Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: July 12, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`XEROX CORP., ACS TRANSPORT SOLUTIONS, INC.,
`XEROX TRANSPORT SOLUTIONS, INC.,
`CONDUENT INC., and
`NEW JERSEY TRANSIT CORP.,
`Petitioner,
`
`v.
`
`BYTEMARK, INC.,
`Patent Owner.
`_______________
`
`Case CBM2018-00018
`Patent 9,239,993 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, BRIAN J. McNAMARA, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: July 12, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`XEROX CORP., ACS TRANSPORT SOLUTIONS, INC.,
`XEROX TRANSPORT SOLUTIONS, INC.,
`CONDUENT INC., and
`NEW JERSEY TRANSIT CORP.,
`Petitioner,
`
`v.
`
`BYTEMARK, INC.,
`Patent Owner.
`_______________
`
`Case CBM2018-00018
`Patent 9,239,993 B2
`_______________
`
`
`
`Before JOSIAH C. COCKS, BRIAN J. McNAMARA, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2018-00018
`Patent 9,239,993 B2
`
`
`I. INTRODUCTION
`A. Background
`Pursuant to 35 U.S.C. § 321 and § 18 of the Leahy-Smith America
`Invents Act, Pub. L. No. 112–29, § 6, 125 Stat. 284, 299–305 (2011)
`(“AIA”), Xerox Corp., ACS Transport Solutions, Inc., Xerox Transport
`Solutions, Inc., Conduent Inc., and New Jersey Transit Corp. (collectively
`“Petitioner”) filed a Petition (Paper 6, “Pet.”) requesting a Covered Business
`Method (“CBM”) patent review of claims 1–17 and 22–24 of U.S. Patent
`No. 9,239,993 B2 (Ex. 1001, “the ’993 patent”). Bytemark, Inc. (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 10 (“Prelim.
`Resp.”).
`Section 18 of the AIA statute1 states that “The Director may institute a
`[CBM proceeding under § 18] only for a patent that is a covered business
`method patent.” AIA § 18(a)(1)(E). 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 . . . . Id.
`§ 18(d)(1); see also 37 C.F.R. § 42.301(a) (repeating the statutory definition
`in the applicable rule). To establish standing to initiate a CBM review,
`“[t]he petitioner must demonstrate that the patent for which review is sought
`is a covered business method patent . . . .” 37 C.F.R. § 42.304(a).
`The Board considers the Petition on behalf of the Director.
`Id. § 42.4(a).
`
`
`1 Section 18 of the AIA, pertaining to CBM review, is not codified.
`References to AIA § 18 in this opinion are to the statutes at large.
`
`2
`
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`CBM2018-00018
`Patent 9,239,993 B2
`
`
`Upon considering the Petition, the Preliminary Response, and the
`evidence filed therewith, we determine that Petitioner has not established
`that the ’993 patent is a “covered business method patent” pursuant to the
`statutory definition in § 18(d)(1) of the AIA. Accordingly, we deny the
`Petition and do not institute CBM review of the challenged claims.
`
`B. Related Matters
`The ’993 patent is currently the subject of a patent infringement
`lawsuit brought by the Patent Owner against Petitioner, captioned Bytemark,
`Inc. v. Xerox Corp., et al., No. 17-cv-01803 (S.D.N.Y) (filed March 10,
`2017) Pet. 1.
`Related U.S. Patent 8,494,967 B2 (“’967 patent’) is asserted in patent
`infringement litigations captioned Bytemark, Inc., v. Masabi Ltd., Case No.
`2:16-cv-00543-JRG-RSP (E.D. Tex.), and Bytemark Inc. v. Unwire APS and
`Unwire US, Inc., Case No. 1:17-cv-10124 (SDNY). Paper 9, 2.2 A petition
`seeking a CBM review of the ’967 patent has been filed by the same
`collective Petitioner as the Petitioner in the proceeding now before us. See
`Xerox Corp et al.v. Bytemark, Inc., CBM2018-00011, Paper 1 (PTAB Jan.
`10, 2018).
`The ’967 patent is the subject of IPR2017-01449. Pet. 2. Oral
`argument in that IPR proceeding is scheduled for August 22, 2018. See
`Masabi Ltd. V. Bytemark, Inc., IPR2017-01449, Paper 21, 5 (PTAB May 21,
`2018).
