Trials@uspto.gov
`Tel: 571–272–7822
`
`
`Paper 10
`Entered: May 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TERADATA OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`BERKLEY*IEOR,
`Patent Owner.
`____________
`
`Case CBM2019-00015
`Patent 7,596,521 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208, 35 U.S.C. § 328(a)
`
`
`
`
`
`Tel: 571–272–7822
`
`
`Paper 10
`Entered: May 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TERADATA OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`BERKLEY*IEOR,
`Patent Owner.
`____________
`
`Case CBM2019-00015
`Patent 7,596,521 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208, 35 U.S.C. § 328(a)
`
`
`
`
`
`
`CBM2019-00015
`Patent 7,596,521 B2
`
`I. INTRODUCTION
`Teradata Operations, Inc. (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting a covered business method (“CBM”) patent review of
`claims 1, 3–5, and 10–26 of U.S. Patent No. 7,596,521 B2 (Ex. 1001, “the
`’521 patent”) under Section 18 of the Leahy-Smith America Invents Act
`(“AIA”). Petitioner challenges the patentability of claims 1, 3–5, and 10–26
`under 35 U.S.C. §§ 101, 102, and 103. Berkley*IEOR (“Patent Owner”)
`filed a Corrected Preliminary Response. Paper 9 (“Prelim. Resp.”). We
`have authority to determine whether to institute a CBM patent review under
`35 U.S.C. § 324(a).
`Upon consideration of the Petition and Preliminary Response, we
`determine that Petitioner has not demonstrated sufficiently that the ’521
`patent is eligible for CBM patent review. Accordingly, we do not institute a
`CBM patent review of the ’521 patent.
`
`A. Related Matters
`Petitioner and Patent Owner inform us that the ’521 patent is the
`subject of Berkeley*IEOR d/b/a/ B*IEOR v. WW Grainger, Inc. et al., in the
`District Court in the North District of Illinois, Case No. 1:17-cv-07472. Pet.
`1; Paper 5, 2. Patent Owner also indicates that the ’521 patent and other
`related patents are the subject of the following CBM patent review petitions:
`CBM2019-00016, CBM2019-00009, CBM2019-00013, CBM2019-00011,
`and CBM2019-00014. Paper 5, 2.
`
`B. The ’521 Patent
`The ’521 patent is titled “Process For Determining Object Level
`Profitability” and issued on September 29, 2009. Ex. 1001, (45), (54). The
`
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`CBM2019-00015
`Patent 7,596,521 B2
`’521 patent characterizes its disclosed process as giving “management profit
`measures tailored to its need for accurate decision oriented profit
`information required to manage a large organization based on profit
`measurement.” Id. at (57). More specifically, the ’521 patent expresses that
`“the present invention is concerned with a detail profit metric (DPM)
`designed to be a computer database application (i.e. software) for
`profitability measurement.” Id. at 5:57–60. The ’521 patent further explains
`the following:
`[T]he invention is designed to utilize massively parallel
`computing operations using relational database management
`techniques enabling profit measurement at a level not available
`today in a large individual customer scale business. This
`invention does this through a consistent application of measures
`[] to a class of business entities [] which represent the smallest
`common component of profit measurement desired—the Profit
`Object.
`Id. at 5:65–6:5.
`By way of example, the ’521 patent provides that:
`Different businesses have different objects of detailed profit
`measurement. Examples of profit measurement objects include
`an airline using “seat” as the profit object, an insurance company
`using a “policy” object or a bank using an “account” object—
`these objects represent the lowest level of detail required to
`support consistent internal multi-dimensional internal profit
`analyses.
`Id. at 7:28–35.
`
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`CBM2019-00015
`Patent 7,596,521 B2
`Figure 4 of the ’521 patent is reproduced below.
`
`
`
`Figure 4 “shows the inventions’ data relationships.” Id. at 5:39. The
`
`’521 patent also explains:
`
`The DPM system is designed for Rules to be applied to
`any object without loss of integrity of output. This design
`features allows the user to incrementally migrate objects to
`increased measurement precision as justified. This valuable
`piecewise increase in functionality is possible due to DPM’s
`combination of rules and data in a mathematical set theoretic
`framework (41). This approach allows for a relational database
`management system implementation (42). It is nearly impossible
`to develop and maintain procedural based software with as much
`flexibility and with the capability to simultaneously support the
`number of calculation permutations required by DPM.
`Id. at 10:35–46.
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`CBM2019-00015
`Patent 7,596,521 B2
`
`C. Illustrative Claim
`Petitioner challenges claims 1, 3–5, and 10–26 of the ’521 patent.
