Fidelity National Information Services, Inc.v.CheckFree Corporation

Patent Trial and Appeal Board

Dec 22, 2014

12361289 (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
____________

FIDELITY NATIONAL INFORMATION SERVICES, INC.,
Petitioner,

v.

CHECKFREE CORPORATION,
Patent Owner.
____________

Case CBM2013-00031
Patent 7,996,311 B2
____________

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

CBM2013-00031
Patent 7,996,311 B2

2 

BACKGROUND
On December 23, 2013, we entered a Decision to Institute a covered
business method patent review, Paper 16 (“Decision to Institute”), of U.S. Patent
No. 7,996,311 B2 (“the ’311 Patent”) on the grounds that claims 1– 20 do not
recite patent-eligible subject matter under 35 U.S.C. § 101.
In this Final Written Decision, we hold that claims 1–20 are unpatentable.
THE ’311 PATENT (EXHIBIT 1001)
The ’311 Patent relates to electronic commerce and an electronic bill
payment system with merchant identification. Ex. 1001, col. 1, ll. 39-41. A first
station, the payer station, initiates payment by transmitting payment information to
a second station, the payment processing device or remittance payment processor
(RPP), which processes the payment. Id. at col. 3, ll. 3-10; col. 5, ll. 6-10. If
required, the second station, which may be a programmed general computer having
a processor and storage device, uses alteration rules and validation to transform
payer account number information into an altered payer account number that can
be used for processing the transaction. Id. at col. 3, ll. 15-55. The RPP stores, as
validation templates in a database, separate business rules for each merchant that
identify the expected general format for any consumer account associated with that
merchant. Id. at col. 8, ll. 18-23. The received account number is checked against
the validation template to validate that the account number conforms to the general
account number format to which the account assigned with the applicable merchant
must conform. Id. at col. 8, ll. 23-28. Once the account number has been
validated, it is modified to conform to alteration rules for the applicable merchant.
Id. at col. 8, ll. 45-47. The alteration rules, which are stored in a database, relate to
the format of the consumer’s account number that the applicable merchant system
CBM2013-00031
Patent 7,996,311 B2

3 

requires to process consumer payment. Id. at col. 8, ll. 47-50. The alterations
typically specify an altered account number that includes a portion of the payer’s
identifying information. Id. at col. 8, ll. 51-55. The RPP then transmits the altered
account number to a merchant via a network along with the payment. Id. at col. 8,
ll. 63-67.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative:

A method, comprising;
executing computer-implemented instructions on one or more
payment processor computers associated with a payment
processor for:
receiving, by the payment processor, a consumer account number
associated with a payor and a payee, wherein the consumer
account number is not in a format expected by the payee;
retrieving from a merchant database, by the payment processor, an
alteration rule associated with the payee, wherein the
alteration rule is associated with an account number format
that is expected by the payee;
altering, by the payment processor, the received consumer account
number to a modified consumer account number based upon
the alteration rule, wherein altering the consumer account
number includes inserting a character string at a particular
position in the consumer account number to create the
modified consumer account number; and
transmitting, by the payment processor, the modified consumer
account number to the payee.

THE ’311 PATENT IS NOT A PATENT FOR A TECHNOLOGICAL
INVENTION
A covered business method patent is “a patent that claims a method or
corresponding apparatus for performing data processing” or other operations used
in the practice, administration, or management of a financial product or service.
CBM2013-00031
Patent 7,996,311 B2