`
`
`2 The ’993 patent is based on an application that is a continuation-in-part of
`the application that matured into the ’967 patent.
`
`3
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`CBM2018-00018
`Patent 9,239,993 B2
`
`
`II. ANALYSIS
`A. The ’993 Patent
`The ’993 patent discloses a system and method for verifying
`electronic tickets. The disclosed and claimed system and method is
`summarized clearly and concisely in the Abstract of the ’993 patent, which
`we reproduce below.
`This invention discloses a novel system and method for
`distributing electronic ticketing such that the ticket is verified at
`the entrance to venues by means of an animation or other human
`perceptible verifying visual object that is selected by the venue
`for the specific event. This removes the need to use a bar-code
`scanner on an LCD display of a cell phone or other device and
`speeds up the rate at which human ticket takers can verify ticket
`holders. The system also can permit ticket purchase verification
`in the absence of a network connection during verification.
`Ex. 1001, Abstract; see 37 C.F.R. § 1.72(b) (“The purpose of the abstract is
`to enable the Office and the public generally to determine quickly from a
`cursory inspection the nature and gist of the technical disclosure.”).3
`As disclosed in the ’993 patent,
`Conventional electronic tickets display a barcode or QR
`code on a user's telephone, typically a cellphone or other portable
`wireless device with a display screen. The problem with this
`approach is that a barcode scanner has to be used by the ticket
`taker. Barcode scanners are not highly compatible with LCD
`screen displays of barcodes. The amount of time that it takes to
`process an electronic ticket is greater than that of a paper ticket.
`Id. at 2:16–23.
`
`
`3 While the purpose of the Abstract is to summarize the “technical
`disclosure,” in this case, as we explain below, it also is a summary of the
`claimed invention.
`
`4
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`CBM2018-00018
`Patent 9,239,993 B2
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`
`To solve this problem, a randomly selected validation symbol that a
`human can readily recognize is sent to the ticket holder’s cell phone or other
`electronic device. Examples of such symbols include a color display (Ex.
`1001, 3:31), a sailboat (id., Fig. 5), or any other human recognizable image
`(id., 3:31–39). The ticket holder shows the device with the displayed
`symbol to a human ticket taker who can confirm quickly that the proper
`validating symbol for the ticketed event is displayed. The ticket holder is
`then admitted to enter the event.
`According to one embodiment of the disclosed system and method,
`the user purchases a ticket from an on-line website. Id. at 2:49–50. The
`website sends to the user's device a unique number or other electronic
`identifier, referred to as a “token.” Id. at 2:50–51. The token also is stored
`in the ticketing database. Id. at 2:51–52.
`When the time comes to present the ticket, the venue can select what
`visual indicator will be used as the designated validation symbol, or
`“validation visual object.” Id. at 2:52–54. Counterfeit tickets cannot be
`prepared in advance of the event because counterfeiters will not know the
`visual indicator that will be used. Id. at 3:3–15. The user communicates
`with the on-line ticket seller using the supplied token. The token is verified,
`which causes the validation visual object to be sent to the user and displayed
`on the user's device. Id. at 2:64–67; 3:65–4:11. The ticket taker knows what
`the validating visual object is, and simply looks to see that the user's device
`is displaying the correct visual object. Id. at 2:67–3:2. No scanning or bar
`code reading is required. Id. at 2:28–30 (“the verification is determined by a
`larger visual object that a human can perceive without a machine scanning
`it.”). Barcodes and similar codes like the QR code are not validating “visual
`
`5
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`CBM2018-00018
`Patent 9,239,993 B2
`
`objects” because a person looking at them cannot tell one apart from
`another. Id. at 3:24–28. The “visual object” may be, for example, patterns
`of color, animations, or geometric patterns. Id. at 2:36–37; 3:17–44.
`The token may be in the form of a computer code, a command that
`specifies what the visual pattern should be, or video or image data
`transmitted directly from the website to the user’s device for immediate
`display. Id. at 2:37–48. As asserted by Patent Owner, the ’993 patent
`discloses the use of “tokens” to maintain the security of the “visual
`validation display objects” and other data stored in a data record. Prelim.
