Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: November 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`ELECTRONIC RECEIPTS DELIVERY SYSTEMS, LLC,
`Patent Owner.
`
`CBM2020-00015
`Patent 8,534,551 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 30
`Entered: November 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`ELECTRONIC RECEIPTS DELIVERY SYSTEMS, LLC,
`Patent Owner.
`
`CBM2020-00015
`Patent 8,534,551 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
`
`
`CBM2020-00015
`Patent 8,534,551 B2
`
`
`I.
`
`INTRODUCTION
`
`Square, Inc. (“Petitioner”) filed a Petition requesting covered business
`
`method (“CBM”) patent review of claims 1–20 of U.S. Patent No. 8,534,551
`
`B2 (Ex. 1001, “the ’551 patent”). Paper 1 (“Pet.”). Electronic Receipts
`
`Delivery Systems, LLC (“Patent Owner”) did not file a Preliminary
`
`Response. However, Mr. Leigh Rothschild, named inventor of the
`
`’551 patent, allegedly acting as representative of Patent Owner, filed a
`
`Preliminary Response. Paper 7 (“Prelim. Resp.”). After considering
`
`Mr. Rothschild’s filing and the information presented in the Petition, we
`
`instituted a CBM patent review. See Paper 12 (“Decision on Institution” or
`
`“Dec.”). In the Decision on Institution, we concluded that the Petition
`
`demonstrated that at least one claim of the ’551 patent is more likely than
`
`not unpatentable under the asserted grounds. Dec. 7, 4344.
`
`Pursuant to our Order, Patent Owner made a proper appearance
`
`through counsel of record, and obtained leave to file a late Patent Owner
`
`Response. Papers 10, 19, 20, 23. Patent Owner filed a Response
`
`challenging only whether Petitioner had standing to file the Petition in this
`
`proceeding. Paper 25 (“PO Resp.”). Petitioner filed a Reply addressing the
`
`standing issue. Paper 28 (“Reply”). Patent Owner was permitted to file a
`
`sur-reply, but did not do so. See 37 C.F.R. § 42.23(b); Paper 13, 8;
`
`Paper 23, 5. No hearing was held in this proceeding. Paper 29.
`
`We have jurisdiction under 35 U.S.C. § 6. In this Final Written
`
`Decision, the applicable evidentiary standard is a preponderance of the
`
`evidence. See 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). And, this Final
`
`Written Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R.
`
`§ 42.73.
`
`2
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`CBM2020-00015
`Patent 8,534,551 B2
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`For the reasons explained below, we conclude that Petitioner has
`
`demonstrated by a preponderance of the evidence that claims 120 are
`
`unpatentable as being directed to ineligible subject matter. We also
`
`conclude that claims 120 are unpatentable under the asserted prior art
`
`grounds.
`
`A.
`
`The ’551 Patent (Ex. 1001)
`
`The ’551 patent, entitled “System and Method for Issuing Digital
`
`Receipts for Purchase Transactions Over a Network,” was filed on
`
`February 1, 2011, and issued on September 17, 2013. Ex. 1001, codes (10),
`
`(54), (22), (45). The ’551 patent discloses that customers routinely receive
`
`receipts for goods or services purchased at the time of purchase, and the
`
`receipts are customarily in paper form. Id. at 2:5–7. The ’551 patent further
`
`discloses that the problem with paper receipts is that they are often lost or
`
`discarded by the purchaser. Id. at 2:17–18. Therefore, as described in the
`
`’551 patent, a need exists for techniques to facilitate providing customers
`
`with receipts for goods or services purchased that can be accessible by the
`
`customer at a time after the point of sale. Id. at 2:22–25. Figure 1,
`
`reproduced below, illustrates a system for issuing and managing credit card
`
`accounts.
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`3
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`Patent 8,534,551 B2
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`
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`Figure 1 illustrates system 100 for issuing and managing a plurality of
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`credit cards. Id. at 4:11–12. System 100 includes point-of-sale (“POS”)
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`terminal 102 for completing a purchasing transaction and input/output
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`(“I/O”) customer transaction terminal 104. Id. at 4:12–15. I/O terminal 104
`
`includes electronic data capture (“EDC”) swipe reader 120 for reading
`
`information from credit card 108, display 122 for providing information to a
`
`customer, keypad 124 for customer entry of information, and touch screen
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`126 for receiving a customer’s signature. Id. at 4:15–20. I/O terminal 104
`
`may also include a printing mechanism for printing receipts; alternatively
`
`the POS terminal may include printer 130 for printing receipts, terms, offers,
`
`etc. Id. at 4:20–23. System 100 further includes database 106 that includes
`
`records on customers or holders of national credit cards. Id. at 4:23–25.
