UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO,
`and FEDERAL RESERVE BANK OF ST. LOUIS,
`
`Petitioners,
`
`v.
`
`BOZEMAN FINANCIAL LLC,
`
`Patent Owner.
`
`
`
`Case No.: CBM2017-00036
`U.S. Patent No. 8,768,840
`
`
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO,
`and FEDERAL RESERVE BANK OF ST. LOUIS,
`
`Petitioners,
`
`v.
`
`BOZEMAN FINANCIAL LLC,
`
`Patent Owner.
`
`
`
`Case No.: CBM2017-00036
`U.S. Patent No. 8,768,840
`
`
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. ARGUMENT AND CITATION OF AUTHORITY ...................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`1.
`
`2.
`
`Bozeman’s Motion Should Be Denied Because Bozeman Has Failed
`To Identify In the Original Patent Disclosure Support For The
`Proposed Amended Claims. .................................................................. 4
`
`Bozeman’s Motion Should Be Denied Because The Amended Claims
`Improperly Add New Matter. ................................................................ 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`“Dynamically Sending … A Notification” ................................. 6
`
`“In Response To Said Notification, Either Dynamically Or
`Selectively … Permitting Or Disallowing Said Transaction To
`Proceed” ...................................................................................... 6
`
`“Dynamic Electronic Notification” / “Dynamic Notification” ... 7
`
`“Issue File Format” and “Positive Pay File Format” .................. 8
`
`Bozeman’s Motion Should Be Denied Because The Amended Claims
`Do Not Address The Section 101 Grounds Raised In The Trial. ......... 9
`
`Bozeman’s Motion Should Be Denied Because The Amended Claims
`Are Invalid Under Section 101............................................................10
`
`Step 1: The Amended Claims Are Directed To The Abstract Idea Of
`Collecting And Analyzing Information And Presenting The Results.11
`
`Step 2: The Claims Do Not Contain An Inventive Concept. ..............18
`
`III. CONCLUSION ..............................................................................................25
`
`
`
`
`
`i
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner, Bozeman Financial LLC (“Bozeman”), has filed a Contingent
`
`Motion to Amend (the “Motion,” Paper 25) seeking to substitute amended claims
`
`21, 28, and 35 for original independent claims 1, 8 and 15, if the original claims
`
`are found unpatentable. Bozeman’s Motion should be denied on several
`
`procedural and substantive grounds.
`
`First, the rules explicitly require that Bozeman identify in its Motion support
`
`in the original disclosure for each amended claim. See 37 C.F.R. § 42.221(b)(1).
`
`Bozeman has failed to satisfy this basic procedural requirement, however, by
`
`referencing only the ‘840 Patent disclosure, as issued.
`
`Second, Bozeman must demonstrate that its proposed amendments do not
`
`introduce new matter. See 35 U.S.C. § 326(d)(3). While Bozeman cites various
`
`passages from the ‘840 Patent disclosure, none of those passages supports
`
`Bozeman’s proposed claim amendments. Accordingly, Bozeman has improperly
`
`introduced new matter into its amended claims.
`
`Third, Bozeman must demonstrate that its proposed amendments respond to
`
`the unpatentability grounds involved in the trial. See 37 C.F.R. § 42.221(a)(2)(i);
`
`Paper 26 at 3. Bozeman’s Motion does not address this requirement. Instead,
`
`Bozeman argues only that it has amended the claims “to expressly identify the
`
`novel and non-obvious aspects of the Universal Positive Pay Database (‘UPPD’)
`
`
`
`1
`
`
`
`… as well as [to] further characterize the various file formats (i.e. Issue File and
`
`Positive Pay File Formats) which coincide with each other in order to verify the
`
`parameters of the financial transactions being cleared.” Mot. at 2. This CBM
`
`proceeding does not involve issues relating to novelty or non-obviousness,
`
`however. Bozeman has failed to address how the proposed amended claims
`
`respond to the Section 101 issues raised in this proceeding.
