Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Entered: March 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TIZ INC. d/b/a PROVI,
`Petitioner,
`v.
`JASON K. SMITH,
`Patent Owner.
`
`CBM2020-00029
`Patent 10,467,585 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 32
`Entered: March 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TIZ INC. d/b/a PROVI,
`Petitioner,
`v.
`JASON K. SMITH,
`Patent Owner.
`
`CBM2020-00029
`Patent 10,467,585 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328
`
`
`
`
`
`
`
`
`
`CBM2020-00029
`Patent 10,467,585 B2
`
`INTRODUCTION
`I.
`TIZ Inc. d/b/a PROVI (“Petitioner”) filed a Corrected Petition (Paper
`11, “Petition” or “Pet.”)1 requesting covered business method (“CBM”)
`patent review of claims 1–19 of U.S. Patent No. 10,467,585 B2 (Ex. 1001,
`“the ’585 patent”) under section 18 of the Leahy-Smith America Invents
`Act, Pub. L. No. 112–29, 125 Stat. 284, 331 (2011) (“AIA”). Patent Owner
`filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). Following
`authorization by the panel (Paper 13), Petitioner filed a Reply (Paper 14,
`“Reply”) to Patent Owner’s Preliminary Response and Patent Owner filed a
`Sur-reply (Paper 16, “Sur-reply”) to Petitioner’s Reply.
`On March 25, 2021, based on the record before us at the time, we
`instituted a covered business method patent review of all challenged claims
`on all grounds alleged. Paper 17 (“Institution Decision” or “Dec.”). The
`claims and ground in this proceeding are indicated in the table below.
`Claims(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–19
`101
`Eligibility
`
`
`Following Institution, Patent Owner filed a Response in opposition to
`the Petition (Paper 20, “PO Resp.”). Petitioner filed a Reply in support of
`the Petition (Paper 21, “Pet. Reply”). Patent Owner filed a Sur-Reply
`(Paper 23, “PO Sur-Reply”).
`An Oral Hearing took place on January 5, 2022. A transcript of the
`Oral Hearing is entered in the record. Paper 31 (“Tr.”).
`
`
`1 We granted Petitioner authorization to file a Corrected Petition on
`December 2, 2020. Paper 10.
`
`2
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`CBM2020-00029
`Patent 10,467,585 B2
`Petitioner also filed a Motion to Exclude certain testimony. Paper 26
`(“Mot. Exclude”). Patent Owner filed an Opposition (Paper 27, “Opp.
`Exclude”), and Petitioner filed a Reply (Paper 28, “Reply Exclude”).
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`a preponderance of the evidence. See 35 U.S.C. § 326(e) (2018); 37 C.F.R.
`§ 42.1(d) (2019). This Final Written Decision is issued pursuant to 35
`U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has
`demonstrated by a preponderance of evidence that claims 1–19 are
`unpatentable as being directed to ineligible subject matter.
`Related Proceedings
`A.
`The parties have not identified any related matters. Pet. 3; Paper 4, 2.
`The ’585 Patent
`B.
`The ’585 patent relates to an integrated computer system for acquiring
`and managing beverage inventories. Ex. 1001, 1:15–18. According to the
`’585 patent, “[t]raditional systems for managing beverage inventories are
`largely fragmented with each party to the system maintaining its own
`distinct interfaces, capabilities, and limitations.” Id. at 1:22–25. For
`example, a merchant, distributor, and supplier may each have their own
`unique inventory system, which can create problems from the merchant
`perspective. Id. at 1:25–36. The ’585 patent discloses a system that
`purports to avoid these problems by using a centralized content management
`system to provide a streamlined and robust system of managing beverage
`product inventory and ordering. Id. at 2:48–51, 2:56–59.
`Figure 1 of the ’585 patent, reproduced below, illustrates networked
`beverage inventory management system 100. Id. at 3:1–3.
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`Figure 1 illustrates networked beverage inventory management system 100.
