Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: April 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`20/20 VISION CENTER, LLC,
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS LLC,
`Patent Owner.
`________________________
`
`Case PGR2018-00100
`Patent 9,980,644 B2
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`
`Granting Institution of Post Grant Review
`
`35 U.S.C. § 324(a)
`
`
`
`
`571-272-7822
`
`Paper No. 7
`Entered: April 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`20/20 VISION CENTER, LLC,
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS LLC,
`Patent Owner.
`________________________
`
`Case PGR2018-00100
`Patent 9,980,644 B2
`
`
`
`
`
`
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`
`Granting Institution of Post Grant Review
`
`35 U.S.C. § 324(a)
`
`
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
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`A. OVERVIEW
`
`I.
`
`INTRODUCTION
`
`20/20 Vision Center, LLC (“Petitioner”) filed a Petition requesting a
`
`post grant review of claims 1–20 of U.S. Patent No. 9,980,644 B2 (Ex. 1001,
`
`“the ’644 patent”).1 Paper 2 (“Pet.”). DigitalOptometrics LLC (“Patent
`
`Owner”) filed its Mandatory Notices in response to the Petition (Paper 5),
`
`but did not file an optional Preliminary Response. See 37 C.F.R. § 42.207
`
`(“The patent owner may file a preliminary response to the petition.”)
`
`(emphasis added).2
`
`Institution of post grant review is authorized by statute only when “the
`
`information presented in the petition . . . demonstrate[s] that it is more likely
`
`than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.” 35 U.S.C. § 324; see 37 C.F.R. § 42.4. Petitioner challenges
`
`the patentability of the ’644 patent under 35 U.S.C. §§ 101, 112(a), 112(b),
`
`102, and 103. After considering the Petition, as well as all supporting
`
`evidence, we conclude that Petitioner has satisfied its burden under
`
`35 U.S.C. § 324 to show that it is more likely than not that at least 1 of the
`
`claims challenged in the Petition is unpatentable.
`
`B.
`
`RELATED PROCEEDINGS
`
`Petitioner and Patent Owner represent that the ’644 patent is not
`
`involved in any other matters. Pet. 1; Paper 5, 2.
`
`
`1 Petitioner identifies 20/20 Vision Center, LLC as the real party in interest.
`Pet. 1.
`
`2 Patent Owner identifies DigitalOptometrics LLC as the real party in
`interest. Paper 5, 2.
`
`2
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`PGR2018-00100
`Patent 9,980,644 B2
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`C.
`
`THE ’644 PATENT (EX. 1001)
`
`The ’644 patent is titled “REMOTE COMPREHENSIVE EYE
`
`EXAMINATION SYSTEM.” Ex. 1001, (54). The ’644 patent relates to a
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`remote-based eye testing system that does not require an optometrist or
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`ophthalmologist, i.e., doctor, to be on-site when a patient receives a
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`comprehensive eye examination. Id. at 1:64–66. More particularly, the ’644
`
`patent discloses that
`
`[i]nstead, an ophthalmic technician is present with the patient in
`the exam room to operate eye examination equipment and
`transmit patient information to [a] remote location. At that
`remote location, a skilled technician is present to provide the
`necessary optical and/or medical care, and may operate the
`phoropter from the remote location if he/she desires. Using
`video and/or teleconferencing equipment and a phoropter located
`in the patient examination room along with management
`software, the system works to determine the final optical
`prescription for the patient. That information, coupled with
`findings from other devices which are integrated with the
`management software, and that the patient uses locally, are
`reviewed by a remote based optometrist or ophthalmologist.
`While the patient is being evaluated for eyeglasses or contacts,
`the optometrist or ophthalmologist may also operate the
`phoropter located in the patient examination room from the
`remote location if he/she desires and evaluate the patient for
`other ocular-related medical issues. Once the findings are
`finalized by the optometrist or ophthalmologist remotely, the
`final prescription for eyeglasses and/or contact lenses, along with
`any additional comments or findings, will print locally at the
`examination location and be delivered to the patient.
`
`Id. at 1:67–2:23.
