Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: December 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00088
`Patent 7,752,535 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, MICHAEL W. KIM, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Instituting Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: December 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PLAID TECHNOLOGIES, INC.,
`Petitioner,
`
`
`
`v.
`
`YODLEE, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00088
`Patent 7,752,535 B2
`_______________
`
`
`
`Before KEVIN F. TURNER, MICHAEL W. KIM, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Instituting Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`CBM2016-00088
`Patent 7,752,535 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Plaid Technologies, Inc. (“Petitioner”) filed a Petition to institute a
`covered business method patent review of claims 1–10 of U.S. Patent No.
`7,752,535 B2 (Ex. 1001, “the ’535 patent”). Paper 2 (“Pet.”). Yodlee, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`For the reasons given below, we determine that Petitioner, on this record,
`has shown that it is more likely than not that at least one of the challenged
`claims is unpatentable. Accordingly, we institute a covered business method
`patent review of claims 1–10 of the ’535 patent.
`
`Related Proceedings
`B.
`Petitioner and Patent Owner identify the following district court
`proceeding concerning the ’535 patent: Yodlee, Inc. v. Plaid Technologies,
`Inc., No. 14-cv-01445 (D. Del.). Pet. 2; Paper 5, 1. Petitioner also identifies
`the following proceedings before the Patent Trial and Appeal Board
`(“Board”) involving other patents-in-suit from the same district court
`proceeding: (1) Case CBM2016-00037 (U.S. Patent No. 6,199,077 B1), (2)
`Case IPR2016-00275 (U.S. Patent No. 6,199,077 B1), (3) Case CBM2016-
`00070 (U.S. Patent No.7,263,548 B2), (4) Case CBM2016-00082
`(U.S. Patent No. 7,424,520 B2), (5) Case CBM2016-00056 (U.S. Patent No.
`6,510,451 B2), (6) Case CBM2016-00045 (U.S. Patent No. 6,317,783 B1),
`and (7) Case IPR2016-00273 (U.S. Patent No. 6,317,783 B1). Pet. 3.
`Furthermore, we identify the following proceeding before the Board
`involving another patent-in-suit, which is a continuation of the ’535 patent:
`Case CBM2016-00089 (U.S. Patent No. 8,266,515 B2).
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`
`Standing
`C.
`Section 18 of the American Invents Act governs the transitional
`program for covered business method patent reviews. Leahy-Smith America
`Invents Act (“AIA”) § 18, Pub. L. No. 112-29, 125 Stat. 284, 329–31
`(2011); see also 37 C.F.R. §§ 42.300–304 (2016) (setting forth the rules
`governing the transitional program for covered business method patents).
`Section 18(a)(1)(B) of the AIA limits such reviews to persons, or their
`privies, that have been sued or charged with infringement of a covered
`business method patent. See also 37 C.F.R. § 42.302 (setting forth who may
`petition for a covered business method patent review). Petitioner asserts
`that, because it has been sued for infringement of the ’535 patent, it has
`standing to file its Petition. Pet. 14. Based on the record before us, we
`agree.
`
`The ’535 Patent
`D.
`The ’535 patent relates to a system that collects information
`concerning transactions for a particular person or enterprise and categorizes
`individual ones of the collected transactions according to at least part of the
`transaction description. Ex. 1001, Abstract. Figure 1 of the ’535 patent is
`reproduced below.
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`Figure 1 is an overview of the system. Ex. 1001, 3:60–62. The system
`includes ISP 15 which is connected to Internet 13 and to Internet appliance
`17. Ex. 1001, 4:60–5:3. The system further includes portal software 35.
`Ex. 1001, 10:30–32. The main purpose of portal software 35 is to provide
`an interactive application that lists all of the subscriber’s WEB sites in the
`form of hyperlinks. Ex. 1001, 10:38–41. Portal software 35 may also
`include agent 39 (as shown in Figure 2) which can be programmed to
`perform certain tasks such as obtaining account information, executing
`simple transactions, and returning user-requested notification information.