`Id. at 3:1–3.
`Networked beverage inventory management system 100 includes
`supplier device 102, sales representative device 108, distributor device 114,
`server 120, and merchant devices 124 and 130, all connected over network
`136. Id. at 3:5–9. Server 120 includes content management system
`(“CMS”) 122 that maintains “current and past beverage product orders, as
`well as storing and updating inventory and par value information for various
`entities in the beverage product supply chain (e.g., merchants, distributors,
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`Patent 10,467,585 B2
`and suppliers).” Id. at 3:33–38. The ’585 patent defines “par value” for a
`product as “the minimum units of a given product that the merchant wishes
`to have on hand.” Id. at 5:44–46. Server 120 also includes master beverage
`list 138, which is a database containing product information for a plurality of
`beverage products and may contain distributor product list 140 and merchant
`product list 142. Id. at 3:49–52, 3:57–59. Supplier device 102 includes
`supplier application 104, which has CMS interface 106 and is capable of
`sending and receiving beverage ordering information, such as pricing
`information and promotional offers. Id. at 4:7–11, 4:17–22. Sales
`representative device 108 includes sales representative application 110,
`which allows a user to manage beverage inventory orders and promotional
`offers via CMS interface 112. Id. at 4:38–45. Distributor device 114
`includes distributor application 116, which includes CMS interface 118 and
`provides functionality such as setting and sending price information,
`communicating with sales representative device 108, accessing distributor
`inventory, and analyzing merchant orders for relevant promotional offers.
`Id. at 4:59–5:8. Merchant devices 124 and 130 include merchant
`applications 126 and 132, respectively. Id. at 5:32–33, 5:57–58. The
`merchant applications can be used to track the merchant’s beverage product
`inventory and build product orders. Id. at 5:36–40. Inventory management
`system 100 may be configured based on geographic location, for example, to
`operate based on the applicable laws in the states where merchant devices
`124 and 130 are located. Id. at 6:11–19.
`Figure 2 of the ’585 patent, reproduced below, is flowchart 200
`illustrating a method of building and placing a beverage product order using
`inventory management system 100. Id. at 6:40–43.
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`
`Figure 2 is a flowchart illustrating a method of building and placing a
`beverage product order using inventory management system 100. Id. at
`6:40–43.
`At operation 202, a user of merchant device 124 selects beverage
`products that the merchant needs and transmits that list to CMS 122. Id. at
`6:51–52, 6:60–67. In operations 204 and 206, CMS 122 receives a par value
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`Patent 10,467,585 B2
`and on hand value for each item in the merchant’s product list, and identifies
`each product that has an on hand value that is less than the par value. Id. at
`7:1–2, 7:20–22. At operation 208, CMS 122 automatically generates an
`order list that will bring the on hand value equal to the par value for each of
`the beverage products in the order. Id. at 7:30–31, 7:35–39. The user of
`merchant device 124 may then confirm the number of units for each product,
`select promotional offers made available by other entities using the
`inventory system, and transmit the order to CMS 122. Id. at 7:41–52. In
`operation 210, CMS 122 receives the order with promotional offer selections
`from merchant device 124. Id. at 7:53–54.
`Figure 6 of the ’585 patent, reproduced below, is flowchart 600
`illustrating a method of placing an order using inventory management
`system 100 that includes beverage products for multiple
`distributors/suppliers. Id. at 9:26–36.
`
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`
`Figure 6 of the ’585 patent is flowchart 600 illustrating a method placing an
`order using inventory management system 100 that includes beverage
`products for multiple distributors/suppliers. Id. at 9:26–36.