`Claim 1 is independent. Claims 3–5 and 10–26 ultimately depend from
`claim 1. Claim 1 is illustrative and reproduced below.
`level
`1.
` A process for determining object
`profitability in a computer, comprising the steps of:
`[a] providing a relational database management
`system operable in association with a computer;
`[b] preparing
`information
`to be accessed
`electronically
`through
`the relational database
`management system;
`[c] establishing, in the relational database, rules for
`processing the prepared information;
`[d] using the relational database management
`system to independently calculate at least one
`marginal value of profit for each object being
`measured using the established rules as applied to a
`selected set of prepared information;
`[e] using the relational database management
`system
`to calculate a fully absorbed profit
`adjustment value for each object being measured;
`and
`[f] combining the at least one marginal value of
`profit and the fully absorbed profit adjustment value
`to create a measure for object level profitability.
`Ex. 1001, 30:53–31:3 (with added letter designations [a]–[f] to facilitate
`discussion of the claim elements).
`
`D. Asserted Grounds of Unpatentability
`Petitioner proposes eleven grounds of unpatentability of claims 1, 3–
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` 5
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`CBM2019-00015
`Patent 7,596,521 B2
`5, and 10–26 of the ’521 patent. Pet. 10. The proposed grounds are as
`follows:
`Ground
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`
`
`Basis
`Reference(s)
`§ 101
`n/a
`§ 102
`E&Y1
`§ 103
`E&Y
`§ 102
`Blain2
`§ 103
`Blain
`§ 102
`SAP-IS-B3
`§ 103
`SAP-IS-B
`§ 103
`E&Y and Blain
`§ 103
`E&Y, Blain and SAP-IS-B
`§ 103
`E&Y, Blain, and Kimball4
`E&Y, Blain, SAP-IS-B, and Kimball § 103
`
`Claims
`1, 3–5, 10–26
`1, 3–5, 10–26
`1, 3–5, 10–26
`1, 3–4
`1, 3–4
`1, 3–5, 10
`1, 3–5, 10
`1, 3–5, 10–26
`1, 3–5, 10–26
`11–26
`11–26
`
`
`1 Ernst & Young, The Ernst & Young Guide to Performance Measurement
`for Financial Institutions (1995) (“E&Y”) (Ex. 1005).
`2 ASAP World Consultancy and Jonathon Blain, Using SAP R/3 (1996)
`(“Blain”) (Ex. 1006).
`3 Detailed Functions – System R/3 – IS-B – The SAP Industry Solution For
`Banks (“SAP-IS-B”) (Ex. 1007). SAP-IS-B is said to be a “Certified
`Translation of Funktionen im Detail – Is-B-System R/3:
`Einzelgeschaftskalkulation/Meldewesean, Waldorf, Germany: SAP AG
`(1996).” Pet. ii.
`4 Ralph C. Kimball, Calculating and Using Risk-adjusted ROE for Lines of
`Business, Bank Accounting & Finance (Fall 1993) (“Kimball”) (Ex. 1010).
`
` 6
`
`
`
`
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`CBM2019-00015
`Patent 7,596,521 B2
`
`II. ANALYSIS
`A. Claim Construction
`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) (2018).5 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
`with the specification and prosecution history.” Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`Petitioner generally asserts that the claims should be given their
`broadest reasonable interpretation, but does not offer an express construction
`
`
`5 The Petition in this proceeding was filed on November 12, 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.”).
`
` 7
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`CBM2019-00015
`Patent 7,596,521 B2
`for any claim term. Pet. 14. Patent Owner also recognizes that the broadest
`reasonable interpretation standard applies in this proceeding, and proposes
`constructions for three phrases associated with claim 1. Prelim. Resp. 21–
`33. Patent Owner summarizes its proposed constructions as follows:
`Claim 1 limitation
`Plain Meaning
`Claim 1[b] “relational database
`the layer of architecture that
`management system” (“RDBMS”)
`includes software and hardware
`responsible for handling access to
`the files of the database
`
`using the RDBMS itself to perform
`profitability calculations (rather
`than traditional software)
`
`the RDBMS performs certain profit
`value calculations “independently”
`of each other, whereas one
`calculation does not depend on the
`result of another.
`
`
`Claim 1[d(i)] “using the relational
`database management system to . . .
`calculate”
`
`Claim 1[d(ii)] “using the relational
`database management system to
`independently calculate”
`
` Id. at 32–33.6
`For purposes of this Decision, we adopt the above-noted claim
`constructions offered by Patent Owner.7 We determine that no additional
`express claim construction is required. See Vivid Techs., Inc. v. Am. Sci. &
`
`6 As discussed in more detail below, Patent Owner breaks down limitation
`1[d] into three separate limitations “1[d(i)],” “1[d(ii)],” and “1[d(iii)].” This
`Decision follows Patent Owner’s naming convention in that respect.