4 

37 C.F.R. § 42.301(a). A covered business method patent “does not include
patents for technological inventions.” Id. 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).
Patent Owner argues that, in the mid-to-late 1990s, Patent Owner recognized
that its systems could not ensure that a received consumer account number would
be provided to a merchant in the specific format necessary to be processed
automatically by a merchant accounting system, without human intervention.
Paper 20 (“PO Resp.”) 68. Thus, according to Patent Owner, providing processing
to transform the consumer account number into the format required for electronic
posting at the merchant was a significant technological improvement. Id. at 69.
Patent Owner argues that providing a system to generate automatic payment advice
in a format that each merchant’s system could process automatically was a
technological advance in the field of electronic bill payment (EBP) systems and
represents a technological solution to the problem of ensuring from within an EBP
system that merchants could quickly and accurately access a consumer's account.
Id. at 70.
The method recited in claim 1, although executed on a payment processor
computer, is not limited to any particular system and does not recite any
improvements in the processor itself. The steps of the method executed by the
computer include receiving a consumer account number in an unexpected format,
retrieving an alteration rule associated with the account number format that is
expected by the payee, altering the account number to the expected format, and
transmitting the modified consumer account number to the payee. The recitation
of computer-implemented instructions and a database in the payment processor to
CBM2013-00031
Patent 7,996,311 B2

5 

modify the consumer account number does not change the nature of the claimed
process. Establishing compatible account numbers is not a technical problem. As
acknowledged by inventor David Garrison, the method recited in claim 1 adjusts
the account number using conventional equipment. Ex. 1013; 124:15-25. Thus,
because the subject matter in claim 1, as a whole, does not recite a technical feature
that is novel and unobvious over the prior art, and does not solve a technical
problem using a technical solution, the invention recited in claim one is not a
technological invention.
CLAIM CONSTRUCTION
Patent Owner argues that in construing the “payment processor” as a
processor that carries out programmed instructions and the “payment processor
computer” as a general-purpose computer having the capability to implement
programmed instructions, our Decision to Institute failed to recognize that the
entirety of the specification of the ’311 Patent is dedicated to describing the
operation of the payment processor as a specially programmed computer
functioning only within a larger EBP system. PO Resp. 64–65. Patent Owner
also contends that the term “merchant database” cannot be construed correctly
outside the context of an EBP system. Id. at 65-66. Patent Owner further contends
that the recited “alteration rule” should be construed as a data structure that enables
a specially programmed payment processor computer to modify appropriately the
received consumer account number pursuant to the express terms of the claims. Id.
at 66.
The Patent Owner Response extensively addresses these claim construction
issues in its discussion of patent-eligible subject matter under 35 U.S.C. § 101. We
address these claim construction issues in that context as well.
CBM2013-00031
Patent 7,996,311 B2

6 

§ 101 SUBJECT MATTER ELIGIBILITY
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court applied a two-step test for determining whether a claim recites
patent-eligible 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 Collaborative Servs. v. 
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (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 patent-ineligible concept itself. Id.
Thus, the first step in our analysis is to consider whether the claims of the
’524 Patent are drawn to an abstract concept. A challenged claim, properly
construed, must incorporate enough meaningful limitations to ensure that what is
claimed is more than just an abstract idea and is not a mere “drafting effort
designed to monopolize [an abstract idea] itself.” Mayo 132 S. Ct. at 1297. In
Alice, the Supreme Court considered claims that, on their face, were drawn to the
fundamental economic concept of exchanging financial obligations between two
parties using a third-party intermediary to mitigate settlement risk. The Court
concluded that, like the hedging in Bilski, the claims were drawn to an ‘abstract
idea’ beyond the scope of § 101. Alice Corp, 134 S. Ct. at 2355-7.1

1 In Bilski v. Kappos, 561 U.S. 593 (2010) the Supreme 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.
CBM2013-00031
Patent 7,996,311 B2

