throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 28
`Entered: December 21, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
`LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2016-00081
`Patent 7,340,506 C1
`____________
`
`
`Before KEVIN F. TURNER, JENNIFER S. BISK, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 328(a) and 37 C.F.R. §§ 42.73
`
`

`

`CBM2016-00081
`Patent 7,340,506 C1
`
`
`I. INTRODUCTION
`This covered business method patent review, instituted pursuant to 35
`U.S.C. § 324, challenges the patentability of claims 20 and 21 of of U.S.
`Patent No. 7,340,506 C1 (Ex. 1001, “the ’506 Patent”), owned by Dr.
`Lakshmi Arunachalam (“Patent Owner”). We have jurisdiction under 35
`U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 328(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has shown by a
`preponderance of the evidence that claims claims 20 and 21 of the ’506
`Patent are unpatentable. We also determine that Patent Owner has not met
`regulatory requirements under 37 C.F.R. § 42.221(a) or (b)(1), or statutory
`requirements of 35 U.S.C. § 326(d)(1)(B) or (3), in its Motion to Amend in
`relation to proposed new claims, and thus, we deny the Motion to Amend.
`We note that a Grant of Good Cause Extension, under 35 U.S.C.
`§ 316(a)(11) and 37 C.F.R. § 42.100(c), was made by the Chief
`Administrative Patent Judge, extending the one-year period for issuing a
`Final Written Decision, and we extended the time to administer the present
`proceeding by up to six months. Papers 26, 27.
`
`A. Procedural History
`SAP America, Inc. (“Petitioner”) filed a Petition requesting a review
`under the transitional program for covered business method patents of the
`’506 Patent. Paper 2 (“Pet.”). Patent Owner sought to file a Preliminary
`Response, but did not file such a paper, because we denied an extension of
`the due date for that paper, as discussed below.
`2
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`CBM2016-00081
`Patent 7,340,506 C1
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`
`Before institution of this proceeding, we conducted a conference call
`with Petitioner and Patent Owner to discuss potential motions that Patent
`Owner wished to have authorized for filing and considered. Patent Owner
`moved to file a Motion for Extension of Time to file Patent Owner’s
`Preliminary Response, to which Petitioner opposed. Paper 6, 3. On the call,
`we indicated that the Board found previously that there was “no need or
`justification to extend the current due date of August 20, 2016 for Patent
`Owner’s Preliminary Response” (Paper 4, 3), and we declined to authorize
`Patent Owner’s Motion. Also, on that same call, we authorized Patent
`Owner’s motion to disqualify attorneys representing Petitioner, along with
`an opposition to be filed by Petitioner. Following an analysis of the briefing,
`we denied Patent Owner’s Motion. See Paper 12.
`We instituted a review under the transitional program for covered
`business method patents of claims 20 and 21 (“the instituted claims”) of the
`’506 Patent as unpatentable under 35 U.S.C. §§ 101, 1031, on the following
`bases. Paper 10 (“Institution Decision” or “Dec.”).
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of § 103 in this Decision.
`3
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`CBM2016-00081
`Patent 7,340,506 C1
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`
`References
`
`
`Lawlor2 and CORBA3
`Lawlor, CORBA, and Billings4
`
`Basis
`§ 101
`§ 103
`§ 103
`
`Claims Challenged
`20 and 21
`20
`21
`
`Dec. 23.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response to the Petition (Paper 14, “PO Resp.”) and a Motion to Amend
`(Paper 15, “Mot. Amend”). Petitioner filed a Reply to Patent Owner’s
`Response (Paper 19, “Reply”) and an Opposition to Patent Owner’s Motion
`to Amend (Paper 18, “Opp.”). Patent Owner then filed a Reply to
`Petitioner’s Opposition to Patent Owner’s Motion to Amend (Paper 22, “PO
`Reply”).
`Petitioner also filed Objections to Patent Owner’s Evidence
`(Paper 16), pertaining to Exhibits 2005 and 2006, to which Patent Owner
`filed an Opposition (Paper 17).
