Travelocity.com LPv.Cronos Technologies LLC

Patent Trial and Appeal Board

Sep 15, 2014

08351795 (P.T.A.B. Sep. 15, 2014)

Trials@uspto.gov Paper 10
571-272-7822 Entered: September 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRAVELOCITY.COM L.P., PRICELINE.COM INC.,
and EXPEDIA, INC.,
Petitioner,

v.

CRONOS TECHNOLOGIES, LLC,
Patent Owner.
____________

Case CBM2014-00082
Patent 5,664,110
____________

Before JENNIFER S. BISK, JAMES B. ARPIN, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

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

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I. BACKGROUND
Travelocity.com L.P., Priceline.com Inc., and Expedia, Inc.
(collectively, “Petitioner”) filed a Petition (Paper 8, “Pet.”) requesting
institution of a covered business method patent review of claims 1–3, 8–19,
22–28, 31–36 and 41–44 of U.S. Patent No. 5,664,110 (Ex. 1001, “the ’110
Patent”) pursuant to 35 U.S.C. §§ 321–329. Cronos Technologies, LLC
(“Patent Owner”) filed a Preliminary Response (Paper 9, “Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 324.
The standard for instituting a covered business method patent review
is set forth in 35 U.S.C. § 324(a):
THRESHOLD.—The Director may not authorize a post-grant
review to be instituted unless the Director determines that the
information presented in the petition filed under section 321, if
such information is not rebutted, would demonstrate that it is
more likely than not that at least 1 of the claims challenged in
the petition is unpatentable.
Petitioner challenges claims 1–3, 8–19, 22–28, 31–36, and 41–44 of
the ’110 Patent as unpatentable under 35 U.S.C. § 103(a) over various
combinations of references. Pet. 16. For the reasons that follow, the
Petition is denied.
A. The’110 Patent (Ex. 1001)
The ’110 Patent generally relates to a remote ordering terminal that
provides a user the ability to create or edit, or both, one or more order lists
that are resident in memory within a user device and the further ability to
review a user-interpretable display of the contents of such lists. Ex. 1001,
col. 1, ll. 38–42. The remote ordering terminal provides multiple merchant
stock databases, a data format/transfer computer (DFTC) as an interface
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between customers and the merchant databases, and a user device referred to
as a display/processor unit (DPU) at each of multiple customer sites for
creating and transmitting order lists. Id. at col 1, ll. 42–47.
Figure 2 of the ’110 patent is reproduced below:

Figure 2 is a schematic representation of the remote ordering
system according to the ’110 Patent.

