Decision on Institution of CBM Review CBM2014-00070

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Takeaway: In a Covered Business Method Patent Review, if the Board decides to institute review based on claim’s indefiniteness, it may not institute review of that claim based on prior art because the claim’s scope cannot be determined.

In its Decision, the Board instituted a CBM Review of some of the challenged claims of the ‘901 patent. Petitioner had challenged claims 1-33 of the ‘901 patent, and the Board found that Petitioner had demonstrated “that it is more likely than not that the challenged claims 1 and 12-33 are unpatentable,” and instituted review with respect to those claims.

The ‘901 patent describes “a system that matches talent (i.e., employment candidates) with employers based upon information provided by each.” Petitioner alleged several grounds of unpatentability under 35 U.S.C. §§ 112, 102, and 103.

The Board first addressed whether the ‘901 patent qualified for review as a covered business method patent. A covered business method patent is one that, in at least one claim, “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.”

The Board agreed with Petitioner that the ‘901 patent is a covered business method patent. In particular, the Board found that the ‘901 patent (1) recites “a method of searching for employment candidates . . . for a fee,” which is “financial in nature” and (2) encompasses searching for certified public accountants, which “is a job that involves a financial activity” and is “at least incidental and/or complementary to a financial activity.”

The Board then addressed whether the ‘901 patent is a technological invention, inquiring “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” The Board agreed with Petitioner that the ‘901 patent is not for a technological invention.  In particular, the Board found that each independent claim (1, 12, and 23) failed “to recite a technological feature that is novel and unobvious,” only recited a “computer system,” “computer,” “processor,” “storage medium,” and “computer network,” which were conventional elements at the time of the invention.  Further, the Board held that the ‘901 patent did not “solve a technical problem using a technical solution,” instead “solv[ing] the business problem of ineffective and expensive job recruitment.”

The Board next indicated, with respect to claim construction, that terms are to be given their broadest reasonable construction. However, no claim terms needed an express construction for the Board’s decision.

The Board next addressed the grounds of unpatentability with respect to Section 112. Petitioner first argued that claim 1 was indefinite under Section 112, second paragraph, because “threshold requirement” could refer “to candidate threshold requirements or the employer threshold requirements.”  The Board, citing the recent Supreme Court Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014) decision, noted that a “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  The Board found that claim 1 recites two different threshold requirements, but then recites determining whether “said threshold requirement” is met without specifying which of the two threshold requirements is met.  Thus, based on this ambiguity, the Board was persuaded that claim 1 is more likely than not indefinite under Section 112, second paragraph.

Petitioner challenged claims 1 and 15 as failing to comply with the written description requirement of Section 112, first paragraph. To satisfy the written description requirement, one must “show[] ‘possession’ by descriptive means such as words, structures, figures, diagrams, and formulas that set forth fully the claimed invention.”

With respect to claim 1, Petitioner argued that the ‘901 patent does not provide support for the limitation “receiving by said at least one computer from a prospective employer at least one threshold requirement selected from said candidate profile.”   The Board agreed with Petitioner that the ‘901 patent discloses threshold requirements, but does not describe “an employer selecting the employer threshold requirement from a candidate profile or accessing the candidate threshold requirement from the candidate profile.”  The Board was also persuaded by Petitioner’s arguments with respect to claim 15 for the same reasons.

The Board then turned to the grounds under Sections 102 and 103. First, the Board found that it could not determine the scope of claim 1 and its dependent claims 2-11 because of their indefiniteness.  Accordingly, it could not “determine whether Petitioner has demonstrated that claims 1-11 are more likely than not unpatentable over the asserted grounds under 35 U.S.C. §§ 102, 103.”

With respect to the prior art, the Board was persuaded that Petitioner demonstrated more likely than not that the Cooper reference describes all the steps recited in claims 12, 17-20, 23-25, 28, and 29, and therefore anticipates the claims.

Turning to obviousness, the Board was persuaded by Petitioner that claims 15, 16, 21, 22, 26, 27, and 30-33 are more likely than not unpatentable over Cooper and Thomas; claims 13, 14, 26, and 27 are unpatentable over Cooper and Pineda; and claims 13, 14, 17, and 24 are unpatentable over Cooper and Long.

Without providing additional analysis, the Board decided not to institute review on the remaining nine grounds of unpatentability – one based on anticipation and eight based on obviousness.

Monster Worldwide, Inc., Indeed, Inc., and theLadders.com, Inc. v. Career Destination Development, LLC, CBM2014-00070
Paper 12:  Decision on Institution of Covered Business Method Patent Review
Dated: August 20, 2014
Patent: 8,374,901 B2
Before: Sally C. Medley, Meredith C. Petravick, and Justin Busch
Written by: Petravick
Related Proceedings:
Career Destination Dev., LLC v. Monster Worldwide, Inc., No. 2:13-cv-02434 KHV/KGG (D. Kan.); Career Destination Dev., LLC v. Indeed, Inc., No. 2:13-cv-02486 JWL/JPO (D.Kan.); Career Destination Dev., LLC v. theLadders.com, Inc., No. 2:13-cv-02522 JWL/KGS (D. Kan.); CBM2014-00069; CBM2014-00077; and CBM2014-00068