`
`4
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`CBM2020-00015
`Patent 8,534,551 B2
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`Figure 6, reproduced below, illustrates a method for issuing digital
`
`receipts for purchase transactions.
`
`
`
`Figure 6 is a flow diagram illustrating a method for issuing digital
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`receipts for purchase transactions. Id. at 3:60–61. At step 602, a customer
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`registers to receive digital receipts. Id. at 8:27–28. After the customer is
`
`registered to receive digital receipts, at step 604, the customer initiates a
`
`purchase transaction with a merchant. Id. at 9:15–17. At step 606, terminal
`
`102 reads the credit card information via I/O terminal 104 and uses this
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`CBM2020-00015
`Patent 8,534,551 B2
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`information to receive the credit card holder’s information from database
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`106. Id. at 9:23–26. At step 608, the customer completes the purchase by
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`selecting which credit card account she would like to use. Id. at 9:26–28.
`
`At step 610, the processor of terminal 102 then selects the relevant purchase
`
`receipt information and forwards this information to the account holder at a
`
`predetermined location. Id. at 9:34–36.
`
`B.
`
`Illustrative Claim
`
`Petitioner challenges all 20 claims of the ’551 patent. Pet. 3. Claims
`
`1, 11, and 16 are independent. Ex. 1001, 10:56–11:8, 11:38–58, 12:13–35.
`
`Claims 2–10 depend directly or indirectly from claim 1, claims 12–15
`
`depend directly or indirectly from claim 11, and claims 17–20 depend
`
`directly or indirectly from claim 16. Id. at 11:9–37, 11:59–12:12, 12:36–58.
`
`Illustrative claim 1 is reproduced below with each limitation enumerated for
`
`ease of reference.
`
`A method for issuing a purchase transaction receipt over a
`1.
`network, the method comprising:
`
`[i] receiving, by at least one server in communication with
`the network, a registration request to receive digital receipts in
`association with a first credit card account;
`
`[ii] storing, by the at least one server, at least one first
`customer record in a database, the at least one first customer
`record associating the first credit card account with a destination
`associated with a first customer;
`
`[iii] receiving, at the at least one server from a point-of-
`sale terminal, information identifying the first credit card account
`and information about a transaction;
`
`[iv] retrieving, by the at least one server, the at least one
`first customer record from the database based on the information
`identifying the first credit card account;
`
`6
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`CBM2020-00015
`Patent 8,534,551 B2
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`[v] initiating a charge of an amount of the transaction to
`the first credit card account; and
`
`[vi] automatically transmitting a digital receipt for the
`transaction to the destination associated with the first customer
`without input from the first customer.
`
`Id. at 10:56–11:8.
`
`C. Grounds of Unpatentability
`
`This proceeding involves the following grounds:
`
`Claims Challenged
`
`Statutory
`Basis
`§ 101
`1–20
`1, 7, 8, 11, 13–16, 19, 20 § 102(b)
`2, 12, 17
`§ 103(a)
`1, 7, 8, 11, 13–16, 19, 20 § 103(a)
`1, 7, 8, 11, 13–16, 19, 20 § 103(a)
`2, 12, 17
`§ 103(a)
`
`Reference(s)/Basis
`
`Patent-eligibility
`Moran1
`Moran, Schultz2
`Moran
`Moran, Tognazzini3
`Moran, Tognazzini, Schultz
`
`Petitioner supports its assertions of unpatentability with a declaration
`
`from Jonathan Hochman. Ex. 1004 (“Hochman Decl.”).
`
`D.
`
`Related Matters
`
`The ’551 patent is involved in the following district court litigations:
`
`Electronic Receipts Delivery Systems LLC v. Shake Shack Enterprises, LLC,
`
`Case No. 1:19-cv-02949 (N.D. Ohio); and Electronic Receipts Delivery
`
`Systems LLC v. Int’l Restaurant Mgmt. Group, Inc., Case No. 1:19-cv-25256
`
`(S.D. Fla.). Pet. 1.