`
`Finally, the proposed amended claims are unpatentable under Section 101.
`
`Like the original claims, the amended claims are directed to the abstract idea of
`
`financial transaction fraud or error detection, a fundamental economic practice that
`
`is not patent-eligible under Section 101. Bozeman’s proposed amendments cover
`
`nothing more than the abstract idea of collecting and analyzing electronic financial
`
`information and presenting the results. The claims’ implementation of this abstract
`
`idea on a computer using a “Universal Positive Pay Database” and generically-
`
`described file formats adds nothing of significance that would transform the
`
`abstract idea into patentable subject matter. Rather, these conventional computer
`
`elements are merely used as tools to carry out the abstract process, and are
`
`insufficient to save the claims under Section 101.
`
`For each of these independent reasons, Bozeman’s Motion should be denied.
`
`
`
`2
`
`
`
`II. ARGUMENT AND CITATION OF AUTHORITY
`
`In a CBM proceeding, a patent owner may file one motion to amend
`
`cancelling any challenged claim or proposing a reasonable number of substitute
`
`claims for each challenged claim. See 35 U.S.C. § 326(d)(1); 37 C.F.R §
`
`42.221(a).1 The patent owner “has the burden of proof to establish that it is
`
`entitled to the requested relief.” 37 C.F.R. § 42.20(c). Specifically, the patent
`
`owner must demonstrate that the statutory criteria outlined in Section 326 are met
`
`and that the procedural obligations are satisfied before the amendment is entered.
`
`Cf. Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017) (en banc)
`
`(discussing the related corresponding IPR provisions).
`
`Thus, Bozeman bears the burden of demonstrating that its proposed
`
`amendments: (1) do not enlarge the scope of the patent claims or introduce new
`
`matter, and (2) that they respond to the unpatentability grounds raised in the
`
`petition. See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2); 11/21/2017 PTAB
`
`Guidance on Motions to Amend in view of Aqua Products (“PTAB Guidance”) at
`
`2. Bozeman must also identify “(1) The support in the original disclosure of the
`
`patent for each claim that is added or amended; and (2) The support in an earlier-
`
`filed disclosure for each claim for which benefit of the filing date of the earlier
`
`1
`Bozeman mistakenly brings its motion under 37 C.F.R. § 42.121, the
`
`provisions governing IPR proceedings.
`
`
`
`3
`
`
`
`filed disclosure is sought.” 37 C.F.R. § 42.221(b)(1)-(2). A motion to amend may
`
`be denied where the patent owner fails to satisfy any of these requirements. See
`
`SalesForce.com, Inc. v. Virtualagility, Inc., CBM2013-00024, 2014 WL 4675293,
`
`at *25 (P.T.A.B. Sept. 16, 2014); Smith & Nephew, Inc. v. Convatec Techs., Inc.,
`
`IPR2013-00102, 2014 WL 2466143, at *30-31 (P.T.A.B. May 29, 2014).
`
`Bozeman has full knowledge of these requirements -- the Board reminded
`
`Bozeman of them before Bozeman filed its Motion. See Paper 26 at 3.
`
`“Only once the proposed amended claims are entered … does the question
`
`of burdens of proof or persuasion on propositions of unpatentability come into
`
`play,” with the burden being placed on the petitioner to prove unpatentability by a
`
`preponderance of the evidence. See Aqua Prods., 872 F.3d at 1306.
`
`A. Bozeman’s Motion Should Be Denied Because Bozeman Has
`Failed To Identify In the Original Patent Disclosure Support For
`The Proposed Amended Claims.
`
`Bozeman’s Motion should be denied because it fails to set forth support in
`
`
`
`the original disclosure of the ‘840 Patent for the substitute claims, as required by
`
`37 C.F.R. § 42.221(b)(1). Specifically, Bozeman impermissibly cites to the
`
`specification of the issued ‘840 Patent. A patent owner may not cite to the written
`
`description of an issued patent for support of its substitute claims “unless [the
`
`patent owner] indicates, in its motion, that there was no change to the original
`
`disclosure when the patent issued.” Smith & Nephew, 2014 WL 2466143, at *30
`
`
`
`4
`
`
`
`(quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`
`2010) (en banc)).
