Challenged Claims Not Patent Eligible in Final Written Decision CBM2014-00184


Takeaway: Questions on preemption are inherent in and resolved by the Board’s § 101 analysis; thus, while preemption may signal subject matter that is not patent eligible, the absence of complete preemption does not demonstrate patent eligibility.

In its Final Written Decision, the Board found claims 1-7 of the ‘214 patent to be unpatentable. The ‘214 patent “relates to an affiliate manipulation system that permits consumers, Internet Service Providers (ISPs), search engines, and intermediaries to maximize affiliate program participation in transactions by or through them.” Continue reading

Covered Business Method Patent Review Instituted CBM2015-00161


Takeaway: The fact that a petitioner copied the arguments and exhibits from a prior petition of a non-party does not prove in itself that the non-party is a real party-in-interest to the current proceeding.

In its Decision, the Board granted institution of covered business method review on all challenged claims of the ’304 Patent. The ’304 Patent discloses a display and a method of using the display to trade a commodity.

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Final Written Decision Finding All Claims Unpatentable Subject Matter CBM2014-00171


Takeaway: The Board may refuse to adopt a district court claim construction ruling, even if the Board considers the construction under the Phillips standard.

In its Final Written Decision, the Board determined that all of the challenged claims of the ’740 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’740 Patent relates generally “to a method and system for entering data relating to an insurance claim for a damaged vehicle,” wherein the “data is processed into a valuation report that is transmitted through the world wide web.”

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Granting Institution in Part Where Intervening Case Law Was Found Insufficient to Prevent Estoppel as to One Challenged Claim CBM2015-00131


Takeaway:  A petitioner may be estopped from challenging a claim that was raised or reasonably could have been raised in a previous post-grant review, even in the face of intervening case law.

In its Decision granting in part institution of a covered business method patent review, the Board determined that “Petitioner has demonstrated that it is more likely than not that the challenged claims are unpatentable” under 35 U.S.C. § 101.  However, the Board also determined that Petitioner “is estopped from challenging claim 26 in this proceeding,” and instituted review of claims 3–6, 8–14, 16–25, 27–30, and 32–41, but not claim 26, of the ’598 patent.  The ’598 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.’” Continue reading

Institution Under Section 101 Denied Where Patent Required Particular Electronic Searching Process CBM2015-00113


Takeaway: Challenge under § 101 to digital identification patent not instituted where the claims require particular types of electronic searching processes.

In its Decision, the Board instituted covered business method patent review for prior art challenges, but denied institution of challenges brought under 35 U.S.C. §§ 101 and 112. The ‘464 patent “relates to identifying a work, such as a digital audio or video file, without the need to modify the work,” which “can be accomplished through the extraction of features from or about the work, and comparison of those extracted features with records of a database or library.” Continue reading

Reverse Auction Claims Found Ineligible for Patent Protection CBM2014-00119


Takeaway: Claims involving a conventional system interface, routine data gathering, and routine calculations will likely be found patent ineligible under § 101.

In its Final Written Decision, the Board found that all of the challenged claims (1-39) of the ’211 Patent are unpatentable under 35 U.S.C. § 101, and denied Patent Owner’s Motion to Amend. The ’211 Patent is drawn to a method of conducting a telephone- or Internet-based reverse auction, where the reverse auction is transmitted to users on a medium. Continue reading

All Challenged Claims Found To Be Drawn To Unpatentable Subject Matter CBM2014-00079


Takeaway: An improved calculation, even when tied to a specific use, is unpatentable subject matter under § 101.

In its Final Written Decision, the Board held that claims 1-17 of the ’196 patent are unpatentable under §101. The Board also dismissed Patent Owner’s Motion to Exclude deposition testimony as moot because the Board’s determination did not rely on the testimony.   Continue reading

Granted Institution Of Patent Eligibility Ground But Insufficient Evidence Of Public Use PGR2015-00009


Takeaway: The Board may apply a “rule of reason” analysis in determining whether the testimony of a witness alleging a prior public use, sale, or knowledge under § 102 is corroborated sufficiently in a post-grant review proceeding.

In its Decision, the Board granted institution of post-grant review (“PGR”) of claims 1-21 of the ’166 patent.

According to the Board, the ’166 patent is related to a bailment scheme using storage containers. Petitioner challenged the ’166 patent as (1) patent ineligible subject matter, (2) anticipated by the Declaration of Mr. David Seeley, and (3) obvious over the combination of Hunsaker, Seeley, and the Declaration of Seeley. The Board adopted Petitioner’s proposed construction of the terms, “facilitating,” “time,” “summary request,” “delivery device,” “pickup device,” and “signature pattern.” The term, “in response to,” was construed as meaning “directly or indirectly in response to.” Continue reading

Granting Institution Based on Means-Plus-Function Construction CBM2015-00061


Takeaway: Where a claim is found “abstract” under step 1 of the Alice analysis, the claim may be transformed into a patent-eligible application of an abstract idea under step 2 of the Alice analysis when a claimed means function is supported by an adequate algorithmic structure in the specification that confines claim coverage.

In its Decision, the Board found that Petitioner had shown a reasonable likelihood that it would prevail with respect to claims 1 and 2 of the ‘387 patent under 35 U.S.C. §§ 112 ¶ 2, 102(b), and 103(a). The ‘387 patent “generally relates to the conditional trading of securities, such as convertible bond ‘swaps,’ risk arbitrage, and combinations thereof in both listed and over-the-counter markets, via one or more electronic networks.” Petitioner challenged claims 1 and 2 under various grounds, including §§ 101, 102(b), 103(a), and 112 ¶ 2. Continue reading