Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 12
`Entered: December 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONNEXIONS LOYALTY, INC.,
`Petitioner,
`
`v.
`
`MARITZ HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case 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.
`
`DECISION
`Granting Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a)
`
`
`571-272-7822
`
`
`
`Paper 12
`Entered: December 20, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONNEXIONS LOYALTY, INC.,
`Petitioner,
`
`v.
`
`MARITZ HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case 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.
`
`DECISION
`Granting Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a)
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`
`I. INTRODUCTION
`Petitioner, Connexions Loyalty, 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). Patent Owner, Maritz Holdings Inc., filed a Preliminary
`Response (Paper 11, “Prelim. Resp.”) pursuant to 35 U.S.C. § 323. Pursuant
`to 35 U.S.C. § 324(a), the Director may not authorize a covered business
`method patent review unless the information in the petition, if unrebutted,
`“would demonstrate that it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable.” For the reasons that follow, we
`have decided to institute a covered business method patent review of
`claims 1–15 on the single ground of unpatentability asserted in the Petition.
`
`
`II. BACKGROUND
`A. 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
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`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.
`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”).
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`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.
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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. 6, l. 1–4, col. 7, ll. 15–18. If the transaction is
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`authorized, vendor system 208 provides vendor purchase 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. 28–41.
`
`
`B. Illustrative Claim
`Claim 1 of the ’087 patent 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
`interface
`interfacing with the vendor system;
`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;
`
`(API)
`
`for
`
`wherein said GUI includes instructions for receiving
`information regarding the program account hidden from the
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`participant and for providing the received program account
`information to the API;
`the
`receive
`to
`adapted
`is
`wherein
`said API
`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.
`
`C. The 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.
`
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`III. 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). Patent Owner’s proposed definition is
`nearly identical, but replaces a “practical knowledge and familiarity” with
`loyalty programs with one to two years of experience “designing and
`implementing” loyalty programs and “knowledge of vendor systems that go
`beyond . . . travel industry reservation systems.” Prelim. Resp. 20–21 (citing
`Ex. 2001 ¶¶ 45–46).
`Neither party explains in detail why its proposed level of ordinary
`skill in the art should be adopted nor how the different levels would affect
`the parties’ arguments. Further, there is little difference between the
`proposed definitions, particularly given that Petitioner’s proposed definition
`requires practical knowledge and familiarity with loyalty programs. Based
`on the current record, including our review of the ’087 patent and the types
`of problems and solutions described in the ’087 patent, we agree with
`Petitioner’s assessment of the level of ordinary skill in the art and apply it
`for purposes of this Decision. In particular, we do not see on this record
`why a person of ordinary skill in the art would need to have personally
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`designed and implemented loyalty programs, rather than having practical
`experience with such programs. Should the issue be further addressed
`during trial, we encourage the parties to explain in their papers why their
`respective definitions are correct and how the level of ordinary skill in the
`art impacts the parties’ arguments.
`
`
`B. Claim Interpretation
`We interpret claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.300(b) (2016).1 Under this standard, we
`interpret claim terms using “the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`1997); see In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)
`(“[The] broadest reasonable interpretation . . . is an interpretation that
`corresponds with what and how the inventor describes his invention in the
`specification.”). “Under a broadest reasonable interpretation, words of the
`claim must be given their plain meaning, unless such meaning is inconsistent
`
`
`1 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 (Oct. 11, 2018) (“This rule is effective on November 13,
`2018 and applies to all IPR, PGR and CBM petitions filed on or after the
`effective date.”).
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`with the specification and prosecution history.” Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`Petitioner proposes interpretations for the following three claim terms,
`which Patent Owner does not dispute.
`Term
`Proposed 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
`a program credit card account that is
`hidden from the participant of the
`program
`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
`
`“program account
`information”
`
`“shadow credit
`card”
`
`See Pet. 43–45; Prelim. Resp. 21–22. Based on the current record, we
`conclude for the reasons given in the Petition that the above interpretations
`are the broadest reasonable interpretations in light of the Specification of the
`’087 patent, and we adopt them for purposes of this Decision.
`The parties also address two other terms. Petitioner proposes an
`interpretation for “vendor system,” which Patent Owner contends is too
`narrow. See Pet. 45–46; Prelim. Resp. 22–23. Patent Owner proposes an
`interpretation for “application programming interface (API),” in response to
`Petitioner’s citation of two different portions of the Specification discussing
`API 122 and API 206. Prelim. Resp. 23–24 (citing Pet. 7–8). Petitioner
`does not propose an interpretation for the term “API.” We conclude that no
`interpretation of these terms is necessary to determine whether to institute a
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`trial in this proceeding, and we address the parties’ arguments regarding the
`Specification’s description of exemplary APIs below. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“Because we need only construe 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 infringement2 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). For the reasons stated below, we
`conclude that the ’087 patent is eligible for covered business method patent
`review.
`
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`2 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.). Pet. 39; Paper 10, 2; see Ex. 1003. The district court case is
`pending.
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`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
`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
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`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,
`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 Preliminary Response, arguing only that the ’087 patent is for a
`technological invention. Prelim. Resp. 25–39. On this record, we are
`persuaded 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). The
`following claim drafting techniques, for example, typically do not render a
`patent a “technological invention”:
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`(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.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64
`(Aug. 14, 2012) (“Trial Practice Guide”).
