Bank of America, National Associationv.Intellectual Ventures

Patent Trial and Appeal Board

May 18, 2015

12472177 (P.T.A.B. May. 18, 2015)

Trials@uspto.gov Paper No. 52
571.272.7822 Entered: May 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BANK OF AMERICA, N.A.,
PNC FINANCIAL SERVICES GROUP, INC., and PNC BANK, N.A.,
Petitioner,
v.
INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case CBM2014-00028
Patent 8,083,137 B2

_____________

Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
GREGG I. ANDERSON, Administrative Patent Judges.
ANDERSON, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
CBM2014-00028
Patent 8,083,137 B2

2

Bank of America, N.A., PNC Financial Services Group, Inc., and
PNC Bank, N.A. (“Petitioner”) filed a Petition (Paper 9, “Pet.”) requesting
institution of a covered business method patent review of claims 1–24 of
U.S. Patent No. 8,083,137 B2, issued December 27, 2011 (Ex. 1001, “the
’137 patent”), pursuant to 35 U.S.C. § 321. Patent Owner, Intellectual
Ventures I LLC, filed a preliminary response. Paper 16 (“Prelim. Resp.”).
Based on these submissions, we instituted trial as to all claims of the ’137
patent. Paper 18 (“Institution Dec.”).
After institution, Patent Owner filed a Response (Paper 26, “PO
Resp.”) and Petitioner filed a Reply (Paper 35, “Pet. Reply”). In addition,
the parties rely upon expert testimony. Petitioner proffered the Declaration
of Brad Myers, Ph.D. (Ex. 1005, “Myers Decl.”) with the Petition. Patent
Owner proffered the Declaration of Bradley O. Walton (Ex. 2003, “Walton
Decl.”) with its Response. In addition, a transcript of Mr. Walton’s
deposition (Ex. 1026, “Walton Dep.”) was submitted by Petitioner. No
deposition transcript was filed for Dr. Myers.
Patent Owner filed a Motion to Exclude Evidence. Paper 37 (“PO
Mot. Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
Exclude Evidence. Paper 44 (“Opp. Mot. Exclude”).
Oral Hearing was held on March 2, 2015. A transcript of the
argument is entered in the record as Paper 51 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 328(a). We conclude for the
reasons that follow that Petitioner has shown by a preponderance of the
evidence that claims 1–24 of the ʼ137 patent are unpatentable.

CBM2014-00028
Patent 8,083,137 B2

3

I. INTRODUCTION
A. The ’137 Patent (Ex. 1001)
The ’137 patent, titled “Administration of Financial Accounts,” issued
on December 27, 2011, based on Application 12/472,177, filed May 26,
2009.
The ’137 patent describes a credit facility for allowing a user to place
self-imposed limits on the user’s spending in selected transaction categories.
Ex. 1001, Abstract. When the limit is reached the user is notified. Id. at
1:67–2:1. The user may set the self-imposed spending limits on a category
by category basis. Id. at 2:9–12.
Figure 1 of the ’137 patent is reproduced below.

Figure 1 is a block diagram showing user 100 with credit card 11 and
card reader 12 which are used to complete a sales transaction at a point of
sale. Ex. 1001, 3:41–44. Communications links 14-1 and 14-2 convey card
information over network 101 to central processor 15. Id. at 3:45–47. The
processor categorizes the various purchases being made and stores those
CBM2014-00028
Patent 8,083,137 B2

4

purchase amounts and categories in database 17 according to the profiles of
the user. Id. at 3:47–52. If the amounts in a category exceed a certain
amount, the user or a third party as identified in the user’s profile, would be
required to give specific approval for a particular purchase. Id. at 4:1–5.
B. Related Matters
Petitioner has been charged with infringement of the ’137 patent in
the following cases: 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). Pet. 1 (citing Exs. 1006 & 1009). In addition,
Petitioner advises us of six additional lawsuits where Patent Owner alleges
the ’137 patent is infringed. Pet. 64–65.
C. Illustrative Claims
Of the challenged claims, claims 1, 5, 12, and 19 are independent
claims. Claims 1 and 19 are system claims and claims 5 and 12 are method
claims. Claims 1 and 5 are reproduced below:
1. A system comprising:
means for storing a profile keyed to a user identity and
containing one or more user-selected categories to track
transactions associated with said user identity, wherein
individual user-selected categories include a user pre-set limit;
and
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.

CBM2014-00028
Patent 8,083,137 B2

5

5. A method comprising:
storing, in a database, a profile keyed to a user identity
and containing one or more user-selected categories to track
transactions associated with said user identity, wherein
individual user-selected categories include a user pre-set limit;
and
causing communication, over a communication medium
and to a receiving device, of transaction summary data in the
database 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.