`Resp. 2 (citing Ex. 1001, 7:26-47).
`We recognize that the disclosed system and method also can
`accommodate the original purchaser reselling the ticket to a second
`purchaser. See, e.g., Ex. 1001, 4:48–67; Fig. 8. This purchase and reselling,
`however, is not included in the challenged claims.
`
`B. Representative Claim
`Petitioner challenges claims 1–17 and 22–24. Claims 1 and 8 are
`independent claims. Claim 1 is representative and is reproduced below.
`1. A method performed by a computer system for
`displaying visual validation of the possession of a previously
`purchased electronic ticket for utilization of a service monitored
`by a ticket taker comprising:
`transmitting a
`token associated with a previously
`purchased electronic ticket to a remote display device, wherein
`the token is a unique alphanumeric string, and wherein a copy of
`the unique alphanumeric string is stored on a central computer
`system;
` validating the token by matching the token transmitted to
`the remote display device to the copy of the unique alphanumeric
`string stored on the central computing system to provide a ticket
`payload to the remote display device;
`
`6
`
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`CBM2018-00018
`Patent 9,239,993 B2
`
`
`securing a validation display object prior to transmission
`to provide a secured validation display object;
`transmitting to the remove display device a secured
`validation display object associated; with the ticket payload; and
`enabling the remote display device to display the secured
`validation display object upon validation of the token for visual
`recognition by the ticket taker or preventing the remote display
`device from displaying the secured validation display object in
`the event that the token is not validated.
`
`Challenged dependent claims 2–7 depend directly or indirectly from
`claim 1.
`Independent claim 8 is directed to a “system for validating display
`object upon validation of the token for visual recognitions by the ticket
`taker.” It is substantively similar to claim 1. Challenged dependent claims
`9–17 and 22–24 depend directly or indirectly from claim 8.
`
`C. Claim Construction
`In a CBM post-grant review, we generally construe claims by
`applying the broadest reasonable interpretation in light of the specification.
`37 C.F.R. § 42.300(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (confirming the “broadest reasonable” claim
`construction in the context of an inter partes patent review). Under that
`standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). The correct inquiry in giving a claim term
`its broadest reasonable interpretation in light of the specification is “an
`interpretation that corresponds with what and how the inventor describes his
`invention in the specification, i.e., an interpretation that is ‘consistent with
`
`7
`
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`
`CBM2018-00018
`Patent 9,239,993 B2
`
`the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
`Cir. 2017).
`Only terms that are in controversy need to be construed expressly, 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). We
`determine that an explicit construction of the claims is not necessary for the
`purposes of determining whether the claims recite a covered business
`method eligible for a CBM review.
`
`D. Covered Business Method Patent
`A threshold and dispositive issue in this proceeding is whether the ’993
`patent is a “covered business method” patent subject to review under Section
`18 of the AIA. Petitioner asserts that
`The Challenged Claims are drawn to performing data processing
`or other operations used in the practice, administration, or
`management of a financial product or service, thereby making
`them eligible for CBM review according to AIA § 18(d)(1). In
`particular, the “visual validation of the possession of a previously
`purchased electronic ticket for utilization of a service monitored
`by a ticket taker” / “validating previously purchased electronic
`tickets for utilization of a service monitored by a ticket taker”
`and “validation of the token for visual recognition by the ticket
`taker” of independent claims 1 and 8 is a financial product or
`service and each operation associated with the claimed
`“purchased electronic ticket” represents a financial activity.
`Pet. 31–32 (emphasis omitted). See Ex. 1012 ¶¶ 88–92.
`Patent Owner takes a different view of the claimed invention and the
`applicable law. According to Patent Owner, the claimed invention is
`directed to “delivering a visual validation display object that authenticates a
`previously purchased ticket.” Prelim. Resp. 16. It is Patent Owner’s
`
`8
`
`
`
`CBM2018-00018
`Patent 9,239,993 B2
`
`position that “[e]ach of the independent claims 1 and 8 positively recites a
`previously purchased electronic ticket. The claims of the ’993 Patent recite
`post-sale activity that occurs after the movement of money and are not
`CBM-eligible.” Id.