As illustrated in Figure 2, each DPU 10 includes data entry device 16
which provides coded information to the rest of DPU 10. Id. at col. 3, ll. 5–
7. In the embodiment of Figure 2, data entry device 16 includes optical
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scanning wand 20 having RF transmitter 22 in communication with RF
receiver 24, and also includes bar code decoder 26. Id. at col. 3, ll. 7–11.
Scanning wand 20 may be passed over some form of bar code 41, whether
displayed on a screen, printed on packaging for a desired product, in a
catalog of codes, on coupons, or printed on a credit-card sized identification
control card. Id. at col. 3, ll. 11–15. “The specific bar code employed may
be Code 128, Codabar, or one of the UPC (UPC-A, UPC-E) or EAN (EAN-
8, EAN-13) codes, or any other code including system specific code.” Id. at
col. 3, ll. 15–18.
Regardless of the detection means or the code read, “the received code
is interpreted by bar code decoder 26 to provide a common representation of
the coded information, such as in ASCII format.” Id. at col. 3, ll. 18–21.
The code may be user identification means, a merchant identification means,
or a product bar code scanned from a list or screen. Id. at col. 3, ll. 5–21; see
id. at col. 10, ll. 30–41. The user may create a list for local storage and
review and for provision to a remotely-located order processing system. See
id. at col. 7, ll. 1–13. When the list is provided to the order processing
system, the order processing system returns new or replacement user-
discernible information data, or both, relating to the items on the list. Id. at
col. 1, ll. 54–58.
B. Related Matters
The ’110 Patent has been asserted in proceedings listed in the Petition.
Pet. 67–70; see Paper 6, 1–2. The ’110 Patent currently is being asserted
against Petitioner in Cronos Technologies LLC v. Travelocity.com L.P., Case
No. 1:13-cv-01544-LPS (D. Del.); Cronos Technologies LLC v.
Priceline.com, Case No. 1:13-cv-01541-LPS (D. Del.); and Cronos
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Technologies LLC v. Expedia Inc., Case No. 1:13-cv-01538-LPS (D. Del.).
Exs. 1002–1004.
C. Illustrative Claims
Petitioner challenges claims 1–3, 8–19, 22–28, 31–36, and 41–44 of
the ’110 Patent. Pet. 1. Claims 1 and 22 are independent. Claims 2, 3, and
8–19 depend from independent claim 1; and claims 23–28, 31–36, and 41–
44 depend from independent claim 22. See Ex. 1001, col. 14, l. 46–col. 18,
l. 28. Independent claim 1 is directed to a remote ordering terminal (id. at
col. 14, l. 46–col. 15, l. 22), and independent claim 22 is directed to a
method for remote ordering (id. at col. 16, 1. 23–col. 17, l. 4). Claims 1 and
22 of the ’110 Patent are illustrative of the claims at issue:
1. A remote ordering terminal for providing at least one list
of at least one item or group of items to a remotely located
order processing system associated with one or more merchants
on each of a plurality of occasions, each item or group of items
having an item code associated therewith, said remote ordering
terminal comprising:

user and/or merchant identifier means;

at least one data entry device for providing said terminal with
said item associated item codes and with data from said user
and/or merchant identifier means;

a database unit providing a user-specific database including
user-discernable item data associated with item codes for user-
selected items or groups of items;

memory to provide storage for said user-specific database, said
memory in communication with said at least one data entry
device for storing said at least one list;

communication means for associating said memory and said
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order processing system upon user command for remotely
accessing said order processing system over a multi-user
network, for transmitting said at least one list to said order
processing system using said data from said user and/or
merchant identifier means, and for receiving new and/or
replacement user-discernable item data from said order
processing system during association of said memory and said
order processing system, said new and/or replacement user-
discernable item data corresponding only[1] to said at least one
item or group of items of said at least one list;

a message display portion in communication with said memory
and said user-specific database for displaying order pertinent
information including said user-discernable item data from said
memory; and

at least one command entry device responsive to user selection
of items from said order pertinent information for assembling
said at least one list and for enabling said user command,
resulting in said transmitting of said at least one list to said
order processing system,

wherein said at least one list is comprised of an order to be
processed by said order processing system, or a provisional
order list transmitted to said order processing system,
transmission of either resulting in on-demand receipt of said
new and/or replacement user-discernable item data within said
user-specific database for said at least one item or group of
items.
Id. at col. 14, l. 46–col. 15, l. 22 (emphasis added).

22. A method for remote ordering at least one desired item
by a user from one of a plurality of merchants using a system
having a user device, a central computer, one of a plurality of

1 Prior to issuance of a Notice of Allowance, the Examiner amended each
of claims 1 and 22 to include the word “only.” Ex. 1012, 225–6. Neither
party addresses this added word in its claim construction.
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merchant databases, and a communications link including a
multi-user network, said at least one desired item having a
unique identifying code associated therewith, the method
comprising:

storing for a plurality of user-specific items, in an identifier
database accessible at said user device for user perception at
said user device, a user-cognizable identifier of said at least one
item corresponding to said identifying code;

user inputting said identifying code corresponding to said at
least one desired item into said user device by machine
recognition of said user input identifying code;

accumulating from said identifier database selected ones of said
user-cognizable identifiers corresponding to said input
identifying codes in at least one list of desired items;

selectively associating a transaction identifier having user
and/or merchant identifications with said user device to identify
a selected merchant database and/or to identify said user to a
selected merchant database;

commanding said user device to establish remote
communication between said user device and said selected
merchant database corresponding to said merchant
identification through said central computer over said
communications link including said multi-user network;