`Petitioner filed a Notice regarding oral argument (Paper 23) indicating
`that Petitioner did not believe that oral argument was necessary in the instant
`proceeding, and Patent Owner did not file a request for oral argument. The
`panel determined that no oral argument was warranted to render this
`decision. See Paper 24.
`
`
`2 U.S. Patent No. 5,220,501, issued Jun. 15, 1993 (Ex. 1004, “Lawlor”).
`3T.J. Mowbray and R. Zahavi, The Essential CORBA: Systems Integration
`Using Distributed Objects (John Wiley & Sons, Inc. 1995) (Ex. 1005,
`“CORBA”).
`4U.S. Patent No. 4,714,989, issued Dec. 22, 1987 (Ex. 1006, “Billings”).
`4
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`CBM2016-00081
`Patent 7,340,506 C1
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`
`C. Related Matters
`Petitioner contends that the ’506 Patent is the subject of multiple
`pending and prior proceedings that are relevant. Pet. 3. These include:
`Arunachalam v. International Business Machines Corporation, et. al., Case
`No. 16-cv-00281-RGA (D. Del.); Arunachalam v. Citizens Financial Group,
`Inc., C.A. No. 1:12-cv-355-RGA (D. Del.); Pi-Net International, Inc., v.
`JPMorgan Chase & Co., No. 1:12-cv-00282-RGA (D. Del.); Arunachalam
`v. Kronos, C.A. No. 1-14-cv-00091-RGA (D. Del.); Arunachalam v. Citi
`Group, Inc. et al, C.A. No. 1:14-cv-00373-RGA (D. Del.); Arunachalam v.
`Wells Fargo Bank, N.A., C.A. No 1:13-cv-01812-RGA (D. Del.); SAP
`America, Inc. v. Arunachalam, Case 4:13-cv-01248-PJH (N.D. Cal.); Pi-Net
`International, Inc. v. JC Penney Co., Inc., 2:13-cv-01035-JRG-RSP/2:13-cv-
`01016-JRG-RSP (E.D. Tex.); Arunachalam v. United States of America, No.
`1-16-cv-00358 (Fed. Cl.). Pet. 3; Paper 5, 2 (Patent Owner’s Mandatory
`Notice).
`The following patents also are indicated as being related to ’506
`Patent and involved in the above cited proceedings: U.S. Patent No.
`8,108,492, U.S Patent No. 5,987,500, U.S. Patent No. 8,037,158, and U.S.
`Patent No. 8,346,894. These latter patents were the subject of the following
`nine post-grant proceedings:
`
`Patent No. Disposition
`Proceeding
`8,108,492
`Final Written Decision
`IPR2013-00194
`5,987,500
`Final Written Decision
`IPR2013-00195
`CBM2013-00013 8,037,158
`Final Written Decision
`IPR2014-00413
`8,346,894
`Final Written Decision
`
`5
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`CBM2016-00081
`Patent 7,340,506 C1
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`
`
`
`8,346,894
`IPR2014-00414
`CBM2014-00018 8,037,158
`CBM2014-00101 8,346,894
`CBM2014-00097 8,346,894
`CBM2014-00089 8,346,894
`
`Final Written Decision
`Final Written Decision
`Trial Denied
`Trial Denied
`Trial Denied
`
`D. The ’506 Patent
`The ’506 Patent relates to providing “a method and apparatus for
`providing real-time, two-way transactional capabilities on the network,
`including heterogeneous networks such as the Internet, World Wide Web
`(WWW), telephone network, wireless networks, cable television networks,
`and private enterprise networks.” Ex. 1001, 2:51–55. Figure 5D is
`reproduced below:
`
`As illustrated in Figure 5D, user 100 communicates with a merchant
`at a server via software such as a Web browser. Id. at 7:25–31. Exchange
`501 is shown as running on a different computer system (network server
`104) from the computer systems of the network merchants or content owners
`6
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`running POSvc [point of service] applications (computer system 200). Id.
