Takeaway: An argument by a patent owner that claims are patent-eligible under §101 because they are directed to “a patent-eligible ecommerce concept and not a mathematical formula, fundamental truth, or fundamental economic practice long prevalent in our system of commerce” may be viewed by the Board as inconsistent with prior cases such as buySAFE and Ultramercial finding claims to similar ecommerce systems patent ineligible.

In its Decision, the Board instituted a covered business method review for each of challenged claims 1-12 of the ‘982 patent. The covered business method review will address the patent eligibility of claims 1-12 under 35 U.S.C. § 101, but will not address the patentability of claims 1-12 under 35 U.S.C. § 103.

Petitioner (Google Inc. and LinkedIn Corporation) had requested covered business method patent review of claims 1-12 of the ‘982 patent, owned by Priceplay.com (Patent Owner). The ‘982 patent relates to business transactions conducted over the Internet. The grounds asserted against claims 1-12 included: (1) claims 1-12 directed to subject matter ineligible for patent protection under 35 U.S.C. § 101; (2) obviousness of claims 1-4, 6-10, and 12 in view of DealDeal, Thacher, and Groftehauge under 35 U.S.C. § 103; (3) obviousness of claims 5 and 11 in view of DealDeal, Thacher, Groftehauge, and Woolston under 35 U.S.C. § 103; (4) obviousness of claims 1, 4-7, and 10-12 in view of Fisher, Walker I, and Asahi under 35 U.S.C. § 103; and (5) obviousness of claims 2, 3, 8, and 9 in view of Fisher, Asahi, Walker I, and Walker II under 35 U.S.C. § 103.

Petitioner had argued that the challenged ‘982 patent claims are eligible for covered business method review because they are directed to a financial product or service and are not directed to a technological invention. Patent Owner disagreed, arguing that the challenged claims are directed to a technological invention and “make no mention of data processing or other operations used in the practice, administration, or management of a financial product or service.”

The Board sided with Petitioner on these issues. As for the financial nature of the invention, the Board indicated that the claims “all are directed to determining the sale price of a product at an auction.” As for the technological invention issue, the Board found that “Patent Owner does not point to any convincing evidence to rebut Petitioner’s showing that the claimed subject matter as a whole is not directed to a technological invention.” Thus, the Board concluded that Petitioner had sufficiently shown that the ‘982 patent is eligible for covered business method patent review under AIA § 18(a).

The Board then went on to construe several claim terms, including “associated with the product being purchased” (which the Board interpreted to mean “connected in the mind or imagination with the product being purchased”) and “algorithm” (which the Board interpreted to mean “a set of instructions or rules used for performing a task or calculation”).

As for patent eligibility under 35 U.S.C. § 101, the Board applied the two-step test relied upon in Alice Corp. Pty. Ltd. v. CLS Bank Int, 134 S. Ct. 2347, 2355 (2014), in reaching the conclusion that Petitioner was more likely than not to succeed with its challenge to the patent eligibility of claims 1-12 under 35 U.S.C. §101. According to the Board, “Patent Owner does not convince us that using an algorithm to calculate the price of the product based on the results of a competitive activity and based on the results of an auction . . . is not itself an abstract idea” and the Board was “unpersuaded that the other claim limitations discussed by Patent Owner . . . add anything of practical significance to the underlying abstract idea.”

On the other hand, the Board was not persuaded that Petitioner had made sufficient showings in connection with its obviousness challenges under 35 U.S.C. § 103. As for the proposed combinations including DealDeal, the Board found that the asserted references did not meet the claim limitation reciting “a competitive activity that is in addition to placing bids in the auction and that is collateral to the price and associated with the product being purchased.” In regard to the proposed combinations including Fisher, the Board agreed with Patent Owner that the asserted references, Asahi in particular, “[fail] to disclose a competitive activity that is associated with the product being purchased.” Thus, the Board concluded that “Petitioner has not demonstrated that it is more likely than not to succeed on this challenge.”

Google Inc. and LinkedIn Corp. v. Priceplay.com, Inc., CBM2015-00025

Paper 8: Decision on Institution of Covered Business Method Patent Review

Dated: May 18, 2015

Patent: 8,050,982 B2

Before: James P. Calve, Thomas L. Giannetti, and Charles J. Boudreau

Written by: Giannetti

Related Proceedings: Priceplay.com Inc. v. Google Inc., 1:14-cv-00386 (D. Del. Mar. 26, 2014), transferred to the Northern District of California on October 30, 2014, case number 3:14-cv-04828-JSC; Priceplay.com Inc. v. LinkedIn Corp., 1:14-cv-00267 (D. Del. Feb. 27, 2014), transferred to the Northern District of California on October 30, 2014, case number 3:14-cv-04824-SI; Priceplay.com Inc. v. Facebook Inc., 1:14-cv-00512 (D. Del. Apr. 22, 2014), transferred to the Northern District of California on October 30, 2014, case number 3:14-cv-04830-EDL; and Priceplay.com Inc. v. AOL, 1:14-cv-00092 (D. Del. Jan. 22 , 2014)