`Ex. 1001, 10:51–54.
`
`The ’535 patent specifically describes the categorization of collected
`and summarized information. Ex. 1001, 17:59–20:5. A key ingredient of
`the network categorization system is the ability to grow and improve.
`Ex. 1001, 19:43–44. If one client enters a descriptor as a particular category
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`of transaction, the system may be adapted to treat all such descriptors in that
`category, until reported errors cause re-consideration. Ex. 1001, 19:49–52.
`The system may use a democratic approach, such that identifiers are
`included based on a majority use among clients. Ex. 1001, 19:44–49. The
`system may also use have probabilistic algorithms that are capable of
`passing identifiers into the system that meet a probability threshold, or of
`removing identifiers that fail the threshold. Ex. 1001, 19:52–55.
`
`Illustrative Claim
`E.
`Petitioner challenges claims 1–10 of the ’535 patent. Pet. 21. Claims
`1 and 6 are the only independent claims. Independent claim 6 is illustrative
`of the challenged claims and is reproduced below:
`6.
`In a computer system, a method for sorting and reporting
`transaction information using proprietary software tangibly
`embodied on a computer-readable medium, comprising:
`(a) automatically navigating to and retrieving transaction
`information associated with a specific person or enterprise from
`third-party
`Internet-connected web
`sites and gathering
`information concerning transactions by a collection function of
`the proprietary software said information including at least date,
`description, and amount of the transactions;
`(b) requesting a summary of transactions by a client via an
`input function of the proprietary software over a specific range
`of dates, according to a definition of purpose of transactions
`including at least expenditure types;
`the collected
`(c) categorizing
`individual ones of
`transactions according to at least part of the transaction
`description for determining the purpose, via a processing
`function of the proprietary software using pre-stored description
`characteristics associated with the purpose;
`(d) summarizing, by a compilation function of the
`proprietary software, the transactions that meet the purpose and
`fall into the specific range of dates;
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`(e) reporting the summary of transactions to the particular
`person or enterprise by a reporting function;
`(f) storing past transaction history associated with the
`particular person or enterprise,
`wherein the past transaction history is used to predict
`future transaction statistical information, and
`wherein a probability algorithm is used in developing the
`description characteristics, and wherein
`the description
`characteristics are periodically amended according to further
`information that is collected and processed.
`Ex. 1001, 21:1–22:10.
`
`Covered Business Method Patent
`F.
`Section 18(d)(1) of the AIA expressly 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, except that
`the term does not include patents for technological inventions.” See also
`37 C.F.R. § 42.301(a) (stating the same). To determine whether a patent is a
`covered business method patent, the focus is on the claims. See 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”); Unwired Planet,
`LLC v. Google, Inc., No. 2015-1812, 2016 WL 6832978, at *5 (Fed. Cir.
`Nov. 21, 2016) (“CBM patents are limited to those with claims that are
`directed to methods and apparatuses of particular types and with particular
`uses ‘in the practice, administration, or management of a financial product or
`service.’”) (emphasis added). Based on this record and for the reasons
`discussed below, we agree with Petitioner that the ’535 patent is a Covered
`Business Method patent eligible for review.
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`Financial Product or Service
`1.
`Petitioner contends that all claims of the ’535 patent meet the
`
`financial product or service requirement. Pet. 16–17 (citing Exs. 1001,
`1002). In particular, Petitioner argues that independent claims 1 and 6 and
`dependent claims 2 and 7 recite financial elements (Pet. 16 (citing Ex.
`1001); Ex. 1002 ¶ 32 (Declaration of Todd Mowry)), and Petitioner further
`asserts that the specification makes clear that the “transactions” recited in the
`claims are financial in nature (Pet. 16–17 (citing Ex. 1001, 18:54–65, 19:24–
`33, 19:56–62, 20:8–12); Ex. 1002 ¶ 33). Patent Owner does not dispute this
`assertion. See generally Prelim. Resp. 4–15. On this record, we agree with
`Petitioner.
