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

Patent Trial and Appeal Board

Feb 2, 2015

09797488 (P.T.A.B. Feb. 2, 2015)

Trials@uspto.gov Paper 10
571-272-7822 Entered: February 2, 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 M. MEYER, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

I. INTRODUCTION
Petitioner, Salesforce.com, Inc., filed a Petition requesting covered
business method (“CBM”) patent review of claims 1–59 of U.S. Patent No.
7,356,482 B2 (Ex. 1001, “the ’482 patent”), pursuant to 35 U.S.C. § 321 and
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Patent 7,356,482 B2
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section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284, 329 (2011) (“AIA”) (stating that transitional proceedings for
covered business method patent review under section 18 of the AIA shall
employ the standards and procedures for post-grant reviews under chapter
32 of title 35, United States Code). Paper 2 (“Pet.”). Patent Owner,
Applications in Internet Time LLC, filed a Preliminary Response. Paper 9
(“Prelim. Resp.”).
A transitional proceeding under section 18 of the AIA may be
instituted only for a patent that is a covered business method patent.
AIA § 18(a)(1)(E). Upon consideration of the Petition and the Preliminary
Response, we conclude Petitioner has not established that the ’482 patent is
a “covered business method patent” pursuant to the statutory definition in
section 18(d)(1) of the AIA. Therefore, we deny the Petition.
A. Related Matters
The parties indicate that Patent Owner is asserting the ’482 patent
against Petitioner in Applications in Internet Time LLC v. Salesforce.com,
Inc., No. 3:13-CV-00628-RCJ-VPC (D. Nev.) (filed Nov. 8, 2013). Pet. 7;
Paper 8, 2 (Patent Owner’s Mandatory Notice).
B. The ’482 Patent
According to its Abstract, the ’482 patent is directed to an “integrated
system for managing changes in regulatory and non-regulatory requirements
for business activities at an industrial or commercial facility.” Ex. 1001,
Abstract. The integrated system described in the ’482 patent manages data
that is constantly changing by (1) “provid[ing] one or more databases that
contain information on operations and requirements concerning an activity
or area of business,” (2) “monitor[ing] and evaluat[ing] the relevance of
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information on regulatory and non-regulatory changes that affect operations
of the business and/or information management requirements,”
(3) “convert[ing] the relevant changes into changes in work/task lists, data
entry forms, reports, data processing, analysis and presentation . . . of data
processing and analysis results to selected recipients, without requiring the
services of one or more programmers to re-program and/or recode the
software items affected by the change,” and (4) “implement[ing] receipt of
change information and dissemination of data processing and analysis results
using the facilities of a network, such as the Internet.” Id. at 8:30–46, 8:66–
67.
Figure 1 of the ’482 patent is reproduced below:

As shown in Figure 1, the integrated system operates at four layers: (1) a
change management layer that identifies on the Internet regulatory and non-
regulatory changes that may affect a user’s business, (2) a Java data
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management layer that generates a user interface, (3) a metadata layer that
provides data about the user interface including “tools, worklists, data entry
forms, reports, documents, processes, formulas, images, tables, views,
columns, and other structures and functions,” and (4) a business content
layer that is specific to the particular business operations of interest to the
user. Id. at 9:33–48.
C. Illustrative Claim
Claims 1, 21, and 41 of the ’482 patent are independent. Claim 1 is
illustrative of the claimed subject matter:
1. A system for providing a dynamically generated
application having one or more functions and one or more user
interface elements; comprising:
a server computer;
one or more client computers connected to the server
computer over a computer network;
a first layer associated with the server computer
containing information about the unique aspects of a particular
application;
a second layer associated with the server computer
containing information about the user interface and functions
common to a variety of applications, a particular application
being generated based on the data in both the first and second
layers;
a third layer associated with the server computer that
retrieves the data in the first and second layers in order to
generate the functionality and user interface elements of the
application; and
a change management layer for automatically detecting
changes that affect an application,
each client computer further comprising a browser
application being executed by each client computer, wherein a
user interface and functionality for the particular application is
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distributed to the browser application and dynamically
generated when the client computer connects to the server
computer.
Ex. 1001, 32:9–34.
D. Asserted Grounds of Unpatentability
Petitioner contends that all claims of the ’482 patent (claims 1–59) are
unpatentable under 35 U.S.C. § 112, second paragraph. Pet. 25–32.
Petitioner also contends that claims 1, 3, 5, 6, 10, 20, 21, 23–26, 30, 40, 41,
43, 45, 46, and 49 are unpatentable based on the following grounds (see Pet.
24–25):
Reference(s) Basis
Peters
1
35 U.S.C. § 102
Gordon
2
35 U.S.C. § 102
Haverstock
3
35 U.S.C. § 102
Bederson/Pad++
4
35 U.S.C. § 102
Peters in view of Gordon, Haverstock, and/or
Bederson/Pad++
35 U.S.C. § 103
Gordon in view of Peters, Haverstock, and/or
Bederson/Pad++
35 U.S.C. § 103