`Exchange 501 may, however, also be on the same computer system as one or
`more of the computer systems of the network merchants. Id. The “Back
`End” represents a Bank “Back Office,” in which “user 100 will be able to
`connect to Bank services and utilize the application to perform banking
`transactions, thus accessing data from a host or data repository 575 in the
`Bank ‘Back Office.’” Id. at 7:33–36.
`The ’506 Patent describes a configurable value-added network
`switching and object routing method and apparatus, with an exchange
`having point of service applications 510 and value added network (VAN)
`switch 520. Id. at 9:19–20, Fig. 5B. VAN switch 520 includes boundary
`service 701, switching service 702, management service 703, and
`application service 704. Id. at Fig. 7. Boundary service 701 “provides the
`interface to the on-line service provider,” specifically between VAN switch
`520, the Internet and the network, telephone companies, wireless systems,
`cable television networks, and multi-media end user devices such as PCs,
`televisions or telephones. Id. at 9:21–27. Switching service 702 routes user
`connections to specific software modules, multiplexes and prioritizes
`requests, and facilitates access to financial networks (e.g., banking networks)
`using the Internet. Id. at 9:36–39. Management service 703 includes tools
`that are “used by the end users to manage network resources.” Id. at 9:45–
`46. Application service 704 “includes POSvc [point of service]
`applications.” Id. at 9:56–57.
`Figure 8 of the ’506 Patent provides a flow diagram in which the user
`
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`first connects to a Web server and issues a request for a transactional
`application. Id. at 10:4–7. An “exchange” then presents the user with a list
`of applications and, in response to the user’s selection, switches the user to
`the selected application. Id. at 10:9–14. An “object routing component”
`then executes the user’s request. Id. at 10:14–15.
`
`E. Subject Claims
`Petitioner challenges claims 20 and 21 of the ’506 Patent. Pet. 1.
`
`Claims 20 and 21 are dependent on claim 14, where claim 14 was cancelled
`as a result of reexamination. Ex. 1001, Inter Partes Reexamination
`Certificate 1:17. Claims 14, 20, and 21 are reproduced below.
`14. An apparatus for providing a service over a digital network, the
`apparatus comprising:
`a processor;
`a machine-readable storage device including one or more
`instructions executable by the processor for
`sending first display information from a first computer system to a
`user device, wherein the first display information includes a
`control associated with a commercial service;
`accepting a first signal in response to a user input to activate the
`control; and
`initiating, in response to the first signal, communication between
`the user device and a second computer system, wherein the
`second computer system acts to send second display
`information to the user device, wherein the second display
`information includes a list of at least one commercial service;
`wherein the second computer system further acts to accept a
`second signal in response to a user input to select a commercial
`service from the list; and to complete a commercial transaction
`relating to the selected commercial service;
`8
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`
`associating an object identity with information entries and
`attributes, wherein the object identity represents a networked
`object;
`storing said information entries and said attributes in a virtual
`information store; and
`assigning a unique network address to said object identity.
`
`20. The apparatus of claim 14, wherein the transaction is handed
`over to an exchange, wherein the exchange manages the
`connection between the user and the commercial service,
`wherein the commercial service is an online service operating
`across the digital network, wherein the digital network is a
`value-added service network atop the Web.
`
`
`21. The apparatus of claim 14, wherein the first computer system
`offering the commercial service comprising access to employee
`payroll information on a service network atop the Web.
`Ex. 1001, 32:20–47, Inter Partes Reexamination Certificate 1:20–29.
`
`II. DISCUSSION
`Claim Construction
`A.
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.300(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131 (2016) (upholding the use of broadest reasonable
`construction standard). Consistent with the broadest reasonable construction
`standard, claim terms are presumed to have their ordinary and customary
`meaning as understood by one of ordinary skill in the art in the context of
`the entire patent disclosure at the time of the invention. In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide
`a meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Moreover,
`limitations are not to be read from the specification into the claims. In re
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition, the Board
`may not “construe claims during [an inter partes review] so broadly that its
`constructions are unreasonable under general claim construction principles.”
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
`We construe the challenged claims according to these principles.
