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IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD In re Post-Grant Review of: ) ) U.S. Patent No. 6,292,547 ) U.S. Class: 379/93.12 ) Issued: September 18, 2001 ) ) Inventor: Ronald A. Katz ) ) Application No. 09/270,241 ) ) Filed: March 15, 1999 ) ) FILED ELECTRONICALLY For: TELEPHONIC-INTERFACE ) PER 37 C.F.R. § 42.6(b)(1) STATISTICAL ANALYSIS ) SYSTEM ) Mail Stop Patent Board Patent Trial and Appeal Board U.S.P.T.O. P.O. Box 1450 Alexandria, VA 22313-1450 PETITION FOR POST-GRANT REVIEW UNDER 35 U.S.C. § 321 AND § 18
OF THE LEAHY-SMITH AMERICA INVENTS ACT
Pursuant to 35 U.S.C. § 321 and § 18 of the Leahy-Smith America Invents
Act (“AIA”) and pursuant to 37 C.F.R. § 42.300 et seq., FedEx Corporation
(“Petitioner”) hereby requests post-grant review of claims 11 and 18 of U.S. Patent
No. 6,292,547 (“the ’547 patent,” Ex. 1001), now purportedly assigned to Ronald
A. Katz Technology Licensing, L.P. (“Katz” or “Patent Owner”).
Covered Business Method Patent ReviewUnited States Patent No. 6,292,547
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An electronic payment in the amount of $30,000 for the post-grant review
fee specified by 37 C.F.R. § 42.15(b)(1)—comprising the $12,000.00 request fee
and the $18,000.00 post-institution fee—is being paid at the time of filing this
petition. If there are any additional fees due in connection with the filing of this
paper, please charge the required fees to our Deposit Account No. 06-0916.
Covered Business Method Patent ReviewUnited States Patent No. 6,292,547
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TABLE OF CONTENTS
TABLE OF AUTHORITIES ................................................................................... vi
LIST OF EXHIBITS .................................................................................................. x
I. PRELIMINARY STATEMENT ...................................................................... 1
II. MANDATORY NOTICES ............................................................................. 1
A. Real Party-in-Interest ............................................................................ 1
B. Related Matters ...................................................................................... 2
C. Lead and Backup Counsel and Service Information ............................. 3
III. BACKGROUND ............................................................................................. 3
A. The ’547 Patent ..................................................................................... 3
B. Claim 18 of the ’547 Patent ................................................................... 4
IV. GROUNDS FOR STANDING ........................................................................ 6
A. Claims 11 and 18 Are Unpatentable ...................................................... 6
B. The ’547 Patent Is a Covered Business Method Patent ........................ 6
C. Claims 11 and 18 Are Not Directed to a “Technological Invention” .............................................................................................. 8
1. Claims 11 and 18 of the ’547 Patent Do Not Recite a Novel and Nonobvious Technological Feature .......................... 9
2. The Patent Does Not Solve a Technical Problem Using a Technical Solution .................................................................... 13
D. Patent Owner Has Asserted Claim 18 of the ’547 Patent Against Petitioner’s Ordering Process, and Petitioner Is Not Estopped .......... 17
V. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED .............................................................................. 17
A. Claims for Which Review Is Requested ............................................. 17
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B. Statutory Grounds of Challenge .......................................................... 18
C. Claim Construction ............................................................................. 18
1. Communication Facility ............................................................ 19
2. Interface Structure ..................................................................... 21
3. Record Testing Structure .......................................................... 22
4. Analysis Structure ..................................................................... 24
5. Personal Identification Data ...................................................... 26
VI. CLAIMS 11 AND 18 OF THE ’547 PATENT ARE UNPATENTABLE UNDER § 101 ............................................................... 27
A. Legal Framework Under Alice and Its Predecessors .......................... 27
B. Claims 11 and 18 of the ’547 Patent Are Directed to the Abstract Idea of Item Ordering ........................................................... 27
1. Item Ordering Is a Fundamental Economic Practice ................ 28
2. Claims 11 and 18 Are Directed Only to the Abstract Idea of Item Ordering ........................................................................ 31
C. Claims 11 and 18 of the ’547 Patent Do Not Recite “an Inventive Concept” or “Significantly More” Than the Abstract Idea ...................................................................................................... 33
1. Claims 11 and 18 Lack an Inventive Concept Beyond Conventional Computerized Systems Used in a Conventional Business Process ................................................ 34
a. The “Interface Structure” Is Conventional ..................... 41
b. The “Record Testing Structure” Is Conventional ........... 45
c. The “Storage Structure” Is Conventional ....................... 46
d. The “Analysis Structure” Is Conventional ..................... 47
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2. Even as a Combination, Claims 11 and 18 Do Not Recite or Use Computer Components in a Patent-Eligible Way ......... 48
a. The ’547 Patent Does Not Improve the Functionality of the Computer ........................................ 49
b. The ’547 Patent Does Not Improve the Technology in Another Technical Field ......................... 50
3. Claims 11 and 18 Also Fail the Alternative Machine-or-Transformation Test for Patent Eligibility ................................ 53
VII. CLAIMS 11 and 18 OF THE ’547 PATENT ARE UNPATENTABLE UNDER § 103 ................................................................................................ 54
A. The Level of Skill in the Art at the Time of Invention ........................ 54
B. The Combination of Jordan and Michlin renders Claims 11 and 18 Obvious .......................................................................................... 54
1. Jordan and Michlin Teach Every Feature of Claims 11 and 18 ........................................................................................ 57
2. The Combination of Jordan and Michlin Is Obvious ............... 66
VIII. CONCLUSION .............................................................................................. 67
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TABLE OF AUTHORITIES
Page(s) Cases
Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) ................................................................................ passim
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 1:10-cv-910, Dkt. No. 301 (E.D. Va. Oct. 24, 2014) .................................. 30
Apple Inc. v. SightSound Technologies, LLC, CBM2013-00019, Paper 17 (PTAB Oct. 8, 2013) ............................................. 36
Bilski v. Kappos, 130 S. Ct. 3218 (2010) ..................................................................... 29, 31, 39, 53
Cisco Systems, Inc. v. AIP Acquisition LLC, IPR2014-00247, Paper 20 (PTAB July 10, 2014) .............................................. 18
CLS Bank International v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) ................................................................... 29, 39
Content Extraction & Transmission LLC v. Wells Fargo Bank, National Association, No. 2013-1588 (Fed. Cir. Dec. 23, 2014) .............................................. 31, 32, 35
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) .......................................................................... 28
DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505, 2014 WL 6845152 (Fed. Cir. Dec. 5, 2014) ..................... 37, 38
DealerSocket, Inc. v. AutoAlert, Inc., CBM2014-00146, Paper 19 (PTAB Dec. 9, 2014) ............................................. 12
Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) ................................................................... 16, 35
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) .......................................................................... 53
Covered Business Method Patent ReviewUnited States Patent No. 6,292,547
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Fidelity National Information Services, Inc. v. CheckFree Corp., CBM2013-00030, Paper 51 (PTAB Dec. 22, 2014) .................................... 16, 35
Fidelity National Information Services, Inc. v. DataTreasury Corp., CBM2014-00021, Paper 14 (PTAB Apr. 29, 2014)............................................ 15
Fort Properties, Inc. v. American Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2012) ................................................................... 16, 35
Gottschalk v. Benson, 409 U.S. 63 (1972) .............................................................................................. 34
Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co., No. 1:13-cv-01274 (D. Del. Dec. 18, 2014) ....................................................... 39
Katz Interactive Call Processing Patent Litigation, In re, 639 F.3d 1303 (Fed. Cir. 2011) ............................................................... 2, 25, 39
Katz Interactive Call Processing Patent Litigation, In re, MDL No. 07-ML-1816 (C.D. Cal. Feb. 21, 2008), Dkt. No. 1448 ............. 12, 26
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002, Paper 10 (PTAB Jan. 25, 2013) .............................................. 9
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) ..................................................................... 33, 41, 50, 51
Parker v. Flook, 437 U.S. 584 (1978) ............................................................................................ 33
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 18
Rambus, Inc., In re, 694 F.3d 42 (Fed. Cir. 2012) .............................................................................. 18
Ronald A. Katz Technology Licensing, L.P. v. AT&T Corp., 63 F. Supp. 2d 583 (E.D. Pa. 1999) ............................................................ passim
SAP America, Inc. v. Versata Development Group, Inc., CBM2012-00001, Paper 36 (PTAB Jan. 9, 2013) ................................................ 7
Covered Business Method Patent ReviewUnited States Patent No. 6,292,547
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Schreiber, In re, 128 F.3d 1473 (Fed. Cir. 1997) ........................................................................... 10
SiRF Tech., Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010) ............................................................. 16, 35, 38
SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App’x 950 (Fed. Cir. 2014) (nonprecedential) ........................................ 32
Tomita Technologies USA, LLC v. Nintendo Co., No. 14-1244 (Fed. Cir. Dec. 8, 2014) ................................................................. 25
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) ............................................................................ 32
Statutes
35 U.S.C. § 101 ................................................................................................ passim
35 U.S.C. § 103 ................................................................................................ passim
35 U.S.C. § 112, ¶ 6 .......................................................................................... 22, 25
35 U.S.C. § 324(a) .............................................................................................. 6, 67
AIA § 18(d)(1) .................................................................................................. 6, 8, 9
Other Authorities
157 Cong. Rec. S5432 (daily ed. Sept. 8, 2001) ........................................................ 7
77 Fed. Reg. 48,734 (Aug. 14, 2012) (Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule) .......................................................................................6, 8
77 Fed. Reg. 48,756 (Aug. 14, 2012) (Office Patent Trial Practice Guide) ..................................................................... 9
79 Fed. Reg. 74,618 (Dec. 16, 2014) (2014 Interim Guidance on Patent Subject Matter Eligibility) .......................... 32
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Regulations
37 C.F.R. § 42.301 .................................................................................................6, 8
37 C.F.R. § 42.302(b) ............................................................................................... 17
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LIST OF EXHIBITS
Petition Exhibit 1001: U.S. Patent No. 6,292,547 to Katz Petition Exhibit 1002: File History for Application No. 09/270,241 Petition Exhibit 1003: Declaration of S. Thomas Emerson Petition Exhibit 1004: List of ’547 Patent Related Matters Petition Exhibit 1005: Complaint - Ronald A. Katz Technology Licensing, L.P.
v. American Airlines, Inc., et al., No. 2:06-cv-00334-DF (E.D. Tex. Aug. 21, 2006)
Petition Exhibit 1006: Ronald A. Katz Technology Licensing, L.P. v. AT&T
Corp., 63 F. Supp. 2d 583 (E.D. Pa. 1999) Petition Exhibit 1007: In re Katz Interactive Call Processing Patent Litigation,
639 F.3d 1303 (Fed. Cir. 2011) Petition Exhibit 1008: U.S. Patent No. 4,191,402 to Michlin Petition Exhibit 1009: U.S. Patent No. 4,313,035 to Jordan et al. Petition Exhibit 1010: “Mail Order,” Oxford English Dictionary
(3d ed. June 2000) Petition Exhibit 1011: Montgomery Ward’s 1895 Mail Order Catalogue Petition Exhibit 1012: Order RE: Claim Construction - In re Katz Interactive
Call Processing Patent Litigation, No. 2:07-ml-01816 (C.D. Cal. Feb. 21, 2008), Dkt. No. 1448
Petition Exhibit 1013: Excerpts from Infringement Report of Expert David
Lucantoni in Ronald A. Katz Technology Licensing L.P., v. American Airlines, et al., No. 2:07-cv-02196 (E.D. Tex.)