`To resolve this dispute between the parties, we start with the statute.4
`
`1. The CBM Statute
`The statutory language states the fundamental qualification for a CBM
`patent review. In order to be eligible for a CBM review, the challenged
`patent must “claim[] a method or corresponding apparatus for performing
`data processing or other operations used in the practice, administration, or
`management of a financial product or service . . . .” AIA § 18(d)(1)
`(emphasis added). The PTO adopted the statutory definition of CBM
`patents by regulation without alteration. Transitional Program for Covered
`Business Method Patents—Definitions of Covered Business Method Patent
`and Technological Invention, 77 Fed. Reg. 48,734 (Aug. 14, 2012).
`In Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.
`2016), the Federal Circuit explained that Ҥ 18(d)(1) directs us to examine
`the claims when deciding whether a patent is a CBM patent.” Id. at 1340.
`Moreover, the Federal Circuit recognized that this statutory requirement
`“properly focuses on the claim language at issue.” Id. (emphasis added).
`The Court affirmed the Board’s conclusion that “the challenged claims of
`the Blue Calypso Patents meet the statutory definition of CBM patent.”
`Id. at 1341. In Blue Calypso, the Court determined that “the claims at issue
`
`
`4 Howard T. Markey, Why Not the Statute?, 65 J. Pat. Off. Soc’y 331, 331
`(1983) (“When all else fails, read the instructions”).
`
`9
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`CBM2018-00018
`Patent 9,239,993 B2
`
`in the instant case” had an express financial component in the form of a
`subsidy. Id. at 1340 (emphasis added). The claims were “directed to
`methods in which advertisers financially induce ‘subscribers’ to assist their
`advertising efforts.” Id. at 1340.
`Thus, our analysis is on whether the patent claims at issue in this
`proceeding, that is the challenged claims, recite 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 as
`determined by a proper claim construction. “[P]atents that fall outside the
`definition of a CBM patent are outside the Board’s authority to review as a
`CBM patent.” Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1381
`(Fed. Cir. 2016). Whether a patent “claims activities ‘incidental to’ or
`‘complementary to’ a financial activity” is not “the legal standard to
`determine whether a patent is a CBM patent.” Id. at 1382.5 For example, a
`patent “does not become a CBM patent because of its incidental or
`complementary use in banks.” Id.
`Similarly, a patent covering a method and corresponding apparatuses
`does not become a CBM patent “because its practice could involve a
`potential sale of a good or service.” Id. “It is not enough that a sale has
`occurred or may occur, or even that the specification speculates such a
`potential sale might occur.” Id. (emphasis added). As the Federal Circuit
`
`
`5 We note, however, that in Blue Calypso the Federal Circuit endorsed a
`consideration by the Board of whether a claimed invention was “financial in
`nature” as consistent with the statutory definition of “covered business
`method patent.” 815 F.3d at 1340; see Unwired Planet, 841 F.3d at 1380,
`n.5.
`
`10
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`CBM2018-00018
`Patent 9,239,993 B2
`
`noted, “[a]ll patents, at some level, relate to potential sale of a good or
`service. Id.
`We recognize, however, that “the definition of ‘covered business
`method patent’ is not limited to products and services of only the financial
`industry, or to patents owned by or directly affecting the activities of
`financial institutions such as banks and brokerage houses.” Versata Dev.
`Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed.Cir.2015). In
`Versata, at least one of the claims at issue, claim 17, expressly claimed a
`“method for determining a price of a product.” 793 F.3d 1312–13. See also
`SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1315 (Fed.Cir.2015)
`(holding that “a ‘financial activity’ not directed to money management or
`banking can constitute a ‘financial product or service’ within the meaning of
`the statute.”).
`Because the CBM statute requires that CBM eligibility is based on the
`claims, we next turn to an analysis of the scope of the claims.
`
`2. The ’993 Claims
`The challenged claims each recite that the claimed invention is limited
`to obtaining visual validation of a previously purchased electronic ticket.
`The visual validation occurs at the time the electronic ticket is presented to a
`ticket taker when the ticket purchaser is seeking entry to the ticketed event.