`Limitation 1[d(i)] refers to the act of “using the relational database
`management system to . . . calculate.” Limitation 1[d(iii)] refers to the
`requirement that calculating is done “independently.”
`7 We identify support for these constructions on pages 14–16 of this
`Decision.
`
` 8
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`CBM2019-00015
`Patent 7,596,521 B2
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”).
`
`B. Covered Business Method Patent Review Eligibility
`Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
`proceeding only for a “covered business method patent.” 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 also 37 C.F.R. § 42.301 (defining “[c]overed business
`method patent” and “[t]echnological invention”). To determine whether a
`patent is eligible for a covered business method patent review, the focus is
`on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340
`(Fed. Cir. 2016) (“[Section] 18(d)(1) directs us to examine the claims when
`deciding whether a patent is a [covered business method] patent.”); Unwired
`Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (holding
`CBM patents “are limited to those with claims that are directed to methods
`and apparatuses of particular types and with particular uses ‘in the practice,
`administration, or management of a financial product or service’” (emphasis
`added)); Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. 48,734, 48,736 (Comment 8) (Aug. 14, 2012).
`As set forth above, the definition of a CBM patent contemplates two
`distinct inquiries: (1) the financial product or service inquiry and (2) the
`technological invention exception. Because it is dispositive of this
`
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`CBM2019-00015
`Patent 7,596,521 B2
`proceeding, we focus our analysis on whether the ’521 patent meets the
`technological invention exception.
`
`1. Technological Invention
`A patent that includes claims that would otherwise be eligible for
`treatment as a covered business method is nevertheless precluded from such
`review if the claims cover only “technological invention[s],” as defined by
`37 C.F.R. § 42.301(b). Because it is Petitioner’s burden to “demonstrate that
`the patent for which review is sought is a covered business method patent,”
`it follows that it is also Petitioner’s burden to demonstrate that the claimed
`subject matter is not directed to a technological invention. See 37 C.F.R.
`§ 42.304(a).
`To determine whether a patent is for a technological invention, we
`consider the following: “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). Both prongs must be satisfied in order to exclude the patent as
`a technological invention. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
`F.3d 1306, 1326–27 (Fed. Cir. 2015); Apple Inc. v. Ameranth, Inc., 842 F.3d
`1229, 1240 (Fed. Cir. 2016). The following claim-drafting techniques
`typically do not render a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM
`or point of sale device.
`(b) Reciting the use of known prior art technology to accomplish
`a process or method, even if that process or method is novel and
`non-obvious.
`
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`10
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`CBM2019-00015
`Patent 7,596,521 B2
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`14, 2012). The Federal Circuit has held that a claim does not include a
`“technological feature” if its “elements are nothing more than general
`computer system components used to carry out the claimed process.” Blue
`Calypso, 815 F.3d at 1341; see also Versata, 793 F.3d at 1327 (“[T]he
`presence of a general purpose computer to facilitate operations through
`uninventive steps does not change the fundamental character of an
`invention.”).
`
`Here, it is clear that Petitioner and Patent Owner disagree as to
`whether the claims of the ’521 patent (1) recite a technological feature that is
`novel and unobvious over the prior art, and (2) solve a technical problem
`using a technical solution.
`a. Petitioner’s Arguments on CBM Eligibility
`In connection with first prong, Petitioner contends that all the features
`of claims 1, 3–5, and 10–26 the ’521 patent are present or accounted for by
`the prior art. Pet. 57–127. Thus, Petitioner has taken the view that the
`claims do not include a novel and nonobvious technological feature.
`Petitioner specifically directs our attention to claim elements that are
`“arguably directed to a ‘technology feature’,” namely the claimed
`“‘database,’ ‘relational database management system,’ and ‘structured query
`language (SQL).’” Pet. 6. Petitioner, however, contends that none of those
`particular features is novel or nonobvious. Id. at 6–7.
`
`With respect to the second prong, Petitioner takes the position that
`“the claims are neither directed toward solving a technical problem nor
`
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`CBM2019-00015
`Patent 7,596,521 B2
`provide a technical solution.” Id. at 7. To that end, Petitioner contends the
`following:
`Calculating profit using a general ledger is a business problem,
`not a technical one. Ex[1016] ¶118. Nothing in the claims
`recites a technical solution. Instead, the claims merely include
`general descriptions of desired functionality using traditional
`prior art structures. Apple, Inc. v. Ameranth, Inc., 2016 WL
`6958650 at *6 (Fed. Cir. 2016) (claims not technological,
`because “the claims did not recite a solution to this problem, as
`they do not include recitations about how to [perform the claimed
`function]”).