Petition Exhibit 1014: Reexam Control No. 90/013,182, Notice of Intent to
Issue Ex Parte Reexamination Certificate
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Petition Exhibit 1015: U.S. Patent No. 3,727,003 to Paraskevakos Petition Exhibit 1016: U.S. Patent No. 4,792,968 to Katz Petition Exhibit 1017: Declaration of Arthur Brody, as submitted in
Reexamination Proceeding Control No. 90/013,182 Petition Exhibit 1018: Periphonics Corporation: Bank from Home Product
Description, 1980 Petition Exhibit 1019: Periphonics Corporation: Automated Student
Registration Using Touch-Tone Telephone Voice Response: An Application Note, Apr. 29, 1986
Petition Exhibit 1020: U.S. Patent No. 3,983,389 to Cowardin et al. Petition Exhibit 1021: U.S. Patent No. 3,743,793 to Emerson
Covered Business Method Patent ReviewUnited States Patent No. 6,292,547
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I. PRELIMINARY STATEMENT
U.S. Patent No. 6,292,547, entitled “Telephonic-Interface Statistical Analysis
System,” issued September 18, 2001, to Ronald A. Katz. Ex. 1001. Petitioner
challenges claims 11 and 18 of the ’547 patent. Claim 18 depends from claim 11 and
recites a method of collecting, comparing, and storing information for an order using
telephony equipment. Over 900 claims have issued under this patent specification
between 1989 and 2004. Despite such a multiplicity of claims under a single
specification, however, the ’547 patent does not purport to disclose any new
hardware or software. Indeed, the ’547 patent acknowledges that conventional
hardware and conventional software already exist for the purpose of collecting,
comparing, and storing data. Id. at 1:42-45. Rather, claim 18 (and its underlying
independent claim 11) is the high-water mark for linguistic—as opposed to
technological—inventiveness under the ’547 patent specification. Ultimately, claims
11 and 18 fail to pass muster under 35 U.S.C. § 101 because they fail to define an
“inventive concept” that is not abstract, and they fail to recite “significantly more”
than an abstract idea. Moreover, the prior art cited in this petition renders obvious the
combination recited in claims 11 and 18 under 35 U.S.C. § 103.
II. MANDATORY NOTICES
A. Real Party-in-Interest
The real party-in-interest is FedEx Corporation (“Petitioner”).
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B. Related Matters
The ’547 patent is the subject of the litigation captioned Ronald A. Katz
Technology Licensing, L.P. v. American Airlines, No. 2:06-cv-00334 (E.D. Tex.),
previously pending in the United States District Court for the Central District of
California under civil docket No. 2:07-cv-02196 (C.D. Cal.) pursuant to the
multidistrict litigation In re Katz Interactive Call Processing Patent Litigation, No.
07-ML-1816 (C.D. Cal.) (hereinafter “the MDL court” or “the MDL litigation”).
The ’547 patent and related patents have been the subject of numerous district
court actions and U.S. Patent and Trademark Office (“PTO” or “Office”)
proceedings over the years. Patent Owner appealed certain issues in the MDL
litigation to the United States Court of Appeals for the Federal Circuit. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011) (Ex. 1007).
A more complete list is attached as Exhibit 1004.
During prosecution of the ’547 patent, a court in the Eastern District of
Pennsylvania construed claim terms in patents that share the specification of the ’547
patent, and a number of those claim terms were contemporaneously adopted verbatim
in claims 11 and 18 prior to issuance of the ’547 patent in 2001. Ronald A. Katz
Technology Licensing, L.P. v. AT&T Corp., 63 F. Supp. 2d 583 (E.D. Pa. 1999) (Ex.
1006) (hereinafter “the AT&T litigation”).
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C. Lead and Backup Counsel and Service Information
Lead Counsel Backup Counsel Jeffrey A. Berkowitz
Reg. No. 36,743
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190-5675
Telephone: 571.203.2710
Facsimile: 202.408.4400
E-mail: [email protected]
James J. Boyle
Reg. No. 46,570
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190-5675
Telephone: 571.203.2724
Facsimile: 202.408.4400
E-mail: [email protected]
III. BACKGROUND
A. The ’547 Patent
The ’547 patent relates to a telephonic interface system used for collecting data
from callers and “statistically analyz[ing]” the collected data in combination with
other data. Ex. 1001 at 1:55-64. As shown in the ’547 patent’s Figure 1 (reproduced
below), remote terminals (T) and processing systems (P) are connected to a
communication facility (C).
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As the ’547 patent admits, these are all conventional components, well known before
the priority date for the patent. Ex. 1003, ¶¶ 14-52. Further, according to the ’547
patent specification, the processing system itself is a generic computer and capable of
being programmed to perform a variety of business functions, e.g., processing
information for mail order (Ex. 1001 at 10:26-11:62), lottery (id. at 12:21-14:7),
auction (id. at 14:8-15:61), game show (id. at 15:62-19:61), or poll (id. at 19:62-
21:20).
B. Claim 18 of the ’547 Patent
The ’547 patent has fifty claims. Petitioner requests review only of claim 18
(and by necessity claim 11, from which it depends). Contrary to the ’547 patent title,
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claims 11 and 18 lack any recitation of details involved in a “statistical analysis” of
collected data. Id. at 22:50-23:5, 23:36-37. In full, claim 11 recites:
11. An analysis control system for use with a communication
facility including remote terminals for individual callers, wherein each
of said remote terminals comprises a telephonic instrument including
a voice communication device and digital input device in the form of
an array of alphabetic numeric buttons for providing data and wherein
said communication facility has a capability to automatically provide
terminal digital data, indicating a calling telephone number, said
analysis control system comprising:
interface structure coupled to said communication facility
to interface said remote terminals for voice and digital
communication and including means to provide caller data
signals representative of data relating to said individual callers
provided from said remote terminals or automatically provided
by the communication facility with respect to the remote
terminals prior to the close of communication with the caller,
including caller personal identification data entered by the
caller via the digital input device and said terminal digital data
indicative of a calling telephone number;
record testing structure connected to receive and test said
caller data signals indicative of said terminal digital data
representative of said calling telephone number and said caller
personal identification data against previously stored terminal
digital data and caller personal identification data;
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storage structure for storing certain of said data provided
by said individual callers including item data for ordering
particular items; and
analysis structure for receiving and processing said caller
data signals under control of said record testing structure.
Id. at 22:50-23:15. Claim 18 includes the additional recitation: “wherein the
data identifying the order is number data.” Id. at 23:36-37.
IV. GROUNDS FOR STANDING
A. Claims 11 and 18 Are Unpatentable
For the reasons set forth below, it is more likely than not that claims 11 and 18
of the ’547 patent are invalid under 35 U.S.C. §§ 101 and 103. 35 U.S.C. § 324(a).
B. The ’547 Patent Is a Covered Business Method Patent
The AIA defines a Covered Business Method (“CBM”) patent as any patent
having claims directed to “performing data processing or other operations used in the
practice, administration, or management of a financial product or service . . . .” AIA
§ 18(d)(1); see also 37 C.F.R. § 42.301. The Office has stated that “financial product
or service” should be “interpreted broadly,” encompassing patents “claiming
activities that are financial in nature, incidental to a financial activity or
complementary to a financial activity.” Transitional Program for Covered Business
Method Patents—Definitions of Covered Business Method Patent and Technological
Invention; Final Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (quoting 157
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Cong. Rec. S5432 (daily ed. Sept. 8, 2001) (statement of Sen. Schumer)). And the
Board has explained that the term “financial” is an “adjective that simply means
relating to monetary matters.” SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-
00001, Paper 36 at 23 (PTAB Jan. 9, 2013). Under this guidance, the ’547 patent
qualifies as a CBM patent.
The PTO classified the ’547 patent in Class 379/93.12 (“Sales, ordering, or
banking system: . . . Subject matter wherein the transmitted digital message signal is
used for financial transactions.”) and Class 379/91.02 (“Subject matter including a
switching facility having structure or circuitry for credit transaction processing.”).
Thus, it is squarely a patent for which CBM review was intended.
Further, claims 11 and 18 of the ’547 patent specifically relate to a system that
is financial in nature and complementary to financial matters. Claim 11, from which
claim 18 depends, requires that callers enter data “including item data for ordering
particular items.” Ex. 1001 at 22:50-23:15. Item ordering is a financial process. The
specification also confirms that the claims are directed to financial systems, such as
systems used “to automate a promotion or mail-order operation, even to the extent of
including inventory control.” Id. at 3:39-42. These statements comport with disclosed
embodiments that describe order-entry processes. See, e.g., id. at 11:38-15:36. And
claim 12, which, like claim 18, depends from claim 11, recites the use of a credit card
number in connection with the ordering process. Clearly, the claimed order-entry
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system recited in claims 11 and 18 is “financial in nature” or, at the very least,
incidental or complementary to a financial activity.
The litigation behavior of Patent Owner is also telling, where it has asserted in
district court that Petitioner’s “customer service and revenue service systems”
infringe the ’547 patent. See, e.g., Ex. 1005, ¶¶ 63-64; supra at 2, Section II.B.
Therefore, the ’547 patent is subject to a CBM proceeding.
C. Claims 11 and 18 Are Not Directed to a “Technological Invention”
The AIA excludes “patents for technological inventions” from the definition of
CBM patents. AIA § 18(d)(1). To determine whether a patent is for a technological
invention, “the following will be considered on a case-by-case basis: 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.” 37 C.F.R. § 42.301(b). To institute a CBM post-grant review, a patent need
only have one claim directed to a CBM, rather than a technological invention, even if
the patent includes additional claims. 77 Fed. Reg. at 48,736 (comment 8).
Importantly, a claim does not recite a technological invention merely by using
the following techniques: “(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
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of known prior art technology to accomplish a process or method, even if that
process or method is novel and non-obvious[; or] (c) Combining prior art structures
to achieve the normal, expected, or predictable result of that combination.” Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
Because claims 11 and 18 of the ’547 patent fail to define a novel and
nonobvious technological feature and fail to recite a technical solution to a technical
problem, the claimed subject matter is not a technological invention. Ex. 1003, ¶¶ 45,
47-52.
1. Claims 11 and 18 of the ’547 Patent Do Not Recite a Novel and Nonobvious Technological Feature
Rather than reciting a novel and nonobvious technological feature that would
make a technological invention under AIA § 18(d)(1), claims 11 and 18 only recite
basic, well-known computing components and functions. See id. And conventional
and routine hardware is not enough to render a patent a technological invention. See,
e.g., Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 10 at
7-8 (PTAB Jan. 25, 2013).
The basic and well-known computing components and functions appear
throughout claims 11 and 18: (1) an “interface structure”; (2) a “record testing
structure”; (3) a “storage structure”; and (4) an “analysis structure.” Each of these
elements is merely a functional aspect of general-purpose computing hardware or a
conventional telephony component. As explained below, generic structures like these
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for performing recited functions cannot form the basis for a novel and nonobvious
technological feature. Moreover, the claims recite no structure “configured” in a
manner to alter the generic structure or otherwise create a novel and nonobvious
technological feature. Cf. In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) (noting that
functional limitations may be added to claims but do not change the structure and
therefore leave such claims subject to prior art with the same capabilities).
