Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`
`Case CBM2016-00070
`Patent 7,263,548 B2
`
`Before MICHAEL W. KIM, MICHAEL R. ZECHER, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge KAISER.
`
`Dissenting Opinion filed by Administrative Patent Judge KIM.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
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`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`
`Case CBM2016-00070
`Patent 7,263,548 B2
`
`Before MICHAEL W. KIM, MICHAEL R. ZECHER, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge KAISER.
`
`Dissenting Opinion filed by Administrative Patent Judge KIM.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2016-00070
`Patent 7,263,548 B2
`
`A. Background
`
`INTRODUCTION
`
`This is a preliminary proceeding to decide whether, under section 18
`
`of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284,
`
`331 (2011) (“AIA”), a covered business method patent review of U.S. Patent
`
`No. 7,263,548 B2 (Ex. 1001, “the ’548 patent”) should be instituted under
`
`35 U.S.C. § 324(a).1 Plaid Technologies, Inc. (“Petitioner”) filed a Petition
`
`(Paper 3, “Pet.”) requesting a covered business method patent review of
`
`claims 1–38 of the ’548 patent. Yodlee, Inc. (“Patent Owner”) filed a
`
`Preliminary Response. Paper 7 (“Prelim. Resp.”). A covered business
`
`method patent review may not be instituted “unless . . . the information
`
`presented in the petition . . ., 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.” 35 U.S.C. § 324(a); see 37
`
`C.F.R. § 42.208.
`
`For reasons that follow, we determine that Petitioner has not
`
`established that the challenged patent qualifies as a covered business method
`
`patent. Accordingly, we do not institute a covered business method patent
`
`review of any of the challenged claims.
`
`B. Related Matters
`
`The parties identify a related piece of litigation, Yodlee, Inc. v. Plaid
`
`Technologies, Inc., No. 14-cv-01445 (D. Del.). Pet. 3; Paper 6, 1. Petitioner
`
`
`1 GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015)
`(describing transitional program for review of covered business method
`patents under 35 U.S.C. §§ 321–329, pursuant to the AIA, as subject to “the
`standards and procedures of[] a post-grant review under . . . 35 U.S.C.
`§§ 321–329,” absent exceptions not applicable here).
`
`2
`
`
`
`CBM2016-00070
`Patent 7,263,548 B2
`
`also challenges the claims of U.S. Patent No. 7,424,520, which is related to
`
`the ’548 patent, in Case CBM2016-00082.
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–38 of the ’548 patent are
`
`unpatentable for lack of patent-eligible subject matter under 35 U.S.C.
`
`§ 101. Pet. 23–48. Petitioner’s arguments rely on a Declaration from Dr.
`
`Todd Mowry. Ex. 1002 (“the Mowry Declaration” or “Mowry Decl.”).
`
`In addition, Petitioner argues that claims 20, 35, and 36 are
`
`unpatentable under 35 U.S.C. § 103 as obvious over both the combination of
`
`Bull2 and MaxMiles3 and the combination of VerticalOne4 and Bull. Pet.
`
`48–85.
`
`D. The ’548 Patent
`
`The ’548 patent relates to “[a] system for retrieving and disseminating
`
`information records from Internet sources.” Ex. 1001, at [57]. It “pertains
`
`more particularly to restructuring of personal data and, in some cases,
`
`general data for the purpose of enabling receipt of such data by a variety of
`
`connected and portable network appliances without requiring added
`
`hardware or software.” Id. at 1:21–25. The ’548 patent notes that many
`
`
`2 Bull et al., U.S. Patent No. 5,901,287, issued May 4, 1999 (Ex. 1005,
`“Bull”).
`
`3 MileageMiner, Take your Miles to the Max with MaxMiles
`MileageMinerTM (Jan. 28, 1999, 6:22:11 PM), http://web.archive.org/web/
`19990128182211/http://www.maxmiles.com/MileageMiner/
`AboutMileMiner.html (Ex. 1006, “MaxMiles”).