`Thus, the claimed activity, visual validation, occurs after the purchase has
`occurred. As stated above, a patent does not become a CBM patent merely
`because it involves the sale of a good or service.” Unwired Planet, 841 F.3d
`at 1382 (“It is not enough that a sale has occurred or may occur, or even that
`the specification speculates such a potential sale might occur.”).
`
`11
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`
`The preamble of claim 1 sets the stage for the method recited therein.
`Indeed, Petitioner cites language from the preamble in arguing its position.
`See Pet. 25 (relying on the preamble phrase “visual validation of the
`possession of a previously purchased electronic ticket”). The preamble
`states the claimed invention is “[a] method performed by a computer system
`for displaying visual validation of the possession of a previously purchased
`electronic ticket for utilization of a service monitored by a ticket taker.”
`Ex. 1001, 14:8–11 (emphasis added). Thus, the sale of the ticket is an event
`that has previously happened, i.e., it has already occurred. The claimed
`invention is directed to “visual validation.”
`Claim 1 recites the step of “validation of the token for visual
`recognition by the ticket taker.” Id. at 14:29–31. Petitioner and Patent
`Owner agree, and so do we, that “visual recognition” means that the object is
`“readily recognizable from human observation.” See Pet. 28–29; Prelim.
`Resp. 3; see also id. at 5 (“the term ‘validation’ in the broader phrase
`‘validation display object’ would relate to a human verifying the authenticity
`of a ticket”.) This means that the “ticket taker” is a human, not a machine.
`Ex. 1001, 3:18–20 (“The criterion for what constitutes a validating visual
`object is one that is readily recognizable from human observation”).
`Claim 1 also recites that the user communicates with the on-line ticket
`seller using an electronic “token” supplied with the electronic ticket.
`Ex. 1001, 14:12–13. The token is validated (id. at 14:18–22), which causes
`the validation visual object to be sent to the user and displayed on the user's
`device. Id. at 14:23–33. The ticket taker knows what the validating visual
`object is, and simply looks to see that the user's device is displaying the
`
`12
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`
`correct visual object. Id. at 2:67–3:2. No scanning or bar code reading is
`required. Id. at 2:27–30; 3:24–26.
`Thus, independent claim 1 recites that after buying an electronic
`ticket, a visual validation is sent electronically to the purchaser and, if the
`correct visual object is confirmed by a human ticket taker, the user is
`permitted entry to the ticket event. The claims are directed to a person
`validating an electronic ticket based on a visual object. We find nothing
`explicitly or inherently financial in the claim language. There are no
`limitations recited that are directed to the practice, administration, or
`management of a financial product or service.
`At best, validating a purchased ticket may be complementary to the
`purchase of a ticket. Complementary activity, however, does not establish
`CBM review eligibility. Unwired Planet, 841 F.3d at 1382 (Whether a
`patent “claims activities ‘incidental to’ or ‘complementary to’ a financial
`activity” is not “the legal standard to determine whether a patent is a CBM
`patent.”)
`Independent claim 8 is similar in scope to claim 1. Each focuses on
`visual validation of an electronic ticket by a human ticket taker after the
`ticket has been purchased.
`
`3. The ’993 Specification
`The Specification fully supports the construction of the claims as
`being directed to validating a previously purchased ticket, and not directed
`to the practice, administration, or management of a financial product or
`service. The Abstract summarizes the disclosed invention stating that the
`“ticket is verified at the entrance to venues by means of an animation or
`other human perceptible verifying visual object,” thus eliminating the need
`
`13
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`
`to use a bar-code scanner on an LCD display of a cell phone or other device,
`which speeds up the rate at which human ticket takers can verify tickets.
`Ex. 1001, Abstract.
`The written description emphasizes that the invention is verifying a
`previously purchased ticket. In describing the problem addressed by the
`disclosed and claimed invention, the written description states:
`Conventional electronic tickets display a barcode or QR code on
`a user's telephone, typically a cellphone or other portable
`wireless device with a display screen. The problem with this
`approach is that a barcode scanner has to be used by the ticket
`taker. Barcode scanners are not highly compatible with LCD
`screen displays of barcodes. The amount of time that it takes to
`process an electronic ticket is greater than that of a paper ticket.
