Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Date: December 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CXLOYALTY, INC.,1
`Petitioner,
`
`v.
`
`MARITZ HOLDINGS INC.,
`Patent Owner.
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 328(a)
`
`
`1 Petitioner filed updated mandatory notice information indicating that it
`changed its name from Connexions Loyalty, Inc. to cxLoyalty, Inc.
`Paper 30, 2. Accordingly, the caption for this proceeding has been changed.
`
`
`
`
`571-272-7822
`
`Paper 36
`Date: December 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CXLOYALTY, INC.,1
`Petitioner,
`
`v.
`
`MARITZ HOLDINGS INC.,
`Patent Owner.
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, JUSTIN T. ARBES, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 328(a)
`
`
`1 Petitioner filed updated mandatory notice information indicating that it
`changed its name from Connexions Loyalty, Inc. to cxLoyalty, Inc.
`Paper 30, 2. Accordingly, the caption for this proceeding has been changed.
`
`
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Petitioner, cxLoyalty, Inc., filed a Petition (Paper 1, “Pet.”) requesting
`
`a covered business method patent review of claims 1–15 of U.S. Patent
`
`No. 7,134,087 B2 (Ex. 1001, “the ’087 patent”) pursuant to 35 U.S.C.
`
`§ 321(a). On December 20, 2018, we instituted a covered business method
`
`patent review of the sole challenge raised in the Petition. Paper 12
`
`(“Decision on Institution” or “Dec. on Inst.”). Patent Owner, Maritz
`
`Holdings Inc., subsequently filed a Patent Owner Response (Paper 16,
`
`“PO Resp.”), Petitioner filed a Reply (Paper 23, “Reply”), and Patent Owner
`
`filed a Sur-Reply (Paper 25, “Sur-Reply”). Patent Owner also filed a
`
`corrected Motion to Amend (Paper 19, “Mot.”), Petitioner filed an
`
`Opposition (Paper 24, “Opp.”), Patent Owner filed a Reply (Paper 26,
`
`“Mot. Reply”), and Petitioner filed a Sur-Reply (Paper 28, “Mot.
`
`Sur-Reply”). An oral hearing was held on September 17, 2019, and a
`
`transcript of the hearing is included in the record (Paper 35, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a). For the reasons that
`
`follow, we determine that Petitioner has shown by a preponderance of the
`
`evidence that claims 1–15 are unpatentable. We also determine that
`
`Petitioner has not met its burden to show by a preponderance of the evidence
`
`that proposed substitute claims 16–23 are unpatentable. Accordingly,
`
`we grant Patent Owner’s Motion to Amend.
`
`
`
`B. Real Parties in Interest
`
`Petitioner states that the real parties in interest are “Petitioner
`
`cxLoyalty, Inc. (formerly Connexions Loyalty, Inc.), cxLoyalty Travel
`
`2
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`
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`CBM2018-00037
`Patent 7,134,087 B2
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`Solutions LLC (formerly Connexions Loyalty Travel Solutions LLC),
`
`Connexions Loyalty Acquisition, LLC, cxLoyalty Group, LLC (formerly
`
`Affinion Group, LLC), cxLoyalty Group, Inc. (formerly Affinion Group,
`
`Inc.), and cxLoyalty Group Holdings, Inc. (formerly Affinion Group
`
`Holdings, Inc.).” Paper 30, 2.
`
`
`
`C. Related Matter
`
`The parties indicate that the ’087 patent is the subject of the following
`
`district court case: Maritz Holdings Inc. v. Connexions Loyalty, Inc.,
`
`No. 1:18-cv-00967 (D. Del.). See Pet. 39; Paper 10, 2; Ex. 1003.
`
`
`
`D. The ’087 Patent
`
`The ’087 patent discloses “a system and method in which a participant
`
`of a program which awards points to the participant allows the participant to
`
`transact a purchase using the awarded points with a vendor system which
`
`transacts purchases in currency.” Ex. 1001, col. 1, ll. 7–12. Loyalty
`
`programs “issue points to customers (i.e., participants) as a reward for
`
`certain activities such as the purchase of certain products or services or
`
`performing a certain action” and allow the customer to redeem the points for
`
`rewards (i.e., “merchandise, certificates, or other products or services”),
`
`which “create[s] a loyalty or affinity with the customer and encourage[s] the
`
`customer to continue a desired behavior.” Id. at col. 1, ll. 16–23. A loyalty
`
`program typically has a relationship with various redemption vendors and
`
`allows the customer to “select[] a reward for purchase with the points.” Id.