`Each of independent claims 1 and 6 recite (emphasis added) an
`“amount of the transactions” and “expenditure types.” Similarly, dependent
`claims 2 and 7 recite (emphasis added) a “total transaction expenditure
`amount.” Expenditures and the amount of a transaction directly relate to
`monetary matters and movements of money between two parties and are,
`therefore, financial activities.
`Absent any argument or evidence to the contrary, on this record, we
`are persuaded that Petitioner has shown sufficiently that the claims of the
`’535 patent satisfy the “financial product or service” component of the
`definition for a covered business method patent set forth in § 18(d)(1) of the
`AIA.
`
`Technological Invention
`2.
`As set forth above, the definition for “covered business method
`
`patent” does not include patents for “technological inventions.” AIA
`§ 18(d)(1); see also 37 C.F.R. § 42.301(a) (stating the same). To determine
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`whether a patent falls within this exception, our rules prescribe a two-factor
`approach whereby we consider “whether the claimed subject matter as a
`whole [(1)] recites a technological feature that is novel and unobvious over
`the prior art; and [(2)] solves a technical problem using a technical solution.”
`37 C.F.R. § 42.301(b). Further, the following claim drafting techniques
`would not typically render a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg.
`48,756, 48,764 (Aug. 14, 2012).
`Pursuant to the two-factor framework, Petitioner argues that the
`claims of the ’535 patent do not meet either factor. Pet. 18–21 (citing
`Exs. 1001, 1002). Patent Owner disagrees for several reasons. Prelim.
`Resp. 5–15 (citing Exs. 1001, 1019, 1038, 2001). We have considered
`Patent Owner’s arguments, but we are persuaded, on this record, that
`Petitioner has shown sufficiently that the claimed invention of the ’535
`patent is not a technological invention.
`
`In regard to the first factor, which considers whether the claimed
`subject matter as a whole recites a technological feature that is novel and
`unobvious over the prior art, Petitioner argues that the claims recite only
`generic computer components that were well known in the art as of the ’535
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`patent’s December 1, 2005 priority date. Pet. 18–19 (citing Ex. 1001, 5:11–
`12, 12:44–46; Ex. 1002 ¶¶ 36–37). Patent Owner challenges this assertion
`as being unsupported and conclusory. Prelim. Resp. 13–14. In particular,
`Patent Owner argues that neither Petitioner nor Dr. Mowry points to any
`evidence to support the assertion that the claimed technologies were
`indisputably well known. Prelim. Resp. 13–14.
`Patent Owner’s argument is not persuasive. At the outset we note that
`Petitioner is not arguing that the claimed computer capabilities were well
`known, but rather that the recited computer hardware components were well
`known. See Pet. 18 (“[T]he claimed features—e.g., a ‘system tangibly
`embodied on a computer-readable medium’ (claims 1 through 5) and a
`generic ‘computer system’ (claims 6 through 10)—were indisputably well
`known.”). To support this assertion, Petitioner points to certain passages
`from the specification of the ’535 patent that suggest the use of conventional
`computer hardware. See Pet. 19 (citing Ex. 1001, 12:44–46 (“Such
`appliances may include but are not limited to palm top PC’s, lap top PC’s,
`cellular telephones, WEB TV’s, and so on.”), 5:11–12 (“repository 29 . . .
`may be any convenient form of mass storage”). More importantly, although
`the claims recite various computer capabilities, which may be novel and
`unobvious, the claims fail to provide how these capabilities are achieved,
`apart from using generic computer hardware components. We, therefore, are
`persuaded, on this record, that the claims merely recite the use of known
`prior art technology to accomplish the claimed capabilities. See Trial
`Practice Guide, 77 Fed. Reg. at 48,764; see also Versata Dev. Group, Inc. v.