interactively updating only said selected one of said user-
cognizable identifiers in said identifier database of user-specific
items with current information provided by said merchant
database over said communications link in response to a user
action at said user device, said user action including

the communication of a provisional list of desired items
transmitted to said selected merchant database for the purpose
of providing said interactive updating, or the communication of
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an order list of desired items transmitted to said selected
merchant database for the purpose of providing said interactive
updating and remote ordering said desired items comprising
said order list; and

passing transaction specific information over said
communications link including said identifying codes between
said user device and said selected merchant database.
Id. at col. 16, l. 23 – col. 17, l. 4 (emphasis added).

D. Asserted References and Declaration
In its Petition, Petitioner refers to the following references and
declaration:
Exhibit References and Declaration
1002 Infringement Contentions, Cronos Technologies, LLC
v. GNC
1004 U.S. Patent No. 5,347,632, issued to Filepp et al. on
Sep. 13, 1994, from an application filed July 28, 1989
(“Filepp”)
1005 Viescas, J., The Official Guide to the Prodigy Service,
Microsoft Press, 1991 (excerpted Introduction, Chs. 1,
2, 6, and 7) (“Viescas”)
1006 Peapod, Inc., Peapod User Manual v. 3.1, Aug. 1992
(“Peapod”)
1010 U.S. Patent No. 4,654,482, issued to DeAngelis on
Mar. 31, 1987 (“DeAngelis”)
1011 Declaration of Richard Taylor, Ph.D. (“Declaration of
Dr. Taylor”)

Pet. vi.
E. Asserted Grounds of Unpatentability
Petitioner asserts “[w]hile these references individually may render
the claims unpatentable, Petitioner[] rel[ies] on 35 U.S.C. § 103[(a)] to
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simplify the number of grounds for trial.” Pet. 19. Therefore, Petitioner
challenges the patentability of claims 1–3, 8–19, 22–28, 31–36, and 41–44
of the ’110 Patent based only on the following three grounds of
unpatentability:
References Basis Claims challenged
Viescas, Filepp, and Peapod § 103(a) 1–3, 8–15, 17–19, 22, 24, 26–
28, 31–36, 41, and 43–44
Viescas, Filepp, Peapod,
and DeAngelis
§ 103(a) 1–3, 8–19, 22–28, 31–36, and
41–44
Viescas, Peapod, and the
admitted prior art of
DeAngelis
§ 103(a) 1–3, 8–19, 22–28, 31–36, and
41–44

Pet. 16.
II. ANALYSIS
A. Financial Product or Service
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, except that the term does not include patents for
technological inventions.” Leahy-Smith America Invents Act, Pub. L. No.
112–29, § 18(d)(1), 125 Stat. 284 (2011) (“AIA”); see 37 C.F.R.
§ 42.301(a). For purposes of determining whether a patent is eligible for a
covered business method patent review, the focus is on the claims. See
Transitional Program for Covered Business Method Patents—Definitions of
Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
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48,734, 48,736 (Aug. 14, 2012). A patent need have only one claim directed
to a covered business method to be eligible for review. Id.
In promulgating rules for covered business method patent reviews, the
Office considered the legislative intent and history behind the AIA’s
definition of “covered business method patent.” Id. at 48,735–36.
Specifically, the legislative history of the AIA provides that:
The plain meaning of ‘‘financial product or service’’
demonstrates that section 18 is not limited to the financial
services industry. At its most basic, a financial product is an
agreement between two parties stipulating movements of
money or other consideration now or in the future.
. . .
Rather, because the patents apply to administration of a
business transactions, such as financial transactions, they are
eligible for review under this section. To meet this
requirement, the patent need not recite specific financial
product[s] or service[s].

