Takeaway: A failure to perform a full analysis of subject matter eligibility under 35 U.S.C. § 101 is a failure to identify challenged grounds with particularity as required by 37 C.F.R. § 42.304(b)(4) and 35 U.S.C. § 322(a)(3).

In its Decision, the Board denied institution of covered business method patent review, finding that the “Petition does not demonstrate it is more likely than not that Petitioner would prevail with respect to claims 1–34, 38, 39, and 45–77 of the ’918 patent.” The ’918 patent “relates to ‘redemption games allowing a player to receive one or more prizes in connection with playing the game.’”

The sole ground asserted in the Petition was alleged unpatentability under 35 U.S.C. § 101. The Board addressed Petitioner’s assertions with respect to the alleged unpatentability under the two step analysis under Alice. According to the first step – “whether the claims at issue are directed to one of those patent-ineligible concepts” – Petitioner identified several alleged abstract ideas recited in each challenged claim. For the second step of the analysis – searching for an “inventive concept” that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself” – Petitioner asserted that “any recited structures are generic, the remaining claim elements are directed to the abstract idea or well known, or the claims do not recite a technical solution to a technical problem.”

The Board was not persuaded by Petitioner’s arguments. In particular, the Board explained that “Petitioner fails to provide a credible analysis considering the elements of the challenged claims ‘individually and ‘as an ordered combination’’ to determine whether the additional elements transform the nature of the challenged claims into a patent-eligible application in accordance with the second step of the Alice analysis.” Instead, the Board found that Petitioner’s assertions were cursory and conclusory “with no or insufficient evidence that the additional claim elements are well known or recite generic structure.” Further, the Board found “Petitioner’s failure to do a full analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well as 35 U.S.C. § 322(a)(3), which requires identifying the grounds ‘with particularity.’”

Thus, the Board denied institution of covered business method patent review.

Intermix Media, LLC v. Bally Gaming, Inc., CBM2015-00154

Paper 10: Decision Denying Institution of Covered Business Method Patent Review

Dated: January 20, 2016

Patent: 5,816,918

Before: Michael P. Tierney, Patrick R. Scanlon, and Hyun J. Jung

Written by: Jung

Related Proceedings: Bally Gaming, Inc. v. eUniverse, Inc., No. 3:03-cv-0062-LRH-VPC (D. Nev.); Bally Gaming, Inc. v. Worldwinner.com Inc., No. 3:03-cv-0063-LRH-VPC (D. Nev.); Reexamination No. 90/006,601; CBM2015-00155