7 

Claims 1 and 15 of the ’311 Patent are drawn to executing instructions on a
computer. In response to receiving an account number in a format not expected by
a payee, the instructions act to retrieve from a database a rule that causes the
received account number to be altered into the expected format before transmitting
the account number to the payee. Thus, claims 1 and 15 are directed to the abstract
concept of comparing a received account number to a payee’s format, applying a
rule, and modifying the account number in accordance with that rule to the
expected format before transmitting it to the payee.
As evidence that the computer is not a meaningful limitation and that the
claims are drawn to an abstract concept, Petitioner cites testimony of inventor
David Garrison demonstrating that the steps of the claimed invention could be
performed manually. Pet. 12–16. (citing Ex. 1008, 175:25–180:14, 185:11–
189:25; Ex. 1009; Ex. 1010. Patent Owner’s argument that the claimed
automatically performed method precludes the need for human intervention, PO
Resp. 68, essentially concedes that the process could be performed manually. We
conclude that the recitation of a computer in the method or system claims is not a
meaningful limitation and does not change the abstract nature of the claimed
subject matter. The limitations recited in claims 2–14, which depend from claim 1,
and claims 16–20, which depend from claim 15, relate to the abstract concept
recited in claims 1 and 15 and are not meaningful limitations that provide patent-
eligible subject matter. See, e.g., claims 2 and 16, which recite receiving the
consumer account number in association with the payment request. Thus, the
method and system claims of the ’311 Patent are drawn to the abstract concept of
establishing compatibility between account numbers by applying appropriate rules
to modify an account number.
CBM2013-00031
Patent 7,996,311 B2

8 

The second step in the analysis requires us to determine whether the claims
do significantly more than simply describe the abstract method. Ultramercial, Inc.
v. Hulu, LLC, 772 F. 3d 709, 715 (Fed. Cir. 2014) (citing Mayo 132 S. Ct. at
1297). We note that “[A]fter Alice there can be no doubt recitation of generic
computer limitations does not make an otherwise ineligible claim patent-eligible.”
DDR Holdings, LLC v. Hotels.com, No. 2013-1505, 2014 WL 6845152, at *9 (Fed.
Cir. Dec. 5, 2014). As evidence that the claims of the ’311 Patent recite only
generic computer limitations that do not infuse the claimed abstract concept with
patent-eligible subject matter, Petitioner cites the testimony of inventor David
Garrison acknowledging that the inventors of the ’311 Patent did not invent any
particular hardware or machine and that the recitation of one or more payment
processor computers does not require the use of any specific payment processor
computer. Pet. 20–21 (citing Ex. 1013; 124:15-25).
Nevertheless, Patent Owner contends that the claims recite patent-eligible
subject matter because they involve a specially programmed computer that is
integral to the claimed process and system. PO Resp. 2. Patent Owner contends
that the problems solved by the ’311 invention are linked inextricably to the
electronic bill payment process in which the payment processor operates.
PO Resp. 15, 17. According to Patent Owner, every software step in the process
claims and every component in the system claims, in combination with the defined
software instructions, are absolutely essential to the process and the systems as a
whole. Id.
Petitioner responds that Patent Owner’s experts improperly read details from
the specification into the claims. Paper 29 (“Pet. Reply”) 4–5. As examples,
Petitioner cites the testimony of Patent Owner’s expert, Dr. John Kelly, as
importing a volume requirement into the claims, and conflicting testimony
CBM2013-00031
Patent 7,996,311 B2

9 

provided by Dr. Kelly and Patent Owner’s other expert, Mr. Elliott McEntee about
whether all payments are bill payments. Id. (citing Ex. 2025, 251:18–258:12; Ex.
2024, 37:9–38:14, 41:7–42:11, Ex. 2028, 430:10–10, 431:13–15).
Patent Owner argues that because safeguards built into earlier systems were
becoming overwhelmed by the volume of transactions and the diversity of payers
and payees in EBP systems, the inventors of the ’311 Patent developed the
payment processor computer system described and claimed in the ’311 Patent. PO
Resp. 18. However, to determine patent-eligibility we look to the claims of the
patent rather than the motivation of the inventors.
Patent Owner argues that the ’311 Patent explains that the payment
processor is a specially programmed computer system that, with the merchant
database and alteration rules, operates only within an EBP system. Id. at 19, 21,
30–36. Although the specification states that the invention relates to an electronic
bill payment system with merchant identification, Ex. 1001, col. 1, ll. 39–41, the
claims are not limited to an EBP system, and the payment processor computer is
not recited in that context. As Petitioner notes, Patent Owner’s position is
inconsistent with the specification at column 9, lines 5-11, which states that the
invention can be utilized in any number of environments and implementations.
Pet. Reply 6. Thus, the specification contradicts the statement of Patent Owner’s
expert, Dr. Kelly, that the account number verification and altering procedure
carried out by software in the payment processor computer of the ’311 Patent
would not be executed outside the context of an EBP system. PO Resp. 45 (citing
Ex. 2015 ¶ 68 and Ex. 2016 ¶ 154). Petitioner also notes that Patent Owner’s
position is inconsistent with the testimony of Patent Owner’s expert Mr. Elliott
McEntee, who testified that the claims of the ’311 Patent are not limited to an EBP
system. Pet. Reply 6 (citing Ex. 2018, 298:14–301:3; Ex. 2024 159:17). Even if
CBM2013-00031
Patent 7,996,311 B2