`
`The ’644 patent describes that its system comprises “exam site 1100,
`
`central server (exam site and remote technician connection) 1200, remote
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`3
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`PGR2018-00100
`Patent 9,980,644 B2
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`technician 1300, remote doctor 1400, and central server (remote doctor
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`connection) 1500.” Id. at 8:22–26. In this regard, the ’644 patent describes
`
`that the patient, the local technician, and the phoropter are located at the
`
`exam site or local diagnostic center. Id. at 9:28–45, 14:41–44, 17:38–40.
`
`The ’644 patent discloses that “[t]he local technician in the system is always
`
`physically located at the exam site. The local technician takes care of
`
`registering the patient, collecting patient history, and walking the patient
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`through the entire exam process.” Id. at 19:63–66. The ’644 patent further
`
`discloses that “[t]he local technician also performs the initial pre-refraction
`
`tests prior to the actual refraction by a remote technician and the final review
`
`by a remote doctor.” Id. at 19:66–20:2.
`
`The ’644 patent also discloses that “[t]he remote technicians in the
`
`system are responsible for performing the subjective refraction part of the
`
`eye exam prior to the patient being transferred to the remote doctor.” Id. at
`
`25:17–19. The ’644 patent discloses “[t]he remote doctors in the system are
`
`responsible for evaluating the results of all tests performed during the eye
`
`examination process and they may optionally verify or refine the subjective
`
`refraction performed by the remote technician.” Id. at 28:42–46. The ’644
`
`patent describes that both the remote technician and the remote doctor may
`
`control the phoropter equipment located at the exam site from their
`
`respective remote locations. See id. at 25:20–23, 48:46–49.
`
`The ’644 patent discloses that “in some embodiments, the eyecare
`
`doctor, the remote technician and the local technicians are in different
`
`locations.” Id. 17:48–50. However, the ’644 patent also discloses that while
`
`the patient and the local technician are located together, at a local diagnostic
`
`center, the remote technician and the remote doctor may be located at the
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`4
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`PGR2018-00100
`Patent 9,980,644 B2
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`same remote location, i.e., “[t]he patient is then assigned to a remote eyecare
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`technician (possibly by the local technician), where the remote eyecare
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`technician is located at a first remote diagnostic center. The patient is
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`finally assigned (possibly by the local technician) to a eyecare doctor, where
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`the eyecare doctor is located at a second remote diagnostic center, which
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`may or may not be the same remote diagnostic center as the first remote
`
`diagnostic center.” Id. at 17:38–50 (emphases added).
`
`D.
`
`ILLUSTRATIVE CLAIMS
`
`Petitioner challenges claims 1–20 of the ’644 patent. Claims 1 and 12
`
`are independent claims. Independent claim 1 is illustrative of the challenged
`
`claims, and is reproduced below:
`
`1. A method comprising:
`
`assigning a patient to a local eyecare technician, wherein
`the patient and the local eyecare technician are located at a local
`diagnostic center;
`
`assigning, by the local eyecare technician, the patient to a
`remote eyecare
`technician, wherein
`the remote eyecare
`technician is located at a remote diagnostic center;
`
`collecting, by the local eyecare technician, medical history
`for the patient;
`
`administering, by the local eyecare technician, pre-
`refraction tests on the patient to produce pre-refraction results for
`the patient;
`
`transmitting the medical history for the patient and the pre-
`refraction results for the patient to the remote eyecare technician;
`
`technician,
`remote eyecare
`the
`administering, by
`refraction tests on the patient to produce refraction results for the
`patient; and
`
`5
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`PGR2018-00100
`Patent 9,980,644 B2
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`transmitting to an eyecare doctor the medical history for
`the patient, the pre-refraction results for the patient and the
`refraction results for the patient.
`
`Id. at 17:39–53.
`
`E.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner challenges the patentability of claims 1‒20 of the
`
`’644 patent on the following grounds:
`
`Claims
`
`No.
`1
`2
`3
`
`1–11
`2–20
`12–20
`
`Basis
`§ 101
`§ 112(b)
`§ 112(a) -
`enablement
`§ 102
`
`Reference(s) if Applicable
`
`
`
`
`
`
`Seriani3 (Ex. 1003)
`
`Seriani
`
`Seriani and Cox4 (Ex. 1004)
`
`1–7, 10–14, and 17–20
`
`1–7, 10–14, and 17–20
`8, 9, 15, and 16
`
`§ 103(a)
`§ 103(a)
`
`4
`
`5
`6
`
`7
`
`20
`
`§ 103(a)
`
`Seriani and Kangarloo5 (Ex. 1005)
`
`Petitioner submits the Declaration of Dr. Michael Schuette (Ex. 1006)
`
`in support of institution of post grant review.