`
`at col. 1, ll. 24–34. The loyalty program “obtains the product or service”
`
`from the appropriate vendor and provides it to the customer. Id. at col. 1,
`
`ll. 34–37.
`
`3
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`Patent 7,134,087 B2
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`The ’087 patent discloses that “[s]ome rewards are of a nature that
`
`human intervention is needed to redeem/fulfill a reward.” Id. at col. 1,
`
`ll. 37–38. For example, when a customer selects an airline ticket, the loyalty
`
`program “would purchase the ticket through a selected travel agent or a
`
`selected airline employee and provide the ticket (or have it sent) to the
`
`customer,” and the agent or employee would deduct the points needed for
`
`the reward from the customer’s point account. Id. at col. 1, ll. 38–46. The
`
`’087 patent sought to “eliminate” this need for human intervention by
`
`“allowing the customer to systematically redeem their points for rewards
`
`using redemption vendors that otherwise deal in currency.” Id. at col. 1,
`
`ll. 47–53, col. 1, l. 66–col. 2, l. 4 (stating that the disclosed invention
`
`“provides fulfillment capability without having to involve highly specialized
`
`third party organizations,” which “enables participants to get greater
`
`satisfaction and more immediate gratification from their loyalty program
`
`regardless of their preferred method of interaction”).
`
`
`
`
`
`4
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`CBM2018-00037
`Patent 7,134,087 B2
`
`Figure 2 of the ’087 patent is reproduced below.
`
`
`
`Figure 2 depicts the flow of information between the various actors in the
`
`disclosed system, namely participants 202; loyalty program 210, which
`
`maintains participant point accounts 214 for participants 202 and awards
`
`points whenever a participant completes a transaction; graphical user
`
`interface (GUI) 204; application programming interface (API) 206; and
`
`vendor system 208 corresponding to a vendor from which a participant
`
`wants to make a purchase. Id. at col. 3, ll. 54–67, col. 6, ll. 5–7. As shown
`
`in Figure 2, “participant-related information” (i.e., information originating
`
`from the participant, such as the participant’s identification) flows from left
`
`to right, and “vendor-related information” (i.e., information originating from
`
`the vendor, such as a list of products available for purchase) flows from right
`
`to left. Id. at col. 6, ll. 12–20, 35–38.
`
`5
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`CBM2018-00037
`Patent 7,134,087 B2
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`The process begins with a participant logging on to GUI 204 and
`
`indicating that he or she is interested in purchasing products or services
`
`(e.g., an airline ticket) from the vendor, using points in the participant’s
`
`account for the purchase. Id. at col. 6, ll. 21–26. GUI 204 transfers the
`
`participant’s information to API 206, which provides it to vendor
`
`system 208. Id. at col. 6, ll. 26–33. Vendor system 208 then provides to
`
`API 206 a list of items available for purchase and their prices, which
`
`API 206 provides to GUI 204 for display to the participant. Id. at col. 6,
`
`ll. 34–47.
`
`The participant selects a particular item and makes purchase
`
`request 212. Id. at col. 6, ll. 48–64. GUI 204 “converts the received
`
`purchase request 212 into a corresponding purchase request 216 based on
`
`. . . shadow credit card 218,” which is a credit card that is “hidden or
`
`‘shadowed’ from the participant so that the participant is not aware that the
`
`transaction is actually being transacted using the shadow credit card” rather
`
`than just the participant’s point account. Id. at col. 4, ll. 42–50, col. 5,
`
`l. 65–col. 6, l. 1, col. 6, ll. 64–66. Specifically, GUI 204 communicates with
`
`loyalty program 210 to determine whether the participant has enough points
`
`for the transaction and convert points to currency. Id. at col. 6, l. 67–col. 7,
`
`l. 7. GUI 204 provides purchase request 216 based on shadow credit
`
`card 218 to API 206, which “performs its standard function of transmitting
`
`information to the vendor system 208.” Id. at col. 7, ll. 7–14. Vendor
`
`system 208 responds to purchase request 216 “in the same way that it would
`
`respond to any other purchase request from a consumer that presents a credit
`
`card,” and is, thus, unaware that the participant is actually using points to
`
`make the purchase. Id. at col. 4, ll. 42–47, col. 6, l. 1–4, col. 7, ll. 15–18.