`SAP America, Inc., 793 F.3d 1306, 1327 (Fed. Cir. 2015) (“[E]ven if the
`invention required the use of a computer, the claim did not constitute a
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`technological invention.”). Accordingly, Petitioner has shown sufficiently
`that the claims of the ’535 patent, as a whole, do not recite a technological
`feature that is novel and non-obvious.
`Turning to the second factor for determining whether a patent is for a
`“technological invention,” we recognize that Patent Owner presents
`arguments directed to whether the claimed invention solves a technical
`problem using a technical solution. Prelim. Resp. 5–15. We, however, need
`only assess whether one of the factors set forth in 37 C.F.R. § 42.301(b) is
`deficient to determine whether independent claims 1 and 6 are not for a
`“technological invention.” See Apple Inc. v. Ameranth, Inc., , No. 2015-
`1703, -1704, slip op. at 16 (Fed. Cir. Nov. 29, 2016) (“We need not address
`this argument regarding whether the first prong of 37 C.F.R. § 42.301(b)
`was met, as we affirm the Board’s determination on the second prong of the
`regulation—that the claimed subject matter as a whole does not solve a
`technical problem using a technical solution”). As set forth above, based on
`the current record, we are persuaded by Petitioner’s explanation as to why
`the claimed subject matter, as a whole, does not recite a technological
`feature that is novel and non-obvious over the prior art and, therefore, we are
`satisfied that Petitioner has met its burden of demonstrating that the ’535
`patent is not for a “technological invention.”
`Nevertheless, given that Patent Owner directs the majority of its
`arguments regarding the “technological invention” exception to the second
`factor, we determine that it would be prudent at this stage of the proceeding
`to impart that Patent Owner’s arguments regarding the second factor are not
`persuasive. Patent Owner argues that the claimed subject matter solves
`various technical problems with technical solutions. Prelim. Resp. 5–15. To
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`the extent there may be technical aspects associated with the alleged
`technical problems and technical solutions, the claims, however, do not
`recite these technical aspects. See, e.g., Transitional Program for Covered
`Business Method Patents—Definitions of Covered Business Method Patent
`and Technological Invention, 77 Fed. Reg. 48,734, 48,736, Response to
`Comment 8 (Aug. 14, 2012) (For purposes of determining whether a patent
`is eligible for covered business method patent review, our focus is on the
`claims.).
`For example, Patent Owner argues that the ’535 patent solves the
`technical problem of categorizing information collected from web sites by
`providing a processing function that categorizes the gathered information by
`utilizing pre-stored description characteristics. Prelim. Resp. 8–9 (citing
`Ex. 1001, 2:49–51, 2:59–61, 19:4–33). Patent Owner also describes specific
`features of the categorization system, namely the ability to grow and
`improve by updating the description characteristics when one user enters a
`descriptor for a particular category of transaction, the use of category
`identifiers based on a majority use among clients or based on whether the
`identifiers meet a probability threshold, and the use of probabilistic
`algorithms to amend the identifiers. Prelim. Resp. 9–10 (citing Ex. 1001,
`19:43–54). Although there may be technical aspects associated with
`categorizing information collected from third-party Internet-connected web
`sites, such technical features are not recited in the claims. Each of
`independent claims 1 and 6 recites a general “processing function” that
`categorizes the collected transactions according to certain description
`characteristics determined by a probability algorithm and periodically
`amended based on further information. The claims, however, do not define
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`sufficient technical details of the probability algorithm, nor do they contain
`any technical explanation as to how the description characteristics are
`amended based on further information. Absent such technical details, the
`claimed categorization system may be an improved categorization system,
`but is nonetheless undifferentiated sufficiently from generic categorization.
`As such, on this record, we are unpersuaded that the claims embody a
`technical solution to a technical problem.
`3.