`
`A.
`
`ELIGIBILITY OF PATENT FOR POST-GRANT REVIEW
`
`II. ANALYSIS
`
`The post-grant review provisions of the Leahy-Smith America Invents
`
`Act (“AIA”)6 apply only to patents subject to the first inventor to file
`
`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`
`
`3 U.S. 9,230,062 B2 issued Jan. 5, 2016.
`
`4 U.S. 6,499,843 B1 issued Dec. 31, 2002.
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`5 U.S. 2009/0228299 A1, mailed Sept. 10, 2009.
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`6 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`6
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`
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`PGR2018-00100
`Patent 9,980,644 B2
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`file provisions apply to any application for patent, and to any patent issuing
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`thereon, that contains or contained at any time a claim to a claimed invention
`
`that has an effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`
`than the date that is 9 months after the date of the grant of the patent or of
`
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`
`see also 37 C.F.R. § 42.202(a) (setting forth the same).
`
`Petitioner asserts “that the ‘644 patent is available for PGR and
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`Petitioner is not barred or estopped from requesting PGR of the challenged
`
`claims of the ‘644 patent.” Pet. 2. The issue date of the ’644 patent is May
`
`29, 2018 (Ex. 1001 (45)) and the Petition was filed on September 14, 2018.7
`
`On this record, we agree with Petitioner that the ’644 patent is eligible for
`
`post-grant review.
`
`B.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`Factual indicators of the level of ordinary skill in the art include “the
`
`various prior art approaches employed, the types of problems encountered in
`
`the art, the rapidity with which innovations are made, the sophistication of
`
`the technology involved, and the educational background of those actively
`
`working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct.
`
`Cl. 1975); see also Orthopedic Equip. Co., v. U.S., 702 F.2d 1005, 1011
`
`(Fed. Cir. 1983) (quoting with approval Jacobson Bros.).
`
`Petitioner contends that the person of ordinary skill “would have a
`
`bachelor’s degree in ophthalmology, or a similar field, with approximately
`
`
`7 The ‘644 patent claims priority to U.S. Provisional Application No.
`62/394,369, which was filed on September 14, 2016. Ex. 1001, (60).
`
`7
`
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`PGR2018-00100
`Patent 9,980,644 B2
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`two years of industry experience relating to optometry or ophthalmology.
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`Additional graduate education might substitute for experience, while
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`significant experience in the field of optometry/ophthalmology might
`
`substitute for formal education.” Pet. 9 (citing Ex. 1006 ¶¶ 15–20). At this
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`stage in the proceeding, Patent Owner does not challenge Petitioner’s
`
`definition. Accordingly, for purposes of this Decision and based on the
`
`present record, we accept Petitioner’s definition, which is consistent with the
`
`level of skill reflected in the asserted prior art references. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can
`
`reflect the appropriate level of ordinary skill in the art).
`
`C.
`
`CLAIM INTERPRETATION
`
`In a post-grant review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`
`in which it appears. 37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).8 For the purposes of this
`
`Decision, and on this record, we determine that only the following claim
`
`elements need explicit interpretation. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are
`
`in controversy need to be construed, and only to the extent necessary to
`
`resolve the controversy).
`
`
`8 The broadest reasonable interpretation (“BRI”) construction standard
`applies to post grant reviews filed before November 13, 2018. 77 Fed. Reg.
`48727 (Aug. 14, 2012) (codified at 37 C.F.R. § 42.100(b)), as amended at 81
`Fed. Reg. 18766 (Apr. 1, 2016); see also 83 Fed. Reg. 51340 (Oct. 11, 2018)
`(changing the standard for interpreting claims in inter partes reviews filed
`on or after November 13, 2018). Because the Petition was filed prior to this
`date, on September 14, 2018, the BRI construction standard applies.