`
`If the transaction is authorized, vendor system 208 provides vendor purchase
`
`6
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`CBM2018-00037
`Patent 7,134,087 B2
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`confirmation 218 to API 206, which provides it to GUI 204. Id. at col. 7,
`
`ll. 19–28. GUI 204 communicates with loyalty program 210 to deduct the
`
`appropriate number of points from the participant’s account, and converts
`
`vendor purchase confirmation 218 (based on shadow credit card 218) into
`
`purchase confirmation 220 (based on the points) for the participant, such that
`
`the participant is unaware that the purchase actually was made using shadow
`
`credit card 218. Id. at col. 7, ll. 28–47.
`
`
`
`E. Illustrative Claim
`
`Claims 1, 5, 9, and 13 of the ’087 patent are independent. Claim 1 is
`
`illustrative of the challenged claims and it recites:
`
`1. A computerized system for use by a participant of a
`program which awards points to the participant, wherein the
`awarded points are maintained in a point account for the
`participant, said system for permitting the participant to transact
`a purchase using the awarded points with a vendor system which
`transacts purchases in currency, said system comprising a
`processor including instructions for defining:
`
`an application programming
`interfacing with the vendor system;
`
`interface
`
`(API)
`
`for
`
`a program account hidden from the participant connected
`to the program for use in currency transactions;
`
`a graphical user interface (GUI) for providing an interface
`between the participant and the API and for communicating with
`the program;
`
`wherein said GUI includes instructions for receiving
`participant-related
`information from
`the participant and
`providing the received participant-related information to the
`API;
`
`wherein said GUI includes instructions for receiving
`information regarding the program account hidden from the
`
`7
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`CBM2018-00037
`Patent 7,134,087 B2
`
`participant and for providing the received program account
`information to the API;
`
`the
`receive
`to
`adapted
`is
`said API
`wherein
`participant-related
`information and
`the program account
`information from the GUI and adapted to provide the received
`participant-related information and
`the received program
`account information to the vendor system;
`
`wherein said API is adapted to receive vendor-related
`information from the vendor system and adapted to provide the
`received vendor-related information to the GUI; and
`
`wherein said GUI includes nstructions for receiving
`vendor-related information from the API and for providing the
`received vendor-related information to the participant;
`
`such that from the perspective of the participant, the
`participant uses the GUI to conduct a purchase transaction with
`the vendor system based in whole or in part on the points in the
`participant’s point account; and
`
`such that from the perspective of the vendor system, the
`vendor system conducts the purchase transaction with the
`participant as a currency transaction based on the program’s
`program account hidden from the participant whereby the
`participant is not aware that the purchase transaction with the
`vendor system is being transacted using program account.
`
`Ex. 1001, col. 8, l. 36–col. 9, l. 15.
`
`
`
`F. Evidence
`
`Petitioner filed a declaration from Norman E. Knowles (Exhibit 1004)
`
`with its Petition. Patent Owner filed a declaration from Bruce Weiner
`
`(Exhibit 2001) with its Preliminary Response (Paper 11), and relies on the
`
`same declaration in its Patent Owner Response. Patent Owner filed another
`
`declaration from Mr. Weiner (Exhibit 2005) in support of its Motion to
`
`Amend. Neither witness was cross-examined.
`
`
`
`8
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`CBM2018-00037
`Patent 7,134,087 B2
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`G. Asserted Ground
`
`Petitioner challenges claims 1–15 of the ’087 patent on the ground
`
`that the claims do not recite patent-eligible subject matter under 35 U.S.C.
`
`§ 101. Pet. 40, 46–71.
`
`
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`Petitioner argues that a person of ordinary skill in the art at the time of
`
`the ’087 patent would have had “a practical knowledge of and familiarity
`
`with incentive or loyalty programs, web interfaces, network protocols,
`
`accounting information systems, and invoice processing systems”;
`
`“a Bachelor’s degree in computer science, computer engineering, or another
`
`computer-related field, or equivalent work experience”; and “at least one to
`
`two years of experience designing or working with web interfaces and
`
`network protocols in systems facilitating commercial transactions.”
