In a covered business method review proceeding the PTAB canceled all 23 claims of U.S. Patent No. 7,603,392 (“the ’382 patent”) as directed to ineligible subject matter under 35 U.S.C. § 101. Bank of America, N.A. v. Intellectual Ventures I, LLC, CBM2014-0030, Paper No. 32, April 24, 2015, at p. 20. The ’382 patent is titled “Advanced Internet Interface Providing User Display Access of Customized Webpages.” Id. at 2. Fig. 3 is reproduced below:
According to the invention, information users may tailor their information user profile, which is transferred to an information provider when a webpage is accessed, permitting the information user to acquire specific information. Id. The Board reproduced claims 1 and 7 of the ’382 patent as representative of the challenged claims. Id. at 4-5. Claims 1 and 7 read:
- A system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user, comprising:
an interactive interface configured to provide dynamic web site navigation data to the user, the interactive interface comprising:
a display depicting portions of the web site visited by the user as a function of the web site navigation data; and
a display depicting portions of the web site visited by the user as a function of the user’s personal characteristics.
- A method of generating a web page comprising:
generating a plurality of data streams, wherein each data stream is associated with a particular portion of the web page, and wherein each data stream is stored in a computer memory; and
changing at least one of the particular portions of the web page as a function of time.
The Board determined that these claims are directed to the abstract idea of “tailoring an information provider’s web page based on data about a particular user.” Id. at 9-12. For support, the Board cited testimony by the patent owner’s expert:
“I’m trying to make clear that the patent is described at what may appear to be a fairly high abstract level, because it was generally known by persons of skill in the art that there are multiple ways to go about reducing the invention to practice depending upon the technologies that they have at hand. And it wasn’t the patent’s job to be that specific at the time.
I shouldn’t say it wasn’t the patent’s job. The inventor did not choose to describe at that level of detail.”
Id. at 9-10.
The Board also determined that the claims do not transform the abstract idea into patentable subject matter. Relying on Ultramercial, Inc. v. Hulu, LLC, the Board reasoned that the claims provide little more than a directive to “use the internet” to implement the abstract idea. Id. at 10; 12 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)). Distinguishing DDR Holdings, LLC v. Hotels.com, L.P., the Board found that the challenged claims did not “specify how interactions with the internet are manipulated to yield a desired result.” Id. at 15-17 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014)).
With respect to claim 1, for support the Board cited unchallenged testimony by the petitioner’s expert asserting that claim 1 provides no details about performing the display elements. Id. at 13. With respect to claim 7, for support the Board cited testimony by the patent owner’s expert that the computer memory is the only technological component of claim 7, and is “a well-known and standard computer component long before the earliest filing date of the ’382 patent.” Id. With respect to the remaining claims, for support the Board credited testimony by the petitioner’s expert that the remaining claim elements were conventional and routine as of the earliest filing date. Id. at 13. The Board credited the claim-by-claim analysis of petitioner’s expert over the analysis of the patent owner’s expert, because the patent owner’s analysis addressed the claim in “two groups only.” Id. at 15.
Mr. Hare is a patent attorney in the chemical, pharmaceutical, and biotechnology practice groups. He maintains an active prosecution and litigation practice.
Mr. Hare’s prior experience focused on Hatch Waxman litigation. Before that he assisted a solo patent attorney by drafting pharmaceutical formulations patents and office action responses. Mr. Hare also interned at the Federal Circuit for the honorable Chief Judge Rader.