`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). In this
`case, we discuss both prongs of the inquiry, even though the discussion of
`only one is sufficient.
`
`
`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 Norman E. Knowles as support. Pet. 34–36 (citing
`Ex. 1004 ¶¶ 35–40, 108, 113–118, 124, 128–131, 136, 141–142). Claim 1
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`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 (participant, GUI, API, and vendor system). For example, the
`GUI includes instructions for receiving “participant-related information”
`from the 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 Exs. 1008–11 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
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`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). Thus, Petitioner persuasively shows on this record 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, 77 Fed. Reg. at 48,764 (examples a and
`b).
`
`Patent Owner responds that the claims of the ’087 patent recite novel
`and unobvious technological features, citing the testimony of Bruce Weiner
`as support. Prelim. Resp. 27–35 (citing Ex. 2001 ¶¶ 107–116, 118–126).
`According to Patent Owner, Petitioner improperly focuses on the recited
`processor, GUI, and API “in isolation, rather than properly considering the
`claims as a whole.” Id. at 27. Patent Owner lists the various items of
`information received and provided by the GUI and API, and argues that “the
`API is uniquely situated between the GUI and the vendor system” so that the
`GUI and API can “facilitate communication between two systems (the
`loyalty program and the vendor system) and permit the participant to interact
`directly with the vendor system.” Id. at 28–30. Patent Owner further
`contends that the Petition is deficient because Petitioner and Mr. Knowles
`did not provide a full novelty or obviousness analysis for any of the claims.
`Id. at 30.
`We do not agree with Patent Owner’s arguments on this record.
`For purposes of the technological invention exception, we consider whether
`the claim, as a whole, recites a “technological feature” that is novel and
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`unobvious over the prior art, not whether the petitioner asserts and
`demonstrates unpatentability of the claim under 35 U.S.C. §§ 102 or 103.
`See 37 C.F.R. § 42.301(b). The specific computer components recited in
`claim 1 (“processor,” “GUI,” and “API”) cannot be considered such a
`technological feature, as they are recited in generic terms and were known in
`the prior art, as Patent Owner acknowledges. See Prelim. Resp. 27. Nor do
`the various recitations of the GUI and API “providing” and “receiving”
`information in claim 1 qualify as a novel and unobvious technological
`feature, as it was known for such components to communicate information
`in general. What remains 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). We
`are not persuaded that the claim thus recites a “technological feature” that is
`novel and unobvious over the prior art. Again, the only functions attributed
`to the GUI and API are communicating information. 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 their recited functions. 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 are
`not persuaded on this record that the recited communication of program
`account information, participant-related information, and vendor-related
`information is different than the standard way GUIs and APIs were known
`to communicate information in general.
`
`
`
`17
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`
`Patent Owner also argues that Congress specifically intended to
`exclude patents like the ’087 patent from covered business method patent
`review, noting in particular statements regarding “novel software tools and
`graphical user interfaces that are used by electronic trading industry workers
`to implement trading or asset allocation strategies.” Prelim. Resp. 37–39
`(emphasis and citation omitted). We do not agree on this record. Claim 1
`does not recite anything about how the GUI is used by the participant to
`perform the purchase transaction (e.g., what the GUI displays to the
`participant, how the GUI does so technically, how the participant interacts
`with the GUI). The claim only requires that the GUI have instructions for
`communicating information to and from the other components, and 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.” Thus, we are not
`persuaded that the ’087 patent is for a technological invention based on the
`particular GUI limitations of claim 1.
`Finally, Patent Owner challenges Mr. Knowles’s supporting testimony
`on two bases. Id. at 18–20. First, Patent Owner argues that Mr. Knowles is
`not “an independent, unbiased witness” because he is an employee of
`Petitioner and has an interest in the outcome of this proceeding. Id. at 18
`(citing Ex. 1005, 2). We agree that Mr. Knowles’s employment impacts the
`weight to be given to his testimony, and we have taken it into account in
`evaluating Petitioner’s arguments. We are not persuaded that the testimony
`should be disregarded, though, particularly given that Mr. Knowles testifies
`as to his personal knowledge of the history of loyalty programs and cites
`evidence in the record supporting certain points made in his declaration.
`
`
`
`18
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`See, e.g., Ex. 1004 ¶¶ 27–40 (citing Exs. 1006–1011). Second, Patent
`Owner argues that Mr. Knowles lacks sufficient technical qualifications and
`experience designing and implementing loyalty programs. Prelim. Resp.
`19–20. We have reviewed Mr. Knowles’s curriculum vitae and conclude, on
`this record, that he is qualified to testify as to the matters addressed in his
`declaration. See Ex. 1004 ¶¶ 1–9; Ex. 1005, 1 (attesting to over 30 years of
`travel industry experience, 13 years of experience “guid[ing] the
`development of unique new loyalty programs, products, strategies and
`services,” and an “[i]ntimate technology background” with various related
`computer systems). Patent Owner will have the opportunity to
`cross-examine Mr. Knowles and explore the bases for his statements, and
`our ultimate determination of the weight to be given to his testimony will be
`based on the complete record at the end of trial.
`We agree with Petitioner on this record 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
`
`
`
`19
`
`
`
`CBM2018-00037
`Patent 7,134,087 B2
`
`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 redeem such rewards 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. As Petitioner points
`out, having to use a third-party organization to complete the purchase of
`certain rewards was “a business problem, not a technical one,” and the
`pu
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