`
`8
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`Petitioner proposes two claim terms be construed: “[d]ifferent
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`[l]ocations” and “[e]yecare [t]echnician/[d]octor.” Pet. 9–12. Under the
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`broadest reasonable interpretation standard, and absent any special
`
`definitions, we give claim terms their ordinary and customary meaning, as
`
`they would be understood by one of ordinary skill in the art at the time of the
`
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). In interpreting claims, care must be exercised, as there is a fine line
`
`between interpreting claims in light of the specification, and reading
`
`limitations into the claims from the specification. Comark Commc’ns, Inc. v.
`
`Harris Corp., 156 F.3d 1182, 1186–87 (Fed. Cir. 1998).
`
`1.
`
` “Different Locations”
`
`Dependent claim 2 recites that “the eyecare doctor, the remote
`
`technician and the local technicians are in different locations.” Ex. 1001,
`
`39:57–59.9
`
`Independent claim 12 recites that “the eyecare doctor, the remote
`
`technician and the patient are in different locations.” Ex. 1001, 41:6–7.
`
`Petitioner argues that the term “different locations” should be
`
`construed to mean “that the patients/local technicians are not in the
`
`same physical location (e.g., not in the same room) as the remote
`
`technicians/doctors, but the remote technician and remote doctor can be at
`
`the same diagnostic center.” Pet. 11 (citing Ex. 1006 ¶¶ 49–53). However,
`
`at this stage of the proceeding, on the record before us, we construe
`
`
`9 We note that claims 3–9 each depends from claim 2 ultimately. See Ex.
`1001, 39:60–30.
`
`9
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`Patent 9,980,644 B2
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`“different locations” according to its plain meaning, i.e., each of the parties
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`is in a different location.10
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`2.
`
` “Eyecare Technician/Doctor”
`
`Petitioner argues that the terms “[local/remote] eyecare technician”
`
`and “eyecare doctor” “should be construed as covering any eyecare
`
`individual who is licensed, qualified, or otherwise capable of, performing the
`
`steps recited in the challenged claims.” Pet. 12 (citing Ex. 1006 ¶¶ 54–56).
`
`First, Petitioner contends that there is nothing in the nothing in the ’644
`
`patent that defines or “provide[s] any specific examples of the individuals
`
`who may qualify as an eyecare technician versus an eyecare doctor.”
`
`Pet. 11. Second, according to Petitioner, the Specification explains that the
`
`tasks performed in the claims “may be performed by various eye doctors,
`
`providers, professionals, technicians, and clinicians.” Pet. 12 (citing Ex.
`
`1001, 5:20–30, 5:50–55, 6:50–57, 17:34–38, 17:51–31:67).
`
`At this stage of the proceeding, on the record before us, we agree with
`
`Petitioner that it is reasonable to construe the terms “[local/remote] eyecare
`
`technician” and “eyecare doctor” to mean “any eyecare individual who is
`
`licensed, qualified, or otherwise capable of, performing the steps recited in
`
`the challenged claims.” Under such a construction an “eyecare doctor,” i.e.,
`
`an optometrist or ophthalmologist, could act as or perform the duties of an
`
`
`10 We note that independent claim 1 does not include a “different locations”
`limitation. Although claim 1 sets forth that “the patient and the local eyecare
`technician are located at a local diagnostic center” (Ex. 1001, 39:38–39) and
`“the remote eyecare technician is located at a remote diagnostic center” (id.
`at 39:41–42), claim 1 merely recites “transmitting [information] to an
`eyecare doctor” without any specificity as to the location of eyecare doctor.
`Id. at 39:54–56.
`
`10
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`Patent 9,980,644 B2
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`eyecare technician, as long as those roles do not require distinct licensure or
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`qualification. The converse, however, would not necessarily be true. That
`
`is, an eyecare technician would not be able to act as or perform the duties of
`
`the “eyecare doctor.”
`
`On the current record, and for purposes of this Decision, we adopt
`
`Petitioner’s construction of the terms “[local/remote] eyecare technician”
`
`and “eyecare doctor.”
`
`3.
`
`Remaining Claim Terms
`
`We give all remaining claim terms their ordinary and customary
`
`meaning, and determine that it is not necessary to explicitly construe any
`
`other term or phrase. See Vivid Techs., 200 F.3d at 803 (“[O]nly those terms
`
`need be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy.”).