`At operation 602, CMS 122 receives an order for a plurality of
`
`beverage products from merchant device 124. Id. at 9:37–39. Next, in
`operation 604, CMS 122 identifies a distributor for each product included in
`the order, based on user input, a pre-existing list of approved distributors, or
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`location information. Id. at 9:46–49. At operations 606 and 608, CMS 122
`generates a sub-order for each distributor identified and determines the order
`software for each distributor. Id. at 9:60–61, 10:1–2. Then, in decision
`block 610, CMS 122 determines whether each distributor has a specific
`order format that it uses. Id. at 10:9–10. If CMS 122 determines that the
`distributor does have a specified order format, then it converts each
`sub-order into a format compatible with the software used by the associated
`distributor in operation 612. Id. at 10:20–24. If CMS 122 determines that
`the distributor does not have a specified order format, then it generates a
`generic order form in operation 614. Id. at 10:24–27. At operation 616,
`CMS 122 transmits each sub-order to the corresponding distributor and/or
`the distributor’s sales representative for processing and fulfillment. Id. at
`10:37–40.
`
`Challenged Claims
`C.
`Petitioner challenges claims 1–19. Claims 1, 6, and 14 are
`independent. Claims 1 and 6 are illustrative of the challenged subject matter
`and are reproduced below.
`1.
`A method of optimizing computerized inventory orders
`over a distributed network comprising:
`receiving, from a first user device connected to the
`distributed network, a list of one or more products, the list
`including a par value and an inventory value associated
`with each of the one or more products, the par value and
`inventory value corresponding to a single delivery
`location;
`responsive to receiving the list of one or more
`products, determining, by one or more processors, an
`inventory order for the single delivery location based, at
`least in part, on the associated par value and the associated
`inventory value of each of the one or more products;
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`Patent 10,467,585 B2
`receiving, from a second user device connected to
`the distributed network, a set of available promotions;
`responsive
`to receiving
`the set of available
`promotions, transmitting, over the distributed network by
`the one or more processors, the set of available promotions
`associated with at least one of the one or more products to
`the first user device;
`receiving, from the first user device, a selection of
`at least one promotion of the set of available promotions;
`automatically adjusting, by the one or more
`processors, a price of at least one of the one or more
`products associated with the at least one promotion to the
`inventory order;
`outputting to a display on the first user device, an
`updated inventory order including the adjusted price of the
`at least one of the one or more products associated with
`the at least one promotion;
`receiving, by the one or more processors, a user
`confirmation for the updated inventory order for delivery
`of the one or more products to the single delivery location;
`identifying, by
`the one or more processors,
`respective distributors associated with each product of the
`one or more products within the updated inventory order,
`wherein each of the products is associated with a single
`distributor;
`generating, by the one or more processors, a
`plurality of distributor specific inventory orders for each
`distributor identified as providing a product within the
`updated
`inventory order, wherein
`the plurality of
`distributor specific inventory orders each include a
`different format; and
`transmitting by the one or more processors, the
`plurality of distributor specific inventory orders to each of
`the identified distributors for fulfillment of the updated
`inventory order for the delivery location.
`Ex. 1001, 13:35–14:15.
`6.
`A method of identifying a product distributor based on
`electronic location information comprising:
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`CBM2020-00029
`Patent 10,467,585 B2
`registering, by one or more processors, a merchant
`with a content management system containing beverage
`products, distributor, sales representative, and supplier
`information;
`responsive to registering the merchant, determining
`a location of the merchant based on electronic location
`information;
`providing, over a network, the merchant with access
`to at least one of the beverage inventory, distributor, sales
`representative, and supplier information stored on the
`content management system;
`receiving, by the one or more processors, a purchase
`request for a first beverage product and a second beverage
`product from the merchant;
`responsive to receiving the purchase request,
`automatically identifying, by the one or more processors,
`a first distributor for fulfilling a first portion of the
`purchase request corresponding to the first beverage
`product based on the electronic location information, and
`a second distributor for fulfilling a second portion of the
`purchase request corresponding to the second beverage
`product, wherein each beverage product is associated with
`a single distributor; and
`transmitting, via the network, the purchase request
`to the first identified distributor and the second identified
`distributor for fulfilment of the purchase request and
`delivery of the first beverage product and the second
`beverage product to the location of the merchant.