D. Ground Upon Which Trial Was Instituted
Trial was instituted on the ground that claims 1–24 of the ’137 patent
are unpatentable under 35 U.S.C. § 101. Institution Dec. 25–26.
E. Claim Interpretation
The Board will interpret a claim of an unexpired patent using the
broadest reasonable construction in light of the specification of the patent in
which it appears. See 37 CFR § 42.300(b); In re Cuozzo Speed Techs., LLC,
778 F.3d 1271, 1279–83 (Fed. Cir. 2015); Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under that standard,
claim terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definition for a claim term must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). Furthermore, claim construction is “is not an
inviolable prerequisite to a validity determination under § 101.” Content
Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1349
(Fed. Cir. 2014) (citations omitted).
CBM2014-00028
Patent 8,083,137 B2

6

In instituting trial, we determined constructions for seven terms,
including some in means-plus-function form. Institution Decision 5–13.
With the exception of three terms, Patent Owner agrees with the Board’s
prior constructions and, in any event, asserts they are “immaterial” as to
whether the claims are patent eligible under § 101. PO Resp. 42–45.
Accordingly, unless otherwise addressed below, we incorporate our
constructions from the Decision on Institution. Patent Owner requests that
the Board reconsider its construction of two means plus function terms and
one term not construed in the Decision on Institution. Id.
Construction of a means-plus-function limitation involves two steps.
“First, the court must determine the claimed function. Second, the court
must identify the corresponding structure in the written description of the
patent that performs the function.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d
1302, 1311 (Fed. Cir. 2012)(citing Applied Med. Res. Corp. v. U.S. Surgical
Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (internal citations omitted)).
Furthermore, in a means-plus-function claim where “‘the disclosed structure
is a computer, or microprocessor, programmed to carry out an algorithm, the
disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.’”
Noah Sys., 675 F.3d at 1312 (citing WMS Gaming, Inc. v. Int’l Game Tech.,
184 F.3d 1339, 1348 (Fed.Cir.1999)); see Aristocrat Techs Austl. Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
CBM2014-00028
Patent 8,083,137 B2

7

1. “a profile keyed to a user identity and containing one or more user-
selected categories to track transactions associated with said user
identity” (Claims 1, 5, And 12)

The Decision on Institution did not construe the “profile keyed to a
user identity” term above. Patent Owner proposes that the broadest
reasonable interpretation of this claim language is “a computerized database
record of parameters including user-created control information identifiable
by a computer using a unique value associated with a user identity.” PO
Resp. 42–43. Petitioner has no separate proposal for the term but contends
Patent Owner’s proposal is not the broadest reasonable interpretation. Pet.
Reply 14.
The term “profile keyed” does not appear in the Specification.
However, we agree with Patent Owner that “profile” is described as a user
identity in both the Specification and in the dictionary definitions provided.
See Ex. 1001, 3:47–526:45–51, 7:48–50; IBM DICTIONARY OF COMPUTING
725 (International Business Machines Corp., 1994), Ex. 2017. According to
Patent Owner, a “key” is “the sequence of symbols or characters that defines
the makeup of an encoding mechanism.” PO Resp. 43 (citing MICROSOFT
ENCARTA COLLEGE DICTIONARY 795 (Bloomsbury Publishing Plc, 1991,
2001), Ex. 2016. Patent Owner also relies on Mr. Walton’s testimony that a
“key” is a “field in a database that identifies the record in that database.” Id.
(citing Ex. 2003 ¶ 136). Mr. Walton’s testimony is persuasive because it is
consistent with the plain meaning of the term.
Thus, we construe “profile” as a “user identity” and “key” as “a field
in a database that identifies the record in that database.” Given these
constructions, we determine that the remainder of the term, as identified by
CBM2014-00028
Patent 8,083,137 B2

8

Patent Owner, should be given its plain meaning and requires no additional
construction.
2. “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” (Claim 1)

Both parties agreed and the Board found the claimed function for this
means-plus-function term is “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.” Institution Dec. 8. The corresponding structure was determined
to be a “central processor programmed to perform the algorithm steps of
figures 3A-B and 4, working in conjunction with a database and a profile.”
Id. at 9.
Patent Owner argues the corresponding structure should further
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.” PO Resp. 43–44. Patent
Owner argues its proposal is supported by the Specification and was adopted
by the district court in one of the related cases listed above.1 Petitioner
states no position regarding this term beyond the general statement that
Patent Owner is not giving any of the terms their broadest reasonable
construction. Pet. Reply 14.