`Summary
`Because we have determined that the claims of the ’535 patent satisfy
`the “financial product or service” component of the definition for a covered
`business method patent, and that none of the claims of the ’535 patent are
`directed to a “technological invention,” we are persuaded that the ’535
`patent is a covered business method patent eligible for review.
`
`Asserted Ground of Unpatentability
`G.
`Petitioner challenges claims 1–10 on the following grounds:
`
`Reference(s)
`
`
`Schutzer1, Knoblock2, and
`Lazarus3
`
`
`
`Basis
`§ 101
`§ 103
`
`Claims Challenged
`1–10
`1, 5, 6, and 10
`
`
`
`1 U.S. Patent No. 5,920,848, issued July 6, 1999 (Ex. 1003, “Schutzer”)
`2 Craig A. Knoblock et al., Modeling Web Sources for Information
`Integration (AAAI-98) 211–18 (1998) (Ex. 1004, “Knoblock”)
`3 U.S. Patent No. 6,430,539 B1, issued Aug. 6, 2002 (Ex. 1005, “Lazarus”)
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`II. ANALYSIS
`
`Claim Construction
`A.
`As a step in our analysis for determining whether to institute a review,
`we determine the meaning of the claims for purposes of this Decision. In a
`covered business method review, a claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears. 37 C.F.R. § 42.300(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that the
`Office’s claim construction standard “represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the . . . Office”). Under the
`broadest reasonable construction standard, claim terms are generally 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). Only terms
`which are in controversy need to be construed, and then only to the extent
`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`To assist us in evaluating the parties’ contentions concerning the
`ground challenging claims 1, 5, 6, and 10 as unpatentable under 35 U.S.C.
`§ 103(a), we preliminarily construe a single term recited in each of
`independent claims 1 and 6. For the purposes of this Decision, only this
`limitation requires explicit construction.
`“collection function”
`The first limitation of independent claim 1 recites “a collection
`function automatically navigating to and retrieving transaction information
`associated with a specific person or enterprise from third-party Internet-
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`connected web sites and gathering information concerning transactions,” and
`the first limitation of independent claim 6 similarly recites “automatically
`navigating to and retrieving transaction information associated with a
`specific person or enterprise from third-party Internet-connected web sites
`and gathering information concerning transactions by a collection function
`of the proprietary software.” Petitioner proposes to construe these
`limitations as
`[s]oftware that collects a natural person’s transaction information
`from two or more websites, where for each website it parses a
`web page rendered by a browser after the web page is retrieved
`from a website, wherein each website includes content to be
`rendered by a web browser to generate human-readable web
`pages served by a Web server in a World Wide Web format such
`as HTML.
`Pet. 24–25 (citing Ex. 1002 ¶ 71). Patent Owner adopts the District Court’s
`construction of “collection function” from the related civil litigation, namely
`a “software component that uses a site-specific script and/or site-specific
`data to extract data values from an Internet site based on the site’s logic and
`structure.” Prelim. Resp. 3–4, 11 (citing Ex. 1018, 13–16, 36–37). After
`considering all of the evidence and assertions on this record, we largely
`agree with Patent Owner’s construction.
`Each limitation recites “a collection function” for performing two
`functions, namely “automatically navigating to and retrieving transaction
`information associated with a specific person or enterprise from third-party
`Internet-connected web sites” and “gathering information concerning
`transactions.” The specification of the ’535 patent does not provide a
`description of the “collection function” apart from references to the claimed
`invention, so we consider whether the specification provides guidance
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`regarding the two functions associated with the claimed “collection
`function.”
`The specification discloses a software agent, i.e., gatherer 67, which
`includes a navigation layer 73 for performing “external site navigation and
`data gathering for gatherer 67.” Ex. 1001, 11:4–9, 12:56–58, Fig. 4.
`Navigation layer 73 includes a communication interface/browser control
`module 85 and a parsing engine 87. Ex. 1001, 12:56–13:6, Fig. 4.