`
`A.
`
`35 U.S.C. § 101 – PATENT ELIGIBILITY – GROUND 1
`
`III. PATENTABILITY
`
`Petitioner contends that claims 1–11 are ineligible under 35 U.S.C.
`
`§ 101. Pet. 14–23 (citing Exs. 1001, 1006).
`
`1.
`
`Relevant Law
`
`An invention is patent-eligible if it claims a “new and useful process,
`
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`
`However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
`
`implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
`
`ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
`
`216 (2014).
`
`In determining whether a claim falls within an excluded category, we
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`are guided by the Supreme Court’s two-step framework, described in Mayo
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`11
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`and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
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`Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
`
`we first determine what concept the claim is “directed to.” See Alice, 573
`
`U.S. at 219 (“On their face, the claims before us are drawn to the concept of
`
`intermediated settlement, i.e., the use of a third party to mitigate settlement
`
`risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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`in petitioners’ application explain the basic concept of hedging, or protecting
`
`against risk.”).
`
`Concepts determined to be abstract ideas, and thus patent ineligible,
`
`include certain methods of organizing human activity, such as fundamental
`
`economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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`mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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`mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
`
`determined to be patent eligible include physical and chemical processes,
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`such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
`
`(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
`
`rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
`
`252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
`
`(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
`
`In Diehr, the claim at issue recited a mathematical formula, but the
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`Supreme Court held that “[a] claim drawn to subject matter otherwise
`
`statutory does not become nonstatutory simply because it uses a
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`mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
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`view respondents’ claims as nothing more than a process for molding rubber
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`products and not as an attempt to patent a mathematical formula.”). Having
`
`said that, the Supreme Court also indicated that a claim “seeking patent
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`12
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`protection for that formula in the abstract . . . is not accorded the protection
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`of our patent laws, . . . and this principle cannot be circumvented by
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`attempting to limit the use of the formula to a particular technological
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`environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
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`commonplace that an application of a law of nature or mathematical formula
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`to a known structure or process may well be deserving of patent
`
`protection.”).
`
`If the claim is “directed to” an abstract idea, we turn to the second
`
`step of the Alice and Mayo framework, where “we must examine the
`
`elements of the claim to determine whether it contains an ‘inventive concept’
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`sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
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`application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim
`
`that recites an abstract idea must include ‘additional features’ to ensure ‘that
`
`the [claim] is more than a drafting effort designed to monopolize the
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`[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
`
`generic computer implementation[] fail[s] to transform that abstract idea into
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`a patent-eligible invention.” Id.
`
`2.
`
`2019 Revised Patent Subject Matter Eligibility Guidance
`
`The PTO recently published revised guidance on the application of
`
`§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
`
`Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). Under the Guidance, we
`
`first look to whether the claim recites:
`
`(1) any judicial exceptions, including certain groupings of
`abstract ideas (i.e., mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic
`practice, or mental processes); and
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`13
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`(2) additional elements that integrate the judicial exception into
`a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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`Only if a claim (1) recites a judicial exception and (2) does not integrate that
`
`exception into a practical application, do we then look to whether the claim:
`
`(3) adds a specific limitation beyond the judicial exception that
`is not “well-understood, routine, conventional” in the field (see
`MPEP § 2106.05(d)); or
`
`(4) simply appends well-understood, routine, conventional
`activities previously known to the industry, specified at a high
`level of generality, to the judicial exception.
`
`See 2019 Revised Guidance.
`
`3. Whether the Claims Are Directed to an Abstract Idea
`
`With regard to the first step of the Alice and Mayo framework,
`
`Petitioner argues that claims 1–11 are patent ineligible because they are
`
`“directed to the idea of multiple individuals administering an eye
`
`examination,” and thus, to an abstract idea. Pet. 14. Petitioner first asserts
`
`that the claims are directed to “a mental process for having three individuals
`
`participate, and share information, in an eye examination—that can be
`
`performed in the human mind and/or by humans using a pen and paper.”
`
`Pet. 16. Petitioner also asserts that the claims are directed to “methods of
`
`organizing activities of individuals (i.e., the local and remote eyecare
`
`technicians and eye doctor) who are assisting with an eye examination
`
`and/or organizing/sharing information related to the eye examination.” Pet.
