Fidelity National Information Services, Inc.v.CheckFree Corporation

Patent Trial and Appeal Board

Dec 22, 2014

10025897 (P.T.A.B. Dec. 22, 2014)

Trials@uspto.gov
571-272-7822  
Paper 51
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 CBM2013-00030
Patent 7,853,524 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

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BACKGROUND
On December 23, 2013, we entered a Decision to Institute a covered
business method patent review, Paper 16 (“Dec. to Inst.”), of U.S. Patent No.
7,853,524 B2 (“the ’524 Patent”) on the grounds that claims 1–21 do not recite
patent-eligible subject matter under 35 U.S.C. § 101.
In this final Written Decision, we hold that claims 1–21 are unpatentable.
THE ’524 PATENT (EXHIBIT 1001)
The ’524 Patent describes a system and method in which a payment service
provider uses a computer to select a form for crediting a payee based on either
comparing the payer account number, which is associated with the payer and the
payee, to a merchant account scheme associated with the payee, or comparing the
payment amount, which is associated with a payment request, to the merchant
credit limit, which is associated with the payee. Ex. 1001, Abstract. Claims 1–10
are drawn to a computer-implemented method, claims 11–20 are drawn to a system
with an interface to a network, and claim 21 is drawn to a system with means
limitations corresponding to the steps recited in claim 1.
The specification states that the invention is a computerized system for
paying bills in which a consumer, using a telephone, computer, or other electronic
means from a remote location, may direct a single source to pay the consumer’s
bills, instead of the consumer writing a check for each bill. Ex. 1001, col. 1, ll. 21–
27. After signing up with a service provider, id. at col. 2, l. 57–col. 3, l. 36, and
informing the service provider of the identity of merchants to be paid, id. at col. 3,
ll. 37–55, a consumer can use a telecommunications terminal to initiate payment of
bills by accessing his merchant list and inputting the payment date and amount, id.
at col. 3, ll. 56–60. The service provider then may pay merchants by draft, by
check, or by electronic funds transfer. Id. at col. 4, ll. 44–45. The service provider
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selects the form of payment based on the consumer’s payment instructions, cost-
effectiveness, risk considerations, the service provider’s capabilities, and available
networks. Id. at col. 4, ll. 54–63; col. 5, ll. 26–32. The service provider also may
make consolidated payments to merchants. Id. at col. 4, ll. 64–65.
ILLUSTRATIVE CLAIM
1. A computer-implemented method for directing a payment,
comprising:
receiving, at a payment service provider, a request to pay a
payee on behalf of a payer;
selecting, by at least one payment service provider computer
prior to a debiting of a financial account of the payer, a form for
crediting the payee, wherein the selection is based on at least one
of:
(i) comparing a payer account number associated with the
payer and the payee to a merchant account scheme
associated with the payee; or
(ii) comparing a payment amount associated with the received
request to a merchant credit limit associated with the payee;
and
directing, by the at least one payment service provider
computer, a payment to the payee in accordance with the selected
form for crediting.
CLAIM CONSTRUCTION
Electronic bill payment system
In a covered business method patent review, a claim is given its broadest
reasonable construction in light of the specification. 37 C.F.R. § 42.200(b). Patent
Owner argues that each of the independent claims (claims 1, 11, and 21) requires
three operations (data capture, payment form determination, and initiation of
payment in the determined form) to be performed by the “claimed electronic bill
payment (EBP) process and system.” PO Resp. 18–19. Noting that the ’524
Patent claims do not recite bill payment or an EBP process or system and that the
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terms “electronic bill” and “EBP” do not even appear in the specification,
Petitioner argues that Patent Owner is attempting to recast abstract ideas recited in
the ’524 Patent claims in a manner that requires machines or transformations. Pet.
Reply 2, 6. We agree with Petitioner that Patent Owner’s construction arguments
attempt to read into the claims features that are not recited in them. For example,
although there is no EBP system mentioned in the claims, citing the testimony of
its expert, Dr. John Kelly, Patent Owner argues that a payment request is captured
through an automated interaction with a user over a telephone or is conveyed by
transferring data to the EBP system over a data network from a computer. PO
Resp. 21–22. As discussed below, we decline to alter any of the constructions we
applied in our Decision to Institute.
The receiving limitation
Patent Owner further reads into its EBP characterization of the independent