10 

the payment processor computer were claimed in the context of an EBP system,
this limitation on the field of use would not necessarily render the claims patent-
eligible. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1280
(Fed. Cir. 2012) (citing Bilski, 561 U.S. at 612 (“[Parker v. Flook, 437 U.S. 584
(1978)] established that limiting an abstract idea to one field of use or adding token
post-solution components did not make the concept patentable.”)).
Patent Owner further argues that the ’311 Patent explains that, without
human involvement, the payment processor is programmed specially to perform
functions within the EBP, such as processing electronic payment data to change the
consumer account number data, initiating electronic transmission of the modified
data, and other functions that route payment transactions to particular payment
remittance centers of merchants. PO Resp. 21–22, 36–41. According to Patent
Owner, claims 1 and 15 recite functionally connected software steps performed by
the payment processor computer, in which each step is integral to the ultimate
result, i.e. the electronic transmission of a modified account number data structure
to the merchant. Id. at 42. Patent Owner argues that in retrieving the alteration
rule the payment processor computer must access a specific data structure. Id. at
43. However, no such limitation appears in the claims. In addition, as Petitioner
notes, Patent Owner’s expert, Dr. Kelly, testified that the account numbers recited
in the claims and data structures are different concepts. Pet. Reply 7, (citing Ex.
2024, 205:12–207:20). Petitioner also points out the rebuttal testimony of its
expert, Dr. Michael Shamos, stating that account numbers are not limited to any
particular data structure. Pet. Reply 7 (citing Ex. 1021 ¶¶ 64, 69, 71).2  

2 Although we dismiss Patent Owner’s motion to exclude certain other paragraphs
of the Shamos Declaration because we do not rely upon that testimony, Patent
Owner did not move to exclude these paragraphs of the Shamos Declaration.
CBM2013-00031
Patent 7,996,311 B2

11 

Citing the testimony of its expert, Dr. Kelly, Ex. 2015 ¶ 42, Patent Owner
also argues that “the various components that constitute the EBP system within
which the payment processor operates communicate with each other and other
computer-based entities electronically using one or more communications
networks.” PO Resp. 20. Claim 15 recites one or more payment processor
computers in communication with a merchant database. None of the claims recites
networking details that provide patent-eligible subject matter. To the extent that
receiving a consumer account number and transmitting a modified account number
to the payee involves communication over networks, such features are nothing
more than computers being used conventionally for ordinary and routine purposes.
Such an implementation is, at best, pre-solution and post-solution activity and does
not transform the abstract idea recited in the claims into patent-eligible subject
matter. Bancorp Servs., 687 F.3d at 1280.
We reach a similar conclusion concerning Patent Owner’s arguments about
the claimed merchant database. Patent Owner argues that the merchant database
contains data records, including the alteration rules and validation templates used
to perform the validation steps in dependent claims 8–10, which the payment
processor uses to perform the actions recited in claims 1 and 15. PO Resp. 24–26,
33–34. Patent Owner’s expert, Dr. Kelly, testifies that the merchant database
would have no use outside an EBP system and is a structure that is uniquely
relevant to such a system. PO Resp. 34 (citing Ex. 2015 ¶ 96). Dr. Kelly’s
testimony, however, goes not to the structure of the merchant database, but to its
content. That content, which includes the rules to be applied in altering account
numbers to achieve compatibility, is material only to carrying out the abstract idea
recited in the claims and does not make an otherwise ineligible claim patent-
eligible subject matter.
CBM2013-00031
Patent 7,996,311 B2