`
`4 VERTICALONE CORPORATION TO OFFER INTERNET USERS ONE-STOP FOR
`MANAGING ONLINE PERSONAL CONTENT AND ACCOUNT INFORMATION
`(Business Wire Inc., May 25, 1999) (Ex. 1007, “VerticalOne”).
`
`3
`
`
`
`CBM2016-00070
`Patent 7,263,548 B2
`
`“electronic communication devices,” such as “cellular telephones, personal
`
`digital assistants (PDA’s), pagers, and notebook and laptop computers,”
`
`have difficulty maintaining a continuous, reliable connection to the internet.
`
`Id. at 1:40–63. An existing solution to the problem of transmitting data over
`
`such unreliable connections was to modify the receiving devices with
`
`“software and/or hardware” to allow the viewing of data that had been
`
`formatted in a way that could be displayed on the modified devices. Id. at
`
`2:39–48. The ’548 patent describes this solution as having the disadvantage
`
`of not necessarily working with “independent device[s]” that had not been
`
`modified specially. Id. at 2:49–53. Accordingly, the ’548 patent notes the
`
`ongoing need for “a method and apparatus for intelligent restructuring of . . .
`
`data from the Internet into model/device-specific data formats such that it
`
`may be easily made available for transmission to . . . communication
`
`devices.” Id. at 3:1–6. The ’548 patent purportedly satisfies this need by
`
`describing software that intelligently restructures data obtained from servers
`
`on the internet “for delivery to a specific Internet appliance that may not be
`
`normally adapted for receiving and displaying the data.” Id. at 6:60–67.
`
`E. Illustrative Claims
`
`Of the challenged claims in the ’548 patent, claims 1 and 20 are
`
`independent and illustrative. They recite:
`
`1. A subscription system for providing information from an
`Internet source for a client device, comprising:
`
`client profiles for subscribers to the system including data
`relative to information destinations on the Internet for a specific
`
`4
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`CBM2016-00070
`Patent 7,263,548 B2
`
`client and a record of a client device and an application other
`than a Browser application executable by the client device;
`
`a software function for translation and transmission;
`
`wherein the client profiles also include data records to be
`retrieved from the destinations, and data forms for
`transformation of specific records and the system accesses
`information from the Internet source in a first format, translates
`the information into a format compatible with the application
`executable on the client device, and transmits the information
`for the client device for presentation according to the client
`profiles.
`
`Ex. 1001, 14:57–15:5.
`
`20. A method for providing information from an Internet source for
`a client device, comprising:
`
`(a) maintaining client profiles for subscribers, the client profiles
`including data relative to information destinations on the
`Internet for a specific client, data records to be retrieved from
`the destinations, and data forms for transformation of specific
`records;
`
`(b) accessing information from the Internet destinations in a
`first format;
`
`(c) translating the information into a format compatible with an
`application, other than an Internet browser application,
`executable on the client device; and
`
`(d) transmitting the information for the client device for
`presentation in the format compatible with the other than a
`format for an Internet browser application according to the
`client profiles.
`
`Id. at 16:18–33.
`
`A. Claim Construction
`
`ANALYSIS
`
`In a covered business method patent review, we construe claim terms
`
`in an unexpired patent according to their broadest reasonable construction in
`
`5
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`CBM2016-00070
`Patent 7,263,548 B2
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`light of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.200(b); see Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016) (upholding the use of the broadest reasonable interpretation
`
`standard). Claim terms generally are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). An inventor, however, may define specific terms
`
`used to describe an invention, but must do so “with reasonable clarity,
`
`deliberateness, and precision” and must “‘set out his uncommon definition in
`
`some manner within the patent disclosure’ so as to give one of ordinary skill
`
`in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475,
`
`1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952
`
`F.2d 1384, 1387–88 (Fed. Cir. 1992)). Petitioner proposes that several terms
`
`be construed, but Petitioner does not propose constructions for any of these
`
`terms, merely reporting instead the constructions adopted in the related
`
`District Court litigation. Pet. 22–23. Patent Owner does not respond to this
`
`portion of the Petition or propose any of its own claim constructions. See
`
`generally Prelim. Resp. 1–21. We conclude that no term needs to be
`
`construed expressly in order for us to decide whether to institute trial. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (only terms in controversy need to be construed, and only to the extent
`
`necessary to resolve the controversy).
