CBM Petition of U.S. Patent No. 7,558,807fishpostgrant.com/wp-content/uploads/CBM2015-00075-CBM-Petition-r… · Tagged, Inc., Case No. 2:14-cv-00993-JRG-RSP (E.D. Tex.), filed Oct

CBM Petition of U.S. Patent No. 7,558,807

UNITED STATES PATENT AND TRADEMARK OFFICE ______________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

______________________

Tagged, Inc. Petitioner,

v.

Emmanuel C. Gonzalez Patent Owner

Patent No. 7,558,807 (Claims 1-3)

Issued: Feb. 7, 2012 Filed: Mar. 4, 2009

Inventor: Emmanuel C. Gonzalez Title: Host Website for Digitally Labeled Websites and Method

______________________

Case CBM: Unassigned

PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF U.S. PATENT NO. 7,558,807 UNDER 35 U.S.C. § 321 AND § 18 OF

THE LEAHY-SMITH AMERICA INVENTS ACT


i

Table of Contents I. INTRODUCTION ....................................................................................... 1

II. FILING DATE REQUIREMENTS ......................................................... 2

III. THE ’807 PATENT AND THE CHALLENGED CLAIMS (1–3) ......... 5

IV. THE ’807 PATENT IS SUBJECT TO COVERED BUSINESS METHOD PATENT REVIEW............................................................................. 9

A. The ’807 Patent Is A “Covered Business Method Patent” ....................... 9

B. The ’807 Patent Is Not A “Technological Invention” ............................ 12

V. THE CHALLENGED CLAIMS ARE INVALID BECAUSE THEY CLAIM ABSTRACT IDEAS ............................................................................. 19

A. Legal Standards ...................................................................................... 19

B. Claim Interpretation ............................................................................... 20

C. Claim 1 Is Unpatentable Under § 101 Because It Claims The Abstract Idea Of Classifying ‘Listings’ Into Categories ................................................ 21

1. The ’807 patent admits that the use of computers, databases, and websites with ‘listings’ was known, conventional technology. ................... 22

2. All that Claim 1 adds to the abstract idea of classifying ‘listings’ into categories is the use of conventional computers, databases, and websites. . 22

D. Claim 2 Is Unpatentable Under § 101 .................................................... 26

E. Claim 3 Is Unpatentable Under § 101 .................................................... 26

VI. CONCLUSION ...................................................................................... 28


ii

TABLE OF AUTHORITIES

Cases and Decisions Alice Corp. Pty. Ltd. v. CLS Bank Int’l,

134 S. Ct 2347 (2014) ......................................................................... 19, 25, 28 Apple Inc. v. Sightsound Techs., LLC,

CBM2013-0019, Paper 17 (PTAB Oct. 8, 2013) ........................................... 12 Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.),

687 F.3d 1266 (Fed. Cir. 2012) ...................................................................... 27 Bicon, Inc. v. Straumann Co.,

441 F.3d 945 (Fed. Cir. 2006)......................................................................... 26 Bilski v. Kappos,

130 S. Ct. 3218 (2010) .................................................................................... 25 CyberSource Corp. v. Retail Decisions, Inc.,

654 F.3d 1366 (Fed. Cir. 2011) ................................................................ 19, 26 Digitech Image Techs., LLC v. Electronics for Imaging, Inc.,

2014 WL 3377201 (Fed. Cir. 2014) ............................................................... 25 Experian Mktg. Solutions Inc. v. RPost Commc’ns Ltd.,

CBM2014-00010, Paper 20 (PTAB Apr. 22, 2014) ....................................... 11 Google Inc. v. Unwired Planet, LLC,

CBM2014-00006, Paper 11 (PTAB Apr. 8, 2014) ......................................... 12 Gottschalk v. Benson,

409 U.S. 63 (1972) .......................................................................................... 27 Interthinx, Inc. v. Corelogic Solutions, LLC,

CBM2012-00007, Paper 16 (PTAB Jan. 31, 2013) ........................................ 18 Mayo Collaborative Servs. v. Prometheus Labs., Inc.,

132 S. Ct. 1289 (2012) .................................................................. 19, 20, 25, 28 SAP Am., Inc. v. Versata Dev. Grp., Inc.,

CBM2012-00001, Paper 36 (PTAB Jan. 9, 2013) ................................ 9, 10, 20 U.S. Bancorp v. Retirement Capital Access Mgmt. Co.,

CBM2013-00014, Paper 33 (PTAB Aug. 22, 2014) ...................................... 20


iii

TAGGED, INC.’S EXHIBIT LIST

EXHIBIT # DESCRIPTION

1001 U.S. Patent No. 7,558,807 to Gonzalez (“the ’807 patent”) 1002 Complaint (Dkt. 1), Gonzalez v. Tagged, Inc., Case No. 2:14-cv-

00993-JRG-RSP (E.D. Tex.), filed Oct. 22, 2014 (Exhibits omitted)

1003 Krajewski, Markus. Paper machines, about cards & catalogs, 1548-1929 (MIT Press, 2011)

1004 Introduction to the Dewey Decimal Classification System, available at http://www.oclc.org/content/dam/oclc/dewey/versions/print/intro.pdf

1005 Dewey Services, available at http://www.oclc.org/dewey.en.html 1006 Dewey Decimal Classification 641, available at

http://dewey.info/class/641.8/about.en 1007 Archived Copy of www.craigslist.com, archived on March 6,

2000, available at https://web.archive.org/web/20000306101041/http://www.craigslist.com/

