Summary: The Board declined to institute a CBM review of some or all claims in the following proceedings.1 One key takeaway from these decisions is that a petition needs to be thorough. The Board will carefully review each claim limitation of the challenged claims. The Board will reject a petition if it fails to address each claim limitation relevant to an asserted ground of unpatentability, or if it addresses the claim limitation in a conclusory manner. The Board will also reject a petition if it fails to provide sufficient evidence that a reference qualifies as prior art, or if the reference is only available as prior art under § 102(e). In short, a petition must cross all T’s and dot all I’s.
1. CBM2012-00002 (Paper 10) (Jan. 25, 2013)
The petitioner challenged the validity of claims 1 and 3-18 of USPN 6,064,970. The patent relates to a method of determining a cost of automobile insurance. The Board instituted review of claims 1, 3-6, and 9-18, but denied review of claims 7-8.
With respect to claims 7-8, the Board found that the petitioner failed to direct it to a disclosure in the prior art of the “receiving system” required by those claims. The petitioner also “did not provide sufficient explanation as to why one of ordinary skill in the art would have recognized an operator (which is a person) as a receiving system.” Therefore, petition denied as to claims 7-8.
Notably, the Board instituted review of a majority of the challenged claims, despite the fact that much of the prior art relied on was previously considered by the Patent Office in an ex parte reexamination of the same patent. The Board stated that it had discretion to institute the CBM review, and observed that the petitioner “as the third-party requester in the prior ex parte reexamination, did not have the opportunity to submit arguments or evidence with respect to the amended or new claims in the prior proceeding.”
2. CMB2012-00007 (Paper 15) (Jan. 31, 2013)
The petitioner challenged the validity of claims 1, 5, 6, 9, and 10 of USPN 5,631,201. The patent related to a computer implemented method for appraising real estate. The patent was previously the subject of a jury verdict in the Eastern District of Texas favorable to the patent owner.
The patent owner disclaimed claim 5 in an attempt to avoid CBM review. The patent owner argued that the petition relied exclusively on claim 5 for its arguments that CBM threshold criteria were met. The Board rejected this argument, finding that the petition discussed claim 5 as “illustrative” of the challenged claims.
Notably, the Board also found that res judicata based on the jury verdict did not apply because the jury applied a clear and convincing evidence standard to §§ 102-103, whereas a preponderance of the evidence standard applied before the Board. The Board also found that the district court’s decision on § 101 issues was not sufficiently firm to be according collateral estoppels effect because it was adjudicated by a summary judgment order which issued without an opinion.
As a result, the Board instituted review of claims 1, 6, 9, and 10 based on §§ 101, 102, and 103. The Board did not institute review of disclaimed claim 5.
3. CBM2012-00011 (Paper 12) (Feb. 25, 2013)
The petitioner challenged claims 1-46 of USPN 7,124,088 under §§ 102 and 103. The patent relates to insurance data processing. The Board denied the petition.
The Board found that the petitioner had not adequately shown that a press release that the petitioner relied on demonstrated that an earlier system inherently had certain characteristics. The Board rejected an expert declaration submitted to support that point as conclusory. Thus, petition denied.
The Board, however, noted that in a parallel proceeding (CBM2012-00010) it had instituted review of all challenged claims on other grounds.
4. CBM2013-00001 (Paper 13) (Feb. 27, 2013)
The petitioner challenged claims 1-59 of USPN 7,877,269 under §§ 102 and 103. The patent relates an insurance data communication and processing system. The Board denied the petition.
The Board found that the claims did not satisfy the “technological invention” exception to CBM review. The Board stated that “simply making use of technology is not the test for meeting the ‘technological invention’ exception.” The Board found that none of the claimed components themselves constitute a new technological feature, and that “[if] stripped of everything related to collection and maintenance of insurance data and insurance policy parameters, there is nothing left but generic and well known components used in their ordinary manner to achieve a predictable result.” Therefore, the Board concluded that the claims were eligible for CBM review.