`
`
`1 U.S. Patent No. 6,185,542 B1, issued Feb. 6, 2001 (“Moran”) (Ex. 1009).
`2 U.S. Patent App. Pub. No. 2001/0029483 A1, published Oct. 11, 2001
`(“Schultz”) (Ex. 1012).
`3 U.S. Patent No. 5,739,512, issued Apr. 14, 1998 (“Tognazzini”)
`(Ex. 1008).
`
`7
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`CBM2020-00015
`Patent 8,534,551 B2
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`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`For petitions filed on or after November 13, 2018, “a claim of a
`
`patent . . . shall be construed using the same claim construction standard that
`
`would be used to construe the claim in a civil action under 35 U.S.C.
`
`§ 282(b), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in
`
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`
`§ 42.200 (2019); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14
`
`(Fed. Cir. 2005).
`
`The parties do not identify claim constructions necessary for the
`
`Board to resolve the issues in this proceeding. Pet. 12; see generally Prelim.
`
`Resp.; PO Resp. We determine that it is unnecessary to expressly construe
`
`any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms in controversy
`
`must be construed and only to the extent necessary to resolve the
`
`controversy).
`
`B.
`
`CBM Patent Review Eligibility
`
`Under § 18(a)(1)(E) of the Leahy-Smith America Invents Act, Pub. L.
`
`No. 112-29, 125 Stat. 284 (2011) (“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,
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`8
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`CBM2020-00015
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`except that the term does not include patents for technological inventions.”
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`AIA § 18(d)(1); see also 37 C.F.R. § 42.301 (defining “[c]overed business
`
`method patent” and “[t]echnological invention”). A patent need have only
`
`one claim directed to a covered business method to be eligible for review.
`
`See 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). Thus,
`
`we must “examine the claims when deciding whether a patent is a CBM
`
`patent.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed.
`
`Cir. 2016).
`
`In our Decision on Institution, we found that Petitioner had standing
`
`to file the Petition, had shown that claims of the ’551 patent were directed to
`
`a financial product or service, and had shown that the claims were not for
`
`“technological inventions.” Dec. 916. The entirety of Patent Owner’s
`
`Response in this case focuses on a challenge to Petitioner’s standing. For
`
`instance, Patent Owner contends that Petitioner has not shown sufficient
`
`standing because: (a) Petitioner’s standing assertions are insufficient; (b)
`
`Petitioner has not been sued for or been charged with infringement; and (c)
`
`Petitioner has not shown that it is a real party-in-interest or privy of a party
`
`sued or charged with infringement. PO Resp. 217. We address each of
`
`these issues in our analysis of Petitioner’s standing below.
`
`1.
`
`Petitioner’s Standing
`
`Section 18(a)(1)(B) of the AIA requires that Petitioner, or its real
`
`party in interest or privy, “has been sued for infringement of the patent or
`
`has been charged with infringement under that patent.”
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`9
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`CBM2020-00015
`Patent 8,534,551 B2
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`The Petition states that “its customers and real parties-in-interest –
`
`Shake Shack Enterprises, LLC (‘Shake Shack’) and International Restaurant
`
`Management Group, Inc. (‘IRMG’) – have been sued for infringement based
`
`on their alleged use of Petitioner’s point-of-sale products and services in the
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`related district court litigations,” and “its products and services have been
`
`‘charged with infringement’ in the Shake Shack and IRMG cases.” Pet. 9–
`
`10 (citing Ex. 1016, Ex. 1017, Ex. 1018 (complaints and service)).
`
`Petitioner further identifies Shake Shack and IRMG as real parties-in-
`
`interest for purposes of this proceeding in its mandatory notice information.
`
`Id. at 1.