1 Intellectual Ventures I LLC v. Capital One Fin. Corp., Case No. 1:13-cv-
00740 (AJT/TRJ) (E.D. Va.). PO Resp. 44.
CBM2014-00028
Patent 8,083,137 B2

9

Although we must consider the Specification in construing claim
terms, an extraneous limitation should not be read into the claims from the
specification. E.g., E.I. du Pont de Nemours & Co. v. Phillips Petroleum
Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is one
whose presence in a claim is unnecessary for the purpose of making sense of
the claim. See, e.g., In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
a means-plus-function claim, we look to the written description for the
corresponding structure that performs the function. Noah Sys., 675 F.3d at
1311. But that does not alter the fact that extraneous structure from the
written description is not added.
We are not persuaded we should change our prior construction from
the Decision on Institution. 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. Nor are we persuaded to follow the district
court’s construction. We note the district court applies a different standard
for claim construction than the broadest reasonable interpretation standard
we apply.
We, therefore, determine that the function of the “means for
presenting” term is “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” and
the corresponding structure is “central processor programmed to perform the
algorithm steps of figures 3A-B and 4, working in conjunction with a
database and a profile.”
CBM2014-00028
Patent 8,083,137 B2

10

3. “means for listing financial transactions for a user which
occurred during a last accounting period,” (Claim 19)

In the Decision on Institution, the Board analyzed the “means for
listing” term as a means-plus-function term. Institution Dec. 11–12. We
determined that the function is “listing financial transactions for a user
which occurred during a last accounting period.” Id. at 11. At that time,
Patent Owner proposed the corresponding structure clearly linked and
associated with the function is “a central processor 15, programmed to
perform the algorithm steps of elements 303, 306, 307, and 330 of Fig. 3A-
B, working in conjunction with database 16 and profile 17, and equivalents.”
Prelim. Resp. 19. However, we were unable to identify a specific algorithm
for performing the function as required. Id. at 12 (see Noah Sys., 675 F.3d at
1311). In order to proceed on the grounds asserted by Petitioner, we adopted
Petitioner’s proposal of “a central processor in conjunction with a database
and profile.” Institution Dec. at 11.
We asked Patent Owner to direct the Board, in its Patent Owner
Response, to the specific portions of the Specification that clearly link or
associate a computer program or algorithm to the function corresponding to
the “means for listing.” Institution Dec. 12. Patent Owner responds to this
request at pages 44 and 45 of its Patent Owner Response. Patent Owner
points to the same blocks, 330, 306, and 307 of Figure 3A and Figure 7, that
we found insufficient in the Decision on Institution. Institution Dec. 12.
Additional description of Figure 7 is provided as well as testimony of the
Walton Declaration. PO Resp. 44, Ex. 2003 ¶ 155. The Walton Declaration
does not identify specifically any algorithm in connection with the table of
Figure 7. Although Figures 3A and 3B are algorithms for other means-plus-
CBM2014-00028
Patent 8,083,137 B2

11

function elements, we are not persuaded by any of Patent Owner’s cites to
the Specification or by the Walton Declaration (see ¶ 156, discussing Figs.
3A and 3B) that an algorithm for the “means for listing” is disclosed.
Absent any identifiable algorithm, we determine that the function of
the “means for listing” term is “listing financial transactions for a user which
occurred during a last accounting period” and the corresponding structure is
“a central processor in conjunction with database and profile.”
II. ANALYSIS
A. Patentability Under 35 U.S.C. § 101
Section 101 of 35 U.S.C. defines what constitutes patentable subject
matter: “Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.”
There are, however, three specific exceptions to the broad categories
of § 101: laws of nature, physical phenomena, and abstract ideas. Bilski v.
Kappos, 561 U.S. 593, 601 (2010). “The abstract ideas category embodies
the longstanding rule that ‘[a]n idea of itself is not patentable.’” Alice Corp.
Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) (internal quotation marks and citation
omitted)).
In Alice, the Supreme Court followed the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. In the first step,
CBM2014-00028
Patent 8,083,137 B2

12

“we determine whether the claims at issue are directed to one of those
patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in
the claims before us?’” Id. (quoting Mayo, 132 S. Ct. at 1297). In the
second step, we consider the elements of each claim both individually and as
an ordered combination to determine whether the additional elements
transform the nature of the claim into a patent-eligible application. Id.
Step two of the analysis may be described as a search for an
“inventive concept”—i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself. Id. (citing Mayo, 132 S. Ct.
at 1294).
B. Are the ʼ137 Patent Claims Directed to Abstract Ideas?
In our Institution Decision, we determined that the ʼ137 patent claims
are directed to the abstract idea of storing information about a user’s
preferences for a credit limit and presenting, i.e., notifying, the user of the
limit when providing the user a transaction summary based on categories.
Institution Dec. 19, 21, and 23–24.2 Patent Owner responds that the claims
are not directed to abstract ideas under Supreme Court precedent. PO
Resp. 7–11. Patent Owner contrasts what has been found to be an abstract

2 Patent Owner contends that the Petition lacks any evidence proving the
claims are directed to an abstract idea. PO Resp. 6. We credit the testimony
of Dr. Myers as evidence that the ʼ137 patent claims an abstract idea.
Ex. 1005 ¶ 25 (citing Ex. 1001, 1:65–2:1(“The ’137 patent is directed to the
abstract idea of sending a notification to a person when he or she has
reached a self-imposed spending limit on a particular category of
transactions.”)). On their face the claims are drawn to creating a budget,
which is an abstract idea relating to a fundamental economic practice. See
Alice, 134 S.Ct. at 2350.