`Sometimes the LCD display does not scan at all and a passenger
`has to be sent away to get a paper printout of a ticket. Given the
`potential large crowds that often attend open venues, this is
`impractical.
`Id. at 2:16–26.
`In describing the disclosed invention, the written description further
`states, “[i]n this invention, the ticket is procured electronically and stored on
`the user's device. However, when the ticket is to be validated or verified, the
`verification is determined by a visual object that a human can perceive
`without a machine scanning it.” Id. at 2:27–30. The written description also
`notes that the invention is intended to limit “piracy” or counterfeit tickets.
`Id. at 3:2–3:24.
`We find nothing explicitly or inherently financial in nature in these
`passages from the Specification, which support the claimed invention.
`These disclosures are not directed to the practice, administration, or
`management of a financial product or service.
`
`14
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`
`We recognize that the written description also discloses that “[t]he use
`of electronic ticketing provides opportunities that change how tickets can be
`bought and sold.” Ex. 1001, 4:48–49. Additionally, the written description
`states that “the system can operate a typical on-line payment and credit
`system.” Id. at 4:62–63. These disclosures do not change our analysis of the
`claims. A patent covering a method and corresponding apparatus does not
`become a CBM patent because the claims could involve a potential sale of a
`good or service. Unwired Planet, 841 F.3d at 1382. It is not enough that the
`Specification “speculates such a potential sale might occur.” Id. See also
`Fairchild Semiconductor Corp. v. In-Depth Test LLC, CBM2015-00060,
`2015 WL 4652717, at *5–6 (PTAB Aug. 3, 2015) (rejecting CBM status for
`semiconductor devices, despite ubiquitous use in the financial system,
`because the “statutory language . . . requires us to focus on the challenged
`claims rather than speculate on possible uses of products recited in the
`claims”); Par Pharm., Inc. v. Jazz Pharm., Inc., CBM2014-00149, -00150, -
`00151, -00153, 2015 WL 216987, at *5–6 (PTAB Jan. 13, 2015) (rejecting
`CBM status because petitioner did not explain persuasively how the claim
`language recites method steps involving the movement of money or
`extension of credit in exchange for a product or service); PNC Fin. Servs.
`Grp., Inc. v. Intellectual Ventures I LLC, CBM2014-00032, 2014 WL
`2174767, at *6 (PTAB May 22, 2014) (rejecting CBM status of computer
`file-security patent, despite suit against financial institutions, because “the
`focus is on the claims”).
`
`4. “Associated” Operations
`Petitioner also argues that “each operation associated with the claimed
`‘purchased electronic ticket’ represents a financial activity.” Pet. 32
`
`15
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`(emphasis added). Again, we disagree. Petitioner cites no persuasive
`evidence or controlling authority to support its argument. We understand an
`operation “associated with” the purchase of a ticket to be an activity
`incidental to the purchase of a ticket. See Ex. 3001 (the word “incidental” is
`a synonym of the adjective “associated”). Whether a patent claims activities
`“incidental to” a financial activity is not the legal standard to determine
`whether a patent is a CBM patent. Unwired Planet, 841 F.3d at 1382.
`
`5. Patent Owner’s General Business
`Petitioner also asserts that “[t]he Patent Owner admits to being a
`provider of financial products and services employing the [’]933 Patent with
`generic computer components[.]” Pet. 32–34. Petitioner cites no authority
`for the proposition that the nature of a party’s business determines whether a
`patent owned by that party qualifies as a covered business method patent.
`Nevertheless, as discussed below, we find the evidence cited does not
`support Petitioner’s argument as to the ’933 patent.
`To establish that the challenged claims qualify as a CBM patent,
`Petitioner relies, in part, on generic statements about Patent Owner’s
`business from Patent Owner’s infringement complaint against Petitioner.
`Pet. 32–33 (citing Ex. 1017 ¶ 3). The cited paragraph states:
`Bytemark is generally in the business of providing a secure
`mobile ticketing platform for transit, tourism, and events through
`smartphone apps, point-of-sale plugins, and open APIs.
`Bytemark is a market leader in providing mobile ticketing
`technologies to the transit industry and delivers a comprehensive
`platform that improves the ticket and payment experience for
`consumers and merchants.