`
`(a) Petition’s Standing Assertions are Sufficient
`
`Patent Owner argues that the Petition’s statements regarding standing
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`are “most limited.” PO Resp. 45. Relying on an unrelated Board case,
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`Patent Owner contends that where a Petitioner makes “only the most limited
`
`statements regarding standing,” the assertion is conclusory and the Petition
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`should have been denied. Id. (emphasis omitted).4 Patent Owner
`
`acknowledges, however, that Petitioner supports its contention of standing
`
`with two complaints and an answer filed in the underlying district court
`
`litigation. Id. at 6 (referring to Exhibits 1016, 1017, and 1018). These
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`documents, Petitioner points out, show that, although Petitioner had not been
`
`directly sued for infringement, it has been accused of infringing the
`
`’551 patent, at a minimum because Patent Owner’s Answer and Affirmative
`
`Defenses to Petitioner’s Complaint in Intervention in the Shake Shack case
`
`
`4 Patent Owner cites Global Tel*Link Corp. v. Securus Technologies, Inc.,
`CBM2014-00166, Paper 17 (PTAB Feb. 6, 2015) (Decision Denying
`Institution).
`
`10
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`CBM2020-00015
`Patent 8,534,551 B2
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`charge Petitioner with infringement. Reply 56, 89 (referring to Exhibit
`
`1018).
`
`We agree with Petitioner that the statements in the Petition concerning
`
`standing, though succinct, are not conclusory and insufficient because they
`
`state facts, together with evidence of record, that show sufficiently the
`
`underlying district court litigation filings in which Patent Owner accuses
`
`Petitioner’s products of infringing (a fact that Patent Owner does not refute).
`
`The Petition also provides several reasons for Petitioner’s standing, in
`
`addition to alleging that Petitioner’s products and services have been
`
`accused of infringement. Pet. 9. The Petition also states that Petitioner’s
`
`customers, the defendants in the underlying district court limitation, are
`
`Petitioner’s real parties-in-interest and privies. Id. at 910. The Petition
`
`cites support for these statements with filings in the district court litigation,
`
`as stated above. And, in particular, Exhibit 1018, the Answer and
`
`Affirmative Defenses filed by Patent Owner in district court, in response to
`
`Petitioner’s Complaint in Intervention, states that Petitioner “directly
`
`infringes, indirectly infringes, contributes to infringement or induces
`
`infringement of at least one of the valid and enforceable claims of [the
`
`’551 patent], either literally or under the doctrine of equivalents.” Ex. 1018,
`
`4. Accordingly, the Petition makes a credible and factually-supported
`
`assertion of standing that is sufficient to consider on the merits. Patent
`
`Owner’s argument to the contrary is not persuasive.
`
`(b) Petitioner Charged With Infringement
`
`Patent Owner argues that Petitioner has not been sued for
`
`infringement. PO Resp. 67. According to Patent Owner, Petitioner’s
`
`standing stems from a mere allegation that “its products and services have
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`11
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`CBM2020-00015
`Patent 8,534,551 B2
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`been ‘charged with infringement’ in the underlying related district court
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`litigation.” Id. at 7. Patent Owner asserts that the statement is “not true,”
`
`because Petitioner “Square Inc.” is nowhere mentioned in the complaint. Id.
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`Rather, the alleged standing, according to Patent Owner, is conferred via
`
`Petitioner’s products, not a charge of infringement against Petitioner itself.
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`Id. Therefore, there is no proof that Petitioner “has been explicitly charged”
`
`with infringement. Id. at 8. Patent Owner’s argument is not persuasive.
`
`The Petition does assert that Petitioner’s products and services have
`
`been “charged with infringement,” Pet. 10, but that statement does not
`
`foreclose reading that allegation as a charge of infringement against
`
`Petitioner. Under 37 C.F.R. § 42.302(a), “[c]harged with infringement
`
`means a real and substantial controversy regarding infringement of a
`
`covered business method patent exists such that the petitioner would have
`
`standing to bring a declaratory judgment action in Federal court.” “[W]here
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`a patent holder accuses customers of direct infringement based on the sale or
`
`use of a supplier’s equipment, the supplier has standing to commence a
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`declaratory judgment action if,” for instance, “there is a controversy between
`
`the patentee and the supplier as to the supplier’s liability for induced or
`
`contributory infringement based on acts of direct infringement by its
`
`customers.” Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368,
`
`1375 (Fed. Cir. 2011); see also ABB Inc. v. Cooper Indus., LLC, 635 F.3d
`
`1345 (Fed. Cir. 2011) (holding federal court had subject matter jurisdiction
`
`over claim for declaratory judgment of noninfringement where the plaintiff
`
`“had an interest in determining whether it would be liable for
`
`indemnification, which turned on whether [its contractor] would be liable for
`
`infringement”).
