Fidelity National Information Services, Inc.v.CashEdge, Inc.

Patent Trial and Appeal Board

Dec 22, 2014

09665919 (P.T.A.B. Dec. 22, 2014)

Trials@uspto.gov
571-272-7822  
Paper 49
Date Entered: December 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

METAVANTE CORPORATION and
FIDELITY NATIONAL INFORMATION SERVICES,
Petitioner,

v.

CASHEDGE, INC.,
Patent Owner.
____________

Case CBM2013-00028
Patent 7,383,223 B1
____________

Before BRIAN J. McNAMARA, BARRY L. GROSSMAN, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

FINAL WRITTEN DECISION
37 C.F.R. § 42.73

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BACKGROUND
On December 23, 2013, we entered a Decision to Institute a covered
business patent review, Paper 15 (“Dec. to Institute”), of U.S. Patent No.
7,383,223 B1 (“the ’223 Patent”) on the grounds that claims 1–8 of the ’223
Patent are unpatentable under 35 U.S.C. § 101 and 35 U.S.C. § 112.
In this Final Written Decision, we hold that claims 1–8 of the ’223
Patent are unpatentable on both grounds.
THE ’223 PATENT (EXHIBIT 1001)
The ’223 Patent concerns the transfer of funds between accounts at
different financial institutions, where the first and second accounts are held
commonly. Ex. 1001, col. 1, ll. 6–8. Data is exchanged among multiple
financial institution servers coupled to a data communications network, such
as the Internet. Id. at col. 4, ll. 13–19. Each of the financial institution
servers typically is associated with a particular financial institution and
stores data, such as customer account data, for that financial institution. Id.
at col. 4, ll. 56–59. Figure 2 of the ’223 Patent, reproduced below, illustrates
an example of the interaction among a pair of financial institution servers, a
market information service server, a client computer, and a financial
management system.
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In Figure 2, each financial institution server 132, 134 is associated
with a different financial institution. Id. at col. 5, ll. 30–31. Client computer
136 accesses the financial institutions over corresponding communication
links 142, 144, respectively. Via communication link 146, client computer
136 can also access financial management system 138, which is coupled to
the financial institution servers, to have the system automatically initiate the
transfer of funds between accounts. Id. at col. 5, ll. 37–50. The user may
direct the financial management system to analyze and make
recommendations regarding various accounts, e.g., asset accounts and debt
accounts. Id. at col. 13, ll. 20–22, 33–35. After determining the best
adjustment of the user’s accounts, a procedure contacts the appropriate
financial institutions and/or payment networks and executes the financial
transfers necessary to implement automatically the recommended
adjustments to the user’s accounts using various networks and wire transfers.
Id. at col. 14, ll. 32–49.
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ILLUSTRATIVE CLAIM
1. A method for executing a funds transfer in response to a
user input, the method comprising:
receiving an electronic funds transfer request from the
user comprising an identification of a source account, an
identification of a destination account and a transfer amount;
in a first transaction, a third-party financial management
system executing a debit transaction from the source account at
a first financial institution, comprising withdrawing funds from
the source account, wherein the source account is owned by the
user, the third-party system having no financial relationship
with the user, and depositing the funds from the debit
transaction in an intermediate account, wherein the intermediate
account is not owned by the user; and
in a second transaction, the third-party system executing
a debit transaction comprising withdrawing the funds from the
intermediate account, and depositing the funds in a second
account owned by the user at the second financial institution,
wherein the amount of funds deposited equals the transfer
amount.
Claims 2–5 further limit claim 1 by reciting the type of network used
for the transactions. Claim 6 recites using a wire transfer. Claim 7 recites
that the withdrawal of the funds from the source account in claim 1
comprises a loan from the source account. Claim 8 recites opening the
second account and funding the second account with funds from the deposit
transaction.
CLAIM CONSTRUCTION
Petitioner did not propose a construction of “financial management
system.” In its Preliminary Response, Paper 10 (“Prelim. Resp.”), Patent
Owner argued that one of ordinary skill would have understood that a
“financial management system” is a specially programmed computerized
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system that conducts financial transactions in response to directions from the
user. Prelim. Resp. 9.1 In construing “financial management system” to
mean one or more elements acting together to execute debit and deposit
transactions, the Decision to Institute noted that financial management
system 582 in Figure 16 of the ’223 Patent may perform functions similar to
those shown for system 220 in Figure 4, need not be associated with any
financial institution, and, if not part of a payment network, institutes a
financial transaction by requesting an authorized financial institution to
execute the transaction. Dec. to Institute 7.
The Patent Owner Response, Paper 19 (“PO Resp.”), contends that the
construction we adopted in the Decision to Institute does not appreciate fully
that the claimed financial management system (“FMS”) must be a specially
programmed computer operating over one or more communications
networks. PO Resp. 26. In support of its position, Patent Owner cites the
declaration of inventor Venkatachari Dilip, Ex. 2004 (“Dilip Decl.”) ¶ 10
(stating that claim 1 requires an FMS that comprises one or more complex
computers that must be specially programmed to perform two transactions in
response to an electronic funds transfer (“EFT”) request). Patent Owner also
cites the declaration of Elliott McEntee, Ex. 2003 (“McEntee Decl. 1”) ¶89
(stating that, based on the specification, one of ordinary skill would
understand the FMS to be a specially programmed computerized system that
conducts financial transactions for the user in response to directions from the
user). In addition, Patent Owner cites the declaration of Dr. David
Cummings, Ex. 2008 (“Cummings Decl.”) ¶ 67 (asserting that the