`
`Here, Bozeman references column numbers of the issued patent for support,
`
`yet fails to confirm that there was no change to the original disclosure when the
`
`patent issued. See Mot. at 12-13. Bozeman also has made no attempt to provide
`
`written description support for the entire proposed substitute claim, as opposed to
`
`an individual feature. See Apple Inc. v. Personalized Media Commc’ns, LLC,
`
`IPR2016-00755, 2017 WL 4175018, at *49 (P.T.A.B. Sept. 19, 2017) (“The
`
`motion must account for the claimed subject matter as a whole, i.e., the entire
`
`proposed substitute claim, when showing where there is sufficient written
`
`description support for each claim.”). Accordingly, Bozeman has failed to
`
`demonstrate proper written description support for the proposed substitute claims,
`
`and its Motion should be denied on at least this ground. See Smith & Nephew,
`
`2014 WL 2466143, at *30 (“[Patent owner] did not state where support could be
`
`found in the disclosure as originally filed for the substitute claims, nor did [patent
`
`owner] state in its Motion that the specification of the issued patent was identical
`
`to the specification originally filed…. Patent owner’s Motion to Amend, therefore,
`
`fails on that point alone.”).
`
`B.
`
`Bozeman’s Motion Should Be Denied Because The Amended
`Claims Improperly Add New Matter.
`
`5
`
`
`
`
`
`
`
`Bozeman’s Motion should be denied because
`
`the amended claims
`
`improperly add new matter with respect to at least the following claim limitations
`
`in violation of 35 U.S.C. § 326(d)(3) and 37 C.F.R. § 42.221(a)(2)(ii).
`
`1.
`
`“Dynamically Sending … A Notification”
`
`Amended claim 21 requires the step of dynamically sending a notification to
`
`a payee bank participant via at least one of a point-of-sale terminal and a portable
`
`electronic device. See Mot. at 5. Bozeman contends that Cols. 5:29-6:62 and
`
`22:61-23:4 support these amendments. See id. at 13. The cited portions of the
`
`specification do not disclose dynamically sending a notification, however, much
`
`less dynamically sending one via a point-of-sale terminal or portable electronic
`
`device. In fact, “dynamic” appears only once in the entire specification – but only
`
`in the context of “dynamic RAM,” which is unrelated to system notifications. See
`
`Ex. 1001 at 9:16-17. Accordingly, Bozeman has not demonstrated that claim 21
`
`does not add new matter, and its Motion should be denied.
`
`2.
`
`“In Response To Said Notification, Either Dynamically Or
`Selectively … Permitting Or Disallowing Said Transaction
`To Proceed”
`
`Claims 21, 28, and 35 require the step of in response to said notification,
`
`
`
`either dynamically or selectively via said computerized system permitting or
`
`
`
`6
`
`
`
`disallowing said transaction to proceed through said payment clearance process.2
`
`See Mot. at 5, 8, 10. Bozeman contends that Cols. 5:29-6:62 and 22:61-23:4
`
`support the proposed amendments. See id. at 13.
`
`As with the previous amendment, Bozeman has failed to explain exactly
`
`how the cited sections support the amended claim. As an initial matter, it is
`
`unclear what the phrase “dynamically or selectively” means, and Bozeman does
`
`not offer any construction for this phrase. Moreover, “dynamic” appears only once
`
`in an unrelated passage describing “dynamic RAM.” See Ex. 1001 at 9:16-17.
`
`“Selectively” or “selective” does not appear anywhere in the specification.
`
`Bozeman’s cited portions also do not discuss or disclose the idea of permitting or
`
`disallowing a transaction to proceed in response to a notification. Accordingly,
`
`Bozeman has failed to demonstrate that amended claims 21, 28, and 35 do not add
`
`new matter, and its Motion should be denied.