The “interface structure” to interface remote terminals is the interface 20, a
conventional component connecting telephone terminals to the processors. Ex. 1001
at 4:26-29, 4:48-51, 5:8-10. Indeed, the specification states that the interface “may be
a commercially available Centrum 9000 unit,” confirming that no novel hardware or
software was required for the interface structure. Id. at 4:48-51.
The “record testing structure” is nothing more than a generic processor. For
example, the specification indicates that “the processor PR1 [is] for testing the
telephone number as valid or entitled.” Id. at 6:64-65. Further, the specification states
that “the processing operation usually involves comparison testing which compares
caller data from individual memory cells of the processors P1-Pn (FIG. 1) with test
data that is supplied through the command terminal.” Id. at 9:25-28. Accordingly, the
“testing” function is accomplished by a processor; therefore, the claimed “record
testing structure” must be construed as a processor. And the specification describes a
generic processor: “Exemplary detailed structures for the processors PR1–PRn are
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described below; however, in general, the units may comprise a microcomputer, for
example, programmed as suggested above and as disclosed in detail below to
accomplish specific operating formats.” Id. at 5:25-29.
The “storage structure” is nothing more than a generic computer memory. For
example, Figure 4 confirms that the “storage structure” is nothing more than
“memory” unit 98, connected to the processing unit. See also id. at 13:4-5 (“[D]ata
for the transaction is established in the buffer 97 then set in a cell of the memory 98
(FIG. 4).”). Thus, the storage structure comprises nothing more than a generic
computer memory for use with a conventional processor.
The “analysis structure” is also nothing more than a generic processor. For
example, the specification explains that “major analysis is explained with reference
to processors.” Id. at 4:56-57. Figure 4 depicts “an exemplary structural form for the
processors PR1–PRn.” Id. at 9:50-52. While Figure 4 shows other functional
elements in addition to “processing unit 92,” including a “qualification unit 93,”
claim 18 recites neither functions nor structures to which those elements correspond.
See infra at 24. This comports with statements from Patent Owner’s litigation expert,
who did not assert that the qualification unit was a necessary part of the
corresponding, disclosed structure for the “analysis structure.” Ex. 1013, ¶ 356.
Accordingly, the processing unit 92 performs the receiving and processing of said
caller data signals, and therefore must be interpreted to be the “analysis structure.”
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Indeed, the district courts in the AT&T litigation (Ex. 1006) and the MDL
litigation (No. 2:07-ml-01816 (C.D. Cal. Feb. 21, 2008), Dkt. No. 1448 (Ex. 1012)),
both of which construed many of the claim terms, recognized the generic structure
when they construed the claims as requiring nothing more than conventional
computing components; the courts construed the terms as they appear in the claims
of a different patent sharing the specification with the ’547 patent. See Ex. 1006 at
16; see also infra at 18, Section V.C. The AT&T court construed “communication
facility” (Ex. 1006 at 6-7), “interface structure” (id. at 8-10), “record testing
structure” (id. at 15-16), and “analysis structure” (id. at 16-18). The MDL court
construed “analysis structure.” Ex. 1012 at 33-34.
Because each of the recited claim elements is merely a conventional computer
or telephony component, or can be implemented on a general-purpose computer, the
claim fails to recite a technological invention. That is because “[e]ven if the claimed
method, as a whole, is novel and non-obvious, reciting the use of known prior art
technology to perform that method does not render a patent a technological
invention.” DealerSocket, Inc. v. AutoAlert, Inc., CBM2014-00146, Paper 19 at 12
(PTAB Dec. 9, 2014).
Additional support for this conclusion comes from the findings of the Office in
Reexamination Control No. 90/013,182, which considered a previous rejection of the
combination of elements of claim 18 as anticipated by Canadian Patent No.
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1,162,336 to De Bruyn by the Board in Reexamination Nos. 90/006,978 and
90/007,074 and Appeal No. 2008-5127 (BPAI Feb. 26, 2009). Although the Board
had previously determined that De Bruyn taught all aspects of claim 18, the Office
withdrew a similar rejection of claim 18 because it interpreted “personal
identification data” in the claim as something not taught by De Bruyn. Ex. 1014 at
8-10 (Reexam Control No. 90/013,182, Notice of Intent to Issue Ex Parte
Reexamination Certificate at 6-8). This sole basis for distinguishing claim 18 over
the De Bruyn prior art—i.e., the addition of “personal identification data”—
demonstrates that claims 11 and 18 do not recite a novel and nonobvious technical
feature because the interpretation of personal identification data as information
identifying the caller to the world at large, rather than a secret code, cannot possibly
be characterized as a technological feature. Ex. 1003, ¶¶ 34-36.
2. The Patent Does Not Solve a Technical Problem Using a Technical Solution
Claims 11 and 18 do not address a technical problem. Although the ’547 patent
describes several applications for a system, it provides no explanation of a technical
problem. For example, the ’547 patent states that the system may be implemented “to
automate a mail-order facility.” Ex. 1001 at 10:29-31. The ’547 patent merely
provides a computerized method for conducting an item-ordering transaction. Id. at
3:39-41, 10:29-31. Item ordering was well known prior to the earliest effective filing
date of the ’547 patent. Ex. 1003, ¶¶ 4-7; see also Exs. 1008, 1010, 1011. Thus, the
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process of item ordering itself presents no technical problem to be solved. In fact,
item ordering by phone, as is described in the present patent, was well known prior to
the earliest effective filing date of the ’547 patent. Ex. 1003, ¶¶ 4-5; see also Exs.
1008 at 4:48-49, 1010. Accordingly, providing a technique to automate a telephonic
item-ordering process, as claimed in the ’547 patent, fails to present a technical
solution to a technical problem, as there was no technical problem to begin with.
The ’547 patent does not, nor could claim to, improve the mail-order or item-
ordering business beyond simply “facilitating” those businesses. Indeed, ordering
items by mail or even by telephone has long been a fundamental economic and
business activity. Ex. 1003, ¶¶ 4-7; see also Exs. 1008, 1010, 1011. Persons of
ordinary skill already knew methods for taking and fulfilling orders by telephone
without any contribution from the claim at issue here. Ex. 1003, ¶¶ 4-7. Furthermore,
not only does the system of claims 11 and 18 fail to recite a complete mail-order
system (for example, failing to provide for the actual verification of a caller’s
identity), the partial system of these claims simply facilitates portions of an age-old
practice by placing it in the context of generic automation. Even assuming that prior
manual order-entry and inquiry systems were slow and inefficient, any purported
improvement in speed and efficiency by the ’547 patent would fall short of
addressing a technical problem because there was nothing in the capability of the
technology at the time that precluded its application to such systems. See generally
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Ex. 1003. This is confirmed by the ’547 patent’s use of conventional and generic
hardware to implement the claimed features.
Moreover, claims 11 and 18 do not limit the claimed system to any particular
implementation. Instead, they attempt to encompass a broad range of systems that
use data in a very generic way to process data associated with callers and the items
they would like to order. The district court in the AT&T litigation, for example,
remarked that the claimed “interface structure” connects “the processors upon which
the [interactive voice application] is running to the communication facility.” Ex. 1006
at 10. Each element of the disclosed system amounts to a conventional telephony
component or a simple processor connected to the communication facility (or
telephone network). See supra at 9. Each of these systems was known and used well
before the earliest effective filing date of the ’547 patent. Ex. 1003, ¶¶ 8-53. Because
each of the four elements of the claims is merely a generic processor or computer
memory, as described above (see supra at 9), the system described in the ’547 patent
exists only as software running on generic processors and does not offer anything in
the way of a technical solution. Simply improving speed by implementing a process
on computers without specifying any unique or innovative aspect of the computers is
not a technological solution sufficient to avoid review as a CBM. See Fid. Nat’l Info.
Servs., Inc. v. DataTreasury Corp., CBM2014-00021, Paper 14 at 12 (PTAB Apr. 29,
2014) (holding that a process using software on an arrangement of conventional
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hardware was subject to CBM review); Fid. Nat’l Info. Servs., Inc. v. CheckFree
Corp., CBM2013-00030, Paper 51 at 10-11 (PTAB Dec. 22, 2014) (holding that
“receiving a payment request, selecting a form of payment, and directing the
payment in accordance with the selected form” were not technological solutions
because “comparing the payer account number to the merchant account scheme or
the payment amount with the merchant credit limit” required nothing more than
routine computer functions and therefore was not a technological solution);
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (holding that the
fact that a computer might be “an obvious mechanism for permitting a solution to be
achieved more quickly, i.e., through the utilization of a computer for performing
calculations,” did not make an otherwise abstract claim patent eligible because the
computer does not “impose a meaningful limit on the scope of [the] claim” (quoting
SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010)); Fort
Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1322-1324 (Fed. Cir. 2012)
(holding that a claim element requiring use of “a computer to ‘generate a plurality of
deedshares’” did not render abstract idea patentable because the “computer limitation
[was] simply insignificant post-solution activity”).
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D. Patent Owner Has Asserted Claim 18 of the ’547 Patent Against Petitioner’s Ordering Process, and Petitioner Is Not Estopped
Petitioner has been sued for infringement of claim 18 of the ’547 patent.1
Ex. 1005. Patent Owner has asserted claim 18 against an ordering process of FedEx
Corporate Services, Inc. Petitioner is not estopped from challenging the claim on the
grounds identified in the petition. 37 C.F.R. § 42.302(b). Petitioner has not been party
to any other AIA post-grant review of the challenged claims.
V. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED
A. Claims for Which Review Is Requested
Petitioner respectfully requests review under 35 U.S.C. § 321 and AIA § 18 of
claims 11 and 18 of the ’547 patent, and the cancellation of these claims as
unpatentable.
1 Plaintiff has asserted the ’547 patent against FedEx Corporation, Federal Express
Corporation, FedEx Corporate Services, Inc., and FedEx Customer Information
Services, Inc. Pending before the district court is a motion by FedEx Corporation for
summary judgment of noninfringement because, inter alia, the FedEx Corporation
holding company does not “operate automated telephone systems,” as Plaintiff
alleges in its Complaint.
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B. Statutory Grounds of Challenge
Petitioner requests that claims 11 and 18 be cancelled as unpatentable under
35 U.S.C. §§ 101 and 103. The claim constructions, reasons for unpatentability, and
specific evidence supporting this request are detailed below. Because claim 18
depends from claim 11, all of the arguments for the cancellation of claim 18 apply
equally to claim 11.
C. Claim Construction
If a patent expires prior to rendering a final written decision, “the Board’s
review of the claims is similar to that of a district court,” and claims should be given
“their ordinary and customary meaning, as would be understood by a person of
ordinary skill in the art, at the time of the invention.” Cisco Sys., Inc. v. AIP
Acquisition, LLC, IPR2014-00247, Paper 20 at 2-3 (PTAB July 10, 2014) (citing In
re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d
1303, 1313-17 (Fed. Cir. 2005) (en banc)). Even then, however, “there still would be
no presumption of validity,” and the Board should not apply “a rule of construction
with an aim to preserve the validity of [the] claims.” Id. at 3. The ’547 patent expired
in 2005. Under the foregoing principles, the following claim terms and phrases from
the claims of the ’547 patent require construction for this post-grant review
proceeding. The ordinary and customary meanings should also be applied to any
claim terms not specifically addressed below.