1 It appears that Patent Owner did not assert a construction for “financial
management system” in the corresponding litigation. Ex. 1010, 11–16; Ex.
1014, 26–32.
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specification shows “the claimed financial management system is a
specialized computer system that is able to initiate electronic funds transfers
by exchanging electronic messages with users and with the appropriate
financial institutions over the appropriate network(s)”).
Claim 1 recites (i) receiving an electronic funds transfer request
identifying a source account, a destination account and a transfer amount,
(ii) in a first transaction, a third party financial management system
executing a debit transaction by withdrawing funds from the user’s source
account and depositing those funds into an intermediate account not owned
by the user, and (iii) in a second transaction, the third party financial
management system executing another debit transaction by withdrawing the
funds from the intermediate account and depositing the same amount of
funds into the user’s account at a second financial institution. None of the
limitations in claim 1 requires any particular computer, or any special
programming other than programming to communicate with other
processors and carry out two debit and deposit transactions, one after the
other. We agree with the argument advanced in Petitioner’s Reply, Paper 28
(“Pet. Reply”) that, rather than a specially programmed computer, the
capabilities of the FMS, as disclosed in the specification, are those of an
ordinary computer, i.e., the capability of initiating the automatic transfer of
funds, an interactive communications link, and the ability to store and
retrieve data, and that the claims do not recite a structure beyond that of a
general-purpose computer. Pet. Reply 5.
Patent Owner also contends that our construction of “electronic funds
transfer” to mean the transfer of funds between accounts over a network
using electronic devices is incomplete. According to Patent Owner, a person
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of ordinary skill would understand that an EFT is a standardized process and
that computers and associated software participating in an EFT transaction
must conform to the specifications for the particular payment network being
used. Cummings Decl., Ex. 2008 ¶ 65. Patent Owner’s construction does
not specify any particular standard, nor does it accommodate approaches that
may not be the subject of a specific standard.
The only appearance of the term “electronic funds transfer” in the
’223 Patent is in the first limitation of claim 1, i.e., “receiving an electronic
funds transfer request from the user comprising an identification of a source
account, an identification of a destination account and a transfer amount.”
The terms “electronic funds transfer” or “EFT” do not appear in the
specification. The first limitation of claim 1 does not limit the electronic
funds request to a standardized request. All that is required is that the user
provides a source, destination, and amount. The construction we adopted
does not preclude compliance with a standard, but there is nothing in claim 1
that requires such compliance. In practice, communications on networks
generally must conform to certain standards; for example, communications
over the Internet conform to certain protocols. In addition, different
financial systems may employ different information formats. These do not
change the nature of the EFT, particularly as recited in claim 1, where all
that is required is the source, destination, and amount.
TECHNOLOGICAL INVENTION
The Patent Owner Response contends that the Decision to Institute did
not recognize the technological nature of the problem being solved—
performing computer driven actions to cause a particular sequence of
electronic fund transfers. PO Resp. 16–17. After noting limited alternatives
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were available to customers at the time of the invention, id. at 17–18, Patent
Owner argues that electronic funds transfers between accounts at two
different institutions present unique issues because of the highly technical
nature of electronic payment networks, id. at 19. Patent Owner argues that
the procedures for electronic funds transfers “are conceptually and
procedurally different than procedures based on non-electronic transfers.”
Id. According to Patent Owner, the ’223 Patent describes and claims a
method in which the FMS automatically coordinates funds transfers at the
request of a user, is connected to one or more financial networks, and is
configured to sponsor or initiate transfers on behalf of an individual. Id. at
20.
A technological invention is determined by considering whether the
claimed subject matter as a whole recites a technical feature that is novel and
unobvious over the prior art, and solves a technical problem using a
technical solution. 37 C.F.R. § 42.301(b). The invention recited in claim 1
is drawn to using an intermediate account to transfer funds and is not a
technological invention. None of the procedures resulting from the asserted
highly technical nature of electronic funds transfers is recited in claim 1.
Claim 1 recites only that, after receiving an electronic funds transfer request,
in one transaction a third party financial management system withdraws
funds from the customer’s source account and deposits those funds in an
intermediate account not owned by the user and, in a second transaction, the
third party financial management system withdraws the funds from the
intermediate account and deposits those funds in the customer’s second
account at another institution.
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Claim 1 recites no technical features or limitations on the financial
management system. While a financial management system would be
required to format information in a format compatible with the source and
destination systems and implement various network protocols, compliance
with such protocols is conventional and routine. The claims recite no
technical limitations concerning these requirements. Thus, we conclude that
the claims of the ’223 Patent are not drawn to a technological invention.
§101 SUBJECT MATTER ELIGIBILITY
Petitioner argues that claim 1 covers the abstract idea of transferring
funds between accounts, that the claims are not limited to any particular
computer or computer-related environment, and that the claims invoke no
unconventional software, equipment, tools, or processing capabilities. Pet.
13. Patent Owner argues that claims recite patent eligible subject matter
because the financial management system, described in the ’223 Patent as
being a specially programmed computer that performs specialized
operations, is instrumental and integral to the steps of claim 1. PO Resp.
21–22. Noting that the ’223 Patent contains detailed explanations of the
particular software modules that may be included in the financial
management system, Patent Owner contends that the functionality of the
claimed financial management system differentiates it from a general
purpose computer. Id. at 23.
In Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014),
the Supreme Court applied a two-step test for determining whether a claim
recites patentable subject matter. First, we determine whether the claims at
issue are directed to one or more patent-ineligible concepts, i.e., laws of
nature, natural phenomenon, and abstract ideas. Id. at 2355 (citing Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96
(2012)). If so, we then consider whether the elements of each claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application to ensure that the patent in practice
amounts to significantly more than a patent upon the ineligible concept
itself. Id.   
Thus, the first step in our analysis is to consider whether the claims of
the ’223 Patent, which are drawn to the use of an intermediate account
owned by a third party to transfer funds, are directed to a patent ineligible
concept. We begin by noting that the ownership of the intermediate account
is a legal concept or abstraction that does not convert otherwise ineligible
subject matter to patent eligible subject matter. In Alice, the Supreme Court
considered claims drawn to a method of exchanging financial obligations
between two parties using a third-party intermediary to mitigate settlement
risk and concluded that on their face, claims drawn to the concept of an
intermediated settlement, like the hedging in Bilski, are “abstract idea[s]”
beyond the scope of § 101. Id. at 2355–57.2 The claims of the ’223 Patent
are drawn to a similarly abstract idea, i.e., transferring funds from one
account to another using a third-party intermediary. The concept of
transferring funds from one account to another through an intermediary, as
recited in the claims of the ’223 Patent, is a fundamental economic practice.

