Takeaway: A claim that recites an abstract idea must include additional features that are more than well-understood, routine, conventional activity so that the claim will not monopolize the abstract idea.
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.
Petitioners had requested the institution of a covered business method patent review of claims 1-23 (i.e., all claims) of the ’382 patent. The Board then instituted trial with respect to each of these claims.
The ’382 patent is directed to an advanced Internet interface that provides user display access of customized web pages. In particular, the ’382 patent relates to “a system for delivering information from an information provider to an information user that is selectively tailored toward the capabilities of the information provider and the needs of the information user.”
After construing the claim terms “interactive interface” and “display depicting portions of [the/a] web site visited by the user as a function of [the] web site navigation data,” the Board concluded that the first step in the Alice/Mayo test was met for each of challenged claims 1-23. That is, the Board “determined that the ’382 patent claims are directed to the abstract idea of tailoring an information provider’s web page based on data about a particular user.”
The second step in the Alice/Mayo test required the Board to ascertain whether the claims do more than simply describe the abstract idea of tailoring an information provider’s web page based on data about a particular user. In doing so, the Board agreed with Petitioners’ assertion that the ‘382 patent claims “do not contain an ‘inventive concept’ sufficient to transform the claimed abstract idea into a patentable invention.” Instead, as characterized by the Board, “the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.”
Patent Owner had argued that the ’382 patent is not a covered business method patent suitable for review in this type of proceeding. The Board disagreed, confirming its previous/preliminary finding that “at least one claim (claim 11) is not directed to a technological invention and meets the other requirements of the statute.”
Bank of America, N.A., PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Intellectual Ventures I LLC, CBM2014-00030
Paper 32: Final Written Decision
Dated: April 24, 2015
Patent 7,603,382 B2
Before: Thomas L. Giannetti, Hyun J. Jung, and Gregg I. Anderson
Written by: Giannetti
Related Proceedings: Intellectual Ventures I LLC v. PNC Financial Services Group, Inc., No. 2:13-cv-00740 (W.D. Pa. filed May 29, 2013); Intellectual Ventures I LLC v. Bank of America Corp., , No. 3:13-cv-00358 (W.D.N.C. filed June 12, 2013); Intellectual Ventures I LLC v. Capital One Financial Corp., Civil Action No. 1:13-cv-00740 (E.D. Va.) (Ex. 1032); and Intellectual Ventures I LLC v. Manufacturers & Traders Trust Co., Civil Action No. 13-1274-SLR (D.Del.)(Ex. 1039)