`
`B. Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. A “[c]overed
`
`business method patent” is a patent that “claims a method or corresponding
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`6
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`CBM2016-00070
`Patent 7,263,548 B2
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`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 purposes of determining
`
`whether a patent is eligible for a covered business method patent review, the
`
`focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`
`1340 (Fed. Cir. 2016) (stating that Ҥ 18(d)(1) directs us to examine the
`
`claims when deciding whether a patent is a [covered business method]
`
`patent”).
`
`1. Effect of Statutory Disclaimer
`
`Petitioner identifies four claims that it contends satisfy the financial-
`
`product-or-service requirement on the basis of their claim language. Pet. 14.
`
`Specifically, Petitioner identifies claims 13 and 32, both of which recite the
`
`limitation “billing schedules retrieved for a client are converted into two or
`
`more records,” and claims 14 and 33, both of which recite the limitation
`
`“generat[ing] an alarm prior to the time the bill is due, to remind the client
`
`that the bill is due.” Id.; Ex. 1001, 15:53–60, 17:14–21. Patent Owner
`
`argues, however, that these claims cannot provide the basis for eligibility for
`
`covered business method patent review (“CBM eligibility”), because each of
`
`these claims has been disclaimed pursuant to 35 U.S.C. § 253(a) and 37
`
`C.F.R. § 1.321(a). Prelim. Resp. 5–6; Ex. 2001, 1.
`
`The disclaimer of a claim “shall . . . be considered as part of the
`
`original patent.” 35 U.S.C. § 253(a). The language “considered as part of
`
`the original patent” means that a patent subject to a disclaimer under
`
`§ 253(a) “is treated as though the disclaimed claims never existed.” Vectra
`
`Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing
`
`7
`
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`CBM2016-00070
`Patent 7,263,548 B2
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`Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 492
`
`(1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Accordingly,
`
`even though claims 13, 14, 32, and 33 of the ’548 patent existed at the time
`
`the Petition here was filed, we must now treat the ’548 patent as if it had
`
`never included those claims. Under this legal rubric, claims 13, 14, 32, and
`
`33 cannot provide the basis for the ’548 patent’s CBM eligibility. Although
`
`previous non-precedential decisions of the Board are not binding on us, we
`
`note that this result has been reached by several other panels confronted with
`
`the issue of CBM eligibility on the basis of disclaimed claims. See, e.g.,
`
`CoreLogic, Inc. v. Boundary Solutions, Inc., Case CBM2016-00016, slip op.
`
`at 6–7 (Paper 9) (“[T]he disclaimed claims should not be consulted when
`
`determining whether the patent is a covered business method patent.”);
`
`AT&T Mobility LLC v. Intellectual Ventures II LLC, Case CBM2015-00185,
`
`slip op. at 10 (PTAB May 4, 2016) (Paper 10) (“[W]e will not consider the
`
`now-statutorily disclaimed claims in our determination.”); Great West
`
`Casualty Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip
`
`op. at 7 (PTAB Feb. 9, 2016) (Paper 10) (“[F]or the purposes of whether or
`
`not to institute a covered business method patent review, we treat [the
`
`disclaimed claims] as never having existed.”); Google Inc. v. SimpleAir,
`
`Inc., Case CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2015) (Paper
`
`11) (“[W]e treat the [challenged] patent as though [the disclaimed claim]
`
`never existed.”).
`
`Some panels of the Board have held that a disclaimed dependent
`
`claim that includes finance-related subject matter may be considered for
`
`purposes of CBM eligibility to the extent that a remaining claim from which
`
`the disclaimed claim depends must include limitations that encompass the
`
`8
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`CBM2016-00070
`Patent 7,263,548 B2
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`finance-related subject matter of the disclaimed claim. See, e.g., American
`
`Express Co. v. Maxim Integrated Prods., Inc., Case CBM2015-00098, slip
`
`op. at 8–13 (PTAB Sept. 22, 2015) (Paper 17) (finding CBM eligibility
`
`where Petition used subsequently disclaimed claim as an example of
`
`financial uses of invention recited in remaining claims); J.P. Morgan Chase
`
`& Co. v. Intellectual Ventures II LLC, Case CBM2014-00157, slip op. at 2–
`
`3 (PTAB Feb. 18, 2015) (Paper 11) (“[S]tanding for covered business
`
`method patent review remains at least because disclaimer of claim 12 does
`
`not change the scope of independent claim 1, from which it depends.”).