`
`3.
`
`“Dynamic Electronic Notification” / “Dynamic Notification”
`
`Claims 28 and 35 require a dynamic notification. See Mot. at 8, 10.
`
`
`
`
`Bozeman contends that Cols. 5:29-6:62 and 22:61-23:4 support the proposed
`
`amendments. See id. at 13. As discussed above, Bozeman’s referenced sections
`
`do not disclose a dynamic notification. “Dynamic” appears only once in the
`
`2
`Notably, “said payment clearance process” recited in claim 28 lacks proper
`
`antecedent basis under 35 U.S.C. § 112.
`
`
`
`7
`
`
`
`specification in the context of unrelated “dynamic RAM.” See Ex. 1001 at 9:16-
`
`17. Accordingly, Bozeman has failed to demonstrate that claims 28 and 35 do not
`
`introduce new matter, and its Motion should be denied.
`
`4.
`
`“Issue File Format” and “Positive Pay File Format”
`
`Claims 21, 28, and 35 require that records be received in a Positive Pay File
`
`Format or in a file format coinciding with said Issue File Format, or stored in an
`
`Issue File Format which is converted from and coincides with said Positive Pay
`
`File Format. See Mot. at 4, 7, 9-10. Bozeman contends that Cols. 5:29-6:62 and
`
`22:61-23:4 support the proposed amendments. See id. at 13.
`
`This is false. While a portion of the cited passage mentions an “Issue File,”
`
`it does not reference an “Issue File Format” or describe any file format at all. The
`
`cited passage also never mentions a “Positive Pay File” or “Positive Pay File
`
`Format.” Bozeman does not offer any construction for these terms or otherwise
`
`explain how one skilled in the art would understand their meaning in the context of
`
`the ‘840 Patent.
`
`Though portions of the specification not cited by Bozeman refer to a
`
`Positive Pay file format and an Issue File format (Ex. 1001 at 27:32-36), the mere
`
`mention of these formats provides insufficient support for the amendments as a
`
`whole. At most, the specification discloses these formats by name only. It does
`
`not describe them with any degree of specificity that would enable one of ordinary
`
`
`
`8
`
`
`
`skill to identify the claimed formats or distinguish them from any other format.
`
`Moreover, the specification does not disclose how the Positive Pay file format and
`
`the Issue File format are used in the context of the alleged invention, and therefore,
`
`it does not provide any support for the newly-added limitations encompassing the
`
`idea of receiving a record in Positive Pay file format or in a format coinciding with
`
`the Issue File format, or storing the record in an Issue File format. Accordingly,
`
`Bozeman has failed to demonstrate that claims 21, 28, and 35 do not add new
`
`matter, and its Motion should be denied.
`
`C. Bozeman’s Motion Should Be Denied Because The Amended
`Claims Do Not Address The Section 101 Grounds Raised In The
`Trial.
`
`A motion to amend may be denied where the amendment does not respond
`
`
`
`to the grounds of unpatentability involved in the trial. See 37 C.F.R. §
`
`42.221(a)(2)(i). Where a CBM petition is instituted upon Section 101 grounds, the
`
`proposed amendments must sufficiently limit the claims to confer patent eligibility.
`
`See Int’l Sec. Exch., LLC v. Chicago Bd. Options Exch., Inc., CBM2013-00051,
`
`2015 WL 930205, at *16 (P.T.A.B. Mar. 2, 2015) (“Patent Owner’s proposed
`
`amendments are not specific and do not tie the claim to a concrete apparatus or
`
`method; rather, the added limitations are generic and insufficient to confer patent
`
`eligibility….”); see also SalesForce.com, Inc. v. Virtualagility, Inc., CBM2013-
`
`00024, 2014 WL 4675293, at *26 (P.T.A.B. Sept. 16, 2014) (“[T]he addition of a
`
`
`
`9
`
`
`
`limitation regarding generic computer devices does not limit the claims sufficiently
`
`or add concrete ties to make the claims less abstract.”).