CBM2014-00028
Patent 8,083,137 B2

13

idea in other Supreme Court cases and differentiates the claims of the ’137
patent as not falling into those categories. Id. at 8–10. Patent Owner argues
that “the claims of the ’137 patent are not drawn to a “fundamental
economic practice”—such as intermediated settlement or risk hedging—
“long prevalent in our system of commerce and taught in any introductory
finance course.” Id. at 8 (citing Ex. 2003 ¶ 53; Alice, 134 S. Ct. at 2356).
Further, Patent Owner argues there is no evidence the idea claimed was
“ever a common practice.” Id. at 9.
Patent Owner contends the claims of the ’137 patent are more like the
claims in the Diehr case, where the inventor “sought only to foreclose others
from using systems and methods that include the specific structural
limitations.” PO Resp. 10–11 (citing Diamond v. Diehr, 450 U.S. 175, 177–
178 (1981). “Similar to the inventors in Diehr, she sought only to foreclose
others from using systems and methods that include the specific structural
limitations of her claims.” Id. at 11. Therefore, Patent Owner asserts, the
claims of the ’137 patent are not directed to an abstract idea. Id.
Petitioner responds that the claims are directed to “tracking
transactions by categories of spending against a user’s own pre-set limit (i.e.,
budgeting by categories).” Pet. Reply 2. Petitioner contends Patent
Owner’s reliance on the Walton Declaration, that the claims are not directed
to a fundamental economic practice, is an unsupported conclusion. Id. In
addition, Petitioner asserts there is evidence that the idea of setting limits on
spending and tracking spending against those limits has been commonly
known. Id. at 3 (citing Chip Heath et al., Mental Budgeting and Consumer
Decisions, THE JOURNAL OF CONSUMER RESEARCH, Vol. 23, No. 1, 41, 45
(Jun. 1996), Ex. 1027; Ex. 1026, 96:25–27:5 and 98:19–99:5). Petitioner
CBM2014-00028
Patent 8,083,137 B2

14

contends the claimed idea is abstract, in part, because it involves mental
steps which can be performed by a human using pen and paper. Id. at 5–6
(citing cases). Concerning Patent Owner’s reliance on Diehr, Petitioner
argues the claims here neither involve a “technological problem” nor do they
effect a “transformation of an article . . . into a different state or thing.” Id.
at 6 (citing Diehr, 450 U.S. at 184).
The Supreme Court in Alice concluded that: “In any event, we need
not labor to delimit the precise contours of the ‘abstract ideas’ category in
this case.” 134 S. Ct. at 2357; accord Content Extraction, 776 F.3d at 1347.
Thus, we are not persuaded that the categories used by the Supreme Court in
past cases are exclusive and necessarily require us to reach the conclusion
that a claimed idea is, or is not, abstract.
We are not persuaded that the claims relate to a “technological
invention,” as in Diehr, but are rather directed to mental steps that can be
performed by a human. Petitioner rebuts Patent Owner’s contention that
there is no evidence of the mental steps having been previously performed
(PO Resp. 34) with evidence that spending limits by category and
notification concerning self-imposed spending limits have been known for
decades. Pet. Reply 3–4 (citing Ex. 1027,3 41, 43).
Further, the Background section of the ’137 patent acknowledges that
most key elements of the claims were known prior to the effective filing date
of the ’137 patent. The Background section lists as previously known
spending limits, categorizing expenses, and outstanding balance and
purchase information on credit cards as all available over the Internet.

3 Patent Owner’s Motion to Exclude is directed to Exhibit 1027, which is
discussed below.
CBM2014-00028
Patent 8,083,137 B2

15

Ex. 1001, 1:28–47; Tr. 45:24–25 (Patent Owner admits “automated financial
notification systems existed before the invention.”). That these concepts
were known previously supports our determination that the claims are
directed to an abstract idea that was known before the effective date of the
’137 patent.
We therefore conclude that the first step in the Alice/Mayo test is met.
C. Are the Claims Patentable Because They Include Limitations That
Represent Sufficiently Inventive Concepts?