`Ex. 1017 ¶ 3. This paragraph does not mention the ’993 patent and is
`irrelevant to construing the proper scope of the claims in the ’993 patent.
`
`16
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`CBM2018-00018
`Patent 9,239,993 B2
`
`See Blue Calypso, (Ҥ 18(d)(1) directs us to examine the claims when
`deciding whether a patent is a CBM patent.”).
`Similarly, Petitioner cites excerpts from Patent Owner’s website that
`also are irrelevant to the scope of the claims in the ’933 patent. Pet. 33–34
`(citing Exs. 1023–1028). For example, Ex. 1023 is a nine page brochure
`obtained from Patent Owner’s website that presents a “Company Overview”
`of Patent Owner Bytemark. Pet. 32 (“(Ex.1023, Bytemark’s Website,
`Bytemark’s Media Kit, p. 5)”). Petitioner cites specifically to page 5 of
`Exhibit 1023. Id. The cited excerpt from page 5 is reproduced below.
`
`
`The excerpt on which Petitioner relies states, “No additional hardware
`required to use Bytemark’s ticketing applications using this ticketing
`method.” Pet. 33 (citing and quoting Ex. 1023, p. 5; emphasis omitted).
`Petitioner does not explain persuasively why the cited excerpt requires the
`claims at issue in the ’933 patent to be construed to recite 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.
`Exhibit 1024 is cited for an excerpt from Patent Owner’s website that
`states, in part, “Bytemark is a provider of Transit Fare Collection solutions.”
`
`17
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`CBM2018-00018
`Patent 9,239,993 B2
`
`Pet. 33 (citing and quoting an excerpt from Ex. 1024). The more complete
`statement is reproduced below.
`Bytemark is a provider of Transit Fare Collection solutions to
`cities and agencies across the globe. Based in New York City,
`Bytemark also operates regional offices in the United Kingdom,
`Canada, Australia, and India.
`Bytemark’s core offering is a comprehensive suite of products
`that digitize transit passes, tickets and fare media in a variety of
`innovative ways. Purchase of these fare products by transit riders
`is simple and instantaneous by means of web-based and
`smartphone-based purchasing experiences.
` Agencies are
`provided with powerful fare validation solutions, and cloud-
`based access to a complete back office portal to manage and
`report on their operation.
`Ex. 1024, 1 (emphasis added). We find nothing in the excerpt cited by
`Petitioner, or the more complete statement reproduced above, that requires
`the claims at issue in the ’933 patent to be construed to recite 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. The more complete statement refers to a “comprehensive suite of
`products.” Petitioner provides no evidence that connects Ex. 1024 to the
`claims of the ’993 patent.
`Petition cites Exhibit 1027 for reference to a potential use for
`payments. Pet. 34 (citing Ex. 1027). Exhibit 1027 states that “For clients
`with an existing mobile app, the Bytemark software development kit (SDK)
`can be used to add mobile ticketing and payments within the familiar
`ecosystem of your current app.” Ex. 1027, 1 (emphasis added). This
`potential use does not establish that the challenged claims in the ’993 patent
`can or should be construed to recite a method or corresponding apparatus for
`
`18
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`CBM2018-00018
`Patent 9,239,993 B2
`
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service. Unwired
`Planet, 841 F.3d at 1382 (“It is not enough that a sale has occurred or may
`occur, or even that the specification speculates such a potential sale might
`occur.”).
`Exhibits 1025 and 1026 similarly are unconnected to the claims of the
`’993 patent.
`
`6. Summary for Independent Claims 1 and 8
`To determine whether a patent is eligible for CBM review, the CBM
`statute directs us to examine the claims at issue and evidence relevant to the
`claims at issue. Blue Calypso, 815 F.3d at 1340. Petitioner must
`demonstrate that the patent for which review is sought is a covered business
`method patent. 37 C.F.R. § 42.304(a). Petitioner has not met its burden of
`proof on this issue.
`
`7. Dependent Claims
`Our analysis above focuses on the challenged independent claims.
`That analysis holds true for the challenged dependent claims as well. In that
`respect, there is nothing recited in the challenged dependent claims that
`changes our analysis, our findings, or our conclusion. For instance, claim 2
`adds to c
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