`
`Bozeman’s Motion fails to address how the proposed amendments respond
`
`to the Section 101 issues raised in this proceeding. Indeed, Bozeman’s sole
`
`mention of Section 101 is simply to acknowledge that the Board instituted trial on
`
`that basis. See Mot. at 13. Bozeman instead argues that the amended claims are
`
`novel and nonobvious, even though Petitioners have not challenged the claims on
`
`those grounds in this proceeding. See id. at 2 (“Proposed substitute independent
`
`claims 21, 28 and 35 amend the corresponding original independent claims … to
`
`expressly identify the novel and non-obvious aspects of the [claimed invention].”);
`
`see also id. at 12, 15-16. At no point, does Bozeman proffer any argument that the
`
`proposed amendments transform the original claims into a non-abstract patent-
`
`eligible invention, and therefore, its Motion should be denied.
`
`D. Bozeman’s Motion Should Be Denied Because The Amended
`Claims Are Invalid Under Section 101.
`
`The proposed amended claims are invalid under Section 101, in any event,
`
`
`
`because they are directed to unpatentable abstract ideas. The Supreme Court has
`
`articulated a two-step test for distinguishing patents that claim unpatentable
`
`abstract ideas from those that claim patent-eligible applications of those concepts.
`
`See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). First,
`
`the Board must “determine whether the claims at issue are directed to” an abstract
`
`
`
`10
`
`
`
`idea. Id. Second, if the claims are so directed, the Board must then consider “the
`
`elements of each claim both individually and ‘as an ordered combination’ to
`
`determine whether the additional elements ‘transform the nature of the claim’ into
`
`a patent-eligible application.”
`
` Id. (quoting Mayo Collaborative Svcs. v.
`
`Prometheus Labs., Inc., 132 S. Ct. 1289, 1297-98 (2012)).
`
`1.
`
`Step 1: The Amended Claims Are Directed To The Abstract
`Idea Of Collecting And Analyzing Information And
`Presenting The Results.
`
`Like the original claims, the amended claims are directed to the abstract idea
`
`
`
`of financial transaction fraud or error detection, a fundamental economic practice
`
`that is not patent-eligible under Section 101. See Mot. at 4 (“A computer
`
`implemented method for detecting fraud in an electronic financial transaction at
`
`intermediate points during a payment clearing process of said electronic financial
`
`transaction…”); 6 (“A computer implemented method for detecting fraud in an
`
`electronic check clearing process, at intermediate points during said check clearing
`
`process of said electronic financial transaction…”); 9 (“A computer implemented
`
`method for detecting errors in processing electronic financial transactions at
`
`intermediate points during a payment clearing process of said electronic financial
`
`transactions…”). Bozeman’s proposed amendments cover nothing more than the
`
`abstract idea of collecting and analyzing information and presenting the results –
`
`simple steps that can be performed in the human mind or using a pen and paper,
`
`
`
`11
`
`
`
`which are not patent eligible. See CyberSource Corp. v. Retail Decisions, Inc., 654
`
`F.3d 1366, 1372 (Fed. Cir. 2011) (“All of claim 3’s method steps can be performed
`
`in the human mind, or by a human using a pen and paper.”).
`
`For the Board’s convenience, Appendix A herein compares in chart form the
`
`limitations of amended claims 21, 28, and 35. Claim 21 is representative of all
`
`three claims, and recites steps directed to collecting and storing financial
`
`transaction information [collecting information], comparing received financial
`
`transaction information against the stored information [analyzing information],
`
`notifying interested parties of any matches or mismatches between the sets of
`
`financial transaction information [presenting information], and making a decision
`
`whether to proceed based on that determination [analyzing information]. See Mot.