`Id. at 14:42–15:3.
`Alleged Ground of Unpatentability
`D.
`This proceeding involves the following ground:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–19
`101
`Subject Matter Eligibility
`Pet. 44. Petitioner relies on the Declarations of Paul Min, Ph.D. (Ex. 1008),
`and Brian Albenze (Ex. 1030) to support its assertion of unpatentability.
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`CBM2020-00029
`Patent 10,467,585 B2
`Patent Owner relies on the Declarations of Joe Cool (Ex. 2001) and Jason K.
`Smith (Ex. 2002).
`
`II. ANALYSIS
`Petition Service Date
`A.
`Patent Owner argues that Petitioner did not properly effect service of
`the Petition on or before September 15, 2020, as required by the CBM patent
`review program. PO Resp. 1–2, 14–21; PO Sur-Reply 16–18. According to
`Patent Owner, the Petition should not be accorded a filing date of September
`15, 2020 because Patent Owner did not receive the Petition via Federal
`Express (“FedEx”) until September 16, 2020. Id. at 15–16. Patent Owner
`maintains that September 15, 2020 was the last date to file a CBM petition
`before the sunset of the CBM patent review program. Id. at 14–16.
`Although Petitioner also emailed a courtesy copy of the Petition and exhibits
`to Patent Owner’s counsel, Gina Cornelio and Case Collard, Patent Owner
`argues that the email service on September 15, 2020 does not comply with
`37 C.F.R. §§ 42.6(e)(1) and 42.300(a) because the parties did not previously
`agree to electronic service. Id. at 14–15.
`Additionally, Patent Owner contends that for service to be effective
`on September 15, 2020, the Petition must have been served on the
`correspondence address of record for Patent Owner on September 15, 2020
`per 37 C.F.R. § 42.205(a). Id. at 15. Patent Owner asserts that the Petition
`did not arrive by FedEx until September 16, 2020, which Patent Owner
`contends is too late. Id. at 14–16. Patent Owner further contends that the
`“mailbox rule” does not apply to this proceeding and that we should not find
`that the Petition was served upon its deposit at the FedEx location. Id. at
`16–17.
`
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`Patent 10,467,585 B2
`Patent Owner also argues that 37 C.F.R. § 42.6 does not provide for
`service upon deposit by means other than Priority Mail Express. PO Resp.
`17. Because of this, Patent Owner argues that Petitioner’s use of FedEx
`service is not effective until receipt. Id.
`Patent Owner further relies on Cultec, Inc. v. Stormtech LLC,
`IPR2017-00526, Paper 14 at 14 (PTAB July 17, 2017), and Teva
`Pharmaceuticals USA, Inc., v. Monosol RX, LLC, IPR2016-00281, Paper 21
`at 13 (PTAB May 23, 2016), to support its position. PO Resp. 17–20.
`Additionally, Patent Owner takes issue with our Decision on
`Institution and contends that the panel does not have discretion to waive our
`regulations regarding the service requirements because these are
`jurisdictional. PO Resp. 20–21.
`We disagree with Patent Owner’s argument that, because they are
`effectively statutory, our regulatory service requirements cannot be waived.
`Patent Owner’s arguments are unpersuasive because they attempt to conflate
`and collapse statutory and regulatory requirements into one another.
`We first turn to the statutory requirements for a petition in a covered
`business method patent review. Per 35 U.S.C § 322(a),
`A petition filed under section 321 may be considered only
`
`if—
`
`(1) the petition is accompanied by payment of the fee
`established by the Director under section 321;
`(2) the petition identifies all real parties in interest;
`(3) the petition identifies, in writing and with particularity,
`each claim challenged, the grounds on which the challenge to
`each claim is based, and the evidence that supports the grounds
`for the challenge to each claim, including—
`(A) copies of patents and printed publications that the
`petitioner relies upon in support of the petition; and
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`Patent 10,467,585 B2
`(B) affidavits or declarations of supporting evidence and
`opinions, if the petitioner relies on other factual evidence or on
`expert opinions;
`(4) the petition provides such other information as the Director
`may require by regulation; and
`(5) the petitioner provides copies of any of the documents
`required under paragraphs (2), (3), and (4) to the patent owner
`or, if applicable, the designated representative of the patent
`owner.