12 

We also agree with Petitioner that, by transforming a consumer account
number into a modified account number, the claims of the ’311 Patent do not cause
a physical transformation of a data structure, as argued by Patent Owner. PO Resp.
48–49. As previously discussed, the claims of the ’311 Patent do not recite data
structures that are physically transformed. In addition, Petitioner points out that
Patent Owner’s expert, Mr. McEntee, testified that the claims of the ’311 Patent do
not require any physical transformation. Pet. Reply 11 (citing Ex. 2028, 472:19–
428:2). We further note that satisfying the machine-or-transformation test, by
itself, is not sufficient to render a claim patent-eligible, as not all transformations
or machine implementations infuse an otherwise ineligible claim with an inventive
concept. DDR Holdings, LLC, 2014 WL 6845152, at *9. We conclude that
altering an account number to be compatible with the requirements of a payee’s
system, as recited in the claims of the ’311 Patent, is not the type of transformation
that rises to the level of patent-eligible subject matter.
Patent Owner contends that in our Decision to Institute we did not evaluate
the claims as a whole to determine whether they contain additional substantive
limitations that narrow, confine, or otherwise tie down the claims so that, in
practical terms, they do not cover the full abstract idea itself. PO Resp. 61.
According to Patent Owner, the claims include several concrete and tangible
limitations that limit the use of the “putative abstract idea” to a specific application
within an electronic bill payment system. Id.  As discussed above, relying on
intrinsic and extrinsic evidence, Patent Owner attempts to read into the claims
structures that they do not recite. Independent claims 1 and 15 recite only
executing instructions to receive an account number, applying a rule to alter the
account number to an expected form, and transmitting the altered account number.
The specification notes that the claimed steps can be implemented using a general
CBM2013-00031
Patent 7,996,311 B2

13 

purpose computer, or other processing device capable of executing programmed
instructions. Ex. 1001, col. 3. ll. 58–65. Thus, the limitations recited in claims
concerning the payment processor and the payment processor computer are generic
computer limitations. Generic computer limitations do not make an otherwise
ineligible claim patent-eligible. DDR Holdings, 2014 WL 6845152, at *9.
Patent Owner contends that one of ordinary skill in the art would recognize
that there are other ways to perform the consumer account number modification
process associated with a payee in an EBP system that are not covered by the
claims of the ’311 Patent. PO Resp. 63. According to Patent Owner, a consumer
account number could be modified without the use of payee-specific alteration
rules, for example, by unconditionally removing all dashes in an account number
or prepending a certain number of zeroes at the beginning of the account number.
Id. However, as Petitioner points out, Patent Owner’s argument is based on the
incorrect premise that the alteration rule recited in the claims of the ’311 Patent
must be a payee-specific rule that cannot be applied universally. Pet. Reply 12.  
Claims 1 and 15 recite comparing the received account number to the format
expected by a payee, retrieving an alteration rule associated with the payee, and
modifying the account number to conform to that format expected by the payee.
Claims 1 and 15 recite that the alteration rule is associated with the payee, but do
not recite that the alteration rule is payee specific. Claims 1 and 15 recite only that
the received account number is not in the format expected by a payee. Any
modification to the received account number must apply a rule that conforms the
account number to the expected format. Retrieving and applying a universal rule
that performs the same procedures on each received account number would still be
within the scope of independent claims 1 and 15.
CBM2013-00031
Patent 7,996,311 B2

