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
Category Archives: Patent Eligibility
Final Written Decision CBM2014-00030
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
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
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
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
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
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
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
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
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