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Because several of the claim terms have been construed by the Eastern District
of Pennsylvania, the Central District of California, the Federal Circuit, and the Patent
Trial and Appeal Board as they arise in patents related to the ’547 patent and as they
arise in ’547 claim 18, Petitioner submits that those constructions are relevant to this
proceeding and has referenced them accordingly. In particular, the court in the AT&T
litigation construed claims from U.S. Patent Nos. 5,561,707; 5,255,309; and
5,684,863 (Ex. 1006 at 1), which all share a specification with the ’547 patent and
recite some claim terms also recited in the ’547 patent. Further, prosecution of the
’547 patent by Patent Owner was ongoing while Patent Owner was
contemporaneously briefing claim construction in the AT&T litigation. Ex. 1002 at
344 (application for ’547 patent filed on Mar. 15, 1999), 288-90 (Notice of
Allowability dated Nov. 17, 2000); Ex. 1006 (AT&T court’s claim-construction
decision issued Aug. 26, 1999). Because certain claim terms construed in that district
court action were adopted verbatim in the claims of the ’547 patent during
prosecution, the district court’s claim constructions (Ex. 1006) provide relevant and
useful information for this petition.
1. Communication Facility
The claimed “communication facility” is part of a telephone network that
enables a caller to connect to a system running an interactive voice application. The
communication facility may be publicly provided. For example, the specification
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provides that “conventional telephone terminals . . . are coupled to a communication
facility C which may take the form of a comprehensive public telephone system for
interconnecting any associated terminals.” Ex. 1001 at 3:9-13. The specification also
states that “communication facility C has a customer billing structure B that is
interfaced by the system.” Id. at 5:43-45. Such a billing structure is characteristic of
the Public Switched Telephone Network (“PSTN”). Ex. 1003, ¶ 37. Because the
specification expressly states that the “communication facility” may take the form of
a “comprehensive public telephone system,” it should be construed as part of a
telephone network that enables a caller to connect to the claimed system.
The court in the AT&T litigation confirmed this construction, as it construed
the “communication facility” as “that part of a telephone network that enables a
caller to connect to the Katz system.” Ex. 1006 at 5-8. The court in that case further
concluded that “there is no support for a construction of ‘communication facility’ to
require that the [claimed] system be operated only outside the entire PSTN nor that
the ‘communication facility’ encompass the elements or processes of the entire
PSTN.” Id. at 8. Petitioner submits that the court’s construction is thus the ordinary
and customary meaning. See also Ex. 1013, ¶ 335 (Patent Owner’s litigation expert
acknowledging the AT&T litigation court’s construction).
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2. Interface Structure
The “interface structure” is the hardware and software required to connect
processors upon which software is running to the communication facility. Figure 9 of
the ’547 patent shows this connection in blocks IA1-IAn and IB1-IBn.
Patent Owner’s litigation expert (No. 2:06-cv-00334 (E.D. Tex.), formerly
MDL No. 2:07-ml-01816), David Lucantoni, agreed that the “interface structure”
recited as “an interface structure coupled to said communication facility to interface
said remote terminals for voice and digital communication” is nothing more than “the
hardware and software required to connect the processors upon which the system is
running to the communications facility such that the information from the
communication facility and the remote terminals may be provided to and received by
the system.” Ex. 1013, ¶ 134. This construction comports with the district court’s
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construction of the entire “interface structure” element as recited above in the AT&T
litigation. Ex. 1006 at 8-10.
The “interface structure” also recites a means-plus-function element under
35 U.S.C. § 112, ¶ 6. The claimed function is “provid[ing] caller data signals
representative of data relating to said individual callers provided from said remote
terminals.” The corresponding structure, as shown in Figure 9 (reproduced above),
can be any of the hardware elements implemented to connect the processors to the
communication facility, including interfaces IA1-IAn. See Ex. 1001 at Fig. 9.
Patent Owner’s litigation expert explained that “the structure in the patent
specification [corresponding to this means is] (a) interface 20, including call data
analyzer 20a; (b) Centrum 9000; or (c) one or more of interface units IA1-IAn, IB1-
IBn.” Ex. 1013, ¶¶ 340-341 (emphasis added). Thus, even Lucantoni agrees that an
“interface” that simply provides or passes data signals requires only conventional
computing equipment.
3. Record Testing Structure
The record testing structure is a processor. This claim term invokes 35 U.S.C.
§ 112, ¶ 6, according to Patent Owner’s litigation expert. Ex. 1013, ¶ 346. The
claimed function is “receiv[ing] and test[ing] said caller data signals indicative of
said terminal digital data representative of said calling telephone number and said
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caller personal identification data against previously stored terminal digital data and
caller personal identification data,” as recited in the claims. Ex. 1001 at 23:3-8.
The specification explains that “the processor PR1 is for testing the telephone
number as valid or entitled.” Id. at 6:64-65. Further, the specification states that “the
processing operation usually involves comparison testing which compares caller data
from individual memory cells of the processors P1-Pn (FIG. 1) with test data that is
supplied through the command terminal.” Id. at 9:25-28. Accordingly, the “testing”
function is accomplished by a processor, and the claimed “record testing structure”
must therefore be construed as a processor. This construction is also consistent with
the district court’s construction in the AT&T litigation. Ex. 1006 at 15-16.
Patent Owner’s litigation expert agreed that the “record testing structure” is
nothing more than a generic processor. Ex. 1013, ¶¶ 346-347. He explained that the
corresponding structure disclosed in the specification is “(1) interface 20,
qualification unit 93, and look-up table 99; (2) Centrum 9000, qualification unit 93,
and look-up table 99; (3) processing unit 251; or (4) one or more of processors PR1-
PRn.” Id. (emphasis added). Thus, even Lucantoni supports a construction that the
“record testing structure” consists of conventional functions (receiving and testing)
performed by conventional computer equipment.
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4. Analysis Structure
The analysis structure is simply a generic processor. According to the
specification, “major analysis is explained with reference to processors.” Ex. 1001 at
4:56-57. Figure 4 (reproduced below) is described as a “processor or function unit.”
Id. at 2:43-44.
The claims recite that the analysis structure is “for receiving and processing said
caller data signals” (id. at 23:13-15), and the specification notes various ways that
data might be processed (e.g., id. at 11:25-30). Notwithstanding that Figure 4 and the
specification describe various other possible components or functions for the
processor (e.g., qualification unit 93), claims 11 and 18 do not require an analysis
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structure that performs any functions beyond simply “processing.” Thus, “analysis
structure” in claims 11 and 18 should be interpreted as only a generic processor.
Tomita Techs. USA, LLC v. Nintendo Co., No. 14-1244, slip op. at 9-10 & n.1 (Fed.
Cir. Dec. 8, 2014) (rejecting additional structures contained with the figure
describing an “offset presetting means” because only certain elements in the figure
contributed to the claimed function).
Patent Owner’s litigation expert agreed that the “analysis structure” is nothing
more than a generic processor—specifically, “processing unit 92.” Ex. 1013, ¶ 356.
This construction is also consistent with the district court’s construction in the AT&T
litigation (Ex. 1006 at 16) as well as the Federal Circuit’s construction (Ex. 1007 at
8-9).
This claim term invokes 35 U.S.C. § 112, ¶ 6, according to Patent Owner’s
expert. Ex. 1013, ¶ 355. The function is “receiving and processing said caller data
signals under control of said record testing structure,” as recited in the claim.
Ex. 1001 at 23:13-15. The corresponding structure, according to Patent Owner’s
litigation expert, is: “(1) interface 20; (2) Centrum 9000; (3) processing unit 251; or
(4) one or more of processors PR1-PRn.” Ex. 1013, ¶¶ 355-356 (emphasis added).
Thus, even Patent Owner’s expert supports a construction that the “analysis
structure” consists of a conventional function (receiving) of conventional computer
equipment.
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5. Personal Identification Data
“Personal identification data” means data that is personal or specific to a
caller, that permanently identifies the caller to the world at large, and is distinct from
caller customer number data, a password, and PIN numbers. For example, the
specification states that “the processors might . . . verify identification data proffered
by a caller,” and that “[s]uch data might take the form of a credit card number or a
personal identification number.” Ex. 1001 at 9:42-45. Because “it may be important
that the caller’s identity be subject to reliable verification,” there is “a critical need
for positively verifiable identification.” Id. at 6:18-23. Accordingly, the personal
identification data must be specific to a caller to the world at large, and must be
distinct from other customer number data.
Patent Owner’s litigation expert agreed that the term “personal identification
data” means “data that is personal or specific to a caller that permanently identifies
the caller to the world at large and is distinct from caller customer number data, a
password, and PIN numbers.” Ex. 1013, ¶ 339. This construction is also consistent
with the MDL court’s construction. Ex. 1012 at 9-11.
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VI. CLAIMS 11 AND 18 OF THE ’547 PATENT ARE UNPATENTABLE UNDER § 101
A. Legal Framework Under Alice and Its Predecessors
Patent claims to abstract ideas alone cannot be patented. Alice Corp. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2352 (2014). When a patent claims abstract ideas, like
the idea of item ordering claimed in the ’547 patent, it must add “significantly more”
to be patent eligible. Id. at 2360. Adding token, nonspecific computer references, as
the ’547 patent does, makes no difference to patent eligibility. Instead, a computer-
implemented invention must “improve[] an existing technological process” or must
“improve the functioning of the computer itself” to be patent eligible. Id. at 2358-59.
B. Claims 11 and 18 of the ’547 Patent Are Directed to the Abstract Idea of Item Ordering
Claims 11 and 18 of the ’547 patent are directed to the abstract idea of item
ordering. Claim 11, from which claim 18 depends, recites a system that facilitates a
telephone-based item-ordering process using a computer. It recites no hardware or
structure other than conventional components of a general-purpose computer. Claim
18 merely adds the requirement that certain data is number data. Accordingly, claims
11 and 18 of the ’547 patent cover nothing but steps to facilitate order entry, as has
been timelessly practiced in business. Ex. 1003, ¶¶ 4-7, 52-53. Thus, as in Alice,
claims 11 and 18 attempt to cover a fundamental economic or commercial practice
long prevalent in our system of commerce. 134 S. Ct. at 2356. Indeed, the claims
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recite receiving and testing data relating to an item being ordered—collecting,
organizing, and analyzing data, which has also been found unpatentably abstract.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) (finding the “mere collection and organization of data” insufficient to
satisfy § 101).
1. Item Ordering Is a Fundamental Economic Practice
From the beginning of modern business transactions, item-ordering processes
have relied on recording data associated with orders. Ex. 1003, ¶ 4; see also Exs.
1008, 1010, 1011. When an order is received, data about the order and ordered items
are recorded. And when an order is fulfilled, information about the fulfillment is also
recorded. Indeed, item-ordering processes require the following elements:
(1) identification of the person placing the order;
(2) identification of the item ordered;
(3) identification of an address for delivery; and
(4) recording the order.
Ex. 1003, ¶ 6. Any ordering transaction imaginable (from ordering products from a
19th century mail-order catalog to ordering a pizza to purchasing from Amazon.com
or the Home Shopping Network) requires gathering and processing this basic
information. Id. ¶¶ 5-7. Thus, the concept of item ordering, which simply refers to
facilitating the process of people ordering items in a commercial transaction, plays an
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absolutely fundamental role in modern society and is as much a “basic building block
of human ingenuity” (CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir.