`
`16–17.
`
`Viewed through the lens of the 2019 Revised Guidance, Petitioner’s
`
`analysis depicts the claimed subject matter as one of the ineligible “[m]ental
`
`processes” that include “concepts performed in the human mind (including
`
`an observation, evaluation, judgment, opinion)” under Prong One of Revised
`
`14
`
`
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`PGR2018-00100
`Patent 9,980,644 B2
`
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`Step 2A. Petitioner’s analysis also depicts the claimed subject matter as one
`
`of the ineligible “[c]ertain methods of organizing human activity” that
`
`include “commercial . . . interactions,” such as “advertising, marketing or
`
`sales activities or behaviors” and “business relations,” as well as “managing
`
`personal behavior or relationships or interactions between people (including
`
`social activities, teaching, and following rules or instructions).” See 2019-
`
`Revised Guidance, 84 Fed. Reg. at 52.
`
`The Federal Circuit has explained that “the ‘directed to’ inquiry
`
`applies a stage-one filter to claims, considered in light of the [S]pecification,
`
`based on whether ‘their character as a whole is directed to excluded subject
`
`matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
`
`2016) (quoting Internet Patents Corp., 790 F.3d at 1346).
`
`According to the ’644 patent “[a]ccess to comprehensive eye
`
`examinations is critical in determining not only corrective prescriptions for
`
`eyeglasses and contact lenses, but also in identifying potential diseases of
`
`the eye and body, such glaucoma, macular degenerations, and hypertension.”
`
`Id. at 1:25–30. The ’644 patent identifies, however, that “many
`
`[geographical] areas have a limited supply of optometrists and
`
`ophthalmologists” to perform these comprehensive eye examinations.
`
`Id. at 1:22–25, 2:36–39. To address this problem, the ’644 patent provides
`
`a remote-based eye testing system which does not require an optometrist
`
`or ophthalmologist, i.e., eye doctor, to be on-site when a patient receives the
`
`comprehensive eye examination. Ex. 1001, 1:64–66. The ’644 patent
`
`discloses that its remote-based eye testing system provides an “ophthalmic
`
`technician,” who is present at a local examination room with a patient, “to
`
`operate eye examination equipment and transmit patient information to [a]
`
`15
`
`
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`PGR2018-00100
`Patent 9,980,644 B2
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`remote location.” Id. at 1:67–2:3. The ’644 patent’s “remote station-based
`
`approach” provides patients with greater access to skilled
`
`optometrists/ophthalmologists, enables the optometrists/ophthalmologists
`
`better access to a larger potential pool of patients, and provides the local
`
`examination room, e.g., retail optical store/department with easier access to
`
`optometrists/ophthalmologists, which may otherwise be impractical and
`
`expensive from a business standpoint. Id. at 2:26–52.
`
`Taking independent claim 1 as representative, the claimed subject
`
`matter generally recites a method including steps for “assigning a patient to
`
`a local eyecare technician,” “assigning . . . the patient to a remote eyecare
`
`technician . . . at a remote diagnostic center,” “collecting . . . medical
`
`history,” “administering, by the local eyecare technician, pre-refraction
`
`tests,” “transmitting the medical history . . . and the pre-refraction
`
`results . . . to the remote eyecare technician,” “administering, by the remote
`
`eyecare technician, refraction tests,” “transmitting to an eyecare doctor the
`
`medical history . . . , the pre-refraction results . . . [,] and the refraction
`
`results for the patient.”
`
`Thus, on the present record and in view of the claim limitations
`
`recited above, we agree with Petitioner that independent claim 1 is directed
`
`broadly to “multiple individuals administering an eye examination.” Pet. 14.