The Board then analyzed the patent claims, and determined that claims 10-12 were indefinite. Therefore, the Board declined to institute review of those claims. With respect to the other challenged claims, the Board found that the petitioner had not adequately shown that a press release that the petitioner relied on demonstrated that an earlier system inherently had certain characteristics. Moreover, the Board found that a prior art reference did not meet a claim limitation (“real-time”). The Board rejected an expert declaration submitted to support that point as conclusory. Thus, the Board declined to institute review.
The Board, however, noted that in a parallel proceeding (CBM2013-00002) it had instituted review of all challenged claims on other grounds.
5. CBM2013-00003 (Paper 11) (Mar. 15, 2013)
The petitioner challenged claims 1-78 of USPN 8,090,598. The patent relates to the administration and management of an insurance policy. The Board denied the petition.
The petitioner challenged the claims under § 103, and submitted numerous claim charts and argument regarding combining the references in support. The Board found that “there is insufficient factual evidence on this record to support” petitioner’s contentions. The Board found petitioner’s expert declarations and prior art “vague” and conclusory on key points. Therefore, the Board denied the petition.
The Board, however, noted that in a parallel proceeding (CBM2013-00004) it had instituted review of all challenged claims on other grounds.
6. CBM2013-00017 (Paper 8) (Oct. 24, 2013)
The petitioner challenged all 23 claims of USPN 6,834,282 as unpatentable under § 101. The patent relates to hierarchical representation for a database that consists of nodes which are related to one another in a tree-like structure starting with a root node. The Board instituted review of claims 1-20, but denied review of claims 21-23.
The Board first found, based on an explicit statement in the patent’s specification, that the patent relates to financial activity. The Board then concluded that representing items hierarchically is “more of an organizational problem for grouping items together than a technical problem.” Next, the Board determined that claims 1-20 did not recite patent-eligible subject matter, because “[t]he conceptual framework of a hierarchy comprising nodes — an idea — is not a statutory process, machine, manufacture, or composition of matter.”
The Board, however, reached a different conclusion for claims 21-23 due to the presence of additional limitations in those claims that were limited to machine operation. The Board stated that the petition failed to address all the requirements of the claim. Thus, the Board denied the petition for those claims.
7. CBM2013-00019 (Paper 17) (Oct. 8, 2013)
The petitioner challenged claims 1, 2, 4, and 5 of USPN 5,191,573 under §§ 101 and 112. The patent discloses storing “Digital Audio Music” (i.e., music encoded into binary code) on a computer hard disk and selling and distributing such music electronically. Previously, claims 1-6 of the patent were confirmed in an ex parte reexamination. The Board determined not to institute a CBM review.
The Board found that the petitioner had standing to file a petition. The Board also found that the patent is a “covered business method patent” because it involved electronic sales and transfer of money. The Board, however, then rejected petitioner’s § 101 argument because it did not view the claims as merely reciting abstract ideas. The Board also rejected petitioner’s § 112 argument because the specification, in the Board’s view, adequately supported certain claims that were broadened during prosecution of the patent. Thus, petition denied.
8. CBM2013-00021 (Paper 13) (Oct. 8, 2013)
The petitioner challenged claims 1, 64, and 95 of USPN 5,966,440 under § 101 and the doctrine of obviousness-type double patenting. The patent relates to a “system and associated method for the electronic sales and distribution of digital audio or video signals. The challenged claims were previously confirmed in an ex parte reexamination. The Board denied the petition, while noting that it was instituting a CBM review of the patent in a parallel case.
The Board rejected petitioner’s § 101 argument because it did not view the claims as merely reciting abstract ideas. The Board noted that petitioner did not specifically address the language of two of the challenged claims. The Board also rejected the obviousness-type double patenting challenge, finding that pursuant to statute the judicially-created doctrine was not a permissible ground for challenging claims in a CBM. Thus, petition denied.