2013)) as the risk hedging at issue in Bilski or the intermediated settlement at issue in
Alice. Bilski v. Kappos, 130 S. Ct. 3218 (2010); Alice, 134 S. Ct. at 2356-57.
As technology unrelated to the practice of item ordering progressed (e.g.,
telecommunications, computing, etc.), the commercial-economic practice likewise
progressed. Soon it became commonplace to order items by phone, including through
computerized telecommunication systems. Ex. 1003, ¶¶ 4-12. Despite advances in
technology, the fundamental practice of item ordering has not changed.
For example, in Michlin, a standard item order form is disclosed. Ex. 1008 at
Fig. 1.
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The form includes positions for recording information about the item ordered,
customer name, purchase price, address, and other information, as shown.
Accordingly, the expression of order entry is directed to a fundamental
commercial-economic practice and, therefore, to an abstract idea under the guidance
of the Supreme Court in Alice. This comports with the Supreme Court’s holding that
“electronic recordkeeping” was “one of the most basic functions of a computer.” 134
S. Ct. at 2359; see also Memorandum Opinion at 20, Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., No. 1:10-cv-910 (E.D. Va. Oct. 24, 2014), Dkt. No. 301 (“Collecting,
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filtering, aggregating, and completing network information amounts to ‘electronic
recordkeeping,’ which is ‘one of the most basic functions of a computer.’” (quoting
Alice, 134 S. Ct. at 2359)).
2. Claims 11 and 18 Are Directed Only to the Abstract Idea of Item Ordering
Claims 11 and 18 can be broken into three basic functions: (1) receiving data
from a customer identifying the customer and the item to be ordered; (2) testing
received data against stored information; and (3) storing data. These three functions
are present in any item-ordering process, whether or not conducted in person, over
the phone, or over a computer. See generally Ex. 1008 (disclosing receiving data
from a customer and recording or storing it in a ledger for later use). Accordingly,
the way claims 11 and 18 are phrased, each covers virtually all item-ordering systems
and processes. Ex. 1003, ¶ 46; see also Alice, 134 S. Ct. at 2354 (emphasizing that
preemption of an idea can be a consideration to patentability). And as the Federal
Circuit recently explained, “[t]he concept of data collection, recognition, and storage
is undisputedly well-known.” Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, No. 2013-1588, slip op. at 7 (Fed. Cir. Dec. 23, 2014).
The claim elements beyond the three discussed above simply place the claimed
item-ordering process within the context of a telephone system. That has no
significance here because, like the claims in Alice or Bilski, limiting claim scope to a
particular field or application does not benefit patent eligibility. E.g., Bilski, 130
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S. Ct. at 3231 (treating claims to hedging in commodities and energy markets the
same as the more general claims); 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74,618, 74,624 (Dec. 16, 2014) (advising that “generally
linking the use of the judicial exception [abstract idea] to a particular technological
environment” is insufficient to confer eligibility (citing Alice, 134 S. Ct. at 2360)).
The simple fact remains that the elements of claims 11 and 18 are those elements
present in all item-ordering processes, and thus the claims are directed to an abstract
idea. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 955
(Fed. Cir. 2014) (nonprecedential) (holding that “abstract ideas” include claims to
methods that can be performed mentally, such as comparing new and stored
information, and using rules to identify options). The Federal Circuit has explained
that adding additional conventional hardware elements such as a scanner or computer
does not change whether a claim is drawn to an abstract concept. Content Extraction,
No. 2013-1588, slip op. at 8. Moreover, even if there were any claim elements
beyond those establishing the fundamental abstract idea, they would not change the
result because “any novelty in implementation of the idea is a factor to be considered
only in the second step of the Alice analysis.” Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014).
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C. Claims 11 and 18 of the ’547 Patent Do Not Recite “an Inventive Concept” or “Significantly More” Than the Abstract Idea
The claims here are drafted to give the impression of tangibility, but the
Supreme Court has “long warn[ed] . . . against interpreting § 101 in ways that make
patent eligibility depend simply on the draftsman’s art.” Alice, 134 S. Ct. at 2351
(citing Mayo, 132 S.Ct. at 1294). The claims are directed to an abstract idea and lack
an “inventive concept” “sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [abstract idea] itself.” Id. at 2355 (citations
omitted).
To be patentable, claims involving abstract concepts like fundamental
economic or business practices must contain “additional elements [sufficient to]
‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134
S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1298, 1297 (2012)). In other words, claims to abstract ideas must amount to
“significantly more than a patent upon the [ineligible concept] itself” to be patent
eligible. Id. (alteration in original) (citing Mayo, 132 S. Ct. at 1294); see also Parker
v. Flook, 437 U.S. 584, 593-94 (1978). The claims of the ’547 patent fail to meet this
standard, either when analyzing the elements of the claim individually or when doing
so as an ordered combination. Alice, 134 S. Ct. at 2355.
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1. Claims 11 and 18 Lack an Inventive Concept Beyond Conventional Computerized Systems Used in a Conventional Business Process
Rather than add anything of significance, claims 11 and 18 of the ’547 patent
recite the basic elements of the abstract concept as performed by routine and
conventional components of a general-purpose computer. Claims that “merely
require generic computer implementation[] fail to transform [the] abstract idea into a
patent-eligible invention.” Alice, 134 S. Ct. at 2357. Even the ’547 patent itself
recognizes that the particular hardware components recited are unimportant by noting
that the entire system may be implemented on an off-the-shelf general-purpose
computer. Ex. 1001 at 4:48-51. Indeed, stating that “the processing system . . . may
be a commercially available Centrum 9000 unit” (id.) suggests that the entire
functionality of claims 11 and 18 may be implemented on a commercially available
computer. As the Supreme Court has held, claims that “can be carried out in existing
computers long in use, [with] no new machinery being necessary,” are not patent
eligible under § 101. Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The structures in claims 11 and 18 were conventional when the application
was filed and the claims recite no improvement to those structures. Instead, they
recite a configuration for performing part of a known method of ordering items. But
even where it provides a practical benefit, the use of a computer, by itself, does not
impart patent eligibility. Alice, 134 S. Ct. at 2358 (noting that “mere recitation of a
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generic computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention”). Thus, adding what might be “an obvious mechanism for
permitting a solution to be achieved more quickly, i.e., through the utilization of a
computer for performing calculations,” does not make an otherwise-abstract claim
patent eligible, because the computer does not “impose a meaningful limit on the
scope of [the] claim.” Dealertrack, 674 F.3d at 1333 (quoting SiRF, 601 F.3d at
1333); see also Content Extraction, No. 2013-1588, slip op. at 9 (“There is no
ʻinventive concept’ in CET’s use of a generic scanner and computer to perform well-
understood, routine, and conventional activities commonly used in industry.”); Fort
Props., 671 F.3d at 1322, 1323-24 (a claim element requiring use of “a computer to
‘generate a plurality of deedshares’” did not render abstract idea patentable because
the “computer limitation [was] simply insignificant post-solution activity”); see also
CheckFree, CBM2013-00030, Paper 51 at 13-14 (noting that “specialized
programming” could not be read into the claims where it was not described by the
specification, and invaliding claims with means-plus-function limitations construed
as a computer programmed to execute steps from a flowchart—“[a] computer used
for its most basic function, the performance of repetitive calculations”). So too here,
use of a telephone entry and storage system through vaguely mentioned components
(processors and memory) does not impart patentability to the ’547 patent’s claims to
“ordering particular items.”
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This case is distinguishable from Apple Inc. v. SightSound Technologies, LLC,
CBM2013-00019, Paper 17 (PTAB Oct. 8, 2013), a proceeding in which the PTAB
declined to institute proceedings on a ground based on § 101 because
[t]he “first memory,” “second memory,” “transmitter,” “receiver,” and “telecommunications line” components, and the specific functions performed using those components, represent meaningful limitations on the scope of the claim that take it beyond the abstract concept of selling music.
Id. at 18-19 (emphasis added). In contrast, claims 11 and 18 of the ’547 patent
do not recite any “specific structure” such as a “transmitter,” “receiver,” or
“telecommunications line” and, more significantly, does not recite any specific
function that might meaningfully limit the claim scope to something less than
the abstract concepts of order entry or item ordering. Figures 1 and 4 of the
’547 patent depict only generic computer components and applications
conventional in the telecommunications industry. Ex. 1001 at Figs. 1, 4. In
claims 11 and 18, the interface structure can be a conventional processor (id. at
Fig. 9), the record testing structure can be a conventional processor (id. at
6:63-65), the storage structure can be a conventional computer memory (id. at
6:26-28), and the analysis structure can be a conventional processor (id. at
11:25-30).
Unlike the situation in Apple v. SightSound, the elements here require only the
functionality of generic computers and processors—initiating communication,
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transmitting data, and performing mathematical calculations. See Alice, 134 S. Ct. at
2359 (indicating that “[n]early every computer will include a ‘communications
controller’ and ‘data storage unit’ capable of performing the basic calculation,
storage, and transmission functions”). The claims fail to define any “specific
hardware” specially designed for a particular purpose, in contrast to the Board’s
finding in Apple v. SightSound. Thus, the limitations of claims 11 and 18 fail to
comprise meaningful limitations that would limit the scope of the claims and take the
claims beyond the abstract concept of item ordering.
The claims here are also different from those at issue in DDR Holdings, LLC v.
Hotels.com, L.P., --- F.3d ---, No. 2013-1505, 2014 WL 6845152 (Fed. Cir. Dec. 5,
2014). In DDR Holdings, the Federal Circuit held that claims to a system and method
for presenting information on Web pages were patent eligible because both the
problem and solution were rooted in the computer technology itself. Id. at *10.
Unlike the claims in DDR Holdings, where “the claimed solution [was] necessarily
rooted in computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” claims 11 and 18 “merely recite the performance
of some business practice known from the pre-[PSTN] world along with the
requirement to perform it on the [PSTN].” Id. (substituting “Internet” with “PSTN”).
Both the item-ordering process and the claimed solution existed long before claims
11 and 18, i.e., using a conventional telephone system for data collection within the
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item-ordering process. Claims 11 and 18 require no new technology, combinations of
technology, or even specialized programming of existing technology, and thus stand
in stark distinction from the unique-to-the-Internet claims at issue in DDR Holdings.2
Patent owners faced with § 101 challenges like this typically argue that: (1) a
computer (or some other generic device) is used in a specific way to perform the
claims and implements the integral steps of the claims; (2) practicing the invention
without a computer is impossible because it would require too much manpower and
overhead for personnel; and (3) while a computer was well known or generic, using a
specially programmed computer in the way claimed by the ’547 patent was not
generic or known at the time. Even if asserted here, these arguments fail under the
Alice framework for analyzing § 101 issues. That the abstract idea implemented on a
computer allows for more or faster processing is not the crux of the patentability
analysis. See SiRF, 601 F.3d at 1333 (“In order for the addition of a machine to
impose a meaningful limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than function solely as an
obvious mechanism for permitting a solution to be achieved more quickly, i.e.,
through the utilization of a computer for performing calculations.”). The computer
2 The panel’s decision in DDR Holdings drew a strong dissent, signaling that not all
Federal Circuit judges agree even with the majority’s distinction.