1
Kathleen A. Peters, THE DESIGN OF A CHANGE NOTIFICATION SERVER FOR
CLIENTS OF A PASSIVE OBJECT-ORIENTED DATABASE MANAGEMENT SYSTEM
(Simon Fraser University 1992) (Ex. 1003, “Peters”).
2
U.S. Patent No. 6,243,717 B1, issued June 5, 2001 (Ex. 1004, “Gordon”).
3
U.S. Patent No. 6,064,977, issued May 16, 2000 (Ex. 1005, “Haverstock”).
4
For grounds based on the “Bederson/Pad++” reference, Petitioner cites two
publications: Benjamin B. Bederson et al., Pad++: A Zoomable Graphical
Sketchpad for Exploring Alternate Interface Physics, 7 J. VISUAL
LANGUAGES & COMPUTING (1996) (Ex. 1006, “Bederson I”), and
Benjamin B. Bederson et al., A Zooming Web Browser, in Proceedings of
SPIE Conference on Multimedia Computing and Networking (1996)
(Ex. 1007, “Bederson II”).
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Reference(s) Basis
Haverstock in view of Peters, Gordon, and/or
Bederson/Pad++
35 U.S.C. § 103
Bederson/Pad++ in view of Peters, Gordon,
and/or Haverstock
35 U.S.C. § 103
II. DISCUSSION
A transitional proceeding under section 18 of the AIA may be
instituted only for a patent that is a covered business method patent.
AIA § 18(a)(1)(E). Petitioner bears the burden of demonstrating that the
’482 patent is a covered business method patent. See 37 C.F.R. § 42.304(a).
For the reasons explained below, Petitioner has not demonstrated that the
’482 patent is a covered business method patent.
The AIA defines “covered business method patent” as “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, except that the term does not include patents for
technological inventions.” AIA § 18(d)(1) (emphasis added); see 37 C.F.R.
§ 42.301(a). In promulgating rules for CBM review, the Office considered
the legislative intent and history behind the AIA’s definition of “covered
business method patent.” See Transitional Program for Covered Business
Method Patents—Definitions of Covered Business Method Patent and
Technological Invention, 77 Fed. Reg. 48,734, 48,735–36 (responses to
comments 1, 3, 4, and 8). The “legislative history explains that the
definition of covered business method patent was drafted to encompass
patents ‘claiming activities that are financial in nature, incidental to a
financial activity or complementary to a financial activity.’” Id. at 48,735
(emphasis added) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
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(statement of Sen. Schumer)). In determining whether a patent qualifies as a
covered business method patent, we focus on the claims. Id. at 48,736
(stating that the definition of a covered business method patent “is based on
what the patent claims”). A patent needs only one claim directed to a
covered business method to be eligible for review. Id.
Claim 1 of the ’482 patent recites a “system for providing a
dynamically generated application having one or more functions and one or
more user interface elements.” Ex. 1001, 32:9–11. The system comprises a
server and one or more client computers, each comprising a browser
application. Id. at 32:12–14. The system further comprises four layers
associated with the server, generally corresponding to the four layers shown
in Figure 1 of the ’482 patent. Id. at 32:15–28. When the client connects to
the server, a user interface and functionality for a particular application are
dynamically generated and distributed to the browser application. Id. at
35:29–34. Independent claims 21 and 41 are directed to a method and a
server, respectively, with limitations similar to those of claim 1. Id. at
33:34–58, 34:54–35:5. None of the independent claims or dependent claims
expressly claims a method or apparatus “for performing data processing or
other operations used in the practice, administration, or management of a
financial product or service.” Indeed, 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,” which Patent
Owner contends is outside the scope of covered business method patent
review. Prelim. Resp. 3 (alteration in original) (quoting 157 Cong. Rec.
S5441 (daily ed. Sept. 8, 2011) (statement of Sen. Leahy)) (internal
quotation marks omitted).
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In support of its argument that the ’482 patent is a covered business
method patent eligible for review under section 18 of the AIA, Petitioner
relies on two passages in the written description of the ’482 patent. First,
Petitioner contends that the ’482 patent “acknowledges that the purported
invention disclosed therein is usable in the context of government regulatory
activities including those related to ‘banking, financial and securities
activities and foreign trade.’” Pet. 12 (quoting Ex. 1001, 1:24–25). As
Patent Owner notes, the reference in the ’482 patent to “banking, financial
and securities activities” is part of a long list of regulated industries (with
citations to more than half of the titles of the Code of Federal Regulations)
that use business software and could benefit from the invention described in
the ’482 patent. See Prelim. Resp. 4.
Petitioner also cites the description in the ’482 patent of a “business
content layer” as including “business knowledge, logical designs, physical
designs, physical structures, relationships, and data associated with a
selected area of business activity,” which may be “a functional field within
an organization, such as finance or human resources.” Ex. 1001, 12:16–20;
see Pet. 12. In this second passage relied on by Petitioner, the word
“finance” merely refers to an example of a business area within an
organizational structure whose data may be stored in a business content
database. See Prelim. Resp. 5.
Petitioner does not explain how either passage from the written
description of the ’482 patent relates to the practice, administration, or
management of a financial product or service, as required by section
18(d)(1) of the AIA. See Pet. 12. Moreover, Petitioner’s argument fails to
address the language of the claims, which is the focus of our inquiry.
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See 77 Fed. Reg. at 48,736; see also AIA § 18(d)(1) (defining “covered
business method patent” based on what the patent claims); 37 C.F.R.
§ 42.301(a) (same). Notably, Petitioner’s analysis does not cite any claim
language or assert that any specific claim is directed to a covered business
method. See Pet. 11–12. In particular, Petitioner fails to show any
relationship between the two references to “finance” in the written
description and the systems and methods recited in the claims, which are
directed to providing dynamically generated applications. Therefore,
Petitioner’s contentions based on the written description alone do not show
that the ’482 patent claims a method or apparatus “for performing data
processing or other operations used in the practice, administration, or
management of a financial product or service” or claims an activity that is
“financial in nature, incidental to a financial activity or complementary to a
financial activity.”
Petitioner also relies on the classification of the ’482 patent in
Class 705/7.12, which Petitioner states is “drawn to a computerized
arrangement for planning or assigning of resources in an optimal or systemic
way in order to achieve a business goal, or drawn to the management or
planning of a business task or operation.” Pet. 13.
5
According to Petitioner,
the classification in Class 705 is evidence that the Office believes the
’482 patent is related to the financial services industry. Id. (citing 77 Fed.
Reg. at 48,739 (stating that “patents subject to covered business method