9. CBM2013-00025 (Paper 13) (Nov. 12, 2013
The petitioner challenged claims 1-17 of USPN 7,856,430 solely under § 101. The patent relates to generating sales leads on the Internet through the creation of Web pages to display information. The Board granted the petition as to claims 1-3, 5-7, 9-11, and 13-15.
The Board, however, denied the petition as to claims 4, 8, 12, and 16-17 because the petitioner failed to address two limitations of those claims that the Board considered relevant to the analysis of patentability under § 101. The Board refused to do the petitioner’s work for it by supplying arguments regarding the two claim limitations. Thus, petition denied as to the corresponding claims.
10. CBM2013-00046 (Paper 9) (Jan. 17, 2014)
The petitioner challenged claims 1-14 of USPN 8,438,055 under §§ 102 and 103. The patent relates to distribution of advertisements between communication devices. The Board instituted review as to claims 1, 4-11, and 14.
The Board, however, declined to institute review of claims 2-3 and 12-13. The Board found that the petitioner’s cited prior art did not disclose limitations of those claims. The Board further found that the petitioner did not provide sufficient analysis or explanation linking the cited prior art to the limitations. Thus, petition denied as to those claims.
11. CBM2013-00047 (Paper 11) (Feb. 18, 2014)
The petitioner challenged claims 1-7, 9, 10, 12, 17, and 22 of USPN RE43,904 under §§ 102 and 103 based on 20 prior art references. The patent relates to facilitating payments for medical benefits. The Board denied the petition.
The Board first eliminated one asserted ground from consideration, because the ground relied on prior art only under § 102(e). Such references are not available in a CBM proceeding.
The Board then construed the claims. The Board construed several claims more broadly than urged by the petitioner. The Board explained that under the broadest reasonable construction, the claims were not as constrained as urged by the petitioner.
The Board next analyzed the prior art. The Board found that the prior art failed to disclose certain claim limitations. The Board also found that a “last updated” date on a document “does not suggest publication and/or presentation on that date,” and that the petitioner provided no other evidence of why the document should be considered prior art. Furthermore, the Board rejected an obviousness argument because the petitioner did not provide a sufficient rationale based on common sense and prior experience. The petitioner merely argued that “simplicity” would result in the claimed solution. The Board found that rationale insufficient in light of the many ways to perform the claim limitation. Finally, the Board found another limitation to be absent from the prior art. For the above reasons, petition denied.
12. CBM2013-00057 (Paper 9) (Mar. 7, 2014)
The petitioner challenged claims 1-38 of USPN 8,036,988 under §§ 102, 103, and 112. The patent relates to secure credit card purchases. The Board denied the petition.
The Board first rejected petitioner’s argument under § 112. The petitioner argued that the phrase “one or more” rendered the claim indefinite because the phrase encompassed an infinite number. The Board rejected this argument as unreasonable.
The Board next eliminated two references from consideration under §§ 102 and 103, because they only qualified as prior art under § 102(e). Such prior art cannot be considered in a CBM review.
Thus, petition denied.
13. CBM2013-00058 (Paper 10) (Mar. 7, 2014)
The petitioner challenged claims 1-30 of USPN 7,840,486 under §§ 102 and 103. The patent relates to secure credit card purchases. The Board denied the petition.
The Board eliminated the petitioner’s primary references from consideration under §§ 102 and 103, because they only qualified as prior art under § 102(e). Such prior art cannot be considered in a CBM review.
Thus, petition denied.
CBM2014-00008 (Paper 30) (March 31, 2014)
The petitioner filed a corrected petition to institute a covered business method patent review of claims 1-42 of USPN 6,950,807. The patent relates to a method for facilitating the purchase of products on credit and a system for implementing such a method as may be used in the sale of automobiles and other vehicles and may also be used for the sale of any products that need to be financed.
The Board declined to institute review of claims 10-12 and 14-33, because those claims recite a “user terminal,” “server,” “database,” and communication over a “network.” The Board determined that these elements tie the claims to a computer in a specific way such that the claims do not preempt the field, and thus are patent-eligible subject matter under 35 U.S.C. § 101.