`
`Pet. 42–43 (citing Ex. 1004 ¶ 26). In the Decision on Institution, based on
`
`the parties’ arguments and record at the time, we preliminarily agreed with
`
`Petitioner’s assessment. Dec. on Inst. 8–9. Patent Owner does not propose a
`
`different level of ordinary skill in the art in its Patent Owner Response or
`
`Motion to Amend. Based on the record developed during trial, including our
`
`review of the ’087 patent and the types of problems and solutions described
`
`in the ’087 patent, we adopt our previous analysis and apply the level of
`
`ordinary skill in the art set forth above for purposes of this Decision.
`
`
`
`B. Claim Interpretation
`
`In this proceeding, we interpret the claims of the unexpired
`
`’087 patent using the “broadest reasonable construction in light of the
`
`9
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`CBM2018-00037
`Patent 7,134,087 B2
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`specification of the patent.” 37 C.F.R. § 42.300(b) (2017).2 In the Decision
`
`on Institution, based on the parties’ arguments and record at the time, we
`
`preliminarily interpreted the following claim terms:
`
`Term
`
`Interpretation
`
`“program account” a payment account associated with the
`loyalty program that is accepted by the
`vendor system, such as a cash account
`or credit card
`
`“shadow credit
`card”
`
`a program credit card account that is
`hidden from the participant of the
`program
`
`“program account
`information”
`
`any information identifying a payment
`account associated with the loyalty
`program that is acceptable to the
`vendor system to be used in a currency
`transaction
`
`See Dec. on Inst. 9–11; Pet. 43–45. The parties do not dispute the above
`
`interpretations in their papers filed after institution. Upon review of the
`
`parties’ arguments during trial and the evidence as a whole, we adopt our
`
`previous analysis for purposes of this Decision and conclude that no
`
`interpretation of any other term is necessary to decide the issues presented
`
`during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe
`
`
`2 The Petition in this proceeding was filed on July 5, 2018, prior to the
`effective date of the rule change that replaces the broadest reasonable
`interpretation standard with the federal court claim interpretation standard.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.300(b)
`effective November 13, 2018) (now codified at 37 C.F.R. § 42.300(b)
`(2019)).
`
`10
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`CBM2018-00037
`Patent 7,134,087 B2
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`terms ‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy,’ we need not construe [a particular claim limitation] where the
`
`construction is not ‘material to the . . . dispute.’” (citations omitted)).
`
`
`
`C. Eligibility for Covered Business Method Patent Review
`
`Section 18 of the Leahy-Smith America Invents Act, Pub. L.
`
`No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides for the creation of a
`
`transitional program for reviewing covered business method patents, and
`
`limits reviews to persons or their privies that have been sued for
`
`infringement or charged with infringement3 of a “covered business method
`
`patent,” which does not include patents for “technological inventions.”
`
`AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Petitioner bears the
`
`burden of demonstrating that the ’087 patent is a “covered business method
`
`patent.” See 37 C.F.R. § 42.304(a).
`
`
`
`1. Used in the Practice, Administration, or Management of a
`Financial Product or Service
`
`A “covered business method patent” is “a patent that claims a method
`
`or corresponding apparatus for performing data processing or other
`
`operations used in the practice, administration, or management of a financial
`
`product or service, except that the term does not include patents for
`
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).
`
`To determine whether a patent is eligible for covered business method patent
`
`
`3 Petitioner was sued for infringement of the ’087 patent on June 28, 2018,
`in Maritz Holdings Inc. v. Connexions Loyalty, Inc., No. 1:18-cv-00967
`(D. Del.). See Pet. 39; Paper 10, 2; Ex. 1003. The district court case is
`pending and has been stayed.
`
`11
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`CBM2018-00037
`Patent 7,134,087 B2
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`review, the focus is on the claims. See Unwired Planet, LLC v. Google Inc.,
`
`841 F.3d 1376, 1382 (Fed. Cir. 2016) (“[Covered business method 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.’”); Blue Calypso, LLC v.