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`12
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`Further, an allegation of direct infringement of a U.S. patent against
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`the manufacturer’s customers may amount to an implicit allegation of
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`indirect infringement against the manufacturer. Arris Group, 638 F.3d at
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`1375–76. Petitioner has shown persuasively that it sought to intervene in the
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`district court litigation against its customers to “seek a declaratory
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`judgement that [the] Square Register and Square’s other products and
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`services do not infringe any valid claim of the ’551 [p]atent.” Ex. 1034, 3;
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`Reply 1011. Patent Owner, the plaintiff in that suit, consented to the
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`motion. Ex. 1034, 7; Reply 11. The district court granted Petitioner’s
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`motion to intervene and Petitioner filed its Complaint in Intervention in
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`district court, deeming Petitioner the “true defendant” in the dispute. See
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`Reply 6; Ex. 1018.
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`There is no question that the underlying district court litigation in
`
`which Petitioner seeks to assert non-infringement of the ’551 patent stems
`
`from Patent Owner’s allegations that Petitioner’s products directly or
`
`indirectly infringe the ’551 patent. These facts prove that Petitioner’s
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`involvement in the district court litigation as an intervenor, together with
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`Patent Owner’s accusation of infringement in its Answer and Affirmative
`
`Defenses, show a real and substantial controversy between Patent Owner
`
`and Petitioner. And the record shows that a federal court indeed has
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`exercised jurisdiction over Patent Owner’s claim of infringement against
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`Petitioner as intervenor, with Petitioner actually defending such a claim.
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`This is sufficient to conclude that at the time of the filing of the Petition,
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`Petitioner had been charged with infringement, and, therefore, had standing
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`to file the Petition in this proceeding.
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`13
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`Patent Owner’s arguments to the contrary are not persuasive. PO
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`Resp. 1617. Patent Owner focuses on the absence of any direct
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`communication between Petitioner and Patent Owner prior to the filing of
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`the CBM proceeding, an absence which, Patent Owner contends, shows that
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`there is no charge of infringement. Id. at 17. Patent Owner also argues it
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`denied that any “actual and justiciable controversy” exists between
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`Petitioner (Intervenor in district court) and Patent Owner. Id. The record
`
`belies these arguments.
`
`First, direct communication between the parties is not the only way to
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`show a charge of infringement has been made or that a case or controversy
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`exists for purposes of CBM patent review standing. In Texas Association of
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`Realtors v. Property Disclosure Technologies, CBM2015-00069, Paper 15
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`at 7 (PTAB July 28, 2015) (Decision), which Patent Owner cites, the Board
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`stated that there is “no bright-line rule” for determining whether a
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`declaratory judgement action satisfies Article III’s case-or-controversy
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`requirement. The Board stated, “[b]asically, the question in each case is
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`whether the facts alleged, under all the circumstances, show that there is a
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`substantial controversy, between parties having adverse legal interests, of
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`sufficient immediacy and reality to warrant the issuance of a declaratory
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`judgment.” Id. (citing MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118,
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`127 (2007)). The Board applied an “all-circumstances” framework in its
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`analysis and weighing several factors found that lack of direct contact
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`between Petitioner and Patent Owner showed that there was no imminent
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`danger of being sued for infringement. CBM2015-00069, Paper 15 at 89.
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`That is a far cry from the facts we have before us, where Patent Owner’s
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`14
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`Answer and Affirmative Defenses charge Petitioner of directly, indirectly, or
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`contributorily infringing the ’551 patent. Ex. 1018, 4.
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`Second, Patent Owner relies on the Answer discussed above in which
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`it “denies the allegations contained in Paragraph 17 of the Complaint in
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`Intervention.” Ex. 1018 ¶ 17. Paragraph 17 of the Complaint alleges a
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`justiciable controversy exists between Petitioner and Patent Owner.