The Board also rejected petitioner’s challenge to all claims based on lack of written description and indefiniteness as lacking sufficient support and for being, on some points, “so conclusory as to be unpersuasive.”
Thus, review denied as to claims 10-12 and 14-33.
15. CBM2014-00010 (Paper 20) (April 22, 2014)
The petitioners challenged claims 1-11 of USPN 8,224,913 under 35 U.S.C. §§ 102 and 103. The patent relates to systems and methods of later providing proof regarding the delivery and content of an email message.
The Board declined the review because petitioner failed to demonstrate the claims that are directed to a covered business method patent under AIA Section 18(d)(1). Specifically, the Board rejected Petitioner’s “conclusory [argument] in the petition that none of the steps of a claim requires any novel and unobvious technological implementation, or solves a technical problem.”
Thus, petition denied.
16. CBM2014-00014 (Paper 19) (March 26, 2014)
The petitioner challenged claims 1-18 of USPN 8,146,077 under 35 U.S.C. §§ 101, 112 ¶ 1, and 112 ¶ 2. The patent describes a procedure for configuring a menu on a desktop computer and then downloading the menu configuration onto a point of sale (“POS”) interface on a handheld device.
The Board found that the patent was eligible for CBM review. The Board, however, denied the petition because the petition did not establish that any of the claims are more likely than not unpatentable under 35 U.S.C. §§ 101, 112 ¶ 1, and 112 ¶ 2.
17. CBM2014-00015 (Paper 20) (March 26, 2014)
The same petitioner as in CBM2014-00014 challenged claims 1-16 of USPN 6,384,850 under 35 U.S.C. §§ 101, 112 ¶ 1, and 112 ¶ 2. The patent relates to placing an order or reservation using a general purpose computer and wireless handheld device.
The Board determined that claims 1-11 were more likely than not unpatentable under 35 U.S.C. § 101 because they merely added generic computer elements to an abstract idea.
The Board, however, found that petitioner failed to demonstrate that claims 12-16 were more likely than not unpatentable. The Board found that the claims were a particular practical application of the idea of application and data synchronization. The claims recited tangible embodiments of a system having structural components, including a “central database, wireless handheld computing devices, web servers, web pages, hospitality applications, an application program interface, and a communications control module.” The Board concluded that these components combined to meaningfully limit the claims. The Board also rejected the petitioner’s challenges based on section 112 as to all claims, based on a detailed review of the patent specification.
As a result, petition denied as to claims 12-16.
18. CBM2014-00016 (Paper 19) (March 26, 2014)
The same petitioner as in CBM2014-00014 and CBM2014-00015 challenged claims 1-15 of USPN 6,871,325 under 35 U.S.C. §§ 101, 112 ¶ 1, and 112 ¶ 2. The patent involves after a menu is generated and previewed at the computer workstation, the new menu is downloaded to a wireless handheld devices, web servers, and web pages so that the menu is synchronized on all of the devices.
For essentially the same reasons as in CBM2014-00015, the Board determined that claims 1-10 were more likely than not unpatentable under 35 U.S.C. § 101 but that petitioner failed to demonstrate that claims 11-15 were more likely than not unpatentable.
19. CBM2014-00017 (Paper 21) (April 22, 2014)
The petitioner challenged claims 1-16 of USPN 8,209,389 under 35 U.S.C. §§ 101, 112, 102, and 103. The patent relates to systems and methods of later providing proof regarding the delivery and content of an email message.
The Board denied the petition because the information presented in the petition did not establish that the patent is eligible for review as a covered business method patent under AIA Section 18(d)(1). The Board was not persuaded that the patent was not directed to a technological invention. The Board noted, in particular, that the petitioner analyzed certain claim limitations, but failed to analyze each claim as a whole as required.
Therefore, petition denied.