157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)(statement of Sen. Schumer);
see Transitional Program for Covered Business Method Patents—
Definitions of Covered Business Method Patent and Technological
Invention, 77 Fed. Reg. at 47,736. Thus, the legislative history indicates that
“financial product or service” should be interpreted broadly. Id.
Petitioner contends that the patent describes a remote ordering system
“that enables customers to order goods and services from merchants. . . . For
example, claim 22 recites such a business method: identifying one or more
products that a customer desires to purchase, obtaining information about the
product, such as its price and placing an order for the item(s).” Pet. 2–3
(citing Ex. 1001, col. 1, ll. 5–47). We are persuaded that the ’110 Patent
describes a “financial product or service” consistent with the governing
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statute.2 We also are persuaded by Petitioner that the e-commerce
transactions recited in claims 1 and 22 represent the type of activities “that
are financial in nature, incidental to a financial activity or complementary to
a financial activity.” Transitional Program for Covered Business Method
Patents—Definitions of Covered Business Method Patent and Technological
Invention, 77 Fed. Reg. at 48,736.
Patent Owner argues that the patent is not related to a “financial
product or service.” Prelim. Resp. 2. Patent Owner’s arguments, however,
are not persuasive. As noted above, the presence of claimed embodiments
directed to e-commerce transactions makes clear that the method claims
have utility to financial processes. See, e.g., Ex. 1001, col. 14, l. 62–col. 15,
l. 6 (claim 1), col. 16, ll. 48–53 (claim 22); see also id. at col. 1, ll. 42–47
(“The present invention provides multiple merchant stock databases, a data
format/transfer computer (DFTC) as an interface between customers and the
merchant databases, and a user device referred to as a display/processor unit
(DPU) at each of multiple customer sites for creating and transmitting order
lists.”). Consequently, we are not persuaded by Patent Owner that the ’110
Patent is not related to a financial product or service. See Prelim. Resp. 2.
As such, we are persuaded that the challenged claims of the ’110 Patent
meet the “financial product or service” component of § 18(d)(1) of the AIA.
B. Technological Invention
The definition of “covered business method patent” in § 18(d)(1) of
the AIA does not include patents for “technological inventions.” To
determine whether a patent is for a technological invention, we consider two

2 See Apple, Inc. v. Sightsound Techs, LLC, CBM2013-00019, slip op. at 12
(PTAB October 8, 2013) (Paper 17).
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factors: “whether the claimed subject matter as a whole recites a
technological 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) (emphases added). A patent is ineligible for covered business
method patent review only if both factors of this test are satisfied. The
following claim drafting techniques, for example, typically do not render the
claimed subject matter of a patent a “technological invention”:
(a) Mere recitation of known technologies, such as
computer hardware, communication or computer networks,
software, memory, computer-readable storage medium,
scanners, display devices or databases, or specialized machines,
such as an ATM or point of sale device.
(b) Reciting the use of known prior art technology to
accomplish a process or method, even if that process or method
is novel and non-obvious.
(c) Combining prior art structures to achieve the normal,
expected, or predictable result of that combination.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
14, 2012).
Petitioner contends that the method for remote ordering recited in
challenged claim 22 of the ’110 Patent is not directed to a technological
invention. Pet. 5–7. First, Petitioner contends that, during prosecution of
the ’110 Patent, Patent Owner distinguished its claims over the cited art
based only on the features of the business process, instead of any
“technological feature” recited in the claims. Id. Thus, we are persuaded
that Petitioner demonstrates that at least challenged claim 22 was not
distinguished over the applied art based on a novel and non-obvious
technological feature.
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Second, Petitioner contends that claim 22 of the ’110 Patent does not
recite any novel and unobvious technological feature, and does not solve a
technical problem. Id. at 5. Referring to claim 22, Petitioner contends that
this claim “recites only known technologies, such as a central computer,
databases, a communications link, a network, and a user device.” Id.
Petitioner contends that recitation of these “known technologies” does not
render this challenged claim of the ’110 Patent a “technological invention.”
Id. Patent Owner does not argue that challenged claim 22 recites unknown
technologies or combinations of known technologies to achieve abnormal,
unexpected, or unpredictable results. Thus, we are persuaded that Petitioner
demonstrates that at least challenged claim 22 does not solve a technical
problem using a technical solution.
For purposes of this decision, we are persuaded that at least
challenged claim 22 of the ’110 Patent is directed to a covered business
method, and, therefore, the ’110 Patent is eligible for review under AIA
§ 18(d)(1).
C. Asserted Grounds of Unpatentability
1. Claim Construction
Under 37 C.F.R. § 42.300(b), “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” The application, from which the ’110 Patent
issued, was filed December 8, 1994; and the ’110 Patent issued on
September 2, 1997. Prelim. Resp. 3. Because the application was pending
on June 8, 1995, the ’110 Patent is entitled to the longer of a term of
seventeen (17) years from the date of issue, i.e., September 2, 2014, or
twenty (20) years from the filing date, i.e., December 8, 2014. 35 U.S.C.
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§ 154(c)(1). Although currently “unexpired,” the ’110 Patent will expire on
December 8, 2014, and, therefore, is likely to expire before a final decision
is due in any trial that might have been instituted in this proceeding. See
AIA § 18(a)(1). Nevertheless, the decision on institution is due before the
patent will expire. See also 35 U.S.C. § 324 (in post grant review, a decision
on petition is due within three months of the filing of a preliminary response
or of the deadline for filing a preliminary response).
Petitioner argues that the challenged claims are to be given their
broadest reasonable interpretation in light of the Specification. Pet. 8.3
Patent Owner argues that, because the ’110 Patent will expire before we are
able to render any final decision regarding the merits of the Petition, we
should not rely on the broadest reasonable construction of the terms of the
challenged claims in analyzing the Petition. Prelim. Resp. 4. As noted
above, however, the ’110 Patent currently is unexpired, and our regulations
provide that we are to apply the broadest reasonable construction to the
claims of an unexpired patent. 37 C.F.R. § 42.300(b). Further, Patent
Owner incorrectly argues that the ability to amend is “the sole rubric behind
the use of the broadest reasonable interpretation claim construction.”
Prelim. Resp. 4. Thus, Patent Owner argues that, because no amendment of
an expired patent is possible, we should apply the same standard applied by