`
`Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (approving of prior
`
`Board decisions that “properly focuse[d] on the claim language at issue,”
`
`and finding that the challenged patent was eligible for covered business
`
`method patent review because the claims recited “an express financial
`
`component in the form of a subsidy” that was “central to the operation of the
`
`claimed invention”). A patent need have only one claim directed to a
`
`covered business method to be eligible for review. Transitional Program for
`
`Covered Business Method Patents—Definitions of Covered Business
`
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`
`48,734, 48,736 (Aug. 14, 2012).
`
`Petitioner cites multiple claims of the ’087 patent in support of its
`
`contention that the ’087 patent is a covered business method patent, arguing
`
`that all of the claims recite “a financial activity element,” namely
`
`“a transaction between a participant of an awards program and a currency
`
`vendor.” Pet. 29–32. Claim 1, for example, recites a “computerized system
`
`for use by a participant of a program which awards points to the participant,”
`
`the system “permitting the participant to transact a purchase using the
`
`awarded points with a vendor system which transacts purchases in
`
`currency.” Ex. 1001, col. 8, ll. 36–37, 39–41 (emphases added). Claim 1
`
`further recites that “the vendor system conducts the purchase transaction
`
`with the participant as a currency transaction.” Id. at col. 9, ll. 9–10
`
`(emphases added). Conducting a purchase transaction is a financial activity,
`
`12
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`CBM2018-00037
`Patent 7,134,087 B2
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`and permitting the participant to make such a purchase amounts to providing
`
`a financial service. Patent Owner does not dispute Petitioner’s arguments in
`
`its Patent Owner Response, arguing only that the ’087 patent is for a
`
`technological invention. PO Resp. 45–54. Petitioner has shown that at least
`
`claim 1 recites an apparatus for performing data processing or other
`
`operations used in the practice, administration, or management of a financial
`
`product or service, as required by § 18(d)(1) of the AIA.
`
`
`
`2. Technological Invention
`
`The definition of “covered business method patent” in § 18(d)(1) of
`
`the AIA does not include patents for “technological inventions.” To
`
`determine whether a patent is for a technological invention, 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).
`
`In general, the Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-
`
`updates/consolidated-trial-practice-guide-november-2019 (“Trial Practice
`
`Guide”), provides the following guidance with respect to claim content that
`
`typically does not exclude a patent under the category of 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.
`
`13
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`Id. at 42–43.
`
`For the technological invention exception to apply, both prongs
`
`(1) and (2) of the inquiry must be met affirmatively, meaning that a negative
`
`answer under either prong renders inapplicable the technological invention
`
`exception. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
`
`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.”);
`
`Blue Calypso, 815 F.3d at 1341 (addressing only whether the claimed
`
`invention solves a technical problem using a technical solution). We discuss
`
`both prongs of the inquiry herein, even though either one would be
`
`dispositive.
`
`
`
`a) Technological Feature That is Novel and Unobvious over the Prior Art
`
`Petitioner argues that claim 1, as a whole, does not recite a
`
`technological feature that is novel and unobvious over the prior art, citing
`
`the testimony of Mr. Knowles as support. Pet. 34–36 (citing Ex. 1004
`
`¶¶ 35–40, 108, 113–118, 124, 128–131, 136, 141–142). Claim 1 recites a
`
`“computerized” system comprising a “processor” including instructions for
`
`defining a “graphical user interface (GUI)” and an “application
`
`programming interface (API).” Ex. 1001, col. 8, ll. 36–50. The GUI
`
`provides an interface between a participant of a program and the API, and
`
`communicates with the program. The API interfaces with a vendor system.
`
`Claim 1 further recites the transfer of information between the various actors
`
`(i.e., participant, GUI, API, and vendor system). For example, the GUI
`
`includes instructions for receiving “participant-related information” from the
`
`14
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`participant and “information regarding the [hidden] program account,” and
`
`providing such information to the API. Id. at col. 8, ll. 51–58. In turn, the
`
`API is adapted to receive the information and provide it to the vendor
`
`system, and receive “vendor-related information” from the vendor system in
`
`return and provide it to the GUI. Id. at col. 8, ll. 59–67. Finally, the GUI
`
`includes instructions for receiving vendor-related information and providing
`
`it to the participant.
