Takeaway: When construing a means-plus-function limitation, the Board does not include disclosed structure that is not necessary to the understanding of the claim or to define the structure for the recited function.
In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 1-24 of U.S. Patent 8,083,137 are ineligible under 35 U.S.C. § 101. The ’137 patent relates to a “credit facility for allowing a user to place self-imposed limits on the user’s spending limits on a category by category basis.”
The Board began with claim construction, interpreting the claims of this unexpired patent using the broadest reasonable construction in light of its specification. In the Final Written Decision, the Board incorporated its construction of several terms from its Decision on Institution and addressed Patent Owner’s request that the Board reconsider its construction of two means-plus-function terms and one term that was not construed in the Decision on Institution. When construing a means-plus-function claim limitation, the Board first determines the claimed function and then identifies the corresponding structure in the written description that performs the claimed function. Where the disclosed structure is a computer or processor programmed to carry out an algorithm, the disclosed structure is “the special purpose computer programmed to perform the disclosed algorithm.”
The Board construed the terms “profile” and “key” in the phrase “a profile keyed to a user identity and containing one or more user-selected categories to track transactions associated with said user identity.” It construed “profile” as a “user identity” and “key” as “a field in a database that identifies the record in that database.”
The Board then considered Patent Owner’s argument that it should change its prior construction from the Decision on Institution with respect to the phrase “means for presenting transaction summary data for at least one of the one or more user-selected categories, said transaction summary data containing said at least one user-selected category’s user pre-set limit.” The Board was not persuaded by Patent Owner’s argument that the corresponding structure should include “communications link (e.g., pager network, cellular network, satellite network, web portal, phone operator, or other similar type of communications link), printer or auxiliary communication path (e.g., phone, pager, or other similar devices), and equivalents,” in addition to the previously-identified “central processor programmed to perform the algorithm steps of figures 3A-B and 4, working in conjunction with a database and a profile.” The Board concluded that the “additional structure proposed by Patent Owner is not necessary to the understanding of the claim or to define the structure for the recited function.”
Turning to the proposed grounds for unpatentability, the Board analyzed whether the challenged claims are patentable under 35 U.S.C. § 101, applying the two-step framework set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). It first concluded that the first step (whether the claims are directed to abstract ideas) was met, rejecting Patent Owner’s argument that the claims are directed to a “technological invention” and determining that they are “rather directed to mental steps that can be performed by a human.” Turning to the second step, the Board concluded that the claims do not do more than “implement the abstract idea with routine, conventional activity.”
The Board then considered Patent Owner’s Motion to Exclude Exhibit 1027, which is an article from the Journal of Consumer Research titled “Mental Budgeting and Consumer Decisions,” by Chip Heath and Jack B. Soll, dated June 1996. Patent Owner argued that Petitioner improperly submitted this exhibit with its reply as evidence in support of Petitioner’s argument that the ’137 patent is directed to an abstract idea. Petitioner argued that the exhibit “was not relied on to establish that the claims of the ’137 patent were directed to an abstract idea, but rather to rebut testimony from Patent Owner’s expert . . . that contended in its Response that “there was no evidence that it was ‘ever a common practice, prior to the invention, to notify someone when he or she reaches a self-imposed spending limit.’” The Board concluded that “Patent Owner’s expert’s contention raised an evidentiary response to Petitioner’s argument that Petitioner was entitled to rebut” and that Patent Owner had not been prejudiced, “for it had knowledge of Petitioner’s position and argued it in the Response.” Accordingly, the Board determined that “Exhibit 1027 was proper rebuttal” and denied Patent Owner’s Motion to Exclude.
Thus, the Board determined that Petitioner had demonstrated, by a preponderance of the evidence, that the challenged claims are not patentable because they are directed to ineligible subject matter.
Bank of America, N.A. v. Intellectual Ventures I LLC, CBM2014-00028
Paper 52: Final Written Decision
Dated: May 18, 2015
Patent: 8,083,137 B2
Before: Thomas L. Gianetti, Hyun J. Jung, and Gregg I. Anderson
Written by: Anderson
Related Proceedings: Intellectual Ventures I LLC v. PNC Financial Services, Inc., No. 2:13-cv-00740 (W.D. Pa. filed May 29, 2013) and Intellectual Ventures I LLC v. Bank of America, N.A., No. 3:13-cv-00358 (W.D.N.C. filed June 12, 2013)