claims a myriad of unclaimed features discussed in the specification. The first
limitation of independent claims 1, 11, and 21 concerns receiving a payment
request. Patent Owner argues that this first element in each of claims 1, 11, and 21
is a “programmed computer that performs the functions of the front end processor
of the electronic bill payment system being described in the patent.” PO Resp. 26.
For example, Patent Owner argues that “the payment request data is received by a
component of the EBP system (e.g., a ‘front-end processor’ component).” PO
Resp. 21 (emphasis in original). Method claims 1–10 recite receiving a request to
pay a payee on behalf of a payer, with no further limitations on the apparatus that
receives the request. Apparatus claims 11–20 recite “an interface to a network
configured to receive a request to make a payment to a payee on behalf of a payer,”
with no further limitations on the interface. Although Patent Owner contended in
its Preliminary Response that the interface in claim 11 is a specialized computer
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within an EBP system that performs front-end tasks, Prelim. Resp. 15, our
Decision to Institute construed the term as sufficiently defined in the claim itself.
Dec. to Inst. 9. Apparatus claim 21 recites a means for receiving, at a payment
service provider, a request to pay a payee on behalf of a payer. As Patent Owner
points out, applying 35 U.S.C. § 112 ¶ 6, we construed the structure corresponding
to the means for receiving to be processor 40. PO Resp. 26.
Patent Owner argues that our recognition of the front end processor 40 as the
structure corresponding to the “means for receiving” in claim 21 indicates that we
overlooked the extensive description of the role of the front end processor as the
analogous EBP component that performs the receiving step in claim 1 and
functions as the interface in claim 11. Id. at 25. Patent Owner then expands this
assertion stating that “it is difficult to reconcile the Board’s conclusion that the
’524 Patent provides a description of a particular structure of the means for
receiving element of claim 21, while at the same time concluding the same
disclosure provides no or insufficient guidance about the properties or functions
performed by the analogous ‘receiving’/’interface’ components of claims 1 and
11.” Id. at 26. Nevertheless, Patent Owner acknowledges that claims 1 and 11 are
not means-plus-function claims and are not limited to the particular exemplified
structure in the ’524 disclosure that performs the “means for receiving” function of
claim 21. Id.
Although the ’524 Patent describes an embodiment with a front end
processor that receives, through electronic communications, payment request data
from a consumer, claims 1 and 11 are not limited to such a configuration. The
’524 Patent states that the consumer’s files may be received at the service provider
on a front end processor that interfaces with a telecommunications network and
that the front end processor may be a DEC VAX connected to an IBM main frame
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Model 4381. Ex 1001, col. 4, ll. 24–27, 49–51. The ’524 Patent further states that
an example of the software designed to make several decisions relating to
particular transactions is not intended to limit the application to the details
described in the example and is only provided to enhance the description of the
invention. Id. at col. 6, ll. 37–43. Thus, the claims are drawn to a general purpose
machine programmed to perform routine tasks as exemplified in the specification.
We decline to read into claims 1 and 11 limitations that are not present in the
claims.
The payment service provider computer
In a similar manner, Patent Owner argues that the “payment service provider
computer” must be construed inherently to perform certain other actions that are
not recited explicitly in the claim language in order to perform the functions recited
in the claims. PO Resp. 30. Noting that the specification discloses algorithms and
source code, Patent Owner argues that the payment service provider computer is
programmed specially to perform the payment form determination and payment
direction steps recited in claim 1 and to possess the corresponding capabilities
specified for the system components in claims 11 and 21. Id. at 31. Although the
preamble of claim 1 identifies the method as computer implemented, the steps of
claim 1 do not recite any structure other than the payment service provider
computer. Claim 11 recites only a “processor” that is configured to perform the
recited selecting and directing functions. Patent Owner argues that the Merchant
Master File, consumer pay table, and consumer database described in the
specification are data collections generated, maintained, and/or accessed by various
components of the EBP system during its operation, PO Resp. 38, but none of
these features is recited in the claims.