20. CBM2014-00035 (Paper 12) (April 25, 2014)
The petitioner challenged claims of USPN 7,051,002. The Board found that two weeks prior to filing its CBM petition, petitioner “filed two separate civil actions seeking a declaratory judgment that the claims of the ‘002 patent” were invalid. By statute, the Board may not institute a covered business method patent review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed.
Petition denied.
21. CBM2014-00054 (Paper 19) (May 13, 2014)
The petitioner challenged claims 1-3, 7, 22-24, 69 and 70 of USPN 7,035,914 under 35 U.S.C. §§ 102(b), 102(e), and 103. The patent relates to wired and non-wired data transmission communication systems.
The Board first eliminated all references from consideration that only qualified as prior art under 102(e), because by statute such art is not a valid basis for a CBM review.
The remaining patentability challenges relied on a “SkyTel” reference. The Board found that petitioner did not establish that SkyTel qualified as a prior art system. The petitioner submitted 27 exhibits relating to the SkyTel system. The Board commented that “[m]ultiple secondary references may be used to support an anticipation challenge by a primary reference to establish that the primary reference is enabling,” but “multiple references may not be used to support an anticipation challenge where those references do not describe a single system.” Applying that standard, the Board found petitioner’s challenge improper because “[p]etitioner cobbles together its anticipation challenge, picking and choosing teachings from the various embodiments of SkyTel as support for each limitation.” Petitioner did not adequately respond to the issue regarding various SkyTel embodiments.
Thus, petition denied.
22. CBM2013-00059 (Paper 12) (Mar. 20, 2014)
The petitioner challenged the validity of claims 1-4 of USPN 5,949,880 pursuant to 35 USC § 321. The patent relates to a method of transferring monetary value from a source to a recipient through a generic electronic device.
The Board concluded that since a civil action was filed by petitioner “challenging the validity of a claim of the patent” before the petitioner filed its Petition for CBM review, the Board was barred from instituting a CBM review under 35 USC § 325.
The Board denied the petition.
23. CBM2014-00031 (Paper 14) (May 22, 2014)
The petitioner challenged all claims (1-18) of USPN 6,182,894 B1. The patent relates to reducing fraud when conducting commercial transactions using a transactions card.
Petitioner challenged claims 1-9 as patent-ineligible subject matter under 35 USC § 101. Petitioner argued that claim 1 merely “repackages method claim 18 as a system claim.” The Board, however, found that Petitioners did not address certain claim elements that appeared to tie the claim to a particular computer, rather than a general purpose computer.
Thus, the review was denied for claims 1-9.
24. CBM2014-00032 (Paper 13) (May 22, 2014)
The petitioner challenged the validity of claims 1-16 of USPN 7,757,298 B2. The patent related to methods and apparatus for identifying and characterizing errant electronic files stored on computer storage devices.
Petitioners contended that, because the patent owner alleged the petitioners’ Payment Card Industry Data Security Standard infringed the ‘298 patent, the patent is directed to a “financial product or service.”
The Board declined the review, because petitioner failed to demonstrate (through their claims, specifications or prosecution history) how at least one of the patent’s claims met the ‘financial product or service’ component under AIA Section 18(d)(1). The Board emphasized that determination of whether a patent is a “covered business method patent” depends on the patent, not on the accused product.
Thus, petition denied.
25. CBM2014-00036 (Paper 13) (Apr. 25, 2014); CBM2014-00037 (Paper 12) (Apr. 25, 2014)
These two petitions, filed by the same petitioner, requested review of (1) USPN 8,140,429 and (2) USPN 7,693,783.
The Board found that two civil actions seeking a declaratory judgment were filed 2 weeks before these two petitions were filed. By statute, the Board may not institute a CBM review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed.
Thus, the Board denied these two petitions.