The second step of our analysis requires us to determine whether the
claims do more than describe the abstract idea identified supra.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). In this
step we must examine the limitations of the claims to determine whether the
claims contain an “inventive concept” to “transform” the claimed abstract
idea into patentable subject matter. Id. “A claim that recites an abstract idea
must include additional features to ensure that the claim is more than a
drafting effort designed to monopolize the abstract idea.” Id. (quoting
Mayo, 132 S. Ct. at 1297) (internal quotation marks and brackets omitted).
Not every included feature will suffice. Those “additional features”
must be more than “well-understood, routine, conventional activity.” Mayo,
132 S. Ct. at 1298. See Ultramercial, 772 F.3d at 716 (“[E]ach of those
eleven steps merely instructs the practitioner to implement the abstract idea
with ‘routine, conventional activit[ies],’ which is insufficient to transform
the patent-ineligible abstract idea into patent-eligible subject matter.”
(Second alteration in original)); Content Extraction, 776 F.3d at 1348
(“[Patentee] conceded at oral argument that the use of a scanner or other
digitizing device to extract data from a document was well-known at the
CBM2014-00028
Patent 8,083,137 B2

16

time of filing, as was the ability of computers to translate the shapes on a
physical page into typeface characters.”); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)(holding that the subject of the patent
claims was “beyond question of ancient lineage”).
Patent Owner contends generally that the claims of the ʼ137 patent
“do not preempt the alleged abstract idea and are transformed by an
inventive concept.” PO Resp. 12–14. Indeed, Patent Owner contends that
the second step of Alice “focuses on the question of preemption—that is,
whether the claim would preempt or monopolize all uses of the recited
abstract idea.” Id. at 14–15; see Tr. 50:4–25. Patent Owner concludes
generally that because the claims are narrower than the abstract idea we
identified above, there is no preemption and the claims are patentable. Id. at
16–17 (citing Alice, 134 S. Ct. at 2354–55; Ex. 2003 ¶¶ 60–61).
We are not persuaded by Patent Owner’s arguments relative to all the
claims. PO Resp. 30–36. The arguments are no more than a denial that the
claims recite generic computer technology. Id. Petitioner argues generally
that “the asserted “features” amount to “implement[ing] the abstract idea . . .
on a generic computer” using “purely conventional” computer functions.
Pet. Reply 7 (citing Alice, 134 S. Ct. at 2359). Petitioner’s position is
supported by the Myers Declaration. (Exhibit 1005 ¶¶ 30–43). Dr. Myers
testifies that the computer components for the claimed limitations are well-
known and conventional. Pet. 20–21 (citing Ex. 1005 ¶¶ 49–50).
We have reviewed the Myers Declaration and are convinced by
Petitioner’s argument that the ʼ137 patent claims do not contain an
“inventive concept” sufficient to transform the claimed abstract idea into a
patentable invention. Stated another way, we determine that the claims fail
CBM2014-00028
Patent 8,083,137 B2

17

to do “significantly more than simply describe that abstract method.”
Ultramercial, 772 F.3d at 715. Instead, “the claims simply instruct the
practitioner to implement the abstract idea with routine, conventional
activity.” Id. Our analysis of individual claims follows.
1. Claims 1, 5, and 12
Patent Owner contends the claim 1 “limitations are common to claims
1, 5, and 12.” PO Resp. 17 and 23. Independent claim 1 is a system claim
including two elements: means for storing; and means for presenting.
Independent claims 5 and 12 are method claims; both recite a “storing” step
and a “causing communication step.” Petitioner alleges both functions of
claim 1 are performed by structural components in the specification that are
generic and conventional—i.e., a processor and a database. Pet. 20–21,
(citing Ex. 1005 ¶ 47 and 50).
Relying on our construction of the means-plus-function elements,
Patent Owner argues the algorithm steps shown in Figures 3A and 3B are
not conventionally known. PO Resp. 23; see Institution Dec. 5–8 (“means
for storing”), see above (“means for presenting”). Both constructions
include a “central processor” to perform the disclosed algorithm steps.
Patent Owner focuses our attention on four claim limitations. PO
Resp. 17. The first two limitations are “structural” and the last two are
“functional.” Id. at 17–18.
The structural limitations are (1) storing user profiles “keyed to a user
identity” in a database; and (2) user profiles that contain “user-selected
categories” to track spending within the categories and “user pre-set limits”
associated with the categories are physical structure of a computer system.
PO Resp. 17. Patent Owner argues that claim 1 includes an inventive step
CBM2014-00028
Patent 8,083,137 B2