`35 U.S.C. § 322(a). Though § 322 requires the petitioner to provide “copies
`of any of the documents required under paragraphs (2), (3), and (4) to the
`patent owner or . . . the designated representative of the patent owner,” the
`statute does not expressly address or impose specific service or service
`requirements (and there is no dispute here that Patent Owner was
`“provide[d]” with copies of the relevant documents).
`
`Second, we turn to the “Sunset” provisions of Section 18(a)(3) of the
`AIA, which provides that “[t]his subsection, and the regulations issued under
`this subsection, are repealed effective upon the expiration of the 8-year
`period beginning on the date that the regulations issued under . . . paragraph
`(1) take effect,” and “this subsection and the regulations issued under this
`subsection shall continue to apply, after the date of the repeal under
`subparagraph (A), to any petition for a transitional proceeding that is filed
`before the date of such repeal.” Emphasis added. Section 18(a)(3) also does
`not expressly address or impose specific requirements for the service of the
`petition (and there is no dispute that the Petition was “filed” before the
`repeal of the CBM program).
`The service requirements are, instead, provided in our governing
`rules. More specifically, 37 C.F.R. § 42.206(a) provides that “[a] petition to
`institute a post-grant review will not be accorded a filing date until the
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`petition . . . (1) [c]omplies with § 42.204 or § 42.304, as the case may be,
`(2) [e]ffects service of the petition on the correspondence address of record
`as provided in § 42.205(a); and (3) [i]s accompanied by the filing fee in
`§ 42.15(b).” And, with respect to service, 37 C.F.R. § 42.205 provides that
`[i]n addition to the requirements of § 42.6, the petitioner must
`serve the petition and exhibits relied upon in the petition as
`follows:
`(a) The petition and supporting evidence must be served
`on the patent owner at the correspondence address of
`record for the subject patent. The petitioner may
`additionally serve the petition and supporting evidence on
`the patent owner at any other address known to the
`petitioner as likely to effect service.
`(b) Upon agreement of the parties, service may be made
`electronically. Service may be by Priority Mail Express®
`or by means at least as fast and reliable as Priority Mail
`Express®. Personal service is not required.
`37 C.F.R. § 42.205. Thus, the specific service requirements at issue here are
`regulatory, not statutory.
`
`In addition, as discussed in the Institution Decision, we determined
`that Petitioner’s FedEx service was sufficient to satisfy our service
`requirements. See Dec. 13. We noted that 37 C.F.R. § 42.205(b) indicates
`that “[s]ervice may be by Priority Mail Express® or by means at least as fast
`and reliable as Priority Mail Express®. Personal service is not required.”
`Dec. 13 (citing 37 C.F.R. § 42.205(b)). Further, we observed that Petitioner
`provided evidence that Priority Mail Express guarantees 1-Day or 2-Day
`expedited services by 3 p.m. and FedEx provides next day delivery options
`that may be faster than Priority Mail Express. See id.; Ex. 1038; Ex. 1041.
`Considering the parties’ filings and based on the particular facts of this case,
`we are still satisfied that Petitioner’s use of FedEx on September 15, 2020,
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`followed by delivery the next day— September 16, 2020 —is sufficiently
`akin to Priority Mail Express to satisfy the service requirement of
`§ 42.205(b). See CoolIT Sys., Inc., v. Asetek Danmark A/S, IPR2020-00522,
`Paper 9 at 10–12 (PTAB Aug. 24, 2020) (determining that next business day
`FedEx service is sufficiently akin to Priority Mail Express); Varian Med.