14 

Except to the extent of automating the process to handle large numbers of
received account numbers, there is no need for a computer to perform any function
necessary to modify the account number that cannot be performed by hand, i.e., the
computer does not play a significant role in permitting the claimed method to be
carried out. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Thus, notwithstanding their computer-aided limitations, claim 1 and apparatus
claim 15 effectively preempt the abstract concept of comparing a received account
number to a payee’s format, applying a rule, and modifying the account number in
accordance with that rule to the expected format before transmitting it to the payee.
See Bilski, 561 U.S. at 611-13.
In dependent claims 2 and 16, the consumer account information is received
in association with a payment request. Claims 3 and 4, which depend from claim
2, recite transmitting the account number to the payee in fulfillment of a payer’s
payment request or plurality of requests. Claims 2–4 and 16 do not further limit
the structure in carrying out the claimed abstract idea.
Dependent claims 5–7 recite features relating to retrieving the alteration rule
by identifying stored payee information, searching the merchant database to
identify the stored payee information, and generating a zip code from the stored
payee information and searching based on the zip code. Although a computer-
implemented approach may be useful to carrying out such steps, these claims are
not limited to any particular machine implementation and can be carried out by
hand.
Claims 8 and 17, which depend from claims 1 and 15, respectively, recite
retrieving from the merchant database a validation template identifying a payee’s
general account number format and verifying the received account number against
CBM2013-00031
Patent 7,996,311 B2

15 

the retrieved template. The validation template is a form of rule, which need not
be implemented by a machine.
Claim 9 depends from claim 8 and recites that the verification includes
verifying that the received account number includes a specific character string, is
of a specific length, and yields a particular check digit after being run through a
specific, but undefined, algorithm. Claim 10 depends from claim 8 and recites that
the verification is performed prior to altering the account number. While a
computer-implemented approach may be useful to carrying out steps in claims 8, 9,
10, and 17, these claims are not limited to any particular machine implementation
and can be carried out by hand.
Claims 11 and 18, which depend from claims 1 and 15, respectively, recite
inserting at a particular position in the received account number a fixed character
string specified by the payee. These claims do not recite any limitation to which
the specific computer has particular significance.
Claims 12 and 19, which depend from claims 1 and 15, respectively, recite
that the inserted character string includes at least a portion of information
concerning the payer. These claims do not recite any limitation to which the
specific computer has particular significance.
Claims 13 and 20, which depend from claims 1 and 15, respectively, recite
retrieving from the merchant database the identification of a remittance center to
which the payer’s modified account number is transmitted. Nothing about
retrieving the identity of the remittance center changes the abstract nature of the
claims. These claims do not recite any limitation to which the specific computer
has particular significance.
Claim 14, which depends from claim 13, recites retrieving the identification
of the remittance center based on the received consumer account number or the
CBM2013-00031
Patent 7,996,311 B2

16 

modified account number. These claims do not recite any limitation to which the
specific computer has particular significance.
Patent Owner argues that dependent claims 2–14 and 16–20 are patent-
eligible based on the presence of a specially programmed payment processor
computer acting in an EBP system with additional data structures (claims 2, 6 – 8,
11–13, 17–20 ) and processing steps (claims 3 –7, 9–10). PO Resp. 49–58. As
discussed above, the claims do not recite any data structures, and the only payment
processor computer limitations are generic computer limitations that do not rise to
the level of patent-eligible subject matter.
Thus, we conclude that dependent claims 2–14 and 16–20 do not recite
patent-eligible subject matter.

MOTION TO EXCLUDE
Having timely objected, Patent Owner moves to exclude certain paragraphs
of the rebuttal testimony of Petitioner’s expert Michael Shamos, Ex. 1021
(“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”).
In reaching our decisions in this proceeding, we do not cite or rely on the
portions of the testimony in the Shamos Declaration that Patent Owner moves to
exclude. Therefore, Patent Owner’s Motion to Exclude is dismissed.
SUMMARY
For the reasons discussed above, we conclude that it has been shown, by a
preponderance of the evidence, that claims 1–20 of the ’311 Patent do not recite
patent-eligible subject matter.
CBM2013-00031
Patent 7,996,311 B2

17 

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–20 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.

CBM2013-00031
Patent 7,996,311 B2

18 

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

John Wisse
jwisse@sidley.com

Thomas Broughan III
tbroughan@sidley.com