`Id. Petitioner, thus, distills the claims of the ’521 patent down to an act of
`“[c]alculating profit using a general ledger.” Id.
`b. Patent Owner’s Arguments on CBM Eligibility
`Patent Owner has a different view in conjunction with both prongs.
`
`Specifically, Patent Owner contends that limitation 1[d] of claim 1 recites a
`technical feature that is novel and non-obvious, and that such feature
`conveys that the claims provide a technical solution to a technical problem.
`Prelim. Resp. 34–39. Patent Owner argues that limitation 1[d] actually
`includes three separate limitations, which we reproduce below in the manner
`presented by Patent Owner:
`Patent Owner refers to the phrase “using the relational database
`management system to ... calculate” as limitation 1[d(i)], the
`phrase “independently calculate” as limitation 1[d(ii)], and the
`phrase “using the established rules as applied to a selected set of
`prepared information” as limitation 1[d(iii)].
`Id. at 25.
`
`Patent Owner argues that Petitioner has not accounted adequately for
`claim 1 requiring that the RDBMS itself make the recited calculations, i.e.,
`independent calculations of a marginal value of profit (limitations 1[d(i)]
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`CBM2019-00015
`Patent 7,596,521 B2
`and 1[d(ii)]). Id. at 36, 39. In doing so, Patent Owner submits that
`Petitioner has not established that those features are non-novel or obvious
`over the cited prior art references. Id. at 36.
`Patent Owner also argues that the inventor of the ’521 patent, Mr.
`Richard Tad Lepman, recognized that having the RDBMS perform the
`calculations, rather than “conventional application software” (id. at 28),
`“provides improved computational efficiencies not disclosed in the
`references offered by Petitioner” (id. (citing Ex. 2001 ¶¶ 68–71 (Declaration
`of Jon Scarbrough))), and “results in significantly improved performance
`relative to procedural based software” (id. at 38 (citing Ex. 1001, 10:42–
`47)). Patent Owner further contends that the claim requirement that the
`RDBMS “independently calculate” (limitation 1[d(ii)]) is a “specific way for
`the computer to achieve greater speed and efficiency in calculating
`profitability” in permitting “massively parallel computing capability.” Id.
`(citing Ex. 2001 ¶¶ 75, 81–85; Ex. 1001, 2:6–7).
`c. Discussion
`
`(1) Technological Feature that is Novel and Unobvious over the
`Prior Art
`In accounting for the “1[d]” claim feature, Petitioner generally
`contends that the prior art describes “independently calculat[ing] marginal
`values of profit.” See, e.g., Pet. 28 (citing Ex. 1007, 36; Ex. 1016 ¶¶ 491–
`496); id. at 51 (citing Ex. 1005, 41–45, 56, 104, 129, 140, 182–184, 204,
`253–258, 275–277, 283, 320; Ex. 1016 ¶¶ 268–275); id. at 85–86 (citing
`Ex. 1006, 207–217, 304–313; Ex. 1016 ¶¶ 417–437); id. at 95 (citing
`Ex. 1007, 10, 36–42, 61; Ex. 1016 ¶¶ 481–496). Largely absent, however,
`from the Petition and the bulk citations noted above is any cogent or
`
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`CBM2019-00015
`Patent 7,596,521 B2
`meaningful explanation that the prior art shows an RDBMS, itself, that is
`performing the necessary profit calculations.
`For instance, in discussing the SAP-IS-B reference, Petitioner non-
`specifically contends that “SAP-IS-B uses an RDBMS to perform its profit
`calculations.” Pet. 95. In support of that statement, Petitioner points to
`paragraphs 481–483 of Dr. Weber’s Declaration testimony. Review of those
`paragraphs, however, reveals only general reference to “conventional
`technology of an RDBMS” (Ex. 1016 ¶ 483) but no meaningful assessment
`that any RDBMS is performing the required profitability calculations.
`Petitioner also neglects to provide adequate analysis as to why calculations
`that are discussed in SAP-IS-B should be attributed to an RDBMS rather
`than other software applications that are not the RDBMS, as is asserted by
`Patent Owner and its declarant. See, e.g., Prelim. Resp. 8–11 (citing
`Ex. 2001 ¶¶ 58–67). In that respect, Mr. Scarbrough analyzes SAP-IS-B’s
`three-tiered architecture and concludes that the cost accounting and
`profitability calculations are performed within the “applications servers,” not
`the RDBMS. Ex. 2001 ¶¶ 58–62.