2 In Bilski v. Kappos, 561 U.S. 593 (2010), the Court found unpatentable, as
abstract ideas, claims drawn to hedging against the financial risk of
commodity price fluctuations where the claims recited the steps of initiating
a series of financial transactions between commodity providers and
consumers, identifying market participants with a counter-risk for the same
commodity, and initiating a series of risk balancing transactions between
those market participants and the commodity provider.
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Thus, in the first step of the analysis under 35 U.S.C. § 101, we conclude
that claim 1 of the ’223 Patent recites an abstract method.
The second step in the analysis requires us to determine whether the
claims do significantly more than simply describe that abstract method.
Ultramercial, Inc. v. Hulu, LLC, 772 F. 3d 709, 715 (Fed. Cir. 2014) (citing
Mayo, 132 S.Ct. at 1297). Patent Owner argues that “[w]hile the use of an
intermediate account is a requirement of the claims, it is not the only
requirement, and the claim’s recitation of an intermediate account cannot be
the basis for a determination that claims are not patent eligible.” PO Resp.
40. Patent Owner contends that claim 1 is not directed to an abstract concept
because of the structural limitations of the claims. Id. at 39. Patent Owner
focuses on the recitation that the claimed method includes transactions
performed by a financial management system. Id. at 35–36. Patent Owner
also asserts that, because claim 1 recites receiving an EFT request, the
request must include data fields, and that a person of ordinary skill in the art
would understand that an EFT is a standardized process requiring the use of
computers and software over one or more networks. Id. at 36–37.
Specifying the amount of funds to be transferred from a source to a
destination account, whether specified in a data field, computer address, or
through some other electronic structure, is an essential element in every
transaction. Not only are such limitations not recited in claim 1, they are not
the subject matter of the claimed invention. Claim 1 is drawn to the abstract
concept of using a third party intermediary to perform the transaction.
Claim 1 of the ’223 Patent recites no specific limitations on the receipt
of the EFT request or the structure of the financial management system. As
an example of the FMS having unique software-enabled functionality that
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differentiates it from a general purpose computer without specialized
software or hardware, Patent Owner cites the FMS capability of performing
electronic functions on behalf of the user, including communication with
other computers via one or more networks. Cummings Decl., Ex. 2008
¶¶ 49–56. Even if we were to read into claim 1 the limitations Patent Owner
attempts to incorporate from the specification, which we do not, the
introduction of a computer into the claims does not alter our analysis at
step 2. Claims that simply instruct the practitioner to implement the abstract
idea with routine, conventional activity do not transform an abstract idea
into patent eligible subject matter. Ultramercial, 772 F. 3d at 716. Claim 1
simply instructs the practitioner to implement the funds transfer using a
financial management system, without further reciting features of that
financial management system.
Patent Owner argues that the networking capability of the financial
management system is fundamental to the claimed process of initiating or
sponsoring the required sequence of electronic transfers. PO Resp. 24. In
DDR Holdings, LLC v. Hotels.com, L.P., 2014 WL 6845152, at *12 (Fed.
Cir. Dec. 5, 2014), the Federal Circuit found patent-eligible claims drawn to
retaining website visitors by manipulating interactions with the Internet to
yield a desired result that overrides a routine and conventional sequence of
events. In contrast, as previously discussed, the sequence in claim 1 of the
’223 Patent is to withdraw the funds from the user’s source account, and
deposit them into an intermediary account, not owned by the user, then
withdraw the funds from the intermediary account and deposit them into the
user’s destination account. Even if the financial system is construed to
require implementing complex protocols to access and transfer the data
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among the accounts, the implementation of those protocols reflects nothing
more than implementing the abstract idea of transferring funds thorough an
intermediate account with routine, conventional activity. Such an
implementation does not transform the abstract idea into patent eligible