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and components (central processor) described in the ’547 patent specification are
generic. The Supreme Court has explained that
what petitioner characterizes as specific hardware—a “data
processing system” with a “communications controller”
and “data storage unit,” . . . is purely functional and
generic. Nearly every computer will include a
“communications controller” and “data storage unit”
capable of performing the basic calculation, storage, and
transmission functions required by the method claims. See
[CLS Bank v. Alice Corp.,] 717 F.3d, at 1290 (Lourie, J.,
concurring). As a result, none of the hardware recited by
the system claims “offers a meaningful limitation beyond
generally linking ‘the use of the [method] to a particular
technological environment,’ that is, implementation via
computers.” Id., at 1291 (quoting Bilski, 561 U.S., at 610-
611, 130 S.Ct. 3218).
Alice, 134 S. Ct. at 2360 (emphasis added) (alteration in original) (citation omitted).
That the system of claims 11 and 18 recites a “record testing structure,” a “storage
structure,” and an “analysis structure” does not change the analysis, as only generic
computers and components are disclosed in the specification. Memorandum Opinion
at 15, Intellectual Ventures I LLC v. Mfrs. & Traders Trust Co., No. 1:13-cv-01274
(D. Del. Dec. 18, 2014), Dkt. No. 27 (citing In re Katz, 639 F.3d at 1316 (Ex. 1007 at
8) (in analyzing means-plus-function claims, finding that “the functions of
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‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed,
i.e., a general purpose processor,” such “functions can be achieved by any general
purpose computer without special programming”)).
Additionally, although the ’547 patent specification defines multiple uses for
the telephone entry and storage system, some of which may embody specific
structures or functionality, claims 11 and 18 fail to require any such components
other than a general-purpose computer or processor. See Ex. 1001 at 5:25-29. The
specification confirms that the method embodied in claims 11 and 18 may be
performed on conventional computing components, as it describes that “the
arrangement of the function unit (or units) may be variously embodied in a single
processor or many processors, depending on various considerations as time sharing,
multiplexing, paralleling and so on.” Id. at 21:22-25. Accordingly, the elements of
claims 11 and 18 are intended by the patentee to be implemented on a general-
purpose computer with conventional processors. Indeed, the district court in the
AT&T litigation, when it construed “interface structure,” remarked that the structure
connects “the processors upon which the [interactive voice application] is running to
the communication facility.” Ex. 1006 at 10; see supra at 21, Section V.C.2. The
court did not identify any specialized hardware that might be required to run the
“interactive voice application,” showing that it viewed the system as essentially
software without limitation to a particular machine.
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“[S]imply appending conventional steps, specified at a high level of generality,
to laws of nature, natural phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable . . . .” Mayo, 132 S. Ct. at 1300. Here, the ’547
patent claims nothing more than elements of an abstract concept for order entry using
an arrangement of generic, conventional computer components well known at the
time of filing:
(1) connecting to a “communication facility”;
(2) “receiv[ing] and test[ing]” signals indicative of data (numeric data);
(3) “stor[ing]” data for ordering an item; and
(4) “receiving and processing” signals.
Although the claim language appears to recite a “structure” for each of these claimed
elements, each recited structural element amounts to no more than generic and
conventional components of a general-purpose computer. Moreover, the structure
associated with storing “item data” for ordering does not have any claimed functional
or structural association with any other structural element of claims 11 and 18.
a. The “Interface Structure” Is Conventional
The first element of claims 11 and 18 is an “interface structure coupled to said
communication facility to interface said remote terminals for voice and digital
communication.” The interface structure is hardware and software required to
connect the processors upon which the claimed system is running to the
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communication facility. See supra at 21. A district court has confirmed that it is
merely a generic component, namely, “the hardware and software required to
connect the processors upon which the [interactive voice application] is running to
the communication facility.” Ex. 1006 at 10. This hardware and software are nothing
but conventional technology. Ex 1001 at 3:52-55 (“[T]he communication facility C
comprises a public telephone network and the individual terminals T1–Tn take the
various forms of existing traditional or conventional telephone instruments.”).
Indeed, the interface structure is much like the “communications controller” relied on
by the patentee in Alice, which offered no benefit to patentability because such a
“purely functional and generic” component had such widespread presence in generic
hardware. 134 S. Ct. at 2360. Indeed, telephonic data systems, which Patent Owner
cannot claim to have invented, necessarily include an interface structure. Ex. 1003,
¶¶ 13-33.
Further, no other component of the “interface structure” makes use of any
nonconventional technology. The “remote terminals,” as recited in the claims, are
conventional touchtone telephones. Ex. 1001 at 3:8-13 (“[T]he remote terminals T1
through Tn represent the multitude of conventional telephone terminals that are
coupled to a communication facility C . . . .”). The specification also indicates that
the “alphabetic numeric buttons” are, in fact, the twelve-button array of a
conventional touchtone telephone. Id. at 3:64-66 (“In accordance with conventional
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telephone practice, alphabetic and numeric designations are provided on the buttons
14.”).
The claims recite a system for use with a “communication facility” and not the
facility itself. In fact, this was the court’s construction in the AT&T litigation.
Ex. 1006 at 5-8. Thus, whether a “communication facility” is or is not a special
machine or device is not a relevant inquiry for the patent-eligibility analysis in this
instance.
The specification also instructs that the telephonic “communication facility”
can include the PSTN (see Ex. 1001 at 3:8-13), and a court has confirmed that the
“communication facility” may operate within the PSTN, either partially or wholly
(Ex. 1006 at 5-8). Given the lack of specificity, such claim scope confirms that the
interface structure is nothing more than a combination of generic computing
components. Ex. 1003, ¶¶ 32-33.
For example, the claim element recites “including means to provide caller data
signals representative of data relating to said individual callers provided from said
remote terminals.” Because touchtone signals are analog signals carried over the
voice channel, the PSTN necessarily includes structures capable of providing “caller
data signals representative of data” entered by callers using touchtone telephones.
Moreover, the transmission of audio signals is a conventional function of the PSTN
communication facility. Id. The claim element goes on to recite “including means to
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provide caller data signals representative of data relating to said individual callers . . .
automatically provided from said communication facility.” The PSTN includes
structures capable of providing “caller data signals . . . automatically provided by the
communication facility.” The provision of these caller data signals (often referred to
as ANI signals) is a conventional function of the PSTN communication facility, as all
interconnections to the PSTN central offices must carry the calling telephone
number, or ANI. Id. ¶ 8.
The PSTN is a long-standing network of structures for interfacing
telecommunications systems. Id. ¶¶ 8-11, 37. And as the district court in the AT&T
litigation has held, the claimed “communication facility” may operate within the
PSTN, either partially or wholly. Ex. 1006 at 5-8. Thus, the interface structure may
properly read on the prior-art PSTN. Ex. 1003, ¶¶ 32-33, 37; Ex. 1001 at 3:51-53.
Accordingly, because there is nothing in claims 11 and 18 that distinguishes
the “interface structure” from preexisting, long-standing, conventional phone-
network structures, the “interface structure” alone fails to provide any basis for
concluding that the claim requires anything more than generic general-purpose
hardware. Accordingly, an interface structure, such as that recited in claims 11 and
18, and construed as “hardware and software required to connect the processors upon
which the [interactive voice application] is running to the communication facility,”
fails to provide any basis for concluding that the claim requires any structure other
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than a conventional general-purpose computer implementing an item-ordering
concept.
b. The “Record Testing Structure” Is Conventional
Claims 11 and 18 also recite a “record testing structure” to receive and test
“signals indicative of” the calling telephone number and the “caller personal
identification data” against previously stored “terminal digital data and personal
identification data.” The record testing structure is a processor. The court in the
AT&T litigation has also construed this term to include the structural elements of “the
Processing Unit 96, the Qualification Unit 93, and the Look–Up Table 99 in Figure
4. See Column 10, lines 1 through 25 of the ‘707 patent.” Ex. 1006 at 15-16. Patent
Owner’s litigation expert, Lucantoni, also agreed that the corresponding structure is
“(1) interface 20, qualification unit 93, and look-up table 99; (2) Centrum 9000,
qualification unit 93, and look-up table 99; (3) processing unit 251; or (4) one or
more of processors PR1-PRn.” Ex. 1013, ¶¶ 346-347 (emphasis added). The
specification confirms that this component is a conventional processor by noting that
“processing unit 92 may take the form of a minicomputer.” Ex. 1001 at 9:59-67
As described by the Supreme Court in Alice, it is a conventional “use of a
computer to obtain data, adjust account balances, and issue automated instructions.”
134 S. Ct. at 2359. That is exactly what the “record testing structure” requires. The
record testing structure “receive[s] . . . signals indicative of . . . data,” “obtains data,”
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and thereby further “test[s] . . . signals . . . indicative of . . . data . . . against
previously stored . . . data.” Ex. 1001 at 23:3-8. The construction of this claim term
as a processor further proves that the “record testing structure” recites nothing more
than general-purpose computing hardware implementing generic functions—a
processor that receives and tests signals indicative of data. It is not a technical
innovation. Ex. 1003, ¶¶ 34-37.
c. The “Storage Structure” Is Conventional
Claims 11 and 18 further recite a “storage structure.” There can be no genuine
question that the recited “storage structure” is merely a conventional computer-
memory component. Id. ¶ 38. Computer memory, or storage, is one of the most basic
components of any general-purpose computer. Figure 4, reproduced below, confirms
that the “storage structure” is nothing more than “memory” unit 98, connected to the
processing unit. See also Ex. 1001 at 13:4-5 (“[D]ata for the transaction is
established in the buffer 97 then set in a cell of the memory 98 (FIG. 4).”). Thus, the
storage structure comprises nothing more than a generic computer memory for use
with a conventional processor. As such, it contributes nothing to the patentability of
claims 11 and 18. Alice, 134 S. Ct. at 2360 (holding that a “data storage unit” did not
make the claim at issue less abstract because it was a component of nearly every
computer).
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d. The “Analysis Structure” Is Conventional
Lastly, the claims recite an “analysis structure for receiving and processing
said caller data signals under control of said record testing structure.” The analysis
structure is a processor. In fact, even on its face, this element recites conventional
functionality of a computer: receiving and processing signals. As described above,
even Patent Owner’s litigation expert agrees that the analysis structure structurally
corresponds to “Processing Unit 92.” See supra at 24, Section V.C.4. “Processing
Unit 92” comprises merely a generic processor for receiving and analyzing data and
signals. Ex. 1003, ¶ 39. In other words, “processing unit 92” performs the same
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functions that computers have always performed; those conventional functions,
performed by conventional and generic hardware, cannot contribute to patentability.
The specification confirms that this component is a conventional processor by
noting that “processing unit 92 may take the form of a minicomputer.” Ex. 1001 at
9:59-61. Because the analysis structure is nothing more than a generic processor that
may take the form of a conventional minicomputer to perform standard computer
processing, it adds nothing significant to the claim and fails to salvage the claims’
eligibility.
In sum, claims 11 and 18 are directed to only a basic economic activity (item
ordering) performed using routine and conventional components. They are not patent
eligible under 35 U.S.C. § 101 and should be cancelled.