1008 Archived Copy of www.craigslist.org/sfo, archived on August 17, 2000, available at https://web.archive.org/web/20000817044944/http://www.craigslist.org/sfo/

1009 Excerpt of File History for U.S. Patent No. 7,558,807 (Dec. 29, 2003 Applicant Remarks)

http://www.craigslist.com/

https://web.archive.org/web/20000306101041/http:/www.craigslist.com/

https://web.archive.org/web/20000306101041/http:/www.craigslist.com/

http://www.craigslist.org/sfo

https://web.archive.org/web/20000817044944/http:/www.craigslist.org/sfo/

https://web.archive.org/web/20000817044944/http:/www.craigslist.org/sfo/


1

I. INTRODUCTION

Tagged, Inc. petitions for institution of covered business method patent

review of claims 1-3 of U.S. Patent No. 7,558,807 (“the ’807 patent”), and

cancellation of those claims on the grounds that they claim patent-ineligible

abstract ideas.

The ’807 patent purports to realize “the Internet’s potential for enabling

commercial transactions” by describing a way of classifying website “listings”

into categories. But this has been done for generations in the classified ads of

newspapers (with categories like “personals” and “automotive”), and in the card

catalogs of libraries (with systems of categories like the Dewey Decimal

System). The ’807 patent specifically states that its invention “can best be

appreciated by metaphor” to a library’s card-catalog: “consider the Internet a

library…. The present invention creates order in the library by establishing

discrete sections where books (websites) can be organized by category, and by

codifying information about each book (website) on index cards so that readers

can more easily identify the books (websites) they need.” Ex. 1001 (’807

patent) at 2:56-67. Similarly, during prosecution of the ’807 patent, the

applicant stated that while “the kind of labeling system [being claimed] is

common in commerce in physical form (e.g. items in supermarkets), it has not

heretofore been used or proposed in digital form for websites.” Ex. 1009 (Dec.

23, 2003 Applicant Remarks) at 8.


2

As described in detail below, claims 1-3 of the ’807 patent should be

reviewed and held invalid because they claim the patent-ineligible abstract idea

of facilitating commercial transactions by classifying online “listings” into

categories.

II. FILING DATE REQUIREMENTS

This petition meets the filing-date requirements for a Covered Business

Method Patent Review Petition, as set forth in 77 Fed. Reg. 48612, 77 Fed. Reg.

48680, and 77 Fed. Reg. 48734:

• The real-parties-in-interest for this Petition are Tagged, Inc. (“Tagged”) and

Emmanuel C. Gonzalez (“Gonzalez”). [37 C.F.R. § 42.8]. According to

PTO records, the ’807 patent is assigned to Gonzalez, who is asserting it

against Tagged in litigation pending in the Eastern District of Texas:

Emmanuel C. Gonzalez v. Tagged, Inc., 2:14-cv-00993-JRG-RSP. [47

C.F.R. § 42.302(a)].

• On information and belief, Gonzalez is asserting the ’807 patent and other

related patents against several parties in the Eastern District of Texas.

Tagged is currently aware of the following matters under 37 C.F.R. §

42.8(b)(2):

Cases Number District Filed Gonzalez v. Snap Interactive, Inc. 2-14-cv-

00992 TXED 22-Oct-14

Gonzalez v. Elite Marketing Solutions, Inc.

2-14-cv-00963

TXED 16-Oct-14

Gonzalez v. Global Personals, LLC 2-14-cv-00952

TXED 14-Oct-14

https://www.docketnavigator.com/detail/summary/case/70210





3

Gonzalez v. InfoStream Group, Inc. 2-14-cv-00906

TXED 23-Sep-14

Gonzalez v. This Life, Inc. 2-14-cv-00908

TXED 23-Sep-14

Gonzalez v. New Life Ventures, Inc. 2-14-cv-00907

TXED 23-Sep-14

Gonzalez v. Anastasia International, Inc.

2-14-cv-00769

TXED 11-Jul-14

Gonzalez v. Homes.com, Inc. 2-14-cv-00770

TXED 11-Jul-14

Gonzalez v. AutoTrader.com, Inc. 2-14-cv-00651

TXED 30-May-14

Gonzalez v. Social Concepts, Inc. 2-14-cv-00650

TXED 30-May-14

Gonzalez v. Passions Network, Inc. 2-14-cv-00629

TXED 14-May-14

Gonzalez v. Zulily, Inc. 2-14-cv-00630

TXED 14-May-14

Gonzalez v. Bonanza.com, Inc. 2-14-cv-00187

TXED 5-Mar-14

Gonzalez v. BlackDivine, LLC 2-14-cv-00160

TXED 3-Mar-14

Gonzalez v. FareCompare, LP 2-14-cv-00131

TXED 24-Feb-14

• The ’807 patent meets the definition of a covered business method (“CBM”)

patent and does not qualify as a patent for a technological invention, as

explained below in Section IV. [37 C.F.R. § 42.301 and 42.304].

• The challenged claims and the grounds and evidence supporting each

challenge are identified below in Sections V, along with the appropriate

construction for certain claim terms contained within the challenged claims.

[37 C.F.R. § 42.304(b)(1)-(5), 37 C.F.R. § 42.300(b), & 35 U.S.C. §

321(a)(3)].















4

• An exhibit list that includes a brief description of each exhibit is filed

herewith, along with a copy of each piece of evidence relied on or referred to

(Exhibits 1001-1008). [37 C.F.R. § 42.63]. Because all exhibits are written

in English, no translations are required. [37 C.F.R. § 42.63(e)].

