All Challenged Claims Found Ineligible in Final Written Decision CBM2014-00028

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Takeaway: When construing a means-plus-function limitation, the Board does not include disclosed structure that is not necessary to the understanding of the claim or to define the structure for the recited function.

In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 1-24 of U.S. Patent 8,083,137 are ineligible under 35 U.S.C. § 101. The ’137 patent relates to a “credit facility for allowing a user to place self-imposed limits on the user’s spending limits on a category by category basis.” Continue reading

Final Written Decision CBM2014-00030

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Takeaway: A claim that recites an abstract idea must include additional features that are more than well-understood, routine, conventional activity so that the claim will not monopolize the abstract idea.

In its Final Written Decision, the Board found that Petitioners had demonstrated by a preponderance that claims 1-23 of the ’382 patent are directed to ineligible subject matter under 35 U.S.C. § 101. This led the Board to conclude that Petitioner had shown these claims to be unpatentable. Continue reading

Granting in part Institution and Denying Joinder CBM2015-00015

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Takeaway: Even if the Board determines that Petitioner has demonstrated that the challenged claims more likely than not are unpatentable under §101, the Board may decline to institute a CBM proceeding if it has already instituted an earlier CBM proceeding on the same grounds.

In its Decision, the Board instituted a covered business method (“CBM”) patent review of claim 1 of U.S. Patent No. 8,118,221 B2 and declined to institute a CBM patent review of claims 2, 11, and 32. The ’221 patent relates to “a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored” and the “corresponding methods and computer programs.” It describes providing portable data storage together with a means for conditioning access to that data upon validated payment. Continue reading

Decision on Institution CBM2014-00179

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Takeaway: Petitioner and any non-party’s shared interest in invalidating a patent, including collaboration together, and invocation of the common interest privilege, is not sufficient to render the non-party a real party in interest.

In its Decision on Institution, the Board instituted a covered business method patent review of claims 1-3, 5, and 6 of the ’510 patent on obviousness grounds under 35 U.S.C. § 103. The Board did not institute trial with respect to any lack of patentability under 35 U.S.C. § 101, finding that Petitioner had not demonstrated it more likely than not that claims 1-3, 5, and 6 do not comply with this section of the statute. Continue reading

Final Written Decision CBM2014-00004

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Takeaway: Where an expert provides testimony concerning the meaning of a claim term, the testimony should include factual support for his or her conclusions. Absent such support, the Board may give the testimony little weight.

In its Final Written Decision, the Board determined that claims 21 and 22 of U.S. Patent No. 7,463,151 B1 are unpatentable under 35 U.S.C. § 101.

The ’151 patent relates to mobile wireless networks and, in particular, to providing mobile services using short-range radio communication (“SRC”) devices. SRC devices include, for example, RFID tags, a Bluetooth base station or transponder, and a WiFi device such as a wireless router. Continue reading

Final Written Decision CBM2014-00006

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Takeaway: To prevail on an argument that a patent claim is not adequately supported by the written description in the specification, the petitioner must prove that the written description does not “reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

In its Final Written Decision, the Board concluded that claims 25-29 of U.S. Patent No. 7,203,752 are unpatentable. The ’752 patent relates to using location-based services over mobile wireless networks and, in particular, to a “subscriber profile” that includes a description of the applications that are permitted to receive location information and under what conditions. Continue reading

Final Written Decision CBM2014-00015

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Takeaway: Claim construction is not a necessary prerequisite to a validity determination under 35 U.S.C. § 101.

In its Final Written Decision, the Board found that claims 1–11 of the ’850 patent are unpatentable. In particular, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 1–11 of the ’850 patent are unpatentable under 35 U.S.C. § 101. Continue reading

Final Written Decision CBM2014-00001

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Takeaway: Any novelty in implementation of the abstract idea is a factor to be considered only in the second step of the Alice analysis.

In its Final Written Decision, the Board determined Petitioner had shown by a preponderance of the evidence that claims 2, 6, and 8 of the ’924 patent are unpatentable. The grounds of unpatentability for these claims included both patent-ineligibility under 35 U.S.C. § 101 and obviousness under 35 U.S.C. § 103(a). The Board denied Patent Owner’s Motion to Amend as well. Continue reading

Final Written Decision CBM2013-00049 and IPR2014-00097

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Takeaway: A claim will not be found to be patent-eligible under 35 U.S.C. § 101 if it is directed to unpatentable abstract ideas but does not also provide sufficient meaningful limitations to transform the abstract ideas into patent-eligible applications of the abstractions.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence in CBM2013-00049 that claims 1-28 of the ’498 patent are unpatentable under 35 U.S.C. § 101; but that Petitioner had not shown in IPR2014-00097 that claims 1, 8, 9, 11, 14, 15, and 23 of the ’498 patent are unpatentable in view of the asserted prior art. Continue reading

Final Written Decision IPR2013-00402, IPR2013-00403

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Takeaway: On a Motion to Amend, Patent Owner bears the burden, by a preponderance of the evidence, to demonstrate the patentability of its proposed substitute claims, taking into account 35 U.S.C. §§ 101 and 112 in addition to 35 U.S.C. §§ 102 and 103 in view of known prior art.

In its Final Written Decisions in two related cases, the Board granted-in-part Patent Owner’s Motions to Amend U.S. Patent Nos. 8,312,226 B2 and 8,370,583 B2.

In IPR2013-00402, the Board granted Patent Owner’s Motion to the extent it requested cancellation of claims 1-12 of the ’226 patent, and with respect to proposed substitute claims 13 and 15. The Board, however, denied Patent Owner’s motion with respect to proposed substitute claims 14 and 16-18. Similarly, in IPR2013-00403, the Board granted Patent Owner’s Motion to the extent it requested cancellation of claims 1–27 of the ’583 patent, and with respect to proposed substitute claims 28 and 30. The Board, however, denied Patent Owner’s motion with respect to proposed substitute claims 29 and 31–33. Continue reading