2. Even as a Combination, Claims 11 and 18 Do Not Recite or Use Computer Components in a Patent-Eligible Way
In addition to considering the inventive concept of each component,
patentability also considers whether the claimed combination of elements adds
something not present when the elements were considered separately. Alice,
134 S. Ct. at 2359. It is possible, for example, that a claim requiring only
conventional computer components could nonetheless improve the functionality of a
computer itself or effect an improvement in another technical field. Id. at 2359-60.
Claims 11 and 18 do neither.
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a. The ’547 Patent Does Not Improve the Functionality of the Computer
Claims 11 and 18 of the ’547 patent do not improve the functionality of the
computer itself. They recite no new structure or hardware not previously known in
the art. Ex. 1003, ¶¶ 50-52. Rather, as discussed above, the claims recite nothing
more than generic computing elements. See supra at 8, Section IV.C; Ex. 1003, ¶¶
50-52. Indeed, the specification itself acknowledges that the disclosed system “may
be [implemented on] a commercially available Centrum 9000 unit.” Ex. 1001 at
4:48-51. As a “commercially available” element, the Centrum 9000 shows that the
claim requires only conventional hardware. See Alice, 134 S. Ct. at 2359.
Moreover, claims 11 and 18 are devoid of any recitation of new functions that
could be construed as an improvement to software. Rather, claims 11 and 18 require
only conventional software. As set forth above (see supra at 33, Section VI.C), the
recited functions are simply the generic functions of “provid[ing] caller data signals,”
“receiv[ing] and test[ing] said caller data signals indicative of . . . data . . . against
previously stored . . . data,” “storing certain . . . data,” and “receiving and processing
said caller data signals.” Further still, the claim recites no meaningful link or
relationship between the “receiving,” “processing,” and “test[ing]” of signals
indicative of data, and the economic activity of “ordering particular items.” These
two aspects of claims 11 and 18 are completely adrift of each other.
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If the system can be implemented on a commercially available computer with
conventionally available software, it cannot rightfully claim to have improved the
functionality of computers. Alice, 134 S. Ct. at 2359. As discussed, claims 11 and 18
allow for implementations described in the specification as using conventional
processors with straightforward software. Therefore, claims 11 and 18 of the ’547
patent fail to recite “significantly more” than the abstract concept by improving the
functioning of the computer itself. There can be no question that claims 11 and 18
provide no improvement to computers.
b. The ’547 Patent Does Not Improve the Technology in Another Technical Field
The ’547 patent does not improve the technology in another technical field.
Although the ’547 patent is loosely related to the field of telecommunications, claims
11 and 18 provide no innovation in that field. Rather, the claims recite only known
components (e.g., telephones, computers, etc.) with only a peripheral connection to
the well-known, fundamental economic concept of item ordering.
In Alice, the representative method claim at issue “require[d] the use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions,” which were deemed to be purely conventional functions
of generic computers. 134 S. Ct. at 2359 (“Taking the claim elements separately, the
function performed by the computer at each step of the process is ‘[p]urely
conventional.’” (alteration in original) (quoting Mayo, 132 S. Ct. at 1298)). When a
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computer is used to perform conventional functions of a computer, the state of
technology has not been advanced. Instead, such claims simply invoke “well-
understood, routine, conventional activity,” which does not make an idea eligible for
patent protection. Mayo, 132 S. Ct. at 1298.
Like the claims of Alice, claims 11 and 18 of the ’547 patent employ
conventional technology in a business/financial field. As discussed above, claims 11
and 18 contain only four main functional elements: (1) connecting to a telephone
system; (2) receiving and testing signals indicative of data (numeric data); (3) storing
data for ordering an item; and (4) receiving and processing signals. Moreover, the
recitation of the third functional element, storing data for ordering an item, is only
peripherally connected to any of the other recited structures or functions. As each of
these elements is directed to the functionality of a general-purpose computer, it does
nothing more than recite well-known technology already known and used in the field
of telecommunications. Ex. 1003, ¶¶ 50-52. Indeed, like the elements in Alice—
“(a) creating a shadow credit record and a shadow debit record . . . ; (b) obtaining
. . . a start-of-day balance for each . . . record; (c) . . . adjusting each respective
party’s . . . record . . . , and (d) . . . instructing [an] exchange institution[],” 134 S. Ct.
at 2352 n.2 (citation omitted)—each of the elements in claims 11 and 18 requires
only conventional functionality of a generic computer. The claims use a computer to
merely receive and test signals, store data, and process received signals. See id. at
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2359. Thus, nothing in these claimed elements goes beyond a conventional computer,
and therefore provides no technical innovation to the field of telecommunications.
For example, the ’547 patent specification is littered with technical jargon
including “ANI” and “DNIS,” although these specifics were left out of claims 11 and
18. Each of these acronyms, although technical in nature, refers to technology and
functionality well established before the earliest effective filing date of claims 11 and
18. Ex. 1003, ¶¶ 5, 8-11. Specifically, the use of ANI and DNIS signals (which
provide calling-number and called-number information, respectively) had been in use
for well over a century, as such signals were necessary in the billing and routing
functions of telephone-company systems. Id. ¶¶ 8-11. According to the plain
meaning of the phrase, the recitation in claims 11 and 18, “receiv[ing] and test[ing]
said caller data signals indicative of said [ANI] . . . against previously stored [ANI],”
does not put ANI to any use other than the everyday use it has been put to for over a
century for purposes of billing and routing: receiving and testing against previously
stored ANI. Moreover, the claims’ recited use of ANI is completely peripheral to all
other activity in the claims because they define no connection between the
“receiv[ing] and test[ing]” of signals and any other activity associated with item
ordering. Because the only such technical jargon that can potentially be associated
with claims 11 and 18 is ANI (through the broader claim term “terminal digital data
indicative of a calling telephone number” that encompasses more than ANI), and
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because ANI was well known and used at the time of the claim, there is no
improvement to the technical field associated with claims 11 and 18.
Because claims 11 and 18 of the ’547 patent are directed to an abstract concept
and fail to recite “significantly more” than that abstract concept (by failing to either
improve the functioning of a computer or improve the technology of another
technical field), they are patent ineligible under § 101 and should be cancelled.
3. Claims 11 and 18 Also Fail the Alternative Machine-or-Transformation Test for Patent Eligibility
Although the framework described above most directly applies to determine
the patent eligibility of abstract ideas, claims 11 and 18 fail regardless of the test
applied. Of note is the “machine or transformation” test, which can be a “useful and
important clue” to patent eligibility. Bilski, 130 S. Ct. at 3227.
Patent Owner could not argue that claims 11 and 18 recite a physical
transformation. Moreover, they do not recite a transformation of any type. Merely
gathering data, testing it against stored information, and storing data (see supra at 31,
Section VI.B.2) does not require a transformation even of data. And regardless, even
a transformation of data falls short of the transformation required to establish patent
eligibility. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate additional
information is not patent eligible.”).
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Claims 11 and 18 fail the “particularity” requirement of the machine prong of
the machine-or-transformation test because the specification instructs that generic
hardware and conventional functionality suffices in the claimed system. See supra at
33, Section VI.C.
VII. CLAIMS 11 and 18 OF THE ’547 PATENT ARE UNPATENTABLE UNDER § 103
A. The Level of Skill in the Art at the Time of Invention
As of the February 24, 1987 priority date asserted by Patent Owner for claim
18,3 a person of ordinary skill in the art would have in-depth working knowledge of
telephone networks, which would typically require a degree in Electrical Engineering
or Computer Science or the equivalent, and three to four years of experience in the
field.
B. The Combination of Jordan and Michlin renders Claims 11 and 18 Obvious
U.S. Patent No. 4,313,035 to Jordan (“Jordan,” Ex. 1009) issued on January
26, 1982. Because the earliest priority date for claims 11 and 18 of the ’547 patent is
February 24, 1987, the publication date of Jordan is more than a year prior to the
3 Reexam No. 90/013,182, Response by Patentee to Non-Final Office Action in Ex Parte Re-Examination, Aug. 18, 2014, at 6 (asserting a priority date of February 24, 1987 for the ’547 patent).
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earliest effective filing date of claims 11 and 18. Jordan is therefore prior art under
pre-AIA § 102(b).
Jordan discloses a system that provides a person with a telephone number that
can be used to call the person regardless of their physical location. Ex. 1009 at 2:65-
3:3. The system of Jordan allows an individual to provide updated location and call-
routing information from any location in the United States.
U.S. Patent No. 4,191,402 to Michlin (“Michlin,” Ex. 1008) issued on March 4,
1980. Because the earliest priority date for claims 11 and 18 of the ’547 patent is
February 24, 1987, the publication date of Michlin is more than a year prior to the
earliest effective filing date of claims 11 and 18. Michlin is therefore prior art under
pre-AIA § 102(b).
Michlin discloses an order-entry form that may be used for recording an order
of an item by a consumer. Ex. 1008. Although the system in Michlin is not
automated, it discloses the recording of customer data, including numeric data, in
relation to item ordering. Figure 1 of Michlin, displaying the order-entry system, is
shown below.
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Id. at Fig. 1. Particularly, Michlin discloses the storing of information related to an
ordered item, and because the system of Michlin is a ledger, the stored data entries
can be referred back to as needed. Id.
As further detailed in the claim charts and discussion below, the combination of
Jordan and Michlin discloses all elements of claims 11 and 18 of the ’547 patent in a
predictable combination and therefore renders these claims obvious. See Exs. 1008,
1009; Ex. 1003, ¶¶ 55-73.
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1. Jordan and Michlin Teach Every Feature of Claims 11 and 18
As shown in the chart below, all features of claims 11 and 18 are taught by the
combination of Jordan and Michlin. See also Ex. 1003, ¶¶ 55-72. Although Jordan
discloses the majority of features of claim 11, any deficiencies found in the
disclosure of Jordan are remedied by the disclosures of Michlin.
Jordan discloses all of the structural elements that are claimed to make up the
“analysis control system,” and discloses that all of these structural elements are for
use with a communication facility (e.g., telephone system) including remote
terminals (e.g., calling party device) for individual callers (e.g., calling party),
wherein each of said remote terminals comprises a telephonic instrument including a
voice communication device and digital input device in the form of an array of
alphabetic numeric buttons for providing data and wherein said communication
facility has a capability to automatically provide terminal digital data, indicating a
calling telephone number (e.g., ANI). Id. ¶¶ 56-57.
’547 Claims 11/18 Exemplary Disclosure 11. [11.0] An analysis control system for use with a communication facility
Ex. 1009 at 2:67-3:7 (“The method is implemented in a stored program controlled telephone system having a centralized data base . . . . Information specifying the status of a telephone subscriber for call completing is stored at the centralized data base. The information includes a call completion number for completing calls to the subscriber . . . .”). Id. at 3:7-14 (“The status information may be modified at any time over a telephone and data communications
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network connection under direct control of the subscriber. The status information at the data base under the control of the subscriber includes a plurality of indications that specify, in general, that the subscriber is unavailable for receiving calls.”).
including remote terminals for individual callers, wherein each of said remote terminals comprises a telephonic instrument including a voice communication device and digital input device in the form of an array of alphabetic numeric buttons for providing data and wherein said communication facility has a capability to automatically provide terminal digital data, indicating a calling telephone number, said analysis control system comprising:
Id. at 3:28-32 (“A calling party alerted that a called subscriber is unavailable may request, by keying-in a special code from his station, that the subscriber return the call. In response to the special code, the caller’s station number is transmitted to and stored at the data base.”). Id. at 3:33-41 (“At any time the subscriber may initiate an inquiry telephone call to the data base from any station to determine if any return call, or callback, requests are present. The stored numbers of parties that have requested callback are returned to a telephone office associated with the subscriber’s inquiry call, preferably one at a time. The subscriber may ignore any such request or, if he wishes, have the telephone office automatically complete any one or all of the calls.”).