• Tagged is submitting a fee of $12,000 and authorizes the Patent Office to

charge Deposit Account Deposit 50-1561 for that fee. [35 U.S.C. §

321(a)(1) & 37 C.F.R. § 42.300(a), 42.304, 42.203(a), 42.8(a)(1), 42.8(b)(4),

& 42.15(b)]. To the extent that any additional fees are required to complete

this Petition, the Patent Office is hereby authorized by the undersigned to

charge Deposit Account Deposit 50-1561 for such fees.

• Tagged certifies that no estoppel prohibits this review, and that this Petition

was not filed within the time frame in which a post grant review petition

could have been filed. [37 C.F.R. § 42.302(b), 37 C.F.R. § 42.303 & 35

U.S.C. § 321(c)].

• Petitioner states that the lead and backup counsel are as follows:

Lead Counsel Backup Counsel Jonathan Ball (Reg. No. 59,928) Greenberg Traurig LLP 200 Park Avenue New York, NY 10166 [email protected] tel. (212) 801-2223 fax. (212) 801-6400

Nicholas A. Brown (pro hac vice req.) Greenberg Traurig LLP 4 Embarcadero Center Suite 3000 San Francisco, CA 94114 [email protected] tel. (415) 655-1271 fax. (415) 707-2010

Petitioner Tagged hereby requests authorization to file a motion for Nicholas

A. Brown to appear pro hac vice. Mr. Brown, an experienced litigator, is


5

counsel for Petitioner Tagged in this matter. Mr. Brown has an established

familiarity with the subject matter at issue in this proceeding. Petitioner

Tagged intends to file such a motion once authorization is granted. A power

of attorney also accompanies this Petition. [37 C.F.R. § 42.10(b)].

• Service information is provided as follows: Please direct all correspondence

to lease and back-up counsel at the above addresses. Petitioners consent to

email service at [email protected] and [email protected] . [37 C.F.R. §

42.304, 42.8(a)(1), and 42.8(b)(4)].

• A Certificate of Service is attached. [37 C.F.R. § 42.205(a) & 37 C.F.R. §

42.6(e)(4)(iii)].

III. THE ’807 PATENT AND THE CHALLENGED CLAIMS (1–3)

The ’807 patent is entitled “Host Website For Digital Labeled Websites

And Method,” and claims an October 4, 2000 priority date.1 It describes a way

of classifying online “listings” into categories, just as was done in the classified

ads of newspapers, or in the online classified ads offered on popular sites such

as Craigslist. See, e.g., Exs. 1007 (showing Craigslist.com listings available on

Craigslist home page, as archived by Internet Archive on March 6, 2000) &

1008 (showing regional listings on San Francisco Bay Area section of

Craigslist, as archived by Internet Archive on August 17, 2000). In particular,

1 The ’807 patent claims priority to Provisional Application 60/238,303, through

U.S. Patent No. 7,647,339.


6

the ’807 patent describes and claims a way of allowing “more precise and

direct” searches for “listings” in a website’s database, by using “unambiguous

digital labels” instead of “word-matches or ‘keywords.’” Ex. 1001 (’807

patent) at 3:42-44 & 4:16-23; see also id. at 3:1-48; 2:2-7. According to

the ’807 patent—which does not cite Craigslist as prior art—“[a]ll existing

search technologies on the Internet are based on word-matches or ‘keywords’,

which are mere character-strings of unknown significance.” Ex. 1001 (’807

patent) at 4:16-18. The patent explains that this was a problem: “word-match

technology is rather poorly suited to finding commonplace commercial

information, which is, however, exactly what most publishers—the Internet’s

paying constituents—are trying to offer on the Web.” Id. at 2:2-739; see also

id. at 4:18-19 (explaining that there is “no way to make a word-search

‘intelligent.’”). The ’807 patent purports to solve this problem with finding

commercial information on the Web, explaining that “intelligence in a search is

only possible” using a database “based on” the “unambiguous digital labels” of

the invention. Id.; see also Ex. 1001 (’807 patent) at 2:35-39 (stating that with

existing technology, “much of the Internet’s potential for enabling commercial

transactions will not be realized”).


7

Figures 4d through 4k illustrate the digital labels of the invention using a

specific example: entering information about

a Roman Catholic cathedral into a database

of organizations in the Philippines. As

shown in Figures 4d through 4i, the digital

labels of the invention are obtained by

presenting the “subscriber” with a series of

multiple-choice questions. In Fig. 4d

(shown to the right), the subscriber selects

“Churches & Religious Organizations” as

the “category which best describes you or

your Organization.” Then, in Figs. 4e, 4f,

and 4g, the subscriber selects “Specific Place

of Worship”, “Roman Catholic”, and then

“Cathedral,” each from a limited set of

possible responses. Finally, Fig. 4k provides

a summary of these answers, and allows the

user to submit them to the database.

These figures show that the “unambiguous digital labels” of the invention

correspond to the possible responses to multi-choice questions, i.e. selectable

responses that classify a listing within a particular category. The ’807 patent

confirms repeatedly that the “unambiguous digital labels” of the invention are


8

possible responses to multiple-choice questions that are used to put listings into

categories. For example, the ’807 patent explains that the “automatic process of

creating digital labels” is accomplished by recording a user’s responses to

“multiple-choice or Yes/No” questions and adding them to a database with

“columns for each possible kind of digital label.” Ex. 1001 (’807 patent) at

5:46-63.