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`Ex. 1031 ¶ 17. But although the Answer responds that Petitioner’s
`
`allegations require no answer or are otherwise denied, Patent Owner chose
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`to assert an Affirmative Defense charging Petitioner with infringement as
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`stated above. Ex. 1018, 4. This action by Patent Owner belies its argument
`
`that no justiciable controversy exists between Petitioner and Patent Owner.
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`(c) Petitioner’s Customers as Privies
`
`The Petition sets forth that two of Petitioner’s customers, i.e., Shake
`
`Shack and IRMG, sued for infringement in district court, are privies of
`
`Petitioner. Pet. 910. Patent Owner argues that there is no proof that the
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`entities sued for infringement in district court are customers of Petitioner.
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`PO Resp. 1114. In particular, Patent Owner alleges that Petitioner’s
`
`website does not represent that they are customers—rather, the website
`
`refers to them as “sellers,” which is an antonym of a customer. Id. at 12.
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`Furthermore, Patent Owner argues that there is no evidence of
`
`indemnification, and that this is a requirement for Petitioner to show that its
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`customers are privies for purposes of standing. Id. at 1416. These
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`arguments are not persuasive.
`
`First, the fact that Petitioner refers to its customers as “Square
`
`seller[s]” does not mean that they are not customers of Square. The term
`
`“sellers” seems to refer to the customer’s use of Petitioner’s products in the
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`15
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`course of selling products or services, for instance, using a Square register—
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`therefore they are sellers, with respect to commerce in general, but at the
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`same time also are Petitioner’s customers. Ex. 2005. Second, there is no
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`requirement that a claim for indemnification be shown for a customer to
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`qualify as a privy of Petitioner. For instance, the Board’s precedential
`
`decision in Ventex Co., Ltd. v. Columbia Sportswear North America, Inc.,
`
`IPR2017-00651, Paper 148 (PTAB Jan. 24, 2019) (Order), finds parties in
`
`privity without any showing of indemnification. Indeed, Ventex holds that
`
`parties may be privies by showing a pre-existing substantive legal
`
`relationship in the form of a contract or legal agreement to supply a service
`
`or product accused of infringement. Id. at 1213. In any event, Petitioner
`
`asserts here and in district court that the sued entities are its customers and
`
`that the lawsuit accuses Petitioner’s products of infringement. Ex. 1031
`
`¶¶ 78, 15; Ex. 1032 (infringement claim charts identifying Petitioner’s
`
`products); see also Ex. 2005 (“General Terms of Service”); Pet. 10; Reply
`
`34, 6, 78. It is unquestionable, on the full record before us, that the
`
`accused product in the underlying litigation has been supplied by Petitioner
`
`to its customer, with services provided under a pre-existing relationship of
`
`vendor-supplier, and, as such, the sued customer is a privy of Petitioner for
`
`purposes of standing.
`
`In conclusion, we determine that Petitioner has standing to bring a
`
`CBM patent review of the ’551 patent under § 18(a)(1)(B) of the AIA for
`
`two independent reasons. First, as stated above, Petitioner has been charged
`
`with infringement. And second, Petitioner’s privies have been sued for
`
`infringement. Accordingly, we now proceed to address the additional
`
`requirement of CBM patent review eligibility.
`
`16
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`
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`CBM2020-00015
`Patent 8,534,551 B2
`
`
`2.
`
`Financial Product or Service
`
`The AIA defines a CBM patent as “a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service.” AIA § 18(d)(1); 37 C.F.R. § 42.301(a); see also Unwired Planet,
`
`LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (“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.’” (quoting AIA § 18(d)). A
`
`CBM patent can be interpreted to encompass patents claiming activities that
`
`are financial in nature. 77 Fed. Reg. at 48735; Blue Calypso, 815 F.3d at
`
`1338–41 (determining that a patent was a CBM patent because it claimed
`
`activities that are financial in nature); Unwired Planet, 841 F.3d at 1380 n.5
`
`(stating that “we endorsed the ‘financial in nature’ portion of the standard as
`
`consistent with the statutory definition of ‘covered business method patent’
`
`in Blue Calypso”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
`
`1324–25 (Fed. Cir. 2015) (“[The statute] on its face covers a wide range of
`
`finance-related activities.”).