subject matter.
Patent Owner contends that each of claims 2–6 demonstrates that the
financial management system is programmed specially to perform electronic
payment transactions over networks. PO Resp. 42. According to Patent
Owner, because claim 2 recites that the funds are deposited in the second
account via a second payment network, the FMS of claim 1 is a particular
system that must be able to sponsor or initiate EFT transactions for multiple
payment networks. Id. Patent Owner argues that the electronic FMS is a
specially programmed machine that must have specialized software to create
properly formatted EFT requests to accommodate using an automatic
clearinghouse (ACH) network, as recited in claim 3, id. at 43, the NYCE and
STAR networks recited in claims 4 and 5, id. at 44, and wire transfers
recited in claim 6, id. at 45.
Each of claims 2–6 recites an end-result, i.e., withdrawing and
depositing funds using the recited networks. Claims 2–6 do not recite any
specific transformation steps that are performed by the financial
management system. For example, the fact that the FMS follows the
operating rules of the well-known ACH network as described in the second
McEntee Declaration, Ex. 2007 ¶¶ 34–47, does change the fact that claim 1
and the claims depending from claim 1 are drawn to using a third-party
intermediary to effect the transfer of funds. Although the second McEntee
Declaration discusses well-defined data formats and rules in ACH, Ex. 2007
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¶¶ 40–41, steps to perform transformations to comply with these rules are
not recited in the claims. Thus, claims 2–6 recite limitations that amount to
nothing more than computers doing what computers do routinely—
reformatting information to accommodate known systems and networks. As
the Federal Circuit noted in Ultramercial, any transformation from the use
of computers or the transfer of content between computers is merely what
computers do and does not change the analysis. Ultramercial, 772 F. 3d at
717. Thus, we conclude that claims 1–6 recite subject matter that is not
eligible for patent protection under 35 U.S.C. § 101.
We reach the same conclusion concerning claim 7, which recites that
the withdrawal from the source account comprises a loan, and claim 8,
which recites that depositing the funds in the second account comprises
initially funding the second account. The legal status of the funds in the first
account as a loan, and the fact that the deposit into the second account is the
first deposit into the account, does not change the analysis.
In consideration of the above, we conclude that claims 1–8 do not
recite patent-eligible subject matter under 35 U.S.C. § 101.
CHALLENGES UNDER FIRST PARAGRAPH OF 35 U.S.C. § 112
As we noted in our Decision to Institute, the claims originally filed in
the application that led to the ’223 Patent were amended to include the
intermediate account not owned by the user. Dec. to Institute 10. The term
“intermediate account” is not used in the specification. Id. As Patent Owner
correctly points out, this is not the end of our inquiry because “the
description requirement does not demand . . . that the specification recite the
claimed invention in haec verba.” Ariad Pharm., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). Instead, the focus of our
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inquiry here, as it was in the Decision to Institute, is “whether the disclosure
of the application relied upon reasonably conveys to one of ordinary skill in
the art that the inventor had possession of the claimed subject matter as of
the filing date.” Id. at 1351 (emphasis added).
As we noted in our Decision to Institute, the discussion of Figures 17
and 18 refers to funds transfers among multiple institutions, but nowhere
does the ’223 Patent disclose the use of an intermediary account not owned
by the user. Dec. to Institute 11–13. Patent Owner cites the discussion of
Figure 18 at column 19, lines 6–29, as disclosing two transactions executed
to transfer funds electronically from an account at a first financial institution
to an account at a second financial institution. PO Resp. 53. This issue has
never been in dispute. Dec. to Institute 11–12. What is in dispute is whether
the ’223 Patent discloses to one of ordinary skill that the inventor was in
possession of the claimed feature of using an intermediate account not
owned by the user—a feature that is not discussed in the patent.
Figure 18 illustrates an environment for transferring of funds from a
first financial institution connected to a first payment network to a second