`Communication interface/browser control module 85 functions as a WEB
`browser to access WEB sites containing WEB data (Ex. 1001, 12:58–60),
`and parsing engine 87 parses individual WEB sites according to a template
`created via scripting module 79 (Ex. 1001, 12:63–65). This template, i.e.
`script, instructs control 85 and parsing engine 87 to navigate to and obtain
`specific data from WEB sites. Ex. 1001, 12:67–14:9. Thus, based on the
`individual template for a web site, control module 85 and parsing engine 87
`are able to perform the functions of the claimed “collection function.”
`Although Petitioner’s construction appears to be based on the
`description of gatherer 67, Petitioner’s construction ignores the individual
`template created by scripting module 79, which, as evidenced by the
`specification, enables control module 85 and parsing agent 87 to perform the
`claimed functions of automatically navigating to web sites and retrieving
`user-specific transaction information therefrom (see Ex. 1001, 12:67–14:9).
`Also, Petitioner’s construction unnecessarily takes into account the
`summarization module 91 including an HTML renderer, which aside from
`being a part of gatherer 67, is not recited in or required to perform the
`claimed functions. Furthermore, Petitioner’s construction limits the
`transaction information to a natural person, which improperly ignores the
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`term “enterprise.” See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
`(Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect
`to all terms in the claim.”).
`On the other hand, Patent Owner’s construction takes into account the
`individual script template and is, therefore, more consistent with the
`specification’s description of the functions associated with the claimed
`“collection function.” Patent Owner’s construction also does not improperly
`limit the transaction information to a natural person. Finally, we note that
`each of independent claims 1 and 6 recites expressly that information is
`retrieved from “web sites” (plural). See Ex. 1001 (emphasis added); Ex.
`1018, 36. As such, at this stage in the proceeding, we largely adopt Patent
`Owner’s construction of “collection function” as “software component that
`uses a site-specific script and/or site-specific data to extract data values from
`Internet sites based on the sites’ logic and structure.”
`
`Claims 1–10 as Failing to Recite Statutory Subject Matter
`B.
`Petitioner contends that claims 1–10 fail to recite statutory subject
`matter under 35 U.S.C. § 101. Pet. 26–47 (citing Exs. 1001, 1002, 1019).
`Patent Owner disagrees. Prelim. Resp. 15–28 (citing Exs. 1001, 1005,
`1019). Claims 1 and 6 are independent.
`1.
`Relevant Law
`An invention is patent-eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
`Supreme Court, however, has long interpreted § 101 to include implicit
`exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
`not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
`2347, 2354 (2014).
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`
`In determining whether a claim falls within the excluded category of
`abstract ideas, we are guided in our analysis by the Supreme Court’s two-
`step framework, described in Mayo and Alice. Alice, 134 S. Ct. at 2355
`(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
`1289, 1296–97 (2012)). In accordance with that framework, we first
`determine whether the claim is “directed to” a patent-ineligible abstract idea.
`See Alice, 134 S. Ct. at 2356 (“On their face, the claims before us are drawn
`to the concept of intermediated settlement, i.e., the use of a third party to
`mitigate settlement risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010)
`(“Claims 1 and 4 in petitioners’ application explain the basic concept of
`hedging, or protecting against risk.”); Diamond v. Diehr, 450 U.S. 175, 184
`(1981) (“Analyzing respondents’ claims according to the above statements
`from our cases, we think that a physical and chemical process for molding
`precision synthetic rubber products falls within the § 101 categories of
`possibly patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594–95
`(1978) (“Respondent’s application simply provides a new and presumably
`better method for calculating alarm limit values.”); Gottschalk v. Benson,
`409 U.S. 63, 64 (1972) (“They claimed a method for converting binary-
`coded decimal (BCD) numerals into pure binary numerals.”).