`
`at 4-5. Claims 28 and 35 recite substantively-identical corresponding limitations,
`
`but add the unremarkable step of providing, or providing access to, a “Universal
`
`Positive Pay Database.” See App. A at Claim 28 (“providing access to said
`
`Universal Positive Pay Database”), 35 (“providing at least one computerized
`
`system comprising said Universal Positive Pay Database”). Claim 28 also adds a
`
`network interface to the “Universal Positive Pay Database.” See id. at Claim 28
`
`(“providing a network interface to said Universal Positive Pay Database”).
`
`
`
`Claims directed to collecting, analyzing, and presenting information – like
`
`the original claims and the proposed amended claims – fall squarely “into a
`
`
`
`12
`
`
`
`familiar class of claims” that courts have routinely rejected as being “‘directed to’ a
`
`patent-ineligible concept.” See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
`
`1350, 1353-54 (collecting cases). As the Federal Circuit explained:
`
`Information as such is an intangible…. Accordingly, we have treated
`collecting information, including when limited to particular content
`(which does not change its character as information), as within the
`realm of abstract ideas…. In a similar vein, we have treated analyzing
`information by steps people go through in their minds, or by
`mathematical algorithms, without more, as essentially mental
`processes within the abstract-idea category….
` And we have
`recognized that merely presenting the results of abstract processes of
`collecting and analyzing
`information, without more (such as
`identifying a particular tool for presentation), is abstract as an
`ancillary part of such collection and analysis.
`
`Id. (internal citations omitted) (emphases added). Thus, claims that “are clearly
`
`focused on the combination of those abstract-idea processes ... and not any
`
`particular assertedly inventive technology for performing those functions ... are
`
`directed to an abstract idea.” Id. at 1354; see also FairWarning IP, LLC v. Iatric
`
`Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (deeming abstract claims directed
`
`to the idea of “collecting and analyzing information to detect misuse [of health
`
`information] and notifying a user when misuse is detected”); TDE Petroleum Data
`
`Sols., Inc. v. AKM Enter., Inc., 657 Fed. App’x 991, 992-93 (Fed. Cir. 2016)
`
`(finding abstract claims directed to receiving and validating oilfield sensor data,
`
`
`
`13
`
`
`
`noting that “it is evident from our precedent that claim 1 is the sort of data
`
`gathering and processing claim that is directed to an abstract idea under step one of
`
`the Alice analysis”); Content Extraction and Transmission LLC v. Wells Fargo
`
`Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding the claims abstract
`
`despite a “scanner” recitation, noting that the “concept of data collection,
`
`recognition, and storage is undisputedly well-known”); Google Inc. v. Better Food
`
`Choices LLC, No. CBM2015-00071, 2016 WL 5105752, at *8 (P.T.A.B. Aug. 18,
`
`2016) (finding abstract claims directed to collecting and correlating information,
`
`despite their recitation of “conventional components, such as a barcode reader,
`
`data input devices, a processor, and a nutritional database” that were “merely
`
`invoked as tools used in their ordinary and conventional manner”).
`
`
`
`Bozeman’s new limitation directed to “permitting or disallowing said
`
`transaction to proceed through said payment clearing process” is also abstract, as it
`
`simply recites yet another analysis step. Not surprisingly, Bozeman offers no
`
`explanation as to how this step is inventive. In a patent aimed at detecting and
`
`preventing fraud in financial transactions, permitting or disallowing a transaction-
`
`at-issue to proceed is hardly groundbreaking.
`
`
`
`Bozeman’s other proposed amendments do not save the original claims from
`
`abstractness. Clarifying that the financial transaction is “electronic” is unnecessary,
`
`as the preambles make clear that the claims are directed to computer-implemented
`
`
`
`14
`
`
`
`methods. See Mot. at 4, 6, 9. Bozeman’s introduction of Positive Pay File
`
`formats, Issue File formats, and a conversion between the two is equally non-
`
`substantive. See id. 4, 7, 9-10. Converting electronic data from one format to
`
`another is abstract, and the specification provides no substantive details concerning
`
`these formats that suggest they are inventive. See Digitech Image Techs., LLC v.