`Sys., Inc. v. Best Med. Int’l, Inc., IPR2020-00071, Paper 14 at 33–34 (PTAB
`May 1, 2020) (finding Petitioner’s use of FedEx on a Friday evening
`followed by delivery on the following Monday to be sufficiently akin to
`Priority Mail Express).
`We are not persuaded otherwise by Patent Owner’s reliance on the
`decisions denying institution in Cultec, Inc. v. Stormtech LLC,
`IPR2017-00526, Paper 14 (PTAB July 17, 2017), or Teva Pharmaceuticals
`USA, Inc., v. Monosol RX, LLC, IPR2016-00281, Paper 21 (PTAB May 23,
`2016). PO Resp. 17–20.
`In Cultec, the petitioner filed and served a petition for inter partes
`review on January 5, 2017, but failed to pay the filing fee until January 6,
`2017, after the statutory bar date. Cultec, Paper 14 at 2. The petitioner filed
`a motion to accord a petition filing date of January 5, 2017. Id. The Board
`denied the petitioner’s motion, determining that the petitioner’s failed
`attempts to pay by credit card and debit card were due to
`a lack of understanding as to how proper payments are
`(1)
`made; (2) a lack of understanding of one’s own accounts,
`particularly the funds available for payment; (3) an unreasonable
`lack of diligence in checking the status of the initial payment;
`and (4) a lack of any evidence indicating that the PTO’s payment
`system had any technical difficulties on January 5th.
`Cultec, Paper 14 at 6.
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`Rather than supporting Patent Owner’s position, Cultec is consistent
`with the notion that the Board may waive filing requirements in according a
`filing date. See id. at 10 (“We agree that the Board has discretion to waive
`non-statutory requirements of our rules. 37 C.F.R. § 42.5(b).”). Whether to
`do so is fact specific to the particular circumstances of each case. In Cultec,
`the Board determined that the petitioner had failed to sufficiently fund its
`accounts to pay the filing fee and there was a lack of evidence showing that
`the PTO’s payment system had any technical difficulties, which was the
`basis of the petitioner’s motion. Id. at 6–7. In short, the evidence in that
`proceeding did not support the petitioner’s arguments for waiver.
`Teva involved a similar situation. There, the petitioner requested
`changing the filing date accorded from December 4, 2015, to December 3,
`2015, because the petitions and exhibits were uploaded on December 3,
`2015, and payment was attempted, but not completed on that date due to
`“technical issues.” Teva, Paper 21 at 3. However, the panel found that the
`petitioner failed to establish “persuasively that a ‘compromised PRPS
`system’ caused Petitioner’s delay in uploading the petition documents, or
`prevented Petitioner from paying the petition fees, and serving Patent Owner
`with the petitions on December 3, 2015.” Id. at 9. Moreover, the panel
`found that the petitioner did not attempt to serve the petition on December 3,
`2015. Id. at 12. And, the panel reiterated that the “Board’s exercise of
`discretion [is] based on the particular facts presented.” Id.
`Based on the particular facts presented in the instant proceeding, we
`note again that it is undisputed that Patent Owner not only received the
`Petition by FedEx on September 16, 2020, but that Patent Owner’s counsel
`received the same documents via email on September 15, 2020. See
`PO Resp. 15–16. Thus, unlike Teva, an attempt to serve Patent Owner was
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`made on September 15, 2020. Moreover, that attempt was akin to Priority
`Mail Express, which we determine is sufficient to satisfy the service
`requirements under 37 C.F.R. § 42.205(b).
`Additionally, we note for the record that 37 C.F.R. § 42.5(b) provides
`that “[t]he Board may waive or suspend a requirement of parts 1, 41, and 42
`and may place conditions on the waiver or suspension.” 37 C.F.R. § 42.5(b)
`(emphasis added). We understand Rule 42.5(b) to expressly allow the
`exercise of Board discretion in applying our regulations as set forth in parts
`1, 41, and 42. See id. To the extent that Patent Owner contests the scope of
`our discretion under Rule 42.5, we are not persuaded by Patent Owner’s
`position that the AIA limits our discretion to waive regulatory service
`requirements set forth in 37 C.F.R. § 42.205. As discussed, the specific
`service requirements at issue are regulatory in nature.