18

because it is a computer system claim. Id. Patent Owner argues method
claims 5 and 12 include the same meaningful structural limitations because
the method steps are tied to a particular computer. Id.
Following Patent Owner’s numerical designations, Patent Owner next
relies on two functional claim limitations: (3) using the user-selected
categories to track transactions associated with the user identity; and (4)
communicating “transaction summary data,” including at least a “pre-set
limit,” to a receiving device. PO Resp. 17. Patent Owner argues these are
“meaningful functional limitations that define with specificity what the
computer system does.” Id. (citing Ex. 2003 ¶ 63).
With respect to the structural limitations 1 and 2 above, Petitioner
argues, in connection with the construction of “profile keyed to a user
identity” (limitation 1), that “nothing in the claims or specification describes
how the profile is ‘keyed to a user identity,’ let alone restricts this limitation
to the particular manner of keying Patent Owner describes.” Pet. Reply 14.
Citing to the lack of any description of structure in the Specification,
Petitioner argues the cited limitation is “purely functional.” Concerning the
“user selected categories” (limitation 2), Petitioner argues these are simply
selected by the user for budgeting purposes. Id. at 9–10 (citing Ex. 1001,
2:9–11, Ex. 1026, 87:2–6).
Petitioner contends functional limitation 3, regarding tracking
transactions, is a patent-ineligible “method of organizing human activity”
necessary for budgeting. Pet. Reply 10 (citing Ex. 1027, 41 (“[T]here are
two major parts of the budgeting process: setting a budget and tracking their
ongoing expenses against the budget.”)). Petitioner argues the “transaction
summary data” of limitation 4 is unpatentable as just manipulation of
CBM2014-00028
Patent 8,083,137 B2

19

information. Id. (citing buySAFE, Inc., 765 F.3d at 1355 (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”)).
As to claim 1, Patent Owner further argues, based on our construction
of the means-plus-function limitations, that “the detailed algorithm of
Figures 3A and 3B” are additional structure preventing the claim from
preempting the abstract idea.” PO Resp. 23–24. Petitioner argues that
Patent Owner’s expert was unable to state how the algorithm of Figures 3A
and 3B would be developed into a specialized computer algorithm. Pet.
Reply 11 (citing Ex. 1026 at 107:9–19). Petitioner argues the identified
“algorithms” are conventional steps of the functions performed. Id.
We are persuaded that these are conventional elements. Ex. 1005
¶ 26; see, e.g., Ex. 1026, 128:11–14. The elements are either well known or
mental steps performed by a human. Routine or conventional use of a
computer, or well-known computer related technologies, e.g., processors,
databases, and the Internet, does not invoke an “inventive concept” and does
not make a claim patent eligible. See Ultramercial, 772 F.3d at 716.
The “algorithms” of Figures 3A and 3B are steps set out in a flow
chart. Ex. 1001, Figs. 3A and 3B. The components for accomplishing the
steps, a telephone, a database, a processor, and the Internet, are well known.
See Pet. 3. Patent Owner’s unsupported arguments do not persuade us that
disclosure of the algorithm alone is sufficient structure to be meaningfully
inventive concepts under step 2 of Alice.
Patent Owner argues that preemption is part of step 2 of Alice and that
“preemption is the fundamental test of finding an inventive concept.” Tr.
50:13–25. We agree with Petitioner that the “analysis of preemption is not
CBM2014-00028
Patent 8,083,137 B2

20

undertaken separately from the Alice framework.” Pet. Reply 13. We are
not persuaded that the absence of preemption necessitates a finding of
patentable subject matter.
In addition to the preceding arguments, Patent Owner contends that
claims 5 and 12 are patent eligible because they include as an additional
limitation “causing communication . . . to a receiving device.” PO
Resp. 25–26 (citing Ex. 2003 ¶¶ 95–96). Claim 12 adds that the summary
data is presented in a table. We are not persuaded that the alleged “special
purpose computer” required to perform these functions adds any inventive
concept. We are persuaded by Petitioner’s evidence that the claimed step is
anything other than routine use of computer technology. See Ultramercial,
772 F.3d at 716.
Based on this record, Petitioner has shown by a preponderance of the
evidence that claims 1, 5, and 12 are not patent eligible under § 101.
2. Claims 2–4
Claims 2–4 depend directly or indirectly from system claim 1. Claim
2 recites that the user-selected categories include “one or more purchasable
items.” Claim 3, which depends from claim 2, recites assigning the
purchasable items to a “natural” or “user specified” category. Claim 4
recites at least one category is associated with one or more “sub-user
identities.”
Patent Owner argues patent eligibility based on a “special purpose
computer” and absence of preemption. PO Resp. 24–25. We found these
arguments unconvincing with respect to claim 1. The additional limitations
are mental steps associated with human activity in the nature of fundamental
economic practices. In other words, the additional limitations are not an
CBM2014-00028
Patent 8,083,137 B2