`The patent-ineligible side of the spectrum includes fundamental
`economic practices (Alice, 134 S. Ct. at 2357; Bilski, 130 S. Ct. at 3231);
`mathematical formulas (Parker, 437 U.S. at 594–95); and basic tools of
`scientific and technological work (Gottschalk, 409 U.S. at 69). On the
`patent-eligible side of the spectrum are physical and chemical processes,
`such as curing rubber (Diamond, 450 U.S. at 184), “tanning, dyeing, making
`waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
`
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`CBM2016-00088
`Patent 7,752,535 B2
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`manufacturing flour (Gottschalk, 409 U.S. at 69 (internal citations omitted)).
`If the claim is “directed to” a patent-ineligible abstract idea, we then
`consider the elements of the claim—both individually and as an ordered
`combination—to assess whether the additional elements transform the nature
`of the claim into a patent-eligible application of the abstract idea. Alice, 134
`S. Ct. at 2355. This is a search for an “inventive concept”—an element or
`combination of elements sufficient to ensure that the claim amounts to
`“significantly more” than the abstract idea itself. Alice, 134 S. Ct. at 2355.
`2. Whether Claims 1–10 Recite an Abstract Idea
`Petitioner asserts that the claims of the ’535 patent are drawn to the
`abstract idea of “categorizing and summarizing past transactions, and using
`past transaction information to predict and develop future transaction
`information.” Pet. 28–38 (citing Ex. 1002 ¶¶ 76–84; Ex. 1019). Patent
`Owner disagrees for several reasons. Prelim. Resp. 16–23 (citing Exs. 1001,
`1019). Based on the record before us, and for the reasons set forth below,
`we are persuaded that the claims are directed to the abstract idea of
`“categorizing and summarizing past transactions, and using past transaction
`information to predict and develop future transaction information.”
`We begin our analysis of what a claim is “directed to” by evaluating
`the express claim language of independent claims 1 and 6, and we agree
`with Petitioner that the express language of each of independent claims 1
`and 6 supports the determination that the claims are directed to “categorizing
`and summarizing past transactions, and using past transaction information to
`predict and develop future transaction information.” Pet. 28–29, 36. In
`particular, independent claims 1 and 6 recite navigating to locations to
`retrieve and gather specific transaction information, categorizing individual
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`CBM2016-00088
`Patent 7,752,535 B2
`
`ones of the collected transactions using pre-stored description
`characteristics, summarizing the transactions, reporting and storing the
`summarized transactions, and using the past transaction information to
`predict future transaction information. Notably, each of independent claims
`1 and 6 recites a probability algorithm and various computer technologies,
`such as a computer-readable medium, software, and web sites, but we do not
`discern that these features alter the fact that independent claims 1 and 6 are
`fundamentally directed to “categorizing and summarizing past transactions,
`and using past transaction information to predict and develop future
`transaction information.” For example, we are unclear as to how a
`prediction for future transaction information would be made without some
`sort of probability algorithm.
`The specification of the ’535 patent supports further our
`determination, and in particular, we agree with Petitioner that the
`specification does not limit the claims to, for example, a particular type of
`hardware, web site-specific software, type of information that is gathered,
`the source of information that is gathered, the technology used to the gather
`the information, the categories in which the information is stored, or how the
`information is delivered to the user. Pet. 33–34 (citing Ex. 1001, 12:44–46,
`5:11–12, 8:56–62, 14:2–3, 20:8–11, 12:65–67, 18:12–13, 8:27–29). Thus,
`considering the language of the claims of the ’535 patent and the
`specification, we agree with Petitioner, on this record, that the claims are
`directed to “categorizing and summarizing past transactions, and using past
`transaction information to predict and develop future transaction
`information.” Furthermore, Petitioner provides analysis and evidence, with
`which we agree, that “categorizing and summarizing past transactions, and
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`CBM2016-00088
`Patent 7,752,535 B2
`
`using past transaction information to predict and develop future transaction
`information” is an abstract idea. Pet. 30–32.
`Patent Owner counters that the ’535 pat
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