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Patent Owner also takes inconsistent positions concerning the structure of
the payment service provider computer. Similar to the arguments Patent Owner
advanced in its discussion of the means for receiving limitation, on page 40 of the
Patent Owner Response, Patent Owner criticizes our statement that the claims do
not recite any particular structure for the service provider computer. However, on
page 56 the Patent Owner Response states that claim 1 is “not restricted to the
particular payment service provider computer described in the disclosure.” Patent
Owner’s arguments that the payment service provider computer must include
incidental functions, such as obtaining the information to be processed or
retrieving data evaluations performed by another computer, PO Resp. 34, or that
the payment form determination evaluation “implicates actions that must be
performed that are not expressly recited in the claim language,” id. at 40, do not
justify our construing the payment service provider computer more narrowly than
the limitations that appear in the claims.
The directing payment limitation
Patent Owner argues that claims 1, 11, and 21 specify that the EBP process
and system possess a particular “back end” functionality that makes payments after
the payment service provider computer has determined the appropriate form of
payment. PO Resp. 46–51. Patent Owner further argues that the EBP system is
configured to direct payment by different mechanisms based on the determination
of the form of payment resulting from the determination step. Id. For example,
Patent Owner argues that we overlooked interactions between the payment service
computer and components of the EBP, such as a network interface and special
printers. Id. at 50–51. However, as previously noted, the ’524 Patent does not
discuss an EBP system, and none of these features argued by Patent Owner is
recited in the claims.
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Merchant credit limit associated with a payee
Patent Owner contends that our construction of the “merchant credit limit
associated with a payee” as the maximum amount of credit a merchant extends to a
payer is contrary to the plain language of the claims because the limit is associated
with the payee. PO Resp. 51. Our construction is consistent with the limit being
associated with the payee, i.e., the party to whom the payment is made. Patent
Owner’s proposed construction, “a value reflecting the credit limit used by the
EBP system which is associated with a particular payee,” PO Resp. 52, reads into
the claim an extrinsic EBP system not discussed in the specification. In addition,
the value reflecting the credit limit is the amount of credit a payee, i.e., a merchant,
extends to a payer.
Claims 1, 11, and 21 each recite comparing a payment amount associated
with the received request, i.e., the request received on behalf of the payer, to a
merchant credit limit associated with the payee. The only credit limits described in
the specification are limits on the amount of credit extended to a payer. Although
the specification describes a merchant credit limit, it does not describe specifically
such a limit associated with the payee. The specification describes comparing the
payment amount to a merchant credit limit, and making the payment as an
electronic payment or a service provider check, if the payment amount is under a
specified amount. Ex. 1001, col. 5, l. 65–col. 6, l. 5. Any amount within the
merchant’s (i.e., the payee’s) credit limit is added to the consumer’s (i.e., payer’s)
monthly ACH balance, and any transaction can be compared to the consumer’s
credit limit parameters stored in a database. Id. at col. 6, ll. 5–10. The
specification also describes releasing the payment as a draft written on the
consumer’s account, rather than the service provider’s account, if the payment
amount exceeds the consumer’s, i.e., the payer’s, credit limit. Id. at col. 6, ll. 10–
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16. Because the consumer’s credit limit described in the specification protects the
service provider, id. at col. 5, ll. 35–37, 65–66, it is a limit associated with the
service provider rather than the payee. Claims 1, 11, and 21, however, recite the
merchant credit limit associated with the payee. Because each merchant may
extend a different amount of credit to each customer, the merchant credit limit
associated with the payee limitation appears to require the service provider
computer to select a payment means based on comparing the requested payment
amount to the amount of credit the merchant, i.e., the payee, extends to the payer.
That is, the amount of the payment is compared to the payer’s credit limit with the
payee. In any case, as discussed below, this limitation is not material to our
determination of the issues under 35 U.S.C. § 101.
Remittance processing system
Patent Owner contends that the remittance processing system (RPS) credit is