21

inventive concept. We also agree with Petitioner that the additional subject
matter of these claims is “basic calculation, storage, and transmission
functions” performed on virtually any computer. Pet. Reply 10 (citing Alice,
134 S. Ct. at 2360).
Based on this record, Petitioner has shown by a preponderance of the
evidence that claims 2–4 are not patent-eligible under § 101.
3. Claims 6–11 and 13–18
Claims 6–11 depend directly or indirectly from method claim 5.
Claims 6–8 add additional functionality to the “user-selected categories” of
claim 5. Claims 9–11 specify the type of “communication,” e.g., “network,”
“wireless,” or “cellular,” step of claim 5. Claims 13–18 depend from claim
12 and recite the same limitations of claims 6–11 summarized above. PO
Resp. 27–28.
Relying on the Walton Declaration, Patent Owner contends “the
additional features recited by claims 6–11 require the special purpose
computer of claim 5 to be further programmed to be able to perform the
additional recited functions.” PO Resp. 27 (citing Ex. 2003 ¶ 75).
Mr. Walton testifies the claims do not preempt the abstract idea. Ex. 2003 ¶
75. We considered these arguments above and did not find them
convincing. We are shown no additional evidence that convinces us to
change our determination for these claims.
Patent Owner makes no separate argument regarding claims 13–18
beyond what was presented in connection with claim 12, i.e., presenting the
summary data in a table. PO Resp. 28. Again, we are not convinced
because this additional limitation is not an inventive concept.
CBM2014-00028
Patent 8,083,137 B2

22

Based on this record, Petitioner has shown by a preponderance of the
evidence that claims 6–11 and 13–18 are not patent eligible under § 101.
4. Claims 19–24
Independent system claim 19 includes the “means for listing” element.
In our construction of that term we found no associated algorithm under §
112 paragraph 6.
Patent Owner relies on arguments we found unpersuasive in
connection with claims 1, 5, and 12. PO Resp. 28–29. In addition, Patent
Owner cites to the Walton Declaration as support. Id. (citing Ex. 2003 ¶ 79).
Mr. Walton testifies that the “listing financial transactions” and “presenting
in association with an individual user-selected category” are unique
functions because, before the invention, banks stored transactions at the
account level only and not in “user-selected categories.” Ex. 2003 ¶ 79.
The question under Alice is whether the abstract idea as proposed by
Patent Owner, i.e., using categories as opposed to accounts, is an inventive
step. We agree with Petitioner that the alleged uniqueness is simply
electronic record keeping and not an inventive concept. PO Reply 12 (citing
Alice, 134 S. Ct. at 2359; see also CyberSource, 654 F.3d at 1370, 1375).
Based on this record, Petitioner has shown by a preponderance of the
evidence that claims 19–24 are not patent eligible under § 101.
5. Contention that the Claimed Methods were not Known
Patent Owner further challenges our determination on the basis that
the claims are not just applying conventional computer technology to a
manual process. PO Resp. 31–43. Patent Owner argues that “specific
structures and functions required by the claims” are what must be found
“conventional.” Id. at 32. Patent Owner claims there is no evidence that the
CBM2014-00028
Patent 8,083,137 B2

23

methods were previously performed manually. Id. at 34. As shown in
Exhibit 1027, as well as admitted in the Specification and during oral
argument (Ex. 1001, 1:28–47; Tr. 45:24–25), the claimed method was
known and the addition of conventional computer components does not
establish the inventive concept. Thus, Patent Owner’s arguments are not
persuasive.
6. Contention that not Every Limitation of Claims 1, 4, 5, 12, 19, and
21–23 is Addressed

Patent Owner contends that Petitioner failed to address every
limitation and some of those limitations include the “something more”
required for patent eligibility under step 2 of Alice. Pet. 36–41. We are not
convinced by this argument. We are persuaded, instead, that all the claims
of the ’137 patent are directed to implementing a mental process of tracking
transactions by category on a generic computer. None of Patent Owner’s
cited limitations change the basic unpatentable abstract idea of categorizing
a user’s financial transactions into patentable subject matter. None of the
added elements are inventive. There is persuasive evidence from
Petitioner’s expert that the patent claim elements were conventional.
Ex. 1005 ¶¶ 26–28, 30–31, 35–39, and 41–43.
D. Patent Owner’s Argument that the ʼ137 Patent is Not a Covered
Business Method Patent

Patent Owner repeats its contentions from the Preliminary Response
that the ’137 patent is not a covered business method patent subject to
review. PO Resp. 45. This argument was addressed in the Institution
Decision at pages 13–16, and we adopt that analysis here. Patent Owner
contends that: (1) Petitioner has not shown that it is more likely than not that
CBM2014-00028
Patent 8,083,137 B2