The ’807 patent contains three claims, each of which describes an

apparatus or method where a computer (1) provides a “subscriber” with “digital

labels representing different specific qualities” from a “digital label database,”

(2) allows the subscriber to use a website to “enter information pertaining to the

subscriber,” (3) converts the entered information into the digital labels, and (4)

stores them in a “subscriber database.” Claims 1 and 2 further require that (5)

“users” can search the database for the stored subscriber digital labels in order

to find listings with the qualities represented by those labels. Ex. 1001 at 19:18-

20:25.

Claim 1 recites:

A host website apparatus for listing subscribers comprising:

a computer system,

said computer system includes a digital label database for

providing to a listing subscriber digital labels representing

different specific qualities and a subscriber database for

storing a listing of subscribers' digital labels;


9

said computer system being configured to respond to a

subscriber’s request for listing and guiding the subscriber

via the Host Website display to enter information

pertaining to the subscriber and converting the information

to digital labels by accessing said digital label database and

storing the subscriber's digital labels in said subscriber

database; and

said computer system further configured to enable users to

search said subscriber database for subscriber digital labels

identifying subscriber qualities.

Claim 2 depends from claim 1, and adds the requirement that the website

be “configured for a specific subject” (e.g. the example in Figures 4d-4k is of a

website configured for listing organizations in the Philippines).

Claim 3 is a method claim with limitations substantially similar to those

in claim 1.

IV. THE ’807 PATENT IS SUBJECT TO COVERED BUSINESS METHOD PATENT REVIEW

The ’807 patent is eligible for covered business method patent review

because it qualifies as a “covered business method patent” and does not fall

within the “technological invention” exception. 37 C.F.R. § 42.301(a)-(b).

A. The ’807 Patent Is A “Covered Business Method Patent”

“Covered business method patents” under 37 C.F.R. § 42.301(a) include

“patents claiming activities that are financial in nature, incidental to a financial

activity or complementary to a financial activity.” SAP Am., Inc. v. Versata

Dev. Grp., Inc., CBM2012-00001, Paper 36 at 21-22 (PTAB Jan. 9, 2013).


10

The ’807 patent qualifies as a “covered business method patent” because

its claims are directed at e-commerce activities. The ’807 patent claims a

method that purportedly solves the problem of making “commonplace

commercial information” more accessible on the Internet by classifying

“listings” of websites into categories, just like the classified ads in newspapers

did in paper form. The applicant told the Patent Office during prosecution that

while “the kind of labeling system” the applicant was claiming “is common in

commerce in physical form (e.g. items in supermarkets), it has not heretofore

been used or proposed in digital form for websites.” Ex. 1009 (Dec. 29, 2003

Applicant Remarks) at 8.

Moreover, in one preferred embodiment of the ’807 patent, the claimed

“Host Website” is a “Host Website” with listings of “financial[] and accounting

services.” Ex. 1001 (’807 patent) at 16:65-67. The fact that a preferred

embodiment of the claimed invention is a website with categorized listings of

financial and accounting services shows that the ’807 patent is a “covered

business method patent,” because providing a website with categorized listings

of financial and accounting services is an activity that is “financial in nature,

incidental to a financial activity or complementary to a financial activity.” See

SAP Am., Paper 36 at 21-22.

The fact that the ’807 patent also claims other e-commerce services

further qualifies it as a “covered business method patent.” See, e.g., Experian

Mktg. Solutions Inc. v. RPost Commc’ns Ltd., CBM2014-00010, Paper 20 at 6


11

(PTAB Apr. 22, 2014) (“The presence of the e-commerce embodiment makes

clear that the method claims have utility to financial processes”). The following

statements from the ’807 patent demonstrate that it is directed at e-commerce

services:

• “Host websites can be designed to quickly and readily convey

qualitative information about the sellers and buyers

themselves . . . which will often be useful in narrowing the field

of potential trading partners. Most Business-to-Business site

concepts can therefore best be served by the use of the Host

Website structure and related inventions.” Ex. 1001 (’807

patent) at 16:3-9.

• “Multi-parameter digital labels could be used to indicate, for

example: the nature of an entity or of its activities; location or

service area; price range, specific products or services offered;

credit and payment terms; exact facilities offered to

customers….” Ex. 1001 (’807 patent) at 5:8-12.

• “Finally, the use of screens-within-the-real-screen permits the

orderly presentation of online advertising when a given screen is

idle . . . without confusing the user as to which items are part of

the website and which are transient advertising.” Ex. 1001 (’807

patent) at 19:4-8.2

2 Many other passages in the ’807 patent further confirm that its claims are

directed at e-commerce services: “[F]our specific xx.xxx digital labels,

identifying entities which sell DVD players, repair them, rent DVD discs, or sell

DVD discs….” Ex. 1001 at 8:38-41; “For example, a small business website


12

These passages show that the claims of the ’807 patent are intended to

apply to e-commerce services, such as applying digital labels representing

process and credit/payment terms to products available through a website.

Labeling products and services with prices and credit/payment terms is an

activity that is financial in nature. Google Inc. v. Unwired Planet, LLC,

CBM2014-00006, Paper 11 at 11 (PTAB Apr. 8, 2014); Experian Mktg., Paper

20 at 6 (finding claims were financial in nature based on the presence of “e-

commerce embodiments”); Apple Inc. v. Sightsound Techs., LLC, CBM2013-

0019, Paper 17 at 12 (PTAB Oct. 8, 2013)).

