Salesforce.com, Inc.v.Applications in Internet Time LLC

Patent Trial and Appeal Board

Jul 28, 2015

09797488 (P.T.A.B. Jul. 28, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Entered: July 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SALESFORCE.COM, INC.,
Petitioner,

v.

APPLICATIONS IN INTERNET TIME LLC,
Patent Owner.
____________

Case CBM2014-00168
Patent 7,356,482 B2
____________

Before LYNNE E. PETTIGREW, MITCHELL G. WEATHERLY, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

I. INTRODUCTION
Petitioner, Salesforce.com, Inc., filed a Request for Rehearing of our
Decision (Paper 10, “Dec.”) denying institution of covered business method
patent review of claims 1–59 of U.S. Patent No. 7,356,482 B2 (Ex. 1001,
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“the ’482 patent”). Paper 11 (“Req. Reh’g”). In our Decision, we
determined that the information presented in the Petition did not establish
that the ’482 patent qualifies as a covered business method patent under
section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284, 329 (2011) (“AIA”). Dec. 10.
For the reasons that follow, Petitioner’s Request for Rehearing is
denied.
II. ANALYSIS
The party challenging a decision in a request for rehearing bears the
burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
A request for rehearing “must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed.” Id.
Petitioner contends that our Decision misapprehended the definition
of “covered business method patent” set forth in section 18(d)(1) of the AIA
by interpreting the provision to “require a petitioner to demonstrate that a
patent ‘expressly claims’ a ‘particular relation to the financial services
sector.’” Req. Reh’g 3. Petitioner also contends that our Decision
overlooked analysis in the Petition demonstrating that the claims encompass
“performing data processing or other operations used in the practice,
administration, or management of a financial product or service,” as set forth
in section 18(d)(1). Id. at 12–15. We address these arguments in turn.
First, we disagree with Petitioner’s contention that we interpreted
section 18(d)(1) to require a showing that a patent “expressly claims” a
“particular relation to the financial services sector.” See Req. Reh’g 3–5.
Rather, as an initial step in our analysis of whether the ’482 patent qualifies
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as a covered business method patent, we considered the language of the
claims. We observed that none of the challenged claims expressly recites a
method or apparatus “for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service.” Dec. 7. We further noted that “the claims on their face are
directed to technology common in business environments across sectors with
no particular relat[ionship] to the financial services sector.” Id. (internal
quotation marks and citation omitted).
Our analysis, however, did not end there. Contrary to Petitioner’s
assertion that we considered only the claim language in our analysis, we also
considered Petitioner’s arguments regarding the specification of the
’482 patent. Id. at 8–9 (citing Pet. 12 (Paper 2)). Specifically, we
determined that Petitioner failed to explain how the two portions of the
disclosure on which it relied “relate[] to the practice, administration, or
management of a financial product or service, as required by
section 18(d)(1) of the AIA,” or how they relate to the systems and methods
recited in the claims. Id. Accordingly, we concluded that Petitioner, relying
on two isolated passages from the written description, had not shown that the
’482 patent “claims an activity that is ‘financial in nature, incidental to a
financial activity or complementary to a financial activity.’” Id. at 9. Thus,
we did not interpret section 18(d)(1) to require express claiming of financial
products or services, as Petitioner contends. See Req. Reh’g 3–12. Instead,
our interpretation was consistent with that applied by the Board in other
cases cited by Petitioner in the Request for Rehearing. See id. at 8–12.
Turning to Petitioner’s second contention, we are not persuaded that
our Decision overlooked any analysis in the Petition as to whether the claims
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encompass “performing data processing or other operations used in the
practice, administration, or management of a financial product or service.”
See Req. Reh’g 12–15. Petitioner’s entire argument regarding whether the
’482 patent satisfies the “financial product or service” requirement of
section 18(d)(1) consumed only two pages of text in the Petition. See
Pet. 11–13. As discussed in the Decision, Petitioner’s argument was limited
to citing two passages from the written description and asserting that the
’482 patent was classified in Class 705. See Dec. 8–10 (citing Pet. 11–13).
Petitioner argues that we overlooked analysis in the Petition
demonstrating that the claims of the ’482 patent, including claim 1, are
directed to a change management layer for monitoring and detecting changes
pertinent to the operation of a business, that such changes include regulatory
changes, and that the specification discloses embodiments directed to
managing changes in financial and securities regulations and managing other
changes affecting a business’s finance department. Req. Reh’g 13–15
(citing Pet. 4, 8–14, 18). As is evident from Petitioner’s citations to pages in
different portions of the Petition, however, the Petition did not present a
coherent argument explaining how the two appearances of the word
“finance” in the written description demonstrate that the claims are directed
to an apparatus “for performing data processing or other operations used in
the practice, administration, or management of a financial product or
service” or an activity that is “financial in nature, incidental to a financial
activity or complementary to a financial activity.” See Dec. 9. With its
belated attempt to piece together an argument from various sections of the
Petition directed to other issues, Petitioner has not demonstrated that we
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overlooked any analysis in the Petition addressing the “financial product or
service” requirement of section 18(d)(1).
III. REQUEST FOR EXPANDED PANEL
Based on its contention that our interpretation of section 18(d)(1) of
the AIA conflicts with previous Board decisions, Petitioner “suggests that an
expanded panel rehear and address the foundational interpretation issues
raised” in its Request for Rehearing. Req. Reh’g 2. Whether to expand the
panel in a covered business method patent review matter “involves
consideration of whether the issue is one of conflict with an authoritative
decision of our reviewing courts or a precedential decision of the Board, or
whether the issue raises a conflict regarding a contrary legal interpretation of
a statute or regulation.” See AOL Inc. v. Coho Licensing LLC, Case
IPR2014-00771, slip op. at 3 (PTAB Mar. 24, 2015) (Paper 12)
(informative) (setting forth the standard for considering a suggestion of
panel expansion in an inter partes review matter). As explained above,
Petitioner’s assertion that a conflict exists regarding the interpretation of
section 18(d)(1) is based on a misunderstanding of how we interpreted and
applied section 18(d)(1) in our Decision. Thus, Petitioner’s suggestion for
panel expansion based on an alleged conflict is unpersuasive.
Moreover, a panel does not have authority to expand a panel; only the
Chief Judge, acting on behalf of the Director, may act to expand a panel.
See Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op.
at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20). In this case, the suggestion to
expand the panel has been considered, but not adopted.
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Patent 7,356,482 B2
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IV. ORDER
Accordingly, it is:
ORDERED that Petitioner’s Request for Rehearing is denied.

FOR PETITIONER:
Kevin P.B. Johnson
Edward J. DeFranco
Quinn Emanuel Urquhart & Sullivan, LLP
kevinjohnson@quinnemanuel.com
SFDC_CBM@quinnemanuel.com

FOR PATENT OWNER:
Steven Sereboff
M. Kala Sarvaiya
SoCal IP Law Group LLP
ssereboff@socalip.com
ksarvaiya@socalip.com