24

at least one claim is unpatentable under § 101; (2) the claims have not been
shown to be directed to a technological invention under 37 C.F.R.
§ 42.301(b); and (3) § 101 is not a ground “specified in part II [of Title 35]
as a condition for patentability,” as required by 35 U.S.C. § 321(b).4 PO
Resp. 46.
Patent Owner argues additionally that the Petition did not establish
that: each of the claims is directed to an abstract idea; the abstract idea
identified is not abstract; and the identified idea does not relate to all claims.
PO Resp. 47. We determined above, in II.B., that the claims are directed to
an abstract idea.
E. Patent Owner’s Arguments that Section 101 is not a Proper
Ground upon Which a Covered Business Method Patent Review
May Be Maintained

This argument was addressed in the Institution Decision at pages 16–
17. Based on statutory construction, Patent Owner argues that covered
business method review is available under grounds that could be asserted
under § 321(b), which permits post-grant review on any
ground that could be raised under paragraph (2) or (3) of § 282(b). PO
Prelim Resp. 54–55. The two cited sections of § 282(b) reference only
§§ 102 and 103. Id. at 55. Further, Patent Owner asserts that the Board may
not consider subject matter eligibility challenges under 35 U.S.C. § 101 as
part of a covered business method patent review because § 101 is not a
“condition for patentability.” PO Resp. 56–57.

4 This argument (3) is addressed in II.E. below.
CBM2014-00028
Patent 8,083,137 B2

25

As we stated in our Institution Decision, the AIA5 makes it clear that
Congress intended the Office to consider challenges brought under § 101 for
post grant review, covered business method review program employs the
same standards and procedures as the post grant review program. AIA §
18(a)(1). Institution Dec. 17. As we determined in our Institution Decision,
the specified purpose of the covered business method review program was to
allow the Office to revisit business method patents and evaluate whether the
patents were too abstract to be patentable under § 101. Id. For the reasons
stated in our Institution Decision (at 16–17),we are not convinced by Patent
Owner’s argument.
F. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude Petitioner’s Exhibit 1027 filed with
Petitioner’s Reply. PO Mot. Exclude 1. Patent Owner contends the Petition
failed to establish the ’137 patent was directed to a fundamental economic
practice or other type of abstract idea and it is improper for Petitioner to
submit evidence on that issue as part of its Reply. Id. at 3–4.
Petitioner argues that Exhibit 1027 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, Mr. Walton, 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.” Opp. Mot. Exclude (citing PO Resp. 9;
Ex. 2003 ¶ 53)(emphasis in original). Petitioner notes that its evidence of
the ’137 patent being directed to an abstract idea is based on the testimony
of its expert, Dr. Myers. Id. at 3 (citing Ex. 1005 ¶¶ 30–43).

5 Leahy-Smith America Invents Act, Pub. L. No. 112–29 (“AIA”).
CBM2014-00028
Patent 8,083,137 B2

26

Patent Owner filed a Reply which argues that admitting Exhibit 1027
into evidence denies Patent Owner the opportunity to respond adequately,
violates principals of fairness, and unduly prejudices Patent Owner.
Paper 46 (“PO Reply Mot. Exclude”).
Exhibit 1027 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. We relied on the expert testimony of Dr. Myers to
establish that an abstract idea was known and disclosed in the ’137 patent.
See Ex. 1005 ¶¶ 25–26, 30–43. In particular, we rely on portions of the
Myers Declaration, which was filed with the Petition, and those portions do
not cite Exhibit 1027, which was filed with Petitioner’s Response.
In any event, Patent Owner’s expert’s contention raised an evidentiary
response to Petitioner’s argument that Petitioner was entitled to rebut. Nor
has Patent Owner been prejudiced, for it had knowledge of Petitioner’s
position and argued it in the Response. We are persuaded that Exhibit 1027
was proper rebuttal.
We, therefore, deny the Motion to Exclude.
III. CONCLUSION
We determine that by a preponderance of the evidence Petitioner has
demonstrated that claims 1–24 of the ʼ137 parent are not patentable because
they are directed to ineligible subject matter under 35 U.S.C § 101.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–24 of U.S. Patent No. 8,083,137 have been
shown to be unpatentable;
CBM2014-00028
Patent 8,083,137 B2

27

FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that this is a Final Decision. Parties to the
proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

CBM2014-00028
Patent 8,083,137 B2

28

PETITIONER:
DONALD STEINBERG
MONICA GREWAL
Wilmer Cutler Pickering Hale and Dorr LLP
don.steinberg@wilmerhale.com
monica.grewal@wilmerhale.com

PATENT OWNER:
JOHN R. KING
BRENTON BABCOCK
Knobbe, Martens, Olson & Bear, LLP
2jrk@knobbe.com
2brb@knobbe.com

DONALD COULMAN
dcoulman@intven.com