B. The ’807 Patent Is Not A “Technological Invention”

The ’807 patent does not fall within the “technological invention”

exception because it describes and claims the use of well-known technology to

selling cookies has little chance of getting noticed by a portal; but if it were

listed on a hypothetical Host Website for Internet Vendors . . . the cookie-

vendor’s chances of getting found by people who want to buy cookies over the

Web would increase greatly.” Ex. 1001 at 14:22-28; “Host Website[s] would

perform a useful economic and social function by sustaining visibility for small

and medium vendors….” Ex. 1001 at 16:23-25; “[A] Host Website for Books

which includes authors, books and periodicals, libraries, bookstores, book

auctioneers, book clubs (sellers), book societies and discussion groups, book

publishers, and book reviewers.” Ex. 1001 at 16:34-38.


13

perform tasks that it admits could readily be performed manually, not a novel

technical solution to a technical problem.

As explained in 37 C.F.R. § 42.301(b), determining whether the ’807

patent qualifies for the technological invention exception requires considering

“whether the claimed subject matter as a whole recites a technological feature

that is novel and unobvious over the prior art; and solves a technical problem

using a technical solution.” Thus, the Patent Office has explained that the

following claim drafting techniques “would not typically render a patent a

technological invention:”

(a) Mere recitation of known technologies, such as computer

hardware, communication or computer networks, software,

memory, computer readable storage medium, scanners,

display devices or databases, or specialized machines, such

as an ATM or point of sale device.

(b) Reciting the use of known prior art technology to

accomplish a process or method, even if that process or

method is novel and nonobvious.

(c) Combining prior art structures to achieve the normal,

expected, or predictable result of that combination.

77 Fed. Reg. 48,756; 48,763-64.

The claims of the ’807 patent fall squarely within each of the categories

(a) to (c) above, showing that the technological innovation exception does not

apply because the ’807 patent relies only on known and existing technology.

See Ex. 1001 (’807 patent) at 6:65-66 & 5:46-47.


14

The ’807 patent claims the idea of cataloging “listings” into pre-defined

categories so that a subsequent search can locate those listings more effectively.

This is the same idea that librarians have used for centuries in cataloging books

when adding them to a library so that they can be found without looking at

every book in the library. See, e.g., Ex. 1003 (Krajewski) at 27-47 (describing

library index systems from the 18th and 19th centuries).

The ’807 patent specifically admits that the invention, while implemented

on an Internet website, “can best be appreciated by metaphor” to a library’s

card-catalog:

The system and method can best be appreciated by metaphor:

consider the Internet as a library whose books (websites) are

not only scattered at random but also indistinguishable from

each other except upon actually being opened. Internet

portals are like librarians who are resigned to the fact that the

books (websites) are in disarray, but purport to help readers

by speed-reading. The present invention creates order in the

library by establishing discrete sections where books

(websites) can be organized by category, and by codifying

information about each book (website) on index cards so that

readers can more easily identify the books (websites) they

need.

Ex. 1001 (’807 patent) at 2:62-67 (emphasis added); see also id. 6:65-66 &

5:46-47.

The example illustrated in Figures 4d through 4k of the ’807 patent

confirms that a library’s card-catalog works in exactly the same way as the


15

claimed invention. As described above, Figures 4d through 4k of the ’807

patent show how a “subscriber” makes a series of choices from a set of

predefined categories, specifically: “Main Category: Churches & Religious

Organizations,” followed by “Sub-Category: Specific Place of Worship,” and

then “Roman Catholic,” “Cathedral,” and “Location: MM-Makati/Pasay/Pque.”

This process—selecting the most appropriate choice available in a hierarchical

set of pre-defined categories—is exactly what a librarian does when cataloging

a book to be added to a library. For example, a librarian cataloging a cookbook

using the Dewey Decimal System might assign it to ‘641.8,’ by making four

selections, one for each of the four digits in ‘641.8,’ with each selection being

made from a predefined set of 10 possible choices. Ex. 1006. In this example,

the librarian first chose “Technology” (code 6--.-) from the list of 10 top-level

Dewey Decimal categories. The librarian then chose “Home & family

management” (code 64-.-), then “Food and drink” (code 641.-), and finally

“Cooking specific kinds of dishes, preparing beverages” (code 641.8), each time

selecting one of the 10 possible categories represented by the 10 possible digits.

Id.

In so doing, the librarian caused each of the steps of claim 1 to be

performed, if the library’s card-catalog system is treated as corresponding to the

“computer system,” “database,” and “website” elements of the claim:

(1) The librarian/subscriber used a “[library] system includ[ing] a digital

label database” (a complete listing of Dewey-Decimal categories and codes)


16

“for providing to a listing subscriber digital labels representing different specific

qualities” (providing the librarian with the Dewey-Decimal category choices for

the cookbook);

(2) The librarian/subscriber followed a “[library] system … configured to

guide the subscriber … to enter information pertaining to the subscriber” (using

a pen and a paper library card to enter “Technology”/“Home & family

management”/“Food and drink”/“Cooking specific kinds of dishes, preparing

beverages”);

(3) The librarian/subscriber “convert[ed] the information to digital labels”

(the four digital labels represented by the digits in 641.8: “6--.-,” “64-.-,” “641.-

,” and “641.8”) “by accessing said digital label database” (the listing of listing

of Dewey-Decimal categories and codes);

(4) The librarian/subscriber “stor[ed] the subscriber’s digital labels” in a

“subscriber database for storing a listing of subscribers’ (by storing the

completed library card in the card catalog); and

(5) In a “[library] system … configured to enable users to search said

subscriber database for subscriber digital labels identifying subscriber qualities”

(library users can search the card catalog for Dewey-Decimal codes

representing qualities of books catalogued with those codes).