limited to a particular system supported by MasterCard. PO Resp. 52. Patent
Owner relies on extrinsic evidence, i.e., testimony that one of ordinary skill would
recognize distinctions between the terms “electronic credit,” ACH credit, and RPS
credit. Id. at 52–54. As we noted in our Decision to Institute, while Figs. 5 and 6
of the ’524 Patent refer to element 49 as the MasterCard RPS network, there is no
further description of the network in the specification. Dec. to Inst. 8. We also
noted that the claims refer to “a” remittance processing system, rather than a
specific system supported by MasterCard. Id. Similarly, the ’524 Patent does not
refer to the remittance processing system as a proper noun (the term is not
capitalized), indicating that the inventor intended to refer to a more generic term.
Applying the broadest reasonable construction, we do not limit the claimed
remittance processing system to the system supported by MasterCard. However,
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as discussed further below, this limitation is not material to our determination of
the issues under 35 U.S.C. § 101.
THE ’524 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.
37 C.F.R. § 42.301(a) (emphasis added). 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).
The ’524 Patent is a covered business method patent. Claim 1 of the ’524
Patent does not recite a technological invention. Although the preamble of claim 1
states that the claimed method for directing a payment is computer implemented,
the claim does not recite a technical feature that is novel and unobvious over the
prior art and solves a technical problem using a technical solution. Patent Owner
argues that before the invention in the ’524 Patent, the problems facing adoption
and greater use of electronic bill payment were technological ones. PO Resp. 70.
Patent Owner contends that the specially programmed computer systems in the
’524 Patent are configured in a way that solves these technological challenges. Id.
at 72. Although Patent owner contends that the processes and systems defined by
the claims use technological solutions to solve technological problems, id., claim 1
does not recite any such technological solutions. Claim 1 recites receiving a
payment request, selecting a form of payment, and directing the payment in
accordance with the selected form. The service provider recited in claim 1 selects
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the form of payment based on comparing the payer account number to the
merchant account scheme or the payment amount with the merchant credit limit
associated with the payee. Patent Owner emphasizes that the payment service
provider computer determines a form of payment and then directs the payment on
behalf of a payer. Id. at 73. Merely reciting that the process is carried out by a
computer does not make the claimed subject matter a technical solution of a
technical problem. The limitations of claim 1 concern a service provider making a
payment to a payee on behalf of a payer. The limitations of claim 1 do not address
any technical problems or recite any technical solutions, other than the use of a
computer to perform routine tasks, such as comparing account numbers and
payment amounts to established criteria. Thus, we conclude that claim 1 does not
recite a technological invention.
§101 SUBJECT MATTER ELIGIBILITY
Independent claims 1, 11, and 21
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
patentable-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 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. Each of independent claims 1, 11,
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and 21 of the ’524 Patent recites a method or apparatus in which a service provider
receives a request to pay a payee, selects a form of crediting the payee based on
comparing the payer’s account number to the payee’s merchant account scheme
and the payment amount to a merchant credit limit associated with the payee, and
directs the payment to the payee in the selected form. Thus, each of the
independent claims is drawn to a computer-implemented process or apparatus in
which a third party intermediary, i.e., the payment service provider, receives a
request to make payment, applies certain criteria to determine what form of
payment to use, and then directs the payment to the payee in that form.
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 2355–57.1 In
the ’524 Patent, the service provider intermediates payment between the payer and
the payee, acting much like the third party intermediary in Alice. The payment
service provider mitigates settlement risk by crediting the payee or issuing a check
to the payee drawn on the service provider’s funds, or in other circumstances,
issuing a draft drawn on the payer’s funds, i.e., determining the form of payments
based on the comparisons recited in the claims. Ex. 1001, col. 5, l. 25–col. 6, l. 15.
The computer implementation associated with comparing the account number and