`
`Under this theory, although claims 13 and 14 have been disclaimed, the
`
`broader claims from which they depend, claims 1 and 9, must be broad
`
`enough in scope to encompass their subject matter. Thus, because claims 13
`
`and 14 included finance-related subject matter, claims 1 and 9 must also
`
`encompass finance-related subject matter. We understand the logic of this
`
`position, but we do not agree that it means that claims 1 and 9 can provide
`
`CBM eligibility.5
`
`First, Petitioner does not argue that claim 1 or claim 9 contains
`
`finance-related scope by virtue of the existence of any finance-related claim
`
`that depends from those claims. Pet. 12–17. Second, it is not enough that a
`
`claim of general applicability, such as claim 1 or claim 9, has some scope
`
`that may be described as finance-related. Rather, to find CBM eligibility,
`
`we have been directed to “focus[] on the claim language at issue” and to
`
`determine whether there is anything “explicitly or inherently financial in the
`
`construed claim language.” Blue Calypso, 815 F.3d at 1340. Therefore, to
`
`
`5 The same is true for claims 20 and 28, from which disclaimed claims 32
`and 33 depend.
`
`9
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`
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`CBM2016-00070
`Patent 7,263,548 B2
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`provide CBM eligibility, a claim must be limited, explicitly or inherently, to
`
`“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.” AIA § 18(d)(1). The fact that a claim is broad
`
`enough to encompass a finance-related activity does not necessarily mean
`
`that the claim, as a whole, is limited to that finance-related activity.
`
`Accordingly, we do not rely on claims 13, 14, 32, or 33, nor do we rely on
`
`the dependence of those claims from any remaining claims, in deciding
`
`whether or not to institute trial.
`
`2. Claims Remaining After the Statutory Disclaimer
`
`“‘[F]inancial product or service’ should be interpreted broadly.”
`
`Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1323–26 (Fed. Cir.
`
`2015). “[B]roadly” in this context, however, does not mean without limits.
`
`As the Federal Circuit 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.” Id. at 1325
`
`(emphasis added).
`
`With respect to the claims of the ’548 patent left after Patent Owner’s
`
`statutory disclaimer, Petitioner argues first that each of these claims is
`
`directed to a finance-related activity because each is directed to a
`
`subscription system or a method for subscribers, and subscription services
`
`“typically involve payment.” Pet. 14. We do not find this argument
`
`persuasive. As noted above, we must examine the language of the claims for
`
`any explicit or inherent limitation to finance-related activity. Blue Calypso,
`
`815 F.3d at 1340. But Petitioner does not establish that there is any such
`
`10
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`CBM2016-00070
`Patent 7,263,548 B2
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`limitation in the claims. First, Petitioner argues only that subscription
`
`services “typically involve payment,” Pet. 14 (emphasis added), not that,
`
`given the remaining claims and Specification of the ’548 patent, subscription
`
`services must be interpreted as involving payment. Second, Petitioner offers
`
`no evidence, only attorney argument, to support its suggested conclusion
`
`that payment is a typical feature of subscription services. Id.
`
`In addition, even if Petitioner had made the argument that the
`
`language of the Specification requires limiting the claims’ recital of
`
`subscription services to only those services that involve payment, we would
`
`not be persuaded. The Specification of the ’548 patent makes clear that
`
`subscription services need not be finance-related. In discussing “a
`
`subscriber service,” the ’548 patent describes operating on “data such as
`
`may be sourced in one of servers 21-25,” data that the ’548 patent describes
`
`as including “WEB pages,” as well as “E-commerce data associated with on-
`
`line forms, digital authorization certificates, secure digital signature forms
`
`and the like.” Ex. 1001, 5:43–6:64. Although some of this data indisputably
`
`is finance-related, much of it, such as the “WEB pages” and “secure digital
`
`signature forms,” need not be. Thus, the fact that the remaining claims of
`
`the ’548 patent recite subscription services is not sufficient to establish that
`
`they 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.” AIA § 18(d)(1).
