Takeaway: In a means-plus-function claim, the absence of corresponding structure in the specification to perform the claimed function may render the claim indefinite.

In its Final Written Decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claims 1-18 and 20-23 of the ’168 patent are unpatentable. The Board describes the ’168 patent as relating to a system and method for allowing the purchase of products using hand-held devices without requiring the user of the hand-held device to enter payment information for each sales transaction. Petitioner challenged the patentability of ’168 as follows: anticipation of claims 12-16, 18, and 19 by Gerson; obviousness of claims 1-11 and 20-23 over Gerson and Wronski; anticipation of claims 1-5, 7-16, 18, and 20-23 by Demoff; and indefiniteness of claim 17.

Petitioner asserted that claim 17 was indefinite based upon the Declaration of Dr. Shamos. Petitioner alleged that the “means for completing the transaction request…” recited in claim 17 is a means-plus-function limitation under 35 U.S.C. §112, sixth paragraph, and that the specification does not provide sufficient corresponding structure for the limitation. The Board, quoting Williamson v. Citrix Online, LLC stated, “if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite.” The Board determined that the “means for completing” function does not have corresponding structure. The specification, according to the Board, indicates that payment authorization source may be involved in completing a transaction, but it does not describe any particular structure for payment authorization. Thus, the Board concluded that claim 17 is indefinite.

The Board was persuaded by Petitioner’s challenge to claims 12-16 and 18 of the ’168 patent as anticipated by Gerson. However, the Board was not persuaded that claim 19 is anticipated by Gerson. Petitioner alleged that Gerson discloses the transaction amount and that the product identification code and product quantity would have been obvious. Petitioner relied upon testimony of Dr. Shamos, who stated that Gerson expressly discloses a transaction amount, and that it would have been obvious to include a product identification code and a product quantity. Nonetheless, the Board concluded that Petitioner had not shown that the product identification code and product quantity are disclosed by Gerson.

Petitioner next asserted that claims 1-11 and 20-23 are unpatentable over Gerson and Wronski. Petitioner argued that Gerson stores a transaction-specific authorization code in a processor, and it would have been obvious in view of Wronski to do so instead in a transaction database. Petitioner argued that Gerson inherently discloses the limitation which recites comparing the received authorization code with the authorization code stored in the transaction database. The Board was persuaded by Petitioner’s arguments and concluded that claims 1-11 and 20-23 are unpatentable.

The Board was also persuaded that Demoff anticipates claims 1-5, 7-16, 18, and 20-23.

BOKU, INC. and BOKU ACCOUNT SERVICES, INC. v. ZILIDEV, INC, CBM2014-00140, 00148

Paper 24: Final Written Decision

Dated: November 2, 2015

Patents: 7,273,168

Before: Justin T. Arbes, Jo-Anne M. Kokoski, and Tina E. Hulse

Written by: Arbes