`Petitioner’s cursory and wanting treatment of the pertinent claim
`requirement, in our view, is echoed throughout the various prior art grounds
`of unpatentability offered in the Petition. For instance, Petitioner contends
`that E&Y discloses using an RDBMS to aggregate data from multiple
`product-account-based databases, and then using this data to calculate profit
`values. Pet. 51–53. Petitioner further contends that Blain discloses “using
`rules, established in a relational database, to perform profit calculations,”
`and asserts the overall system of Blain “automatically updates a subtotal of a
`balance sheet account for every business transaction.” Id. at 85–86 (citing
`
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`Patent 7,596,521 B2
`Ex 1006 ¶¶ 207, 217, 304–313; Ex. 1016 ¶¶ 431–437). Petitioner fails to
`explain persuasively, however, why the identified disclosures teach or
`suggest using an RDBMS to perform the recited profit calculations, as
`opposed to using the RDBMS to facilitate the retrieval of data that is
`ultimately used by a different component to calculate profit values. On the
`record at hand, Petitioner has not demonstrated adequately that the
`requirements of limitation 1[d] pertaining to independent profitability
`calculation by an RDBMS are non-novel or obvious.
`
`(2) Solving a Technical Problem Using a Technical Solution
`We have also evaluated Patent Owner’s contention that the claims of
`
`the ’521 patent solve a technical problem with a technical solution. To that
`end, and as noted above, Patent Owner contends that use of the RDBMS to
`perform profitability calculations “results in significantly improved
`performances relative to procedural based software” and represents a
`“specific way for the computer to achieve greater speed and efficiency in
`calculating profitability.” Prelim. Resp. 38 (citing Ex. 2001 ¶¶ 75, 81–85).
`The cited testimony of Patent Owner’s declarant, Mr. Scarbrough, also
`supports that such efficiency benefits manifest through the use of a RDBMS
`in making the pertinent calculations.
`Patent Owner also points to content of the ’521 patent discussing that
`the use of the RDBMS to perform the required calculations provides more
`“flexibility” than “procedural based software.” Id. (quoting Ex. 1001,
`10:42–47). The prosecution history also supports Patent Owner’s position
`as it conveys that during prosecution before the examiner, the inventor of the
`’521 patent, Mr. Lepman, testified that “[d]ue to the scale and complexity of
`the analysis, I have implemented the invention within a relational database,
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`CBM2019-00015
`Patent 7,596,521 B2
`which has not been done before and allows the information to be analyzed in
`hours instead of days for a major Bank using parallel calculations
`processes.” Ex. 1015, 412; see also Prelim. Resp. 6–7 (citing Ex. 1015,
`412).
`As discussed above, the record before us, including: (1) the ’521
`patent itself; (2) the testimony of Patent Owner’s declarant; and (3) the
`prosecution history of the ’521 patent, provides support for Patent Owner’s
`contentions that the above-noted claim recitations describe a distinctive
`software-based process that harnesses benefits to computer performance. A
`process that improves computer efficiency and permits desirably faster
`calculation performance suggests a technical solution to a technical problem.
`It was Petitioner’s burden to support its contention that the claims of the
`’521 patent do not solve a technical problem using a technical solution. Pet.
`7. On the record at hand, we are not satisfied that Petitioner has done so.
`
`2. Conclusion
`We have considered all the arguments presented in assessing whether
`the technological invention exception applies. For the reasons discussed
`above, we determine that Petitioner has failed to carry its burden to show
`that the ’521 patent is not for a technological invention. We, thus, conclude
`that Petitioner fails to demonstrate sufficiently that the ’521 patent is a CBM
`patent eligible for review. Accordingly, we do not institute a CBM review
`of claims 1, 3–5, and 10–26 of the ’521 patent.8
`
`
`8 Because we have determined that Petitioner has not established that the
`’521 patent is eligible for CBM review, we need not address the merits of
`Petitioner’s patentability challenges to these claims presented in the Petition.
`
`
`
`16
`
`
`
`
`
`CBM2019-00015
`Patent 7,596,521 B2
`
`
`III. ORDER
`It is hereby ORDERED that a covered business method patent review
`under 35 U.S.C. § 324(a) is denied.
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`
`
`CBM2019-00015
`Patent 7,596,521 B2
`For PETITIONER
`
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`Jamie Lynn
`jamie.lynn@bakerbotts.com
`
`
`For PATENT OWNER
`
`Matthew Werber
`mwerber@nixonpeabody.com
`
`Jennifer Hayes
`jenhayes@nixonpeabody.com
`
`
`18
`
`
`
`
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