`
`Petitioner also argues that “the predominant purpose of the claimed
`
`invention,” as demonstrated both by the Specification of the ’548 patent and
`
`by the assertions of the Patent Owner in the related District Court litigation,
`
`“is to be used in financial products and services.” Pet. 14–17. Again,
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`11
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`CBM2016-00070
`Patent 7,263,548 B2
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`though, we must determine whether the scope of the claims of the ’548
`
`patent is limited to finance-related activities. Blue Calypso, 815 F.3d at
`
`1340. In addition, several non-binding Board decisions have determined
`
`that a patent is not CBM eligible when it has only claims of general utility
`
`with no explicit or inherent finance-related terminology or limitations. See,
`
`e.g., Qualtrics, LLC v. OpinionLab, Inc., Case CBM2015-00164, slip op. at
`
`5–6 (PTAB Feb. 3, 2016) (Paper 8) (“Qualtrics”) (determining that a claim
`
`that “solicit[s] feedback from website visitors across a variety of sectors” is
`
`of general utility and, therefore, is not directed to a covered business method
`
`patent eligible for review); ServiceNow, Inc. v. Hewlett-Packard Co., Case
`
`CBM2015-00077, slip op. at 5–7 (PTAB Sept. 17, 2015) (Paper 12)
`
`(determining that a claim reciting “a system for managing a Web service” is
`
`of general utility and, therefore, is not directed to a covered business method
`
`patent eligible for review); ServiceNow, Inc. v. BMC Software, Inc., Case
`
`CBM2015-00107, slip op. at 10–15 (PTAB Sept. 11, 2015) (Paper 12)
`
`(determining that a claim that performs “fault analysis” is of general utility
`
`and, therefore, is not directed to a covered business method patent eligible
`
`for review).
`
`Thus, claims of general utility are not converted into finance-related
`
`claims merely because the Specification of the challenged patent or the
`
`litigation positions of the Patent Owner suggest that the scope of the claims
`
`is broad enough to encompass some finance-related activities. See
`
`Qualtrics, slip op. at 5–6. Here, other than the disclaimed claims discussed
`
`above, Petitioner has not alleged that any claim of the ’548 patent is
`
`anything other than a claim of general utility, so the mere fact that the
`
`Specification contains some discussion of financial activities or that Patent
`
`12
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`CBM2016-00070
`Patent 7,263,548 B2
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`Owner has alleged in litigation that the patent covers financial activities is of
`
`little moment.
`
`Of course, if the Specification were to make clear that the claims
`
`should be interpreted as limited to finance-related contexts, the presence of
`
`general-utility claim language would not preclude a finding of CBM
`
`eligibility, but Petitioner has not established that such is the case here. First,
`
`Petitioner argues only that “practically every concrete embodiment disclosed
`
`in the patent relates to financial transactions,” not that every embodiment
`
`does so or that the Specification contains some disclaimer of non-financial
`
`activities. Pet. 14–15. Second, although Petitioner is correct that the
`
`Specification of the ’548 patent describes several finance-related
`
`embodiments, the Specification also describes the use of the claimed
`
`invention in activities, such as e-mail retrieval, that need not be finance-
`
`related. Prelim. Resp. 9–10 (citing Ex. 1001, 7:29–31). Accordingly, we are
`
`not persuaded that the language of the remaining claims of the ’548 patent
`
`has any particular connection to finance-related activities, because these
`
`claims are of general utility with no explicit or inherent finance-related
`
`terminology or limitations.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that Petitioner has not
`
`established that the ’548 patent is a covered business method patent under
`
`AIA § 18(d)(1).