`
`We agree with Petitioner that claim 1 recites the processor, GUI, and
`
`API “in a generic manner, with no specificity as to how the computer
`
`components are programmed or designed to allow for the transmittal of
`
`information between the various end users (participant, program, vendor
`
`system).” See Pet. 35. These generic computer components were known in
`
`the prior art. See Ex. 1004 ¶¶ 36, 39, 40 (citing Exhibits 1008–1011 as
`
`evidence that processors, GUIs, and APIs were “well-known to persons of
`
`ordinary skill in the art” at the time of the ’087 patent). Further, the only
`
`functions that claim 1 requires the GUI and API be adapted to perform are
`
`“providing” information to and “receiving” information from the other
`
`components. These limitations likewise are recited generically, and the
`
`communication of information by GUIs and APIs was known in the prior
`
`art. See id. ¶¶ 39, 40, 115; Ex. 1001, col. 7, ll. 9–14 (describing API 206,
`
`shown in Figure 2 above, as performing its “standard function” of
`
`transmitting information to a vendor system). We agree with Petitioner that
`
`the claimed elements constitute well-known computer components and
`
`known technologies for communicating information between those
`
`components, which indicates that the ’087 patent is not a patent for a
`
`technological invention. See Trial Practice Guide, 42–43 (examples a
`
`and b).
`
`15
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`CBM2018-00037
`Patent 7,134,087 B2
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`Patent Owner argues that claim 1 recites “the unique combination of a
`
`processor; an API; a GUI; a hidden program account (such as a shadow
`
`credit card); a display; and a computer to redeem points for goods or
`
`services while concealing the nature of the transaction from the participant,”
`
`the “ordered combination” of which amounts to a computerized system that
`
`is novel and unobvious over the prior art, citing the testimony of Mr. Weiner
`
`as support. PO Resp. 46–51 (citing Ex. 2001 ¶¶ 60, 70, 105–126);
`
`Sur-Reply 19–21. Patent Owner further argues that Petitioner failed to
`
`provide a full anticipation and obviousness analysis for any of the claims,
`
`contrary to the requirements of 37 C.F.R. § 42.301(b). PO Resp. 47–49.
`
`For purposes of the technological invention exception, we consider
`
`whether a claim, as a whole, recites a “technological feature” that is novel
`
`and unobvious over the prior art. 37 C.F.R. § 42.301(b). We do not agree
`
`that this requires the petitioner to assert and prove unpatentability of the
`
`claim under 35 U.S.C. §§ 102 or 103. Patent Owner’s only support for such
`
`a requirement is a citation to an opinion of two judges concurring in the
`
`denial of rehearing en banc in Secure Axcess, LLC v. PNC Bank Nat’l Ass’n,
`
`859 F.3d 998, 1003 n.4 (Fed. Cir. 2017).4 See PO Resp. 48. Further, the
`
`question is not whether a claim recites a “technological feature” per se, but
`
`rather whether the claim recites a “technological feature” that is novel and
`
`unobvious over the prior art.
`
`Certainly, as both parties and their declarants recognize, claim 1
`
`recites a number of technical components, namely an overall “computerized
`
`
`4 The underlying decision of the U.S. Court of Appeals for the Federal
`Circuit in Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370
`(Fed. Cir. 2017), was vacated as moot by the Supreme Court in PNC Bank
`Nat’l Ass’n v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018).
`
`16
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`CBM2018-00037
`Patent 7,134,087 B2
`
`system” and a “processor,” “GUI,” and “API.” See id. at 46; Reply 22;
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`Ex. 1004 ¶ 112; Ex. 2001 ¶ 107. All of those components, however, are
`
`recited in generic terms and were known in the prior art. See Ex. 1004
`
`¶¶ 36, 39, 40, 112–113; Exs. 1008–11; Ex. 2001 ¶ 107 (Mr. Weiner
`
`testifying that “it is true that such components, individually, were known in
`
`2002”). Nor do the various recitations of the GUI and API “receiving” and
`
`“providing” information in claim 1 qualify as a novel and unobvious
`
`technological feature, as it was known for such components to communicate
`
`information in general. See Ex. 1004 ¶¶ 50, 78, 114–115. Claim 1 also does
`
`not recite any “display” as Patent Owner contends, and a “hidden program
`
`account” is simply a type of payment account, not a technical component.