26. CBM2014-00038 (Paper 19) (June 3, 2014), CBM2014-00039 (Paper 19) (June 3, 2014), CBM2014-00040 (Paper 19) (June 3, 2014), CBM2014-00041 (Paper 19) (June 3, 2014)
Petitioners filed four petitions for review of (1) USPN 6,105,013, (2) USPN 5,949,880 (3) USPN 6,105,013 and (4) 6,237,095. Before filing the petitions, one of the petitioners filed civil actions challenging the validity of the claims of these four patents. Petitioners then filed motions seeking adverse judgment to remove the petitioner that had filed the civil actions from the petition, since the Board is barred from conducting a CBM review when a civil action challenging the validity of a patent has been filed by a petitioner prior to the petition filing date.
The Board concluded in all four petitions that ruling on the motions for judgment would not alter their conclusion that the filing of the civil actions precluded the filing of the petitions, because the petitioner had already exerted substantial control over the proceeding.
Accordingly, the Board dismissed petitioners’ Motions for Judgment as moot and denied all four petitions in all respects.
27. CBM2014-00047 (Paper 15) (June 25, 2014)
The petitioner challenged the patentability of claims 1-7, 10-15, 17-21 and 23-26 of USPN 8,266,000 B1 under § 103(a) based on 3 prior art references. The patent relates to a “real time auction system that operates in two modes.”
The Board determined, because each of petitioner’s obviousness grounds relied on the prior art references that are only prior art pursuant to pre-AIA 35 U.S.C. § 102(e), that prior art would not qualify for a CBM review.
Petition denied.
28. CBM2014-00052 (Paper 10) (June 23, 2014)
The petitioner challenged claims 1-30 of USPN 8,479,246 based on indefiniteness, anticipation and obviousness. The patent relates to “a method for creating an interactive video, which includes one or more interface links associated with video content being displayed.” The Board granted the petition as to claims 1-3, 5, 8, 10-11, 13-21, 23, 25, 27-29.
The Board, however, denied the petition as to claims 4, 6, 7, 9, 12, 22, 24, 26 and 30 because Petitioner’s anticipation or obviousness grounds of these claims was based on at least one prior art reference that was unavailable in a CBM proceeding. Specifically, each ground was based on at least one reference that qualified as prior art only under pre-AIA 35 U.S.C. § 102(e), which is unavailable in a CBM proceeding.
Hence, the petition was denied in part.
29. CBM2014-00053 (Paper 11) (June 23, 2014)
The petitioner challenged claims 13-15 and 18 of USPN 8,468,099 as unpatentable under 35 USC §§ 103 and 112. The ‘099 patent relates to methods for managing, distributing, and/or retailing digital media assets from various content suppliers.
The Board found that petitioner’s grounds for asserting obviousness of the challenged claims were defective because each ground relied on one or more reference that was asserted to be prior art to the challenged claims only under pre-AIA 35 § USC 102(e) and therefore would not qualify for a CBM review. The Board further determined that petitioner failed to demonstrate that claim 13, and claims 14, 15 and 18, which depend therefrom, are indefinite under 35 USC § 112.
The Board thus denied a CBM review of claims 13-15 and 18.
30. CBM2014-00056 (Paper 17) (July 10, 2014)
The petitioner challenged claims 1, 2, 16, 18, 26, 27, 29, 36, 38, 42 and 43 of USPN 6,032,137. The Board granted the petition as to claims 42-43 and denied the petition as to the remaining claims.
The Board found that petitioner “has not demonstrated that it is more likely than not that the subject matter of claims 1, 2, 16 18, 26, 27, 29, 36 and 38 is unpatentable.” The Board rejected bald statements by petitioner that certain features were “inherent in the prior art,” without further explanation. The Board also faulted petitioner for providing insufficient explanation as to why the prior art disclosed certain claim elements, for providing insufficient explanation as to why it would have been obvious to combine certain references, and for not addressing certain claim elements at all.
Hence, the petition was denied as to claims 1, 2, 16, 18, 26, 27, 29, 36 and 38.
1 This summary does not cover decisions where the Board instituted review of all challenged claims, but on less than all grounds urged by the petitioner. It also does not cover two decisions to not institute review for procedural reasons, one based on mootness (CBM2014-00027) and another based on the withdrawal by petitioner of some claims (CBM2014-00001).