Jordan discloses an interface structure (e.g., element 58 of Figure 6) coupled to
said communication facility (e.g., data base) to interface said remote terminals (e.g.,
calling device 11 of Figures 1 and 6) for voice and digital communication and
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including means to provide caller data signals (e.g., touchtones) representative of
data relating to said individual callers (e.g., Person Locator Number (PLN) and call
completion numbers) provided from said remote terminals (e.g., calling parties) or
automatically provided by the communication facility with respect to the remote
terminals (e.g., ANI) prior to the close of communication with the callers, including
caller personal identification data (e.g., Person Locator Number (PLN) and status
information) entered by the caller via the digital input device and said terminal
digital data indicative of a calling telephone number (e.g., call completion number
transmitted as ANI data). Ex. 1003, ¶¶ 58-60.
[11.1] interface structure coupled to said communication facility to interface said remote terminals for voice and digital communication and including means to provide caller data signals representative of data relating to said individual callers provided from said remote terminals or automatically provided by the communication facility with respect to the remote terminals prior to the close of communication with the caller, including caller
Ex. 1009 at 3:3-7 (“Information specifying the status of a telephone subscriber for call completing is stored at the centralized data base. The information includes a call completion number for completing calls to the subscriber . . . .”).
Id. at 3:7-14 (“The status information may be modified at any time over a telephone and data communications network connection under direct control of the subscriber. The status information at the data base under the control of the subscriber includes a plurality of indications that specify, in general, that the subscriber is unavailable for receiving calls.”).
Id. at 3:28-32 (“A calling party alerted that a called subscriber is unavailable may request, by keying-in a special code from his station, that the subscriber return the call. In response to the special code, the caller’s
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personal identification data entered by the caller via the digital input device and said terminal digital data indicative of a calling telephone number;
station number is transmitted to and stored at the data base.”).
Id. at 3:33-41 (“At any time the subscriber may initiate an inquiry telephone call to the data base from any station to determine if any return call, or callback, requests are present. The stored numbers of parties that have requested callback are returned to a telephone office associated with the subscriber’s inquiry call, preferably one at a time. The subscriber may ignore any such request or, if he wishes, have the telephone office automatically complete any one or all of the calls.”).
Id. at 16:62-64 (“forwarding to the centralized data base a telephone number and a person locator number received on a person locator update call from a first station”). Id. at 4:24-27 (“The PLN [Personal Locator Number] is assumed to have been assigned to subscriber A when he initially subscribed to the service. Illustratively, the PLN is assumed to be a seven digit number personally identifying him.”). Id. at 9:30-34 (“If local office 50 has Automatic Number Identification (ANI) and has supplied TSPS 51 with the number of station 11, the announcement might be . . . .”).
Jordan discloses a record testing structure (e.g., Traffic Service Position
System (TSPS) 23) connected to receive and test said caller data signals indicative of
said terminal digital data representative of said calling telephone number (e.g., ANI)
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and said caller personal identification data (e.g., PLN) against previously stored
terminal digital data and caller personal identification data (e.g., stored ANI data for
purposes of routing and billing in a conventional PSTN, and stored PLN data
associated with the caller). Ex. 1003, ¶¶ 61-62.
[11.2] record testing structure connected to receive and test said caller data signals indicative of said terminal digital data representative of said calling telephone number and said caller personal identification data against previously stored terminal digital data and caller personal identification data;
Ex. 1009 at 3:28-32 (“A calling party alerted that a called subscriber is unavailable may request, by keying-in a special code from his station, that the subscriber return the call. In response to the special code, the caller’s station number is transmitted to and stored at the data base.”).
Id. at 3:33-41 (“At any time the subscriber may initiate an inquiry telephone call to the data base from any station to determine if any return call, or callback, requests are present. The stored numbers of parties that have requested callback are returned to a telephone office associated with the subscriber’s inquiry call, preferably one at a time. The subscriber may ignore any such request or, if he wishes, have the telephone office automatically complete any one or all of the calls.”). Id. at 4:50-57 (“A TSPS is an operator and automatic services facility . . . . It comprises a processor, memory, software program, switching network, and other equipment for automatically handling certain types of calls.”). Id. at 9:30-34 (“If local office 50 has Automatic Number Identification (ANI) and has supplied TSPS 51 with the number of station 11, the announcement might
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be . . . .”).
Jordan discloses a storage structure (e.g., centralized data base) for storing
certain of said data provided by said individual callers (e.g., PLN, callback number,
status information, and call completion number). Although Jordan does not expressly
disclose that the data provided by said individual callers include item data for
ordering particular items, Michlin discloses this explicitly. For example, Michlin
discloses that the order sheet “includes an item space 17 for receiving information
concerning an ordered item, a name and address space 18 for identifying a
customer ordering the item, a space 19 for indicating the time of ordering, a space 20
to indicate the telephone number of the customer, a space 21 for ordering additional
items, for example, soft drinks and finally a space 22 for the total price of the ordered
items.” Ex. 1008 at 3:16-26 (emphasis added). Accordingly, Michlin teaches that
“[the] data provided by said individual callers includes item data for ordering
particular items,” as recited in the claim. See also Ex. 1003, ¶¶ 63-68.
[11.3] storage structure for storing certain of said data provided by said individual callers including item data for ordering particular items; and
Ex. 1009 at 3:3-7 (“Information specifying the status of a telephone subscriber for call completing is stored at the centralized data base. The information includes a call completion number for completing calls to the subscriber . . . .”).
Id. at 3:7-14 (“The status information may be modified at any time over a telephone and data communications
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network connection under direct control of the subscriber. The status information at the data base under the control of the subscriber includes a plurality of indications that specify, in general, that the subscriber is unavailable for receiving calls.”).
Id. at 4:50-57 (“A TSPS is an operator and automatic services facility . . . . It comprises a processor, memory, software program, switching network, and other equipment for automatically handling certain types of calls.”).
Ex. 1008 at Fig. 1.
Id. at 3:16-26 (“As shown in FIG. 1, the face sheet 11
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includes an ordered array of sets of designated spaces 16 which are preprinted and disposed in horizontal fashion. For example, each set of spaces includes an item space 17 for receiving information concerning an ordered item, a name and address space 18 for identifying a customer ordering the item, a space 19 for indicating the time of ordering, a space 20 to indicate the telephone number of the customer, a space 21 for ordering additional items, for example, soft drinks and finally a space 22 for the total price of the ordered items.”).
Jordan discloses an analysis structure (e.g., processor) for receiving and
processing said caller data signals (e.g., subscriber inquiry call) under control of said
record testing structure. Ex. 1003, ¶¶ 69-70.
[11.4] analysis structure for receiving and processing said caller data signals under control of said record testing structure.
Ex. 1009 at 3:33-41 (“At any time the subscriber may initiate an inquiry telephone call to the data base from any station to determine if any return call, or callback, requests are present. The stored numbers of parties that have requested callback are returned to a telephone office associated with the subscriber’s inquiry call, preferably one at a time. The subscriber may ignore any such request or, if he wishes, have the telephone office automatically complete any one or all of the calls.”). Id. at 9:30-34 (“If local office 50 has Automatic Number Identification (ANI) and has supplied TSPS 51 with the number of station 11, the announcement might be . . . .”).
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Claim 18 adds one limitation to those of claim 11: “wherein the data
identifying the order is number data.” Michlin discloses this feature. Ex. 1003, ¶ 71.
In Michlin, many of the categories of data provided to “identify the order”
include “number data.” For example, and likely most commonly, the customer’s
telephone number may be used to identify the order, and this comprises “number
data. Id. Further, the customer’s address may also be used to “identify the order” and
it also is “number data.” Id. The time the order was placed may also be used to
“identify the order” and also is “number data.” Id. Any one of these disclosures from
Michlin satisfies the limitation of claim 18. Id.
wherein the data identifying the order is number data
Ex. 1008 at 3:20-26 (“[A] name and address space 18 for identifying a customer ordering the item, a space 19 for indicating the time of ordering, a space 20 to indicate the telephone number of the customer, a space 21 for ordering additional items, for example, soft drinks and finally a space 22 for the total price of the ordered items.”).
Thus, based on the foregoing charts and arguments, the combination of Jordan
and Michlin teaches each and every feature of claims 11 and 18, and therefore render
claims 11 and 18 obvious under 35 U.S.C. § 103. Ex. 1003, ¶¶ 55-72.
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2. The Combination of Jordan and Michlin Is Obvious
It would have been obvious to one skilled in the art at the time of the alleged
invention of the ’547 patent to combine the teachings of Jordan and Michlin, and this
combination renders obvious claims 11 and 18 of the ’547 patent. Id. ¶ 73.
Because telephone ordering was already commonplace at this time, it would
have been obvious to one of skill in the art to implement the systems of Jordan in
commercial transactions, such as those disclosed in Michlin. See id. Indeed, data
entry is an essential activity in financial/business transactions. Id. ¶¶ 4, 6-7.
Additionally, telephone-based contact information that enables a caller to be
contacted based upon a unique, publicly available telephone number associated with
the caller regardless of the customer’s physical location is useful if the commercial
transaction is item ordering. A merchant taking orders for items over a telephone
would be motivated to record telephone-based contact information for a caller, such
as a PLN, because that would permit the merchant to contact the caller regarding the
order regardless of the physical location of the caller. Thus, the features of location-
independent, telephone-based contact information and remote data entry are
invaluable to the process of item ordering over a telephone, and it would have been
obvious to one skilled in the art to combine such features in an item-ordering system.
Id. ¶ 73.
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VIII. CONCLUSION
For the foregoing reasons, claims 11 and 18 of the ’547 patent are
unpatentable. Petitioner therefore requests that a post-grant review of these claims be
instituted under 35 U.S.C. § 324.
The undersigned attorneys welcome a telephone call should the Office have
any requests or questions. If there are any additional fees due in connection with the
filing of this paper, please charge the required fees to our Deposit Account
No. 06-0916.
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Respectfully submitted,
Dated: January 12, 2015 By: /Jeffrey A. Berkowitz/ Jeffrey A. Berkowitz Reg. No. 36,743 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 Telephone: 571.203.2710 Facsimile: 202.408.4400 Email: [email protected] James J. Boyle Reg. No. 46,570 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 Telephone: 571.203.2724 Facsimile: 202.408.4400 Email: [email protected]
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing Petition for Post-Grant Review
Under 35 U.S.C. § 321 and § 18 of the Leahy-Smith America Invents Act was
served on January 12, 2015, by Express Mail at the following addresses of record
for the subject patent. The associated Exhibits 1001 through 1021 and Power of
Attorney were served along with the Petition.
Erik Milch Frank Pietrantonio
Cooley LLP ATTN: Patent Group
1299 Pennsylvania Avenue, NW Suite 700
Washington, DC 20004
Date: January 12, 2015
/Ashley F. Cheung/ Ashley F. Cheung Case Manager
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.