5
Petitioner provides no citation for its contention that the ’482 patent is
classified in Class 705, subclass 7.12, which differs from the classification
listed on the face of the patent. See Pet. 13; Ex. 1001. We assume for
purposes of our discussion that Petitioner is correct that the ’482 patent
currently is classified in Class 705, subclass 7.12.
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patent review are anticipated to be typically classifiable in Class 705”)).
Petitioner, however, does not explain how the quoted subclass definition
relates to a “financial product or service” or an activity that is “financial in
nature, incidental to a financial activity or complementary to a financial
activity.” Moreover, even if the subclass definition relates to a financial
product or service, Petitioner fails to explain how the systems and methods
recited in the claims plan or assign resources to achieve a business goal or
manage or plan a business task or operation. For these reasons, we are not
persuaded in this case that mere classification in Class 705 supports a
conclusion that the ’482 patent claims a method or apparatus “for
performing data processing or other operations used in the practice,
administration, or management of a financial product or service,” as required
by section 18(d)(1) of the AIA.
III. CONCLUSION
For the foregoing reasons, based on the present record and particular
facts of this case, we determine that the information presented in the Petition
does not establish that the ’482 patent qualifies as a covered business
method patent under section 18 of the AIA. Petitioner, therefore, has failed
to satisfy the jurisdictional requirements for a covered business method
patent review under section 18.
IV. ORDER
Accordingly, it is:
ORDERED that the Petition is denied and no trial is instituted.

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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