak@wilmerhale.com
`Joseph Haag
`joseph.haag@wilmerhale.com
`WILMER CUTLER PICKERING HALE & DORR LLP
`
`14