Denying Institution of Covered Business Methods Review CBM2014-00067

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Takeaway: The Board will not grant institution of CBM review of claims with means-plus-function limitations, where those limitations were not construed in the Petition.

In its Decision, the Board denied institution of covered business method patent review. Specifically, Petitioner challenged claims 1-28 of the ’022 Patent as unpatentable under 35 U.S.C. §§ 102, 103, and 112. The ’022 Patent relates to a method of ordering a translation of an electronic document, such as a web page or email, using a “one-click” or “single-click” translation component.

The Board began with claim construction, stating that the claims must be construed in using the broadest reasonable meaning of words in their ordinary usage as they would be understood by one of ordinary skill in the art. The Board maintained its interpretation from CBM2014-00060 of the term “hyperlink” as meaning “a link or connection in a hypertext document.”

The Board then examined whether the ’022 Patent is a “covered business method patent” pursuant to the AIA. A “covered business method patent” must claim “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). In determining whether a patent fits this definition, one must look to the claims, and only one claim must be directed to a covered business method in order for the entire patent to be eligible for CBM review. The Board first discussed whether the ’022 Patent is for a financial product or service. Petitioner argued that claims 13-15 are directed to financial products or services because they recite a transfer of money between two entities. The Board agreed with Petitioner. The Board then discussed the exclusion for technological inventions. The Board stated that in determining whether a patent is for a technological invention, it must consider “whether the claimed subject matter as a whole recites a technological feature that is novel or unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 4.301(b). Patent Owner contended that the claims of the ’022 Patent, as a whole, recite a novel and nonobvious technical feature, because the jury in the related District Court proceeding found several of the claims novel and nonobvious. However, the Board agreed with Petitioner that the ’022 Patent is not a technological invention because only known prior art technology was recited to accomplish the method, even if that method is novel or non-obvious.

The Board then examined Petitioner’s arguments that the claims are unpatentable based on anticipation by Ito. The Board agreed with Patent Owner that Petitioner pointed to two separate embodiments of Ito to find the elements of claim 1, and that those two embodiments are mutually exclusive. A “prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation omitted). The Board further found that the proposed obviousness grounds of unpatentability did not remedy the deficiencies of Ito discussed above.

Regarding claim 26, the Board found that the claim recites claim limitations in “means-plus-function” format. “When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ we require the specification to disclose the algorithm for performing the function.” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (quoting Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)). The Board further found that claim 26 is indefinite for failure to describe in the specification the algorithms for performing the functions of claim 26’s means-plus-function limitations. Thus, the Board could not construe the claim, and thus anticipation or obviousness could not be determined.

Finally, the Board discussed Petitioner’s contention that claims 1-28 lack written description and enablement support under 35 U.S.C. § 112 ¶ 1. Petitioner argued that the specification did not enable or provide written description support for translation of hyperlinks. The Board found that the claims did not require translation of hyperlinks, so the specification did not need to enable or provide written description support for translation of hyperlinks.

MotionPoint Corporation v. Transperfect Global, Inc., CBM2014-00067
Paper 7: Decision Denying Institution of Covered Business Method Patent Review
Dated: June 23, 2014
Patent 6,857,022
Before: Thomas L. Giannetti, Bart A. Gerstenblith, and David C. McKone
Written by: McKone
Related Proceedings: Transperfect Global, Inc. v. MotionPoint, Corp., No. 3:11-cv-04760 (N.D. Cal.); Inter Partes Reexamination, Control No. 95/002,372; CBM2014-00060; and CBM2014-00066