`
`Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding that a
`
`process of transforming electronic data into another form is not patent eligible); see
`
`generally Ex. 1001 at 27:27-41. Bozeman’s “automatically determining” and
`
`“dynamically sending” limitations are equally abstract – simply automating steps
`
`or making them more efficient does not make a claim less abstract. See OIP
`
`Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying
`
`on a computer to perform routine tasks more quickly or more accurately is
`
`insufficient to render a claim patent eligible”); Mitchell Intern., Inc. v. Audatex N.
`
`Am., Inc., CBM2014-00171, 2016 WL 1059669, at *9 (P.T.A.B. Feb. 14, 2016)
`
`(“[S]imply utilizing a generic computer system to generate a vehicle valuation
`
`report faster and more efficiently is not enough to transform a patent-ineligible
`
`claim into a patent-eligible invention.”).
`
`Bozeman’s recitation of additional generic computer components, like a
`
`Universal Positive Pay Database, a point-of-sale terminal, and a portable electronic
`
`device, do not make the claims any less abstract. See Carecloud Corp. v.
`
`
`
`15
`
`
`
`AthenaHealth, Inc., CBM2014-00143, 2015 WL 7303671, at *7 (P.T.A.B. Nov. 18,
`
`2015) (“That the claims recite using a database of updated rules, multiple
`
`computers, and a claim edit screen, for scrubbing medical claims before
`
`submission, does not render the claims any less abstract.”) (citing Intellectual
`
`Ventures I LLC v. Capital One Bank (US), 792 F.3d 1363, 1367 (Fed. Cir. 2015)).
`
`“[C]laims do not become patentable under § 101 simply by reciting a computer
`
`element.” SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2013-00042, 2014 WL
`
`1252847, at *13 (P.T.A.B., Feb. 26, 2014).
`
`Indeed, these components are recited at the highest level of generality, with
`
`no mention of how the particular functions are performed. See Alice, 134 S. Ct. at
`
`2358. The claims do not focus on any improvement to these devices, and neither
`
`the claims nor the specification provide any detail concerning any novel structure
`
`or design of these devices. See, e.g., Ex. 1001 at 5:29-34 (“[t]he present invention”
`
`includes a “UPPD database [] configured to store thereon transaction records
`
`associated with financial transactions associated with customers of the UPPD
`
`database”); 9:4-29 (“While the UPPD database 20 is illustrated as a single
`
`database, the UPPD database 20 may be configured as a plurality of separate or
`
`disparate databases interconnected through a network system via any number of
`
`switches, such as a local area network (LAN), a wide area network (WAN), an
`
`intranet, an extranet, the Internet, etc. The UPPD system 10 includes a computer
`
`
`
`16
`
`
`
`useable medium and a computer device with a processor….”); 10:20-25 (“A
`
`‘transaction instrument’ … means … a point of sale (POS) terminal….”); 14:53-54
`
`(“These include computerized devices such as personal computers, portable
`
`laptops and palmtops….”); Ex. 1007 ¶¶ 33-41; see also In re TLI Commc’ns LLC
`
`Patent Litig., 823 F.3d 607, 612-13 (Fed. Cir. 2016); Elec. Power, 830 F.3d at
`
`1354. Instead, the claims merely recite these devices as tools in the performance
`
`of the abstract idea. See Mot. at 4-5, 6-8, 9-10.
`
`While the patent appears to maintain that the claimed system is an advance
`
`over prior art systems because it provides every participant in the payment clearing
`
`process access to the claimed Universal Positive Pay Database, the ‘840 Patent
`
`does not recite or disclose any novel way of providing such “universal” access.