`In the Petition, Petitioner proposes relevant claim constructions from
`the inter partes reexamination of the ’506 patent and the other post-grant
`proceedings, discussed in Section I.C., which were adopted by the Office.
`Pet. 10–14. Petitioner also asserts that the claim term “commercial service”
`should be construed as “a service involving the buying and selling of
`goods.” Id. at 14. We have reviewed Petitioner’s proposed constructions
`and find they are consistent with prior Board findings and the broadest
`reasonable construction standard.
`In the Institution Decision, we determined that the indicated claim
`limitations should be construed as follows:
`Claim Limitation
`Claim Construction
`“control”
`“a component or mechanism that regulates or
`guides the operation of an apparatus or
`system”
`
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`

`“networked object”
`
`“commercial service”
`
`CBM2016-00081
`Patent 7,340,506 C1
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`
`Claim Limitation
`“object identity”
`
`Claim Construction
`“characteristic by which an object is
`recognized or known; a characteristic by
`which an object is recognized or known,
`including a name given to an object
`specifying an object type or its identity (e.g.,
`ID) for an object”
`“an object that operates within a network or
`transmitted over a network”
`“virtual information store” “an information store in which information
`entries and attributes are associated with a
`networked object identity”
`“a service involving the buying and selling of
`goods”
`Patent Owner argues that we failed to consider “key terms” and
`disputes constructions adopted for the Institution Decision. PO Resp. 35–
`74. We address each disputed claim term below.
`Patent Owner also argues that we did not construe “individual
`networked object,” and that we “willfully left out ‘Individual’ and only
`construed ‘Network Object.’” PO Resp. 36. Patent Owner is correct that we
`did not construe “individual networked object.” The reason is that it is not a
`term recited in the challenged claims, nor claim 14, from which the
`challenged claims depend. We construed “networked object,” i.e., without
`“individual,” because it is a term recited in the claims. Patent Owner also
`argues that the proper construction of “networked object” is “the information
`entries and attributes in a DOLSIB [distributed on-line service information
`base].” Id. (citing Ex. 1001, 8:50–54). We do not agree. Although the
`specification of the ’506 Patent details that “[t]he networked object identity
`
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`CBM2016-00081
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`identifies the information entries and attributes in the DOLSIB as individual
`networked objects,” that is not a definition of “network objects.” We
`continue to find that the broadest reasonable construction, in view of the
`specification, of “networked object” is “an object that operates within a
`network or transmitted over a network.” We are not persuaded that
`“individual networked object” need be construed because it is not a claim
`term, and we are not persuaded that every recitation of “networked object”
`must refer to an “individual networked object.”
`Patent Owner argues that we did not construe the claim term
`“attributes,” which should be understood as “characteristics of an object.”
`Id. at 36–37 (citing Ex. 1001, 4:45–58, 23:19–25). Petitioner counters that
`the passages cited by Patent Owner do not support the proffered definition,
`because those passages do not contain the word “attribute.” Pet. Reply 4.
`Although Patent Owner’s construction is not unreasonable, claim 14 already
`recites that the step of “associating an object identity with information
`entries and attributes,” so that “attributes” need not be referred to as
`“characteristics of an object,” since such an association is already directly
`recited in the claims. As such, we are not persuaded that the claim term
`“attributes” needs explicit construction.
`Similarly, Patent Owner argues that “information entries” should be
`construed as “values of the characteristics of an object.” PO Resp. 37 (citing
`Ex. 1001, 4:45–58, 23:19–25). Again, we find it unnecessary to tie
`“information entries” to an object, since the association is already provided
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`in claim 14. Therefore, we are not persuaded that the claim term
`“information entries” needs explicit construction.
`With respect to the claim term “virtual information store,” we
`construed that term as “an information store in which information entries
`and attributes are associated with a networked object identity,” as discussed
`above. Patent Owner argues that we have not given proper effect to the
`word “virtual,” arguing that the proper construction is “a transient
`information store that is temporarily created and which contains information
`entries and attributes associated with a networked object identity.” PO Resp.