3 Petitioner argues that we should look to Patent Owner’s contentions in
litigation regarding the ’110 Patent as evidence of the broadest reasonable
interpretation for the claims. Pet. 8. Patent Owner’s infringement
contentions are, at best, extrinsic evidence of the meaning of the claim
terms, and extrinsic evidence is not favored over intrinsic evidence. See
Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-
00424, slip op. at 15 (PTAB Jan. 14, 2014) (Paper 16).
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the United States district courts in construing the terms of these challenged
claims. Id. at 4–5. As explained by another panel of the Board, however,
the difference in claim construction standards arises from the ability of a
patent owner in a covered business method proceeding to amend its claims
and from the fact that there is no presumption of validity before the Office.
See SAP America, Inc. v. Versata Software, Inc., CBM2012-00001, slip op.
at 7–19 (PTAB June 11, 2013) (Paper 70). Therefore, Patent Owner does
not persuade us that, at this point in the proceeding, we should apply a
standard other than broadest reasonable construction when construing the
challenged claims of the ’110 Patent.
Petitioner argues the construction for various claim terms, including
the preambles of claims 1 and 22; certain non-functional descriptive material
in claims 13–15, 31, and 44; “user and/or merchant identifier means” in
claim 1; and “communications means” in claim 1. Pet. 9–15. Apart from
general objections to Petitioner’s proposed claim constructions, Patent
Owner does not specifically contest Petitioner’s proposed claim
constructions. See Prelim. Resp. 2–5.
After reviewing the Petition, including its supporting evidence, and the
Preliminary Response, we are not persuaded by Petitioner’s arguments
regarding the preambles of claims 1 and 22. Pet. 10–11. The preamble of
claim 1 provides antecedent basis for the following terms that appear in the
body of the claim: “at least one list,” “at least one item or group of items,”
“a remotely located order processing system,” “one or more merchants,” and
“an item code.” Ex. 1001, col. 14, ll. 46–51. Similarly, the preamble of
claim 22 provides antecedent basis for “at least one desired item,” “a user,”
“a user device,” “a plurality of merchant databases,” “a communications
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link,” and “a unique identifying code.” Id. at col. 16, ll. 23–29. “When
limitations in the body of the claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention.” Proveris Scientific Corp. v. Innovasystems, Inc.,
739 F.3d 1367, 1372 (Fed. Cir. 2014). Nevertheless, we are persuaded by
Petitioner’s argument that the term “user and/or merchant identifier means”
in claim 1 is not a means-plus-function limitation. Pet. 13–14. For purposes
of this decision and to the extent express claim construction is required here,
we determine that Petitioner’s proposed constructions of the remaining claim
terms reflect the broadest reasonable interpretation of those terms, consistent
with the Specification of the ’110 Patent.
2. Obviousness Over Combined Prior Art
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are “such
that the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
Petitioner’s declarant, Dr. Taylor, states that
[i]n patent cases involving information storage and
retrieval over a network (including electronic commerce
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implementations), the “person having ordinary skill in the art”
in the early 1990’s is frequently determined to be a person
having a 4-year degree in computer science (or its equivalent)
with approximately two years of post-graduate study or
equivalent work experience.

