In its Final Written Decision, the Board found that claims 1-3 and 11 of the ’158 patent do not recite patentable subject matter under 35 U.S.C. § 101 and are unpatentable under 35 U.S.C. § 103, and that claims 1-6 and 11 are unpatentable under 35 U.S.C. § 112, second paragraph. The ’158 patent relates to a method and apparatus for providing real-time, two-way transactional capabilities on the Web.
The Board first addressed claim construction. The Board first noted that it construed claim terms in the same manner as determined in related IPR2013-00194. In the Decision to Institute, the Board further construed “utilizing a routed transactional data structure that is both complete and non-deferred” to mean “using a data structure that facilitates switching a user who selects a transactional application to a service provider program that provides immediate processing,” and concluded that the term is indefinite under 35 U.S.C. § 112, second paragraph.
Patent Owner proposed to construe this term to be more than one element, based on its contention that the term “data structure” means a type of object. The Board determined that the Specification did not support Patent Owner’s proposal, and thus the Board decline to adopt its proposed construction. Further, based on Patent Owner’s contentions and the language of the Specification, the Board concluded that the term “routed transactional data structure” failed to inform a person of ordinary skill in the art of the scope of the claim with reasonable certainty and is thus indefinite.
Patent Owner contended that the claim limitations were drawn to a technological invention. However, the contentions were based on claim constructions that the Board declined to adopt. The Board determined that although the claims recited a transaction performed from a Web application, it was not drawn to the Web application. Thus, the Board did not find that the recited limitations included technical features.
Patent Owner disputed the asserted ground under 35 U.S.C. § 101. However, its arguments were based on a claim construction that the Board declined to adopt, and a misapprehension of the Board’s reasons for concluding claims reciting object routing are not barred under 35 U.S.C. § 101. In the Decision to Institute, the Board noted that “object routing” requires the use of individual networked objects to route a user from a selected transactional application to the processing provided by the service provider. As construed, the Board determined that the element related to a well-known abstract concept. Further, the Board determined that the remaining limitation in claim 1 do not contribute any patent-eligible subject matter.
In the Decision to Institute, the Board instituted trial on the basis that the term “routed transactional data structure,” which was not used or discussed in the Specification, was indefinite because it was persuaded that a potential competitor could not determine whether or not he is infringing. Patent Owner argued that the individual terms in the phrase were easily construed, but admitted that the construction of the phrase itself may be difficult and that reasonable minds may differ. Patent Owner further argued that the claim is only ambiguous if it is “insolubly ambiguous.” However, that standard was rejected by the Supreme Court in Nautilus, which held that 35 U.S.C. § 112, second paragraph requires that a patent’s claim inform those skilled in the art about the scope of the invention with reasonable certainty. Applying the Nautilus standard, the Board found the term indefinite. Also, although the Board construed the term for purposes of its analysis under 35 U.S.C. § 101 and § 103, its incorporation in claim 1 render the claim indefinite, because it did not inform one of ordinary skill in the art the scope of the invention with reasonable certainty.
In assessing the obviousness ground, the Board again was not persuaded by Patent Owner’s arguments because they were based on a claim construction that was not adopted.
Petitioner moved to exclude certain documents as not authenticated or hearsay. Patent Owner opposed, citing case law related to characteristics of a website being sufficient to authenticate the document, and that the documents are relevant to claim construction. Patent Owner tried to authenticate the documents through testimony from the inventor. The Board determined that the inventor’s statements did not “provide factual specificity about the process by which the electronically stored information is created, acquired, maintained, and preserved without alteration or change, or the process by which it is produced if the result of a system or process that does so,” as needed to authenticate electronic evidence by a witness under Federal Rules of Evidence (FRE) 901(b)(1). However, the Board found that the contents and substance of the documents appeared to indicate that they were what they purported to be, and thus was found enough circumstantial evidence to authenticate under FRE 901(b)(4). Petitioner also argued that the documents were hearsay, but the Board stated that it did not rely on the exhibits in the Final Written Decision, and that it could exercise its discretion to assign appropriate weight to the evidence, notwithstanding the hearsay aspects of the exhibits. Accordingly, the Board denied Petitioner’s Motion to Exclude.
SAP America, Inc. v. Lakshmi Arunachalam, CBM2013-00013
Paper 61: Final Written Decision
Dated: September 18, 2014
Patent: 8,037,158 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara
Related Proceeding: Benefit Funding Systems LLC v. U.S. Bancorp, Case No 1:12-cv-803-LPS (D. Del.)