`39–41. Patent Owner cites to the specification of the ’506 Patent (Ex. 1001,
`3:1–5, 8:47–54), and “[t]he IBM Computer Dictionary” (id.), but, as
`Petitioner points out, Patent Owner has not “submitted this dictionary as an
`exhibit or provided any further information to locate the dictionary.”
`Further, the sections of the ’506 Patent cited by Patent Owner are not
`explicit about the store being “transient” or “temporarily created;” this is an
`inference drawn by Patent Owner. See PO Resp. 40. The introduction of the
`terms “transient” and “temporarily” to the construction adds more ambiguity
`to the claim term because the specification of the ’506 Patent does not
`discuss how long any “virtual information store” would be stored or
`maintained. In addition, we are not persuaded that Patent Owner’s provision
`of affirmatively containing the information entries and attributes is necessary
`because having a store in which the information entries and attributes are
`associated with a networked object identity would have been understood by
`ordinarily skilled artisans as being a store containing those elements.
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`Therefore, we are not persuaded that the claim term “virtual information
`store” requires a different construction and we maintain the construction
`provided in the Institution Decision, which is reproduced above.
`Patent Owner argues that the construction of “service” is “an
`application” or “value-added network application” or “VAN service” or
`“Point-of-Service (POSvc) application.” PO Resp. 41–44 (citing Ex. 1001,
`2:10, 6:49–55, 7:6–24, 32–41, 6:45–8:20, 9:56–58, Figs. 6A, 5B–5D). We
`are persuaded, however, as Petitioner argues, that these are listed
`embodiments from the specification and that the claim language cannot be
`limited to these particular embodiments. Pet. Reply 6–7 (citing SuperGuide
`Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)). In
`addition, Petitioner points out that the cited sections of the specification refer
`to both applications and services, to which a differentiated service should
`not apply. Therefore, we are not persuaded that the claim term “service”
`needs explicit construction.
`With respect to “commercial service,” Patent Owner argues that our
`adopted construction is “too narrow,” and the proper construction is “an
`application [or value-added network application or VAN service or Point-of-
`Service (POSvc) application] provided by a Web merchant offered as an
`online service on the Web.” PO Resp. 44–46 (citing Ex. 1001, 5:57–6:35,
`Fig. 4B). We concur with Petitioner that Patent Owner’s proffered
`construction is actually narrower than that adopted by the Institution
`Decision, and merely refers to embodiments disclosed in the specification.
`Pet. Reply 7–8. As discussed above, we are persuaded that the specification
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`of the ’506 Patent differentiates between services and applications. As well,
`claim 20 makes explicit that “the commercial service is an online service
`operating across the digital network,” such that the provision of “a Web
`merchant offered as an online service on the Web” in the construction is
`unnecessary. Therefore, we are not persuaded that the claim term
`“commercial service” requires a different construction and we maintain the
`construction provided in the Institution Decision, which is reproduced
`above.
`We construed “object identity” as identified above, but Patent Owner
`argues that this construction is not consistent with the disclosures of the
`specification or prosecution histories, and instead urges a construction of
`“information entries and attributes that represent a networked object, that are
`the argument parameters for object serialization of the data onto a network
`stream, for the parameters and the object that are routed on the World Wide
`Web, and needed to transfer data between computers.” PO Resp. 48–49
`(citing Ex. 1001, 8:50–54, 11:65–12:2, 12:12–16, 13:2–5). We do not agree
`with Patent Owner’s proposed construction, and we agree with Petitioner
`that the specification of the ’506 Patent does not provide a clear definition
`and Patent Owner’s citations to specific embodiments does not contribute to
`the broadest reasonable construction. Pet. Reply 8–9. Therefore, we are not
`persuaded that the claim term “object identity” requires a different
`construction and we maintain the construction provided in the Institution
`Decision, which is reproduced above.
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`
`With respect to “control,” we construed that claim term as “a
`component or mechanism that regulates or guides the operation of an
`apparatus or system,” as noted above. Patent Owner argues that the adopted
`construction is not consistent with the specification. PO Resp. 49–50.