`
`CONCLUSION
`
`Upon consideration of the Petition, the Preliminary Response, and the
`
`evidence presently before us, we determine that Petitioner has not
`
`13
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`CBM2016-00070
`Patent 7,263,548 B2
`
`demonstrated that the ’548 patent is eligible for review under the transitional
`
`covered business method patent review program.
`
`
`
`ORDER
`
`It is hereby
`
`ORDERED that the Petition is denied, and no covered business
`
`method patent review is instituted.
`
`
`
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`14
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`CBM2016-00070
`Patent 7,263,548 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`
`Case CBM2016-00070
`Patent 7,263,548 B2
`
`
`
`KIM, Administrative Patent Judge, DISSENTING
`
`My esteemed colleagues have identified the appropriate facts and law
`
`relevant to this issue, with the general characterizations of which I concur.
`
`Ultimately, my only disagreement comes down to the manner in which those
`
`facts and law have been weighed with respect to the finance prong of the test
`
`for determining CBM eligibility, of which, most fundamentally, I am
`
`persuaded by the logic set forth in American Express Co. v. Maxim
`
`Integrated Prods., Inc., Case CBM2015-00098, slip op. at 8–13 (PTAB
`
`Sept. 22, 2015) (Paper 17).
`
`Additionally, even disclaimed claims are part of the Specification, in
`
`that they are still words written in the ’548 patent that provide informational
`
`notice to the public, regardless of whether or not they are legally disclaimed.
`
`Cf. In re Koller, 613 F.2d 819, 823 (CCPA 1980) (“original claims
`
`constitute their own description”) (citing In re Gardner, 475 F.2d 1389,
`
`15
`
`
`
`CBM2016-00070
`Patent 7,263,548 B2
`
`1391 (CCPA 1973)). And the disclaimed claims expressly describe
`
`themselves as further limiting the subject matter of the remaining claims
`
`from which they depend. Accordingly, when this part of the Specification is
`
`weighed in conjunction with the portions of the Specification identified by
`
`Petitioner, I would determine that those remaining claims “encompass
`
`patents claiming activities that are financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.” 77 Fed. Reg.
`
`48,734, 48,735 (Aug. 14, 2012). Compare Great West Casualty Co. v.
`
`Intellectual Ventures II LLC, Case CBM2015-00171, slip op. at 7–9 (PTAB
`
`Feb. 9, 2016) (Paper 10) (reaching opposite conclusion where independent
`
`claim, from which claims reciting financial terms depended ultimately, was
`
`also disclaimed). To determine otherwise encourages the exact sort of
`
`procedural gamesmanship that our reviewing court has disfavored in other
`
`contexts. See Gilead Sciences, Inc. v. Natco Pharma Ltd., (Fed. Cir. 2014)
`
`(“[I]f we were to hold that issuance date is the determining factor for double
`
`patenting inquiries for post-URAA patents, the terms of such patents could
`
`be subject to significant gamesmanship during prosecution.”). Indeed,
`
`Patent Owner alleges in the related district court proceeding that Petitioner’s
`
`“software and services [that] provide account aggregation and personal
`
`financial management services to its customers” infringe the ʼ548 patent
`
`claims, a factor that should also be weighed against Patent Owner in the
`
`aggregate. Ex. 1008 ¶¶ 21, 60. Cf. Amazon.com, Inc. v.
`
`Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent
`
`may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and
`
`another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec.
`
`Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))).
`
`16
`
`
`
`CBM2016-00070
`Patent 7,263,548 B2
`
`For the above reasons, I would determine that the ’548 patent does
`
`meet the finance prong of the test for determining CBM eligibility.
`
`
`PETITIONER:
`
`David L. Cavanaugh
`Kelly Zeng
`WILMER CUTLER PICKERING HALE & DORR LLP
`david.cavanaugh@wilmerhale.com
`Kelly.Zeng@wilmerhale.com
`
`Brian Buroker
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`
`
`
`PATENT OWNER:
`
`David M. Hoffman
`FISH & RICHARDSON P.C.
`CBM12233-0051CP1@fr.com
`
`
`
`
`
`17
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