`
`See Ex. 1001 at 5:49-53 (“The customer, payer, payee, payee bank, drawee bank,
`
`and banking institutions intermediate the payee bank and the drawee bank are able
`
`to access the correspondence determination at every point along a financial
`
`transaction clearing process.”) (emphasis added); 13:34-41 (“system may be
`
`accessed by customers, payers, payees, payee banks, drawee banks, and banking
`
`institutions intermediate the payee banks and the drawee banks for issuing and
`
`tracking transaction records associated with financial transactions at every point
`
`along the financial transaction clearing process…”) (emphasis added); 15:42-45
`
`(“This may be done by logging onto a web site associated with the UPPD system
`
`
`
`17
`
`
`
`over the Internet and simply accessing the desired transaction record in the UPPD
`
`database.”)
`
`(emphasis added); 28:24-26
`
`(“[T]he UPPD system can be
`
`accessed….”) (emphasis added).
`
`Like the other claim limitations, this alleged point of novelty is merely
`
`recited and disclosed in the most general, functional terms. Accordingly, the
`
`amended claims are directed to an abstract idea.3
`
`Step 2: The Claims Do Not Contain An Inventive Concept.
`
`2.
`
`When claims are directed to an abstract idea, as they are here, the Board
`
`must “consider the elements of each claim both individually and ‘as an ordered
`
`combination’ to determine whether the additional elements ‘transform the nature of
`
`the claim’ into a patent-eligible application.” TLI Commc’ns, 823 F.3d at 611
`
`(quoting Mayo, 132 S. Ct. at 1298, 1297).
`
`The amended claims do not recite, individually or as an ordered
`
`combination, any additional elements that transform the nature of the claim into a
`
`patent-eligible application. “The Court in Alice made clear that a claim directed to
`
`an abstract idea does not move into section 101 eligibility territory by ‘merely
`
`3
`The dependent claims have not been amended, and are abstract for all the
`
`reasons discussed in Petitioners’ Petition (Paper 1) and deemed persuasive by the
`
`Board in instituting this proceeding. Since they have not been amended,
`
`Petitioners do not address those claims again here.
`
`
`
`18
`
`
`
`requir[ing] generic computer implementation.’” buySAFE, Inc. v. Google, Inc.,
`
`765 F.3d 1350, 1354 (Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2357).
`
`“Rather, a challenged patent claim, properly construed, must incorporate
`
`enough meaningful limitations to ensure that it claims more than just an abstract
`
`idea and is not just a ‘drafting effort designed to monopolize the [abstract idea].’”
`
`CareCloud Corp. v. Athenahealth, Inc., No. CBM2014–00143, 2015 WL 7303671,
`
`at *8 (P.T.A.B. Nov. 18, 2015) (quoting Alice, 134 S. Ct. at 2355 (alteration in
`
`original) (quoting Mayo, 132 S. Ct. at 1297)). “[I]f a patent’s recitation of a
`
`computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on … a
`
`computer,’ that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358-
`
`60 (holding patent-ineligible claims that “amount to nothing significantly more
`
`than an instruction to apply the abstract idea ... using some unspecified, generic
`
`computer” and in which “each step does no more than require a generic computer
`
`to perform generic computer functions” (internal quotation marks, citation
`
`omitted); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
`
`2014) (“Adding routine[,] additional steps ... does not transform an otherwise
`
`abstract idea into patent-eligible subject matter.”); CyberSource, 654 F.3d at 1375
`
`(“[T]he incidental use of a computer to perform the [claimed process] does not
`
`impose a sufficiently meaningful limit on the claim’s scope.”); TLI Commc’ns, 823
`
`F.3d at 614 (“These steps fall squarely within our precedent finding generic
`
`
`
`19
`
`
`
`computer components insufficient to add an inventive concept to an otherwise
`
`abstract idea.”).
`
`The amended claims’ invocation of a computerized system, a Universal
`
`Positive Pay Database, a payer bank, an online account, a Positive Pay File Format,
`
`an Issue File Format, a computer usable medium, a point-of-sale terminal, a
`
`portable electronic device, and a dynamic notification adds no inventive concept to
`
`the generally-claimed abstract idea of collecting and analyzing information and
`
`presenting the results. See Intellectual Ventures I, 792 F.3d at 1368 (“The recited
`
`elements, e.g.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