`
`See PO Resp. 46–47; supra Section II.B (interpreting “program account”
`
`to mean “a payment account associated with the loyalty program that is
`
`accepted by the vendor system, such as a cash account or credit card”).
`
`All that is left in the claim is the positioning of the GUI and API
`
`between the participant/program and vendor system to facilitate the purchase
`
`transaction (via communicating the specific items of information back and
`
`forth). The only functions attributed to the GUI and API as so positioned,
`
`however, are communicating information with other components. Claim 1,
`
`as well as the written description of the ’087 patent, does not include any
`
`detail as to the technical means by which the information is communicated
`
`or how the GUI and API are programmed to perform the recited receiving
`
`and providing. See Ex. 1004 ¶¶ 60, 113–114, 118 (testifying that the
`
`’087 patent does not describe “any special purpose computer code,
`
`structures, software, or equipment for the recited computer and networking
`
`components”). We do not see how the recited communication of program
`
`account information, participant-related information, and vendor-related
`
`17
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`CBM2018-00037
`Patent 7,134,087 B2
`
`information is any different than the standard way GUIs and APIs were
`
`known to communicate information in general.
`
`Finally, relying on the GUI limitations of claim 1, Patent Owner
`
`argues that Congress specifically intended to exclude patents directed to
`
`“novel software tools and graphical user interfaces” from covered business
`
`method patent review, noting one statement that “[v]ibrant industries have
`
`developed around the production and sale of these tangible inventions.”
`
`PO Resp. 52–54 (emphasis omitted; quoting 157 Cong. Rec. S5433).
`
`According to Patent Owner, claim 1 recites details of how the GUI is used
`
`because the GUI displays “vendor-related information to the participant”
`
`so that the participant can “make a purchase selection.” Id. at 53.
`
`Claim 1, however, only recites that the GUI “receiv[es]”
`
`vendor-related information from the API and “provid[es]” that information
`
`to the participant, such that “from the perspective of the participant, the
`
`participant uses the GUI to conduct a purchase transaction with the vendor
`
`system based in whole or in part on the points in the participant’s point
`
`account.” Ex. 1001, col. 9, ll. 1–8. The claim does not include any further
`
`limitations regarding how the vendor-related information would be
`
`organized or displayed when provided to the participant. Notably, this is
`
`unlike the case cited by Patent Owner in support of its position, IBG LLC v.
`
`Trading Techs. Int’l, Inc., 757 F. App’x 1004, 1007 (Fed. Cir. 2019), where
`
`the Federal Circuit determined that the challenged patents were for
`
`technological inventions that improved prior art GUIs “by displaying market
`
`depth on a vertical or horizontal plane, which fluctuates logically up or
`
`down, left or right across the plane as the market fluctuates.” See PO Resp.
`
`54. Claim 1 also does not include any limitations as to how the participant
`
`would interact with the GUI. The claim only recites that the participant
`
`18
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`CBM2018-00037
`Patent 7,134,087 B2
`
`“uses” the GUI to conduct a purchase transaction, not, for example, that the
`
`participant uses the GUI to make a “selection” as Patent Owner contends.
`
`See id. at 53. We are not persuaded that the GUI limitations of claim 1
`
`indicate that the ’087 patent is for a technological invention.
`
`We agree with Petitioner that claim 1 does not recite a technological
`
`feature that is novel and unobvious over the prior art.
`
`
`
`b)
`
`Solving a Technical Problem Using a Technical Solution
`
`Our determination that claim 1 does not recite a technological feature
`
`that is novel and unobvious over the prior art is sufficient to conclude that
`
`the ’087 patent is not for a technological invention. Regardless, though, we
`
`also are persuaded that claim 1 does not solve a technical problem using a
`
`technical solution.
`
`The ’087 patent discloses a problem to be solved in the “Background
`
`of the Invention” section. Specifically, when a customer selects a reward for
`
`purchase using points, a loyalty program typically will obtain the product on
`
`the customer’s behalf, but “[s]ome rewards are of a nature that human
`
`intervention is needed to redeem/fulfill a reward.” Ex. 1001, col. 1,
`
`ll. 31–38. For example, a travel agent or airline employee may be needed to
`
`assist with the purchase of an airline ticket. Id. at col. 1, ll. 38–46. The
`
`’087 patent states that there was “an opportunity to eliminate the human
`
`intervention to
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