Ex. 1011 ¶ 8; see Pet. 20. Patent Owner does not contest this description of
a person of ordinary skill in the art. Therefore, for purposes of this decision,
we accept Dr. Taylor’s description of a person of ordinary skill in the art.
Under 37 C.F.R. § 42.304(b)(4), Petitioner must state in the Petition
“[h]ow the construed claim is unpatentable under [35 U.S.C. § 103(a), and
w]here the grounds for unpatentability are based on prior art, the petition
must specify where each element of the claim is found in the prior art.” As
noted above, Petitioner asserts the following three grounds of
unpatentability:
i. claims 1–3, 8–15, 17–19, 22, 24, 26–28, 31–36, 41, and 43–44
are unpatentable under 35 U.S.C. § 103(a), over the combined
teachings of Viescas, Filepp, and Peapod;
ii. claims 1–3, 8–19, 22–28, 31–36, 41–44 are unpatentable under
35 U.S.C. § 103(a), over the combined teachings of Viescas, Filepp,
Peapod, and DeAngelis; and
iii. claims 1–3, 8–19, 22–28, 31–36 and 41–44 are unpatentable
under 35 U.S.C. § 103(a), over the combined teachings of Viescas,
Peapod, and the admitted prior art of DeAngelis.
In particular, Petitioner contends that each of the references—Viescas,
Filepp, and Peapod—teaches or suggests all of the limitations of each of
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independent claims 1 (Pet. 25–30) and 22 (id. at 42–51).4 Unlike the other
asserted grounds, however, Petitioner contends that the combination of
Viescas, Peapod, and the admitted prior art of DeAngelis does not rely on
Filepp, because Filepp antedates the filing of the ’110 Patent by only about
three months. Petitioner expresses concern that Patent Owner might swear
behind Filepp. Pet. 66. Therefore, Petitioner requests that we consider the
combination of Viescas, Peapod, and the admitted prior art of DeAngelis as
an alternative ground of unpatentability for trial. Id. at 67.
Petitioner contends that a person of ordinary skill in the art would
have reason to combine these references because (1) Manual of Patent
Examining Procedure (MPEP) 2143 teaches numerous reasons consistent
with KSR for combining references (id. at 21–25) and (2) because Dr. Taylor
opines that a person of ordinary skill in the art would find it obvious to
combine these references (Ex. 1011 ¶¶ 49–55). We note, however, that (1)
citation to the MPEP is insufficient rationale to combine the teachings of the
cited references in an adjudicative proceeding, such as a covered business
method patent review, and (2) Dr. Taylor provides no evidence to support
this opinion. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763
(“Affidavits expressing an opinion of an expert must disclose the underlying
facts or data upon which the opinion is based.”). Thus, we find Dr. Taylor’s