`
`Petitioner contends the challenged claims of the ’551 patent “are
`
`financial-in-nature and are incidental to a financial activity – i.e., credit card
`
`sales.” Pet. 5–6 (citing Hochman Decl. ¶ 83). According to Petitioner, the
`
`claims all recite “‘issuing a [purchase / digital] receipt’ for a transaction
`
`wherein a customer’s credit card information is received and stored, a
`
`transaction for a certain amount is initiated or verified, and a digital receipt
`
`is sent regarding the transaction.” Id. at 6 (citing Ex. 1001, 10:56–11:8,
`
`11:38–58, 12:14–36 (claims 1, 11, 16)). As contended by Petitioner, these
`
`17
`
`
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`CBM2020-00015
`Patent 8,534,551 B2
`
`activities expressly concern a sales transaction for goods or services and are,
`
`therefore, financial in nature. Pet. 6.
`
`Patent Owner’s Response does not address the issue. However, we
`
`considered in our Decision on Institution the Preliminary Response
`
`argument that the ’551 patent is not directed to any financial product or
`
`service. Dec. 1112 (citing Prelim. Resp. 7). In particular, we considered
`
`the argument that the claims describe a technological solution to a technical
`
`problem of delivering receipts to the preferred address of the users. Id.
`
`(addressing the argument that the claims recite receiving requests, storing
`
`user information and other credit card related information of a user,
`
`initiating a transaction, and automatically transmitting digital receipts to a
`
`user preferred address). We determined that the argument of whether the
`
`claims solve a technical problem is irrelevant to this part of the analysis
`
`because the financial product or service analysis focuses on the financial
`
`nature of the claimed limitations, not on whether an alleged technological
`
`feature of the claim solves a technical problem. Id. at 12.
`
`We conclude that the claims recite a financial product or service.
`
`Claim 1 recites using a point-of-sale terminal to receive credit card
`
`information, initiating a charge to the credit card, and transmitting a digital
`
`receipt. Ex. 1001, 10:6567, 11:48. Thus, claim 1 requires the use of a
`
`financial product, namely the use of the credit card (i.e., a financial product)
`
`and handling the information related to that credit card in connection with a
`
`service of providing a digital receipt for a sales transaction (i.e., a financial
`
`service). Accordingly, this claim recites a method for performing operations
`
`directly involving a financial product and a service. Claims 11 and 16
`
`similarly recite the point-of-sale terminal in connection with a credit card
`
`18
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`
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`CBM2020-00015
`Patent 8,534,551 B2
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`transaction and the transmission of a digital receipt. Id. at 11:4043,
`
`11:5558, 12:2536. Accordingly, we determine that the ’551 patent claims
`
`a method and apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service.
`
`3.
`
`Technological Invention
`
`The CBM statute explicitly excludes from review those patents that
`
`are “for technological inventions.” AIA § 18(d)(1); see also 37 C.F.R.
`
`§ 42.301(a). Thus, even if a patent includes claims that would otherwise be
`
`eligible for treatment as a CBM patent, review of the patent is precluded if
`
`the claims cover only technological inventions. 37 C.F.R. § 42.301(a). To
`
`determine whether a patent is for a technological invention, the Board
`
`considers: “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 typically do not render a
`
`patent claim 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.
`
`
`19
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`
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`CBM2020-00015
`Patent 8,534,551 B2
`
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`
`2019), 43, 84 Fed. Reg. 64,280 (Nov. 21, 2019), available at
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated (hereinafter referred
`
`to as “Consolidated TPG”).
`
`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 (stating that
`
`“the presence of a general purpose computer to facilitate operations through
`
`uninventive steps does not change the fundamental character of an
`
`invention”).
`
`As stated in the previous section, at the institution stage we addressed
`
`a dispute as to whether the claims recite a technological feature that solves a
`
`technical problem. Dec. 14. For instance, the presented issue involved
`
`whether the claims of the ’551 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. Pet. 7–9; Prelim. Resp. 8–11. Petitioner argued,
`
`on the one hand, that the challenged claims of the ’551 patent recite
`
`“processes or systems using generic computer hardware performing known
`
`functions.” Pet. 7 (citing Hochman Decl. ¶¶ 84–85). Petitioner further
`
`argued that the challenged claims of the ’551 patent do not solve any
`
`technical problems with a technical solution because the stated problem of
`
`paper receipts being “lost or di
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