This shows that the ’807 patent does not qualify as a “technological

invention” because it claims the same process that librarians use to catalog

books in a library—a process that was well-known long before the ’807 patent.


17

The Dewey Decimal System, for example, was first published in 1876 and

enjoys widespread use (including computer migration) in more than 135

countries and over 200,000 libraries. Ex. 1004 at 1-2 (describing the

conception, publication, and widespread adoption of the Dewey Decimal

Classification system) & 3-5 (describing Dewey classification categories at a

high level); Ex. 1005 (detailing “Dewey Services” provided by OCLC.org,

which owns copyrights and trademarks in the Dewey Decimal Classification

system); Ex. 1006 (describing sub-classifications within the Dewey Decimal

Classification system relating to “food and drink”).

Further confirmation that the ’807 patent does not qualify as a

“technological invention” comes from the applicant’s statement during

prosecution that while “the kind of labeling system [being claimed] is common

in commerce in physical form (e.g. items in supermarkets), it has not heretofore

been used or proposed in digital form for websites.” Ex. 1009 at 8. This

statement is an admission that the “kind of labeling system” being claimed was

commonly known “in physical form,” and shows that the applicant saw its

invention as implementing that commonly-known labeling system “in digital

form for websites.”

The fact that the ’807 patent uses computers and databases—which did

not exist in 1876 when the Dewey Decimal System was published—does not

qualify the ’807 patent as a “technological invention, because the ’807 patent

uses purely generic computing systems. For example, the ’807 patent explains


18

that its “process of creating digital labels is not dependent on any particular

hardware or form of software.” Ex. 1001 (’807 patent) at 5:46-47.

Furthermore, “[v]irtually any computer programming language can be

employed,” so long as the programming language can achieve three results: (1)

storing a user’s response to multiple choice or yes/no questions; (2)

accumulating those responses; and (3) “transpos[ing]” the accumulated

information on a “Host Website.” Ex. 1001 (’807 patent) at 5:48-60. The ’807

patent explains that this can be accomplished “for example, by maintaining

database columns for each possible kind of digital label, and under each column

placing the identifier numbers for all listing to which this label applies.” Id. at

60-63. And the use of databases and websites were well known: the ’807 patent

itself describes technologies for word- and keyword-searching of internet

websites as conventional and pre-existing. Ex. 1001 (’807 patent) at 4:16-23.

The ’807 patent’s use of admittedly-conventional computers and

databases does not qualify it for the “technological invention” exemption. As

the Board has explained, “the mere recitation that the method is computer

implemented or that the process is automated, using known techniques such as

storing information, does not preclude the patent from qualifying as a covered

business method patent.” Interthinx, Inc. v. Corelogic Solutions, LLC,

CBM2012-00007, Paper 16 at 18 (PTAB Jan. 31, 2013).


19

V. THE CHALLENGED CLAIMS ARE INVALID BECAUSE THEY CLAIM ABSTRACT IDEAS

A. Legal Standards

“Abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank

Int’l, 134 S. Ct 2347, 2354 (2014); 35 U.S.C. § 101. To determine whether a

claim is invalid because it is directed to an abstract idea, a two-step analysis is

required. Id. at 2355. First, “[w]e must first determine whether the claims at

issue are directed to a patent-ineligible concept.” Id. Second, “we consider the

elements of each claim both individually and ‘as an ordered combination’ to

determine whether the additional elements ‘transform the nature of the claim’

into a patent-eligible application.” Id. (citing Mayo Collaborative Servs. v.

Prometheus Labs., Inc., 132 S. Ct. 1289, 1297-98 (2012)).

“[T]he mere recitation of a generic computer cannot transform a patent-

ineligible abstract idea into a patent-eligible invention.” Alice Corp., 134 S. Ct.

at 2358. “[I]f a patent’s recitation of a computer amounts to a mere instruction

to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot

impart patent eligibility.” Id. (internal citations omitted). Similarly, “merely

claiming a software implementation of a purely mental process that could

otherwise be performed without the use of a computer” is not patent-eligible,

nor is “[t]he mere manipulation or reorganization of data.” CyberSource Corp.

v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).

A patent-eligible claim must incorporate enough meaningful limitations

to ensure that it claims more than an abstract idea, and cannot constitute a mere


20

“‘drafting effort designed to monopolize the [abstract idea].’” Alice Corp., 135

S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “Simply appending

conventional steps, specified at a high level of generality,” is not enough for

patent eligibility. Id. (quoting Mayo, 132 S. Ct. at 1292). Thus, the PTAB

analyzes claims to determine whether claims include meaningful limitations that

describe specific, patent-eligible applications of an abstract idea, or whether

they add merely conventional steps and thus threaten to monopolize the abstract

idea itself. U.S. Bancorp v. Retirement Capital Access Mgmt. Co., CBM2013-

00014, Paper 33 at 12 (PTAB Aug. 22, 2014).

B. Claim Interpretation

In CBM reviews, patent claim terms “are to be given their broadest

reasonable interpretation, as understood by one of ordinary skill in the art and

consistent with the disclosure.” See SAP Am., Paper 70 at 18-19. Below,

constructions are proposed for certain claim terms pursuant to that standard:

“Host Website” – The term “Host Website” should be construed to mean

a “website which provides listings using digital labels to facilitate searches.”