`
`In this regard, we agree with Petitioner, on the present record, that the
`
`limitations of independent claim 1 “are all directed to methods of organizing
`
`activities of individuals (i.e., the local and remote eyecare technicians and
`
`eye doctor) who are assisting with an eye examination and/or
`
`organizing/sharing information related to the eye examination.” Pet. 17. We
`
`find the present claim is similar to “[c]ertain methods of organizing human
`
`16
`
`
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`PGR2018-00100
`Patent 9,980,644 B2
`
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`activity,” in particular “commercial . . . interactions,” as well as “managing
`
`personal behavior or relationships or interactions between people” that our
`
`reviewing courts have found patent ineligible. Thus, the claimed method of
`
`organizing the interactions of individuals who are involved in the
`
`administration of an eye examination is similar to the concepts of
`
`intermediated settlement (see Alice, 573 U.S. at 219–22), creating a
`
`contractual relationship in guaranteeing performance of an online transaction
`
`(see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir.
`
`2014)), “verifying the validity of a credit card transaction over the Internet”
`
`(CyberSource Corp., 654 F.3d at 1370), and using advertising as a currency
`
`on the Internet (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
`
`2014)). See 2019 Revised Guidance, 84 Fed. Reg. at 52 (FN 13).
`
`With respect to Prong Two of Step 2A, the 2019 Revised Guidance
`
`provides five “exemplary considerations” that “are indicative that an
`
`additional element (or combination of elements) may have integrated the
`
`exception into a practical application.” 2019 Revised Guidance, 84 Fed.
`
`Reg. at 55 (emphasis added).11 The 2019 Revised Guidance informs us that
`
`one exemplary consideration is whether “[a]n additional element reflects an
`
`improvement in the functioning of a computer, or an improvement to other
`
`technology or technical field.” Id. (citing MPEP § 2106.05(a)). Here,
`
`Petitioner asserts “the ‘644 patent explains that the purported advantages
`
`
`11 We acknowledge that some of these considerations may be properly
`evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
`purposes of maintaining consistent treatment within the Office, we evaluate
`them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
`Guidance, 84 Fed. Reg. at 55.
`
`17
`
`
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`PGR2018-00100
`Patent 9,980,644 B2
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`provided by its method are rooted in business concerns,” and as such, its
`
`claims “do not improve the functioning of any computing devices or any
`
`other technology.” Pet. 22.
`
`The 2019 Revised Guidance informs us that another exemplary
`
`consideration is whether “an additional element implements a judicial
`
`exception with, or uses a judicial exception in conjunction with, a particular
`
`machine or manufacture that is integral to the claim.” 2019 Revised
`
`Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(b)). Here, Petitioner
`
`asserts that “independent claim 1 does not recite a single computing device,
`
`server or other piece hardware that is used in connection with the recited
`
`method for providing an eye examination.” Pet. 18–19.
`
`The 2019 Revised Guidance further informs us that another
`
`exemplary consideration is whether “an additional element applies or uses
`
`the judicial exception in some other meaningful way beyond generally
`
`linking the use of the judicial exception to a particular technological
`
`environment, such that the claim as a whole is more than a drafting effort
`
`designed to monopolize the exception.” Id. (citing MPEP § 2106.05(e)).
`
`Here, Petitioner asserts that “none of the claims are tied to physical elements
`
`or physical process steps. Indeed, many of the method steps explicitly recite
`
`that the step is performed manually by one of the three individuals assisting
`
`with the examination.” Pet. 20. Petitioner further asserts that, beyond the
`
`abstract idea, independent claim 1 “does nothing more than (i) allocate
`
`conventional, manual activities performed during traditional eye
`
`examinations amongst three different individuals; and (ii) indicate that
`
`examination information is passed between these individuals.” Pet. 22–23.
`
`18
`
`
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`PGR2018-00100
`Patent 9,980,644 B2
`
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`At this stage of the proceeding, we are persuaded that Petitioner has
`
`shown sufficiently, that independent claim 1 of the ’644 patent is directed to
`
`an abstract idea. And, when viewed through the lens of the 2019 Revised
`
`Guidance, does not integrate the abstract idea into a practical application.
`
`See 2019 Revised Guidance, 84 Fed. Reg. at 55.
`
`3. Whether the Claims Contain an “Inventive Concept”
`
`We next turn to second step of the Alice and Mayo framework. Here,
`
`we consider the elements of the claims “individually and ‘as an ordered
`
`combination’” to determine whether the additional elements “‘transform the
`
`nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
`
`2355 (quoting Mayo, 132 S. Ct. at 1291, 1297).
`
`In general, Petitioner asserts that independent claim
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