financial institution connected to a second payment network through a third
financial institution connected to both networks and to which the FMS is
coupled. The ’223 Patent does not disclose any requirement that the FMS be
owned or operated by the third financial institution. The description of
Figure 18 in the ’223 Patent states:
The fund transfer instruction may include the account
information and financial institution information of the
accounts involved, the value to be transferred, and other
information. In this example, the transfer instruction is
separated into two different transactions: a first transaction that
withdraws the appropriate funds from an account at one
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financial institution and a second transaction that deposits those
funds into an account at the second financial institution.
Although two different transactions occur, the fund transfer
appears as a single transaction to the user or account holder.
Ex. 1001, col. 19, ll. 19–29.
Although this description mentions the accounts at the first and
second financial institutions, there is no mention of an intermediary account
at the third institution, or a requirement that such an account not be owned
by the user. Patent Owner contends the ’223 Patent discloses two debit
transactions, each of which must be paired with a credit, such that the funds
debited from the source account must be credited somewhere and the funds
credited to the destination account must come from somewhere. PO Resp.
56. As discussed below, the disclosure in ’223 Patent does not demonstrate
that on the filing date the inventor possessed the claimed invention in which
the “somewhere” is an intermediate account not owned by the user.
Although claim 1 is not limited to any particular network, Patent
Owner references extensively the testimony of Mr. McEntee concerning his
opinion about what a person of ordinary skill would know concerning the
rules of operation of the ACH network. PO Resp. 57–62. Although the
ACH network is mentioned as one of several exemplary networks that may
be used by the FMS to access the user’s accounts, the ACH rules of
operation are not discussed in the ’223 Patent. Ex, 1001, col. 14, ll. 42–44,
col. 17, ll. 15–17. Patent Owner’s argument is that, notwithstanding the
absence of any discussion of an intermediary account not owned by the user
or any discussion of the ACH network in the ’223 Patent, one of ordinary
skill would understand that the inventor possessed the claimed subject
matter, i.e., transferring funds from a user’s account at a first institution to a
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user’s account in a second institution using an intermediate account not
owned by the user. However, the mention of the ACH networks and other
networks demonstrates only that the inventor was aware of the existence of
such networks. It does not demonstrate that the inventor was aware of the
types of transactions discussed in the McEntee Declaration or the ACH rules
associated with them. Mr. McEntee’s declaration is extrinsic evidence that
does not demonstrate that the inventor had possession of an invention that is
not described in the specification.
Petitioner contends that by arguing that certain aspects of the claims
are necessarily present in the specification, Patent Owner invokes the law of
inherency. Pet. Reply 11. Petitioner contends that Mr. McEntee has
assumed only one of several possible payment networks and that claim 1 is
not limited to the ACH network. Id. at 12. Petitioner further argues that the
limitation concerning an intermediate account not owned by the user is not
necessarily present in the specification. Id. at 12–14. In support of its
position, Petitioner notes the cross examination of Mr. McEntee. Id. at 13–
14 (citing Ex. 2027, 151:13–153:6, 147:6–147:8). Explaining how Bank of
America would transfer funds from its account at PNC Bank to its account at
Wells Fargo, Mr. McEntee stated:
So what Bank of America is going to do is create an
ACH debit. Okay? And the ACH debit will go to PNC. The
money would be debited by PNC to Bank of America’s
account. So basically PNC is going to take the money out of
Bank of America’s account, that Bank of America has at PNC.
Bank of America would be credited. Okay? So now the
second part of the process is, Bank of America now has the
money that it pulled out of PNC from its account, its account.
So they’re now going to create an ACH credit that’s going to
move the money from Bank of America to Bank of America’s
account at Wells Fargo. Which is exactly what the ’223 patent
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describes.