`Patent Owner counters that a proper construction to be “distributed
`management of a service network, operating within the boundaries of an IP-
`based facilities network.” Id. (citing Ex. 1001, 6:64–66, 7:38–39).
`Petitioner responds that the cited sections describe a potential function of an
`exchange, and not a control, and also points out that we have previously
`determined that “the distributed control is not described as ‘first display
`information,’” in claim 14. Pet. Reply 9–10 (citing Ex. 1007, 11–12). We
`agree with Petitioner and we are not persuaded that the previous construction
`should be disturbed.
`With “service network atop the Web” and “value-added service
`network atop the Web,” Patent Owner argues that we construed them, in a
`related case, as “a network on which services other than underlying network
`communications services are provided over the internet.” PO Resp. 50.
`Patent Owner contends that they should be construed as follows:
`Claim Limitation
`Claim Construction
`“service network atop the
`“an OSI application layer network that
`Web”
`comprises a POSvc application displayed on a
`Web page offered as an online service over
`the Web.”
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`
`Claim Limitation
`“value-added service
`network atop the Web”
`
`Claim Construction
`“an OSI application layer network that
`provides a value-added network application
`or a POSvc application displayed on a Web
`page offered as an online service over the
`Web.”
`Id. at 50–51 (citing Ex. 1001, 6:17–23, 31–34, 48–50, 7:10–16). Patent
`Owner argues that being “atop the World Wide Web” specifies that the
`service network operates in a specific layer of the OSI model, and is critical
`to the invention. Id. at 51–52 (citing Ex. 1001, 5:22–24, 52–54).
`In response, Petitioner argues that Patent Owner is attempting to rely
`on particular embodiments from the ’506 Patent specification to support its
`construction, which is improper. Pet. Reply 10 (citing SuperGuide, 358 F.3d
`at 875). Petitioner also points out that the ’506 Patent specification does not
`provide clear definitions of the cited claim terms, but rather provide
`“example implementation details that do not appear in the challenged
`claims.” Id. at 11. We agree with Petitioner, and further construe a “service
`network atop the Web” as “a network on which services other than
`underlying network communications services are provided using the Web,”
`per our prior construction and Petitioner’s suggestion. Id. (citing Ex. 1002
`¶ 121; Pet. 66–67).
`Patent Owner also argues we “fraudulently avoided construing this
`key term,” i.e., “exchange,” and that the proper construction is “a Web page;
`Point-of-Service (POSvc) applications; switching component, the VAN
`switch; object routing component, the object router; and service
`management component; creates and allows for the management (or
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`distributed control) of a service network, operating within the boundaries of
`an IP-based facilities network; processes the consumer/Web user's request;
`and manages the connection between the Web user and Web merchant
`services.” PO Resp. 53 (citing Ex. 1001, 6:48–7:40; Figs. 5B, 5D; emphasis
`in original).
`Petitioner points out, however, that the ’506 Patent specification
`makes clear that the exchange component in Fig. 5B is “according to one
`embodiment,” and should not be read into the claim limitation. Pet. Reply
`12 (citing Ex. 1001 3:31–32; Akamai Tech., Inc. v. Limelight Networks, Inc.,
`805 F.3d 1368, 1376 (Fed. Cir. 2015)). In addition, Petitioner also points to
`claim 20, which on its own defines exchange according to “wherein the
`exchange manages the connection between the user and the commercial
`service,” such that additional explicit construction is unnecessary. Id. We
`agree with Petitioner that “exchange” does not require an explicit
`construction in the context of the instant decision.
`Patent Owner further argues constructions for the following terms:
`“Distributed on-line service information base or DOLSIB,” “state,” “Web
`transaction or transition,” “event,” “action,” “Extended Finite State Machine
`(EFSM),” “Web merchant,” “Facilities network,” “VAN Switch or Value-
`Added Network (VAN) Switch,” “Value-Added Network (VAN),” “Web
`application,” “Object Routing” and “Point-of-Service (POSvc) Application.”