1 In Bilski v. Kappos, 561 U.S. 593 (2010) the Court found upatentable, 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 counterrisk for the same commodity and initiating a series of
risk balancing transactions between those market participants and the commodity
provider.
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the credit limit are incidental to the fundamental economic concept of having a
third party intermediate a settlement either by crediting the payee from the third
party’s funds (as in a credit transaction) or from the payer’s funds (as when the
amounts exceed the payer’s credit limit with the service provider). Thus, we
conclude that each of independent claims 1, 11, and 21 is directed to an abstract
concept.
The second step in the analysis requires us to determine whether the claims
do significantly more than simply describe that abstract method. Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (citing Mayo, 132 S. Ct. at
1297). Whether considered as individual elements or as an ordered combination,
Patent Owner’s recasting of the computer-implemented method claims as a data
capture step, a payment form determination made by a payment service provider
computer, and an initiation of payment by the computer, PO Resp. 19, does not
alter the abstract nature of the claimed subject matter. The same analysis applies to
the apparatus claims. “[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, L.P., No. 2013-1505, 2014 WL 6845152, at
*9 (Fed. Cir. Dec. 5, 2014).
As discussed above, Patent Owner improperly reads into the claims
limitations from the specification and extrinsic sources. Patent Owner argues that
the “particular structure” that corresponds to the first element of each of claims 1,
11, and 21 is a programmed computer that performs the functions of the front-end
processor component of the electronic bill system being described in the ’524
Patent. PO Resp. 26. There is no ‘electronic bill system’ mentioned in the ’524
Patent, and the function referenced by Patent Owner is simply receiving a request
to pay the payee. Noting that the specification does not describe any specialized
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programming of a general purpose computer as necessary for the interface to the
network, we determined that the disclosed structure corresponding to the “means
for receiving” in claim 21 is front end processor 40. Dec. to Inst. 9–10. Citing the
declaration of its expert, Dr. Kelly, Patent Owner acknowledges that one of
ordinary skill would recognize from the description of the various components in
the ’524 Patent that they may be implemented in any suitable computer-based
system. PO Resp. 19, n.1. Thus, in this element, the front-end processor is simply
programmed to do what computers ordinarily do—receive information. Data
gathering steps, such as obtaining information, or in this case, receiving a request
for payment, do not make an otherwise non-statutory claim statutory. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011).
The payment service provider computer recited in claims 1 and 11 and the
means for selecting in claim 21, which we construed to mean a payment service
provider computer programmed to execute the steps shown in Figs 4A – 4C, Dec.
to Inst. 10–11, are recitations of a general purpose computer that carries out the
necessary calculations to perform the recited comparisons. A computer used for its
most basic function, the performance of repetitive calculations, does not impose a
meaningful claim limitation. Bancorp Servs., L.L.C. v. Sun Life Assurance Co.,
687 F.3d 1266, 1278–79 (Fed. Cir. 2012).
Citing the testimony of its expert, Dr. Kelly, Patent Owner further argues
that because the payment service provider computer determines the form of
payment, the claimed process “physically transforms [the] received payment
request data into a physical payment form, via the actions of the specially
programmed payment service provider computer.” PO Resp. 57 (emphasis in
original). However, as Petitioner notes, another of Patent Owner’s experts, Dr.
Elliott C. McEntee, conceded that selecting an electronic form of payment, rather
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than printing a check does not constitute a physical transformation. Pet. Reply 12
(citing Ex. 2028, 426:19–427:6). We agree with Petitioner that, even if the process
is construed to mean creating a paper instrument under some circumstances, that
instrument is not created by transforming something else. Id. We further note that
not all transformations or machine implementations infuse an otherwise ineligible
claim with an inventive concept, DDR Holdings, 2014 WL 6845152, at *9, and we
conclude that the transformation urged by Patent Owner would not result in patent-
eligible subject matter.2 Thus, we conclude that independent claims 1, 11, and 21
do not recite patent-eligible subject matter.
Dependent claims
None of the dependent claims adds patent-eligible subject matter to
independent claims 1 and 11, from which they depend. As discussed below, the
additional details of how the payment service provider makes payments or decides
the form of payment in the dependent claims do not recite any meaningful
limitations on the abstract concepts recited in claims 1 and 11.
Dependent claims 2, 3, 6, 7, 12, 13, 16, and 17
Patent Owner argues that each of claims 2, 3, 6, 7, 12, 13, 16, and 17 further
limits the back-end processing recited in the corresponding independent claim. PO
Resp. 61–65. Noting that our Decision to Institute recognized a paper check as a
physical element, Patent Owner argues that this confirms the payment direction
steps of claim 1 and 11 perform a physical transformation. Id. at 63. Patent Owner
makes a similar argument concerning claims drawn to consolidated checks, paper