See Ex. 1001 (’807 patent) at 10:49-58 (explaining that in the preferred

embodiment, “Host Websites” are “a new form of website which provides

listings and information on entities, people, or documents sharing a common

characteristic, on an open and non-exclusionary basis, employing automatic

multi-parameter digital labeling to record unambiguous qualitative information,

and which offers the use of these digital labels to the public to facilitate


21

searches. Such a Host Website is hereinafter called a Host Website.”) (emphasis

added).

“Subscriber” – The term “subscriber” should be construed as “those who

use a Host website to list a website that presents information.” This

construction is based on the ’807 patent’s description of those who would

‘subscribe’ to a Host website by creating a “listing” there. See Ex. 1001 (’807

patent) at 11:3-5 (showing that subscribers are those who pressed the “List

Yourself” button on the screen); id. at 1:42-46 (explaining that the Internet is

used by “‘publishers’—those who operate websites in order to present

information to the electronic world at large, and ‘surfers’—those looking for

information without a known website address in mind”) (emphasis added).

C. Claim 1 Is Unpatentable Under § 101 Because It Claims The Abstract Idea Of Classifying ‘Listings’ Into Categories

Claim 1 is directed to the abstract idea of classifying “listings” into

categories—the same idea that has been used for generations to categorize

classified ads in newspapers and to create card-catalogs of books in library.

While the ’807 patent describes implementing this idea using computers and

databases hosted on a website, these are conventional steps that are insufficient

to transform the abstract idea of classifying “listings” into categories into a

patent-eligible apparatus.


22

1. The ’807 patent admits that the use of computers, databases, and websites with ‘listings’ was known, conventional technology.

The ’807 patent specifically acknowledges that pre-existing technology

included websites that provided manually-categorized listings of services like

“Los Angeles plumbers” and “Denver restaurants.” Ex. 1001 (’807 patent) at

2:21-22 (“manually constructed ‘Yellow Pages’ section” with “plumber

listings”); 2:13-16 (restaurant list website that was “assembled by hand”).

The ’807 patent also explains that existing technology included search

engines like Yahoo! and Alta Vista, which enabled searches for websites on the

Internet using keywords or word-matching. See, e.g., Ex. 1001 (’807 patent) at

4:16-23; 1:50-2:7; 2:12-13 (describing “Yahoo search for ‘Denver

restaurants’”); 2:17-18 (“Alta Vista search of ‘Los Angeles plumbers’).

These websites used computers and databases. Thus, the ’807 patent’s

own description demonstrates that the use of computers and databases to

provide websites, including websites with organized “listings” of services or

businesses, was previously-known technology.

2. All that Claim 1 adds to the abstract idea of classifying ‘listings’ into categories is the use of conventional computers, databases, and websites.

Claim 1 of the ’807 patent describes the abstract idea of using labels to

classify ‘listings’ into categories—the same idea used for generations in library

card-catalogs and newspaper classified ads—and adds nothing to that idea other

than the conventional steps of using a computer, database, and website.


23

Claim 1 describes a “host website apparatus for listing subscribers” that

comprises “a computer system,” which: (1) provides a “subscriber” with

“digital labels representing different specific qualities” from a “digital label

database”; (2) allows the subscriber to use a website to “enter information

pertaining to the subscriber,” (3) converts the entered information into the

digital labels, (4) stores them in a “subscriber database,” and (5) allows “users”

to search the database for the stored digital labels in order to find listings with

the qualities represented by those labels. Ex. 1001 (’807 patent) at 19:18-20:25.

The ’807 patent illustrates the steps of claim 1 in Figs. 4a-4k with the

example of someone creating a listing for a Roman Catholic cathedral on a

website with listings of organizations in the Philippines by choosing the

response that best describes the cathedral from a series of multiple-choice

questions. In this example, the website with listings of organizations in the

Philippines is the claimed “host website apparatus for listing subscribers” that

comprises “a computer system.” As shown in Figs. 4d-4g, the website contains

a database of categories which can be presented to the subscriber as multiple-

choice questions. See Ex. 1001 at Figs. 4d-4g. This database is the claimed

“digital label database for providing to a listing subscriber digital labels

representing different specific qualities.” In the example shown, the subscriber

uses the website to successively select the categories “Churches & Religious

Organizations,” “Specific Place of Worship,” “Roman Catholic,” and finally

“Cathedral” as best describing the desired listing for the cathedral. Id. This use


24

of the website to guide a user to categorize the “listing” by selecting responses

to multiple-choice questions corresponds to the claim requirement that the

computer system is “configured to respond to a subscriber's request for listing

and guiding the subscriber via the Host Website display to enter information

pertaining to the subscriber.” The selections made by the subscriber are then

converted into digital labels and stored in a database, corresponding to the claim

requirement of “converting the information to digital labels by accessing said

digital label database and storing the subscriber's digital labels in said subscriber

database.” Finally, the website makes the resulting “labeled” listing of the

Roman Catholic cathedral available to someone who searches for it using the

labels, corresponding to “said computer system further configured to enable

users to search said subscriber database for subscriber digital labels identifying

subscriber qualities.”

As seen from this example, the only steps that Claim 1 adds to the

abstract idea of classifying “listings” into categories are the admittedly-

conventional ones of using computers, databases, and websites. Similarly, a

librarian using a pen, a paper card, and the Dewey Decimal System to add a

cookbook to a library’s card catalog performs all the steps of claim 1 without

the use of conventional computers, databases, and websites. The librarian

selects and writes onto the card the Dewey Decimal categories

“Technology”/“Home & family management”/“Food and drink”/“Cooking

specific kinds of dishes, preparing beverages,” as well as the four digital labels


25

from the Dewey Decimal system that correspond to those categories: “6--.-”,

“64-.-”, “641.-”, and “641.8”). The librarian then stores the card with the digital

labels in the card catalog at “641.8”, which allows library users to search for the

cookbook using the categories represented by those labels. Ex. 1006.