`PO Resp. 35–36, 37–41, 46–48, 52–74. These terms, however, are not
`recited in challenged claims 20, and 21, nor claim 14, from which those
`claims depend. Therefore, although those terms may have been construed in
`
`18
`
`

`

`CBM2016-00081
`Patent 7,340,506 C1
`
`other proceedings, they need not be construed herein. For example, Patent
`Owner argues about the proper meaning of “event” (PO Resp. 38), arguing it
`is a “key term,” but that term is not found in claims 14, 20, or 21. As such,
`we need not consider the construction of “event,” in determining the
`patentability of claims 20 and 21. Therefore, we are persuaded that terms
`not recited in the claims need not receive specific construction.
`B. Standing to Seek Covered Business Method Patent Review
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18 limits
`review to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1).
`37 C.F.R. § 42.302 states “[c]harged with infringement means a real and
`substantial controversy regarding infringement of a covered business method
`patent exists such that the petitioner would have standing to bring a
`declaratory judgment action in Federal court.”
`Petitioner states that it was charged with infringement of at least one
`claim of the ’506 Patent, as identified in Section I.C. above. Pet. 15–17.
`A CBM 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 also 37 C.F.R. § 42.301 (defining “[c]overed business
`method patent” and “[t]echnological invention”). To determine whether a
`
`19
`
`

`

`CBM2016-00081
`Patent 7,340,506 C1
`
`patent is eligible for a covered business method patent review, the focus is
`on the claims. Secure Axcess, LLC v. PNC Bank N.A., 848 F.3d 1370, 1379
`(Fed. Cir. 2017) (“It is the claims, in the traditional patent law sense,
`properly understood in light of the written description, that identifies a CBM
`patent.”). One claim directed to a CBM is sufficient to render the patent
`eligible for CBM patent review. See id. at 1381 (“[T]he statutory definition
`of a CBM patent requires that the patent have a claim that contains, however
`phrased, a financial activity element.”).
`In our Institution Decision, we determined that the Petitioner had
`shown that the ’506 Patent is a CBM eligible patent. Inst. Dec. 9–11. Patent
`Owner urges us to reconsider our determination and find that the ’506 Patent
`is not eligible for CBM review. See PO Resp. 17–27. We, however, are not
`apprised of any sufficient reason to change our original determination as
`discussed below.
`i. Financial Product or Service
`The statute defines a “covered business method patent” as “[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.” AIA § 18(d)(1); see 37
`C.F.R. § 42.301(a). A covered business method patent can be broadly
`interpreted to encompass patents claiming activities that are financial in
`nature. Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. 48734, 48735 (Aug. 14, 2012); Blue Calypso, LLC
`
`20
`
`

`

`CBM2016-00081
`Patent 7,340,506 C1
`
`v. Groupon, Inc., 815 F.3d 1331, 1338–41 (Fed. Cir. 2016) (determining that
`a patent was a covered business method patent because it claimed activities
`that are financial in nature); Unwired Planet, LLC v. Google, Inc., 841 F.3d
`1376, n. 5 (Fed. Cir. 2016) (stating that “we endorsed the ‘financial in
`nature’ portion of the standard as consistent with the statutory definition of
`‘covered business method patent’ in Blue Calypso”), Versata Development
`Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1324–25 (Fed. Cir. 2015)
`(“[The statute] on its face covers a wide range of finance-related
`activities.”).
`Petitioner asserts that the sole remaining claims of the ’506 Patent
`claims recite a “commercial service,” which involves the buying and selling
`of goods. Pet. 18–19. Petitioner also points out that claim 21 recites the
`limitation of “the commercial service comprising access to employee payroll
`information,” where the “[p]ayment of employees is also a financial product
`or service and inherently involves the movement of money.” Id. at 19.
`Although Patent Owner disputes that the ’506 Patent is directed to a covered
`business method patent (PO Resp. 17–27), Patent Owner does not appear to
`dispute that claim 21 is directed to a financial product or service.
`As such, we are persuaded by Petiti

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