2 In DDR Holdings, 2014 WL 6845152, at *12, the Federal Circuit found patent-
eligible claims drawn to retaining website visitors by manipulating interactions
with the Internet to yield a desired result that overrides a routine and conventional
sequence of events. In contrast, the claims of the ’524 Patent recite steps and
apparatus that would be implemented as a conventional sequence of events on
general purpose computers.
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drafts, and particular forms of electronic transfers. Id. at 63–65. As discussed
above, we agree with Petitioner that paper checks, drafts, and electronic transfers
are not transformation of requests for payment. In any case, even if they were
construed to be transformations, they do not infuse an otherwise ineligible claim
with an inventive concept. Additionally, claims 6 and 7, which are drawn to
electronic transfers over the ACH network or a remittance processing system
(whether or not the claimed remittance processing system is limited to the
MasterCard system) constitute field-of-use limitations that do not confer patent
eligibility. See Bancorp, 687 F.3d at 1280 (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 postsolution components did not make the concept
patentable.”)). Thus, we conclude that claims 2, 3, 6, 7, 12, 13, 16, and 17 do not
recite patent-eligible subject matter.
Claims 4, 5, 14, and 15
Claim 4 and 14 recite receipt of first and second payment requests on behalf
of first and second payers and a combined payment in the form of a consolidated
check drawn on the service provider’s account. Patent Owner contends that this
sequence of transactions confirms the functional interdependence of the steps of
claims 1 and 11. PO Resp. 66. Patent Owner also argues that the remittance list
associated with the consolidated check, recited in claims 5 and 15, shows a
physical transformation that the payment service provider computer directs and a
physical document generated by a printer being directed by the payment service
computer. Id. at 67. We conclude that the claims drawn to a third party
intermediary, such as the payment service provider, consolidating payments from
multiple payers into a single check to a payee recite an abstract economic concept
that alone is not patent-eligible subject matter. In addition, as discussed above,
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these limitations do not constitute physical transformations that result in patent-
eligible subject matter. Additionally, these limitations recite no significant
limitation on the computer limitations to define patent-eligible subject matter.
Claims 9, 10, 19, and 20
Claims 9, 10, 19, and 20 recite the form of payment (electronic credit or
paper draft) used depending upon the amount of the payment as compared to the
merchant credit limit or whether the payer account number comports with the
merchant account scheme. Patent Owner argues that these limitations demonstrate
the EBP system is a specially programmed computer and that they are logical
operations that are integral to how the computers perform their functions. Id. at
68–69. Claims 9, 10, 19, and 20 recite the results of the comparison recited in
independent claims 1 and 11, which is an abstract concept. We conclude that these
claims do not add any further computer limitations themselves and do not recite
patent-eligible subject matter.
Claims 8 and 18
Claims 8 and 18 recite selecting the form of payment based on a settlement
code associated with the payee. Although Patent Owner argues that the settlement
codes are data elements stored in the EBP, they are simply indicators of the form in
which the payee wants to be paid. We conclude that limitations drawn to
inspecting the settlement code do not alter the abstract concept of having a service
provider act as an intermediary between a payer and payee to make payment in
accordance with defined payment form criteria.
MOTION TO EXCLUDE
Having timely objected, Patent Owner moves to exclude certain paragraphs
of the rebuttal testimony of Petitioner’s expert Michael Shamos, Ex. 1018
(“Shamos Decl.”), as beyond the scope of the testimony of Patent Owner’s experts.
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Paper 42 (“Mot. to Exclude”). Petitioner identifies subject matter the challenged
paragraphs of the Shamos Declaration rebut. Paper 47 (“Opp. to Mot. to
Exclude”).
We do not cite or rely on the testimony in the Shamos Declaration in
reaching our decisions in this proceeding. Therefore, Patent Owner’s Motion to
Exclude is dismissed as moot.
SUMMARY
For the reasons discussed above, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 1–21 do not recite patent-eligible
subject matter.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–21 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.

CBM2013-00030
Patent 7,853,524 B2

19 

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

Dale Nixon
dnixon@sidley.com