Thus, all claim 1 adds to the abstract idea of classifying ‘listings’ into

categories is the use of admittedly-conventional technology: computers,

databases, and websites. This puts Claim 1 squarely within the type of claim

prohibited in Alice: “Simply appending conventional steps, specified at a high

level of generality,” is not enough for patent eligibility. Alice Corp., 135 S. Ct.

at 2357 (quoting Mayo, 132 S. Ct. at 1292).

Put differently, claim 1 seeks to monopolize the idea of classifying

‘listings’ into categories, whenever this is done through a website, using a

computer and a database. Again, this is exactly the type of claim the Supreme

Court unanimously declared invalid in Alice, Mayo, and Bilski. Alice Corp.,

135 S. Ct. at 2360 (finding unanimously that components such as a “data

processing system” and a “communications controller” did not contribute

significantly more than the abstract idea); Mayo, 132 S. Ct. at 1297; Bilski v.

Kappos, 130 S. Ct. 3218, 3225 (2010) (finding unanimously that “limiting an

abstract idea to one field of use or adding token post-solution components” did

not make claims patentable); see also Digitech Image Techs., LLC v.

Electronics for Imaging, Inc., 2014 WL 3377201, at *5 (Fed. Cir. 2014)

(affirming a finding that claims with a preamble reciting a “digital image


26

reproduction system” were directed to a patent-ineligible abstract idea (quoting

Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006)).

Claim 1 is also invalid because it seeks to claim the type of mental

processes used by a librarian that not only could be performed using pen and

paper, but admittedly had been implemented for centuries using pen and paper

cards in libraries around the world. See Cybersource, 654 F.3d at 1372.

D. Claim 2 Is Unpatentable Under § 101

Claim 2 recites: “A website as in claim 1 in which the website is

configured for a specific subject.” Ex. 1001 (’807 patent) at Claim 2. This is

itself an abstract idea, so Claim 2 is patent-ineligible for the same reasons as

Claims 1 and 3. Furthermore, the limitation of claim 2 does not meaningfully

add to Claim 1. It was a well-known idea, as demonstrated both by the ’807

patent itself—which admits that a website with listings of Denver restaurants

was previously known—as well as by pre-existing websites like those of

Craigslist, which were both configured for the specific subject of classified ads.

See, e.g., Exs. 1007 & 1008.

E. Claim 3 Is Unpatentable Under § 101

Claim 3, which claims a method for “listing websites on the Internet,”

contains steps that, like claim 1, amount to nothing more than implementing the

abstract idea of classifying ‘listings’ into categories. First, the claim requires

“configuring a computer system to compile a digital label database . . . and to

compile a subscriber database.” Id. This step of the claim requires nothing


27

more than the conventional use of a computer to set up a database containing

categories represented by digital labels (e.g. a database the categories of a

classification system, such as the Dewey Decimal System). Second, the claim

requires “guiding the subscriber via a website display to enter information

pertaining to the subscriber.” Id. This step of the claim recites another

conventional step, specifically that of entering information via a website. Third

and finally, the claim requires storing information in a database. Id. Thus, the

claim covers entering information via a website and storing that information in a

database.

As with claim 1, none of the elements in claim 3 add any meaningful

limitations to the abstract idea of using labels to classify ‘listings’ into

categories. The use of a “computer system,” “digital label database,”

“subscriber database,” and “Host Website,” are mere conventional steps

appended to this idea, and do not transform it into something patentable. Mayo,

132 S. Ct. at 1300. The use of a computer to accept information through a

website, and to store and organize that information in a database, does nothing

more than “perform[] more efficiently what could otherwise be accomplished

manually.” Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.),

687 F.3d 1266, 1279 (Fed. Cir. 2012). Claim 3, like claim 1, cannot become

patentable simply because it is performed on a website with a computer and a

database. Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (invalidating processes

that “can be carried out in existing computers long in use, no new machinery


28

being necessary,” or “can also be performed without a computer.”); see also

Alice Corp., 132 S. Ct. at 2360 (determining that “the claims at issue amount to

‘nothing significantly more’ than an instruction to apply the abstract

idea…using some unspecified, generic computer”); Mayo, 132 S. Ct. at 1298.

VI. CONCLUSION

For the reasons above, Tagged requests that the Board institute CBM

review of the ’807 patent.

Dated: February 9, 2015 Respectfully submitted,

By: /s/ Jonathan D. Ball Jonathan Ball (Reg. No. 59,928) Greenberg Traurig LLP 200 Park Avenue New York, NY 10166 [email protected] Tel. (212) 801-2223 Fax. (212) 801-6400 Nicholas A. Brown (pro hac vice) Greenberg Traurig LLP 4 Embarcadero Center Suite 3000 San Francisco, CA 94114 [email protected] Tel. (415) 655-1271 Fax. (415) 707-2010

Documents

CBM Petition of U.S. Patent No. 7,558,807fishpostgrant.com/wp-content/uploads/CBM2015-00075-CBM-Petition-r… · Tagged, Inc., Case No. 2:14-cv-00993-JRG-RSP (E.D. Tex.), filed Oct