4 Petitioner does not contend expressly that Filepp teaches certain limitations
of the preamble of claim 1 of the ’110 Patent. Pet. 25; cf. id. at 42–45
(corresponding elements of claim 22 taught by Filepp). Nevertheless, Filepp
describes the “internals” of the Prodigy system (see Ex. 1004) and Viescas
describes “how-to-use” the Prodigy service for the prospective user (see Ex.
1005). Pet. 18–19. Therefore, we understand Petitioner to contend
implicitly that Filepp also teaches those limitations of the preamble of claim
1 of the ’110 Patent.
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opinion on this issue conclusory. Moreover, because neither Petitioner nor
Dr. Taylor specifies what teachings of each reference a person of ordinary
skill in the art would combine, we find Petitioner’s arguments and Dr.
Taylor’s opinion unpersuasive. Pet. 42–43 (citing Ex. 1011 ¶¶ 49–53).
After reviewing the Petition, the applied art, and the Declaration of
Dr. Taylor, as well as the arguments presented by Patent Owner, we
determine that Petitioner fails to show where each limitation of challenged
claims 1 and 22 is taught by one of the combined references. Petitioner must
show what reason or reasons a person of ordinary skill in the art would have
to combine the limitations allegedly taught by each one of the combined
references to achieve the recitations of claims 1 and 22. In particular, it is
not sufficient for Petitioner to assert that each of the references teaches all of
the limitations of the challenged claims 1 and 22 and then to leave it to us to
apply the teachings for Petitioner to demonstrate its asserted grounds. See
Pet. 18. This is especially true when Petitioner expressly forgoes asserting
grounds of unpatentability based on the application of the cited references
individually to the challenged claims. Id. Further, general citations to the
MPEP or to the United States Supreme Court’s decision in KSR, or both, are
insufficient to provide an adequate reason or reasons to combine the
teachings of the applied references and demonstrate “that it is more likely
than not that at least 1 of the claims challenged in the petition is
unpatentable.” 35 U.S.C. § 324(a).
On this record, we are not persuaded that it is more likely than not that
Petitioner would prevail in showing that claims 1–3, 8–19, 22–28, 31–36,
and 41–44 are unpatentable over any asserted combination of Viescas,
Peapod, and the other references. An obviousness inquiry is based on
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Patent 5,664,110

20

factual inquiries including the difference between the claimed invention and
the prior art. Graham, 383 U.S. at 17–18. For independent claims 1 and
22, Petitioner has not articulated any difference between the recited terminal
and method and each of Viescas, Filepp, and Peapod. Pet. 25–32, 42–51,
61–63, 64, 66–67. Without having identified specifically the differences
between the recited invention and the prior art, Petitioner has failed to make
a meaningful obviousness analysis under 35 U.S.C. § 103(a), and, thus, has
failed to establish that it is more likely than not that that independent claim 1
or 22 is unpatentable over the asserted combinations of Viescas, Peapod, and
the other references. Without Petitioner having identified specifically these
differences, we are unable to evaluate properly any reason offered by
Petitioner for modifying Viescas, and Peapod, in view of the other
references. Consequently, Petitioner has failed to demonstrate that it is more
likely than not that it would prevail on the ground that independent claims 1
and 22 are unpatentable over Viescas, Peapod, and the other references. For
the same reasons, Petitioner also has failed to demonstrate that it is more
likely than not that it would prevail with respect to the remainder of the
challenged claims.
Accordingly, Petitioner fails to establish that it is more likely than not
that Petitioner would prevail in showing unpatentability of claims 1–3, 8–19,
22–28, 31–36, and 41–44 based on Viescas, Filepp, Peapod, and/or
DeAngelis.

III. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition fails to establish that it is more likely than not that Petitioner
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Patent 5,664,110

21

would prevail in establishing the unpatentability of any of the challenged
claims of the ’110 Patent.

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims.
FURTHER ORDERED that no covered business method patent
review is instituted.

PETITIONER:

Christopher Rourk
Nathaniel St. Clair II
JACKSON WALKER L.L.P.
crourk@jw.com
nstclair@jw.com

PATENT OWNER:

Douglas L. Bridges
Melvin Barnes
CAPITOL LEGAL GROUP, PLLC
bridges@capitallegalgroup.com
barnes@capitallegalgroup.com