`Accordingly, we maintain that the Petition’s filing date is September
`15, 2020.
`
`Claim Construction
`B.
`In a covered business method patent review, we interpret claims in the
`same manner used 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. § 42.300(b)
`(2019). In applying a district court-type claim construction, we are guided
`by the principle that the words of a claim “are generally given their ordinary
`and customary meaning,” as understood by a person of ordinary skill in the
`art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`
`18
`
`
`
`CBM2020-00029
`Patent 10,467,585 B2
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). There is a “heavy presumption,” however, that a
`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner does not propose any explicit constructions for any claim
`terms. See Pet. 44. Patent Owner also does not propose any explicit
`constructions for any claim terms. See PO. Resp. We determine that no
`explicit construction is necessary in order to resolve the issues before us.
`C. Level of Skill in the Art
`Based on the full trial record, including our review of the ’585 patent
`and the types of problems and solutions described in the ’585 patent and
`cited reference materials, we agree with Dr. Min that a person of ordinary
`skill in the art would have had “the equivalent of a Bachelor’s degree or
`higher in electrical engineering, computer science or computer networking,
`and at least 2 years working experience designing communication systems.”
`See Ex. 1008 ¶ 21. Patent Owner does not dispute Petitioner’s proffered
`level of ordinary skill in the art.2 See generally PO Resp.
`
`
`2 In opposing Petitioner’s Motion to Exclude, Patent Owner states that
`“the Board should modify its definition of person of ordinary skill in the
`art,” Opp. Exclude 5 n.1, but never proposes a different definition and does
`not dispute Petitioner’s definition in its Response or Sur-Reply.
`
`19
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`CBM2020-00029
`Patent 10,467,585 B2
`D. Covered Business Method Patent Review Eligibility
`Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
`proceeding only for a CBM 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) (2012); 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
`CBM 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) (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)). One claim directed to a
`CBM is sufficient to render the patent eligible for CBM patent 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 (Comment 8) (Aug. 14, 2012).
`Standing
`1.
`Section 18(a)(1)(B) of the AIA requires that Petitioner, its real party-
`in-interest or privy, “has been sued for infringement of the patent or has
`been charged with infringement under that patent.”
`Petitioner contends that this standing requirement is satisfied based on
`a series of correspondence through which Patent Owner accused Petitioner’s
`
`20
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`CBM2020-00029
`Patent 10,467,585 B2
`product ordering system of infringing at least one claim of the ’585 patent.
`Pet. 27–31.
`Patent Owner does not dispute Petitioner’s position. See generally PO
`Resp.
`After considering the parties’ arguments, and for the reasons
`explained below, we maintain that Petitioner has met its burden of
`demonstrating that it is eligible to bring this CBM patent review. See
`37 C.F.R. § 42.304(a).
`
`a) Whether Petitioner Has Been “Sued for
`Infringement”
`To start, we note that Patent Owner has not sued Petitioner for
`infringement. See Pet. 3, 27–31.
`b) Charged with Infringement
`Next, we determine whether Petitioner has been “charged with
`infringement.” Our rules provide that “[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.” 37 C.F.R.
`§ 42.302(a). The Declaratory Judgment Act provides that “[i]n a case of
`actual controversy within its jurisdiction, . . . any court of the United States,
`upon the filing of an appropriate pleading, may declare the rights and other
`legal relations of any interested party seeking such declaration.” 28 U.S.C.
`§ 2201(a).
`In MedImmune, Inc. v. Genentech, Inc., the Supreme Court stated that
`the test for whether an “actual controversy” exists is “whether the facts
`alleged, under all the circumstances, show that there is a substantial
`controversy, be
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