Ex. 2027, 152:15–153:6.
Thus, as Petitioner points out, when asked if a financial institution
could move its own money at another financial institution through its own
account and into its account at yet another financial institution, such that the
same institution owned every account, including the intermediate account,
Mr. McEntee testified “[that] is exactly what the ’223 Patent describes.” Id.
Claim 1 recites that the FMS have no financial relationship with the
user, but does not recite that the account not owned by the user be owned by
the owner of the FMS. Because Patent Owner’s expert testified that the ’223
Patent exactly describes an ACH transaction in which the intermediate
account is owned by the same party that owns the first and second accounts,
rather than a third party, we conclude that the mention of the ACH networks
as examples of networks in the ’223 Patent does not demonstrate to one of
ordinary skill that the inventor was in possession of the invention as recited
in claim 1.
MOTION TO EXCLUDE
Having timely objected, Patent Owner moves to exclude certain
paragraphs of the rebuttal testimony of Petitioner’s expert Michael Shamos,
Ex. 1018 (“Shamos Decl.”), as beyond the scope of the testimony of Patent
Owner’s experts. Paper 40 (“Mot. to Exclude”). Petitioner identifies subject
matter the challenged paragraphs of the Shamos Declaration rebut. Paper 41
(“Opp. to Mot. to Exclude”).
We do not cite or rely on the testimony in the Shamos Declaration in
reaching our decisions in this proceeding. Therefore, Patent Owner’s
Motion to Exclude is dismissed as moot.
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SUMMARY
For the reasons discussed above, we conclude that claims 1–8 do not
recite patent-eligible subject matter. We further conclude that claims 1–8 do
not comply with the written description requirements of 35 U.S.C. § 112.
For these reasons, we conclude that claims 1–8 are unpatentable.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–8 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a final written decision,
the 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.

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PETITIONER:
E. Robert Yoches
bob.yoches@finnegan.com

Erika Arner
erika.arner@finnegan.com

Stephen Kabakoff
stephen.kabakoff@finnegan.com

Jason Melvin
jason.melvin@finnegan.com

Jeffrey Berkowitz
jeffrey.berkowitz@finnegan.com

PATENT OWNER
Jeffrey Kushan
jkushan@sidley.com

Dale Nixon
dnixon@sidley.com