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

Patent Trial and Appeal BoardJul 28, 2015

12912375 (P.T.A.B. Jul. 28, 2015)

Trials@uspto.gov Paper 13 571-272-7822 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 CBM2014-00162 Patent 8,484,111 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 11, “Dec.”) denying institution of covered business method patent review of claims 13–18 of U.S. Patent No. 8,484,111 B2 (Ex. 1001, CBM2014-00162 Patent 8,484,111 B2 2 “the ’111 patent”). Paper 12 (“Req. Reh’g”). In our Decision, we determined that the information presented in the Petition did not establish that the ’111 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. 11. 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 ’111 patent qualifies CBM2014-00162 Patent 8,484,111 B2 3 as a covered business method patent, we considered the language of the claims. We observed that none of the challenged claims expressly recites an apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Dec. 9. We further noted that “the claims on their face are directed to technology common in business environments across sectors with no particular relation 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 ’111 patent. Id. at 9–11 (citing Pet. 7–9 (Paper 6)). 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 system recited in claims 13–18. Id. at 10. Accordingly, we concluded that Petitioner, relying on two isolated passages from the written description, had not shown that the ’111 patent “claims an activity that is ‘financial in nature, incidental to a financial activity or complementary to a financial activity.’” Id. 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 8–10. Also with regard to the interpretation of section 18(d)(1), Petitioner submits that our Decision did not address “the creation or impact” of a CBM2014-00162 Patent 8,484,111 B2 4 presumption that a patent classified in Class 705 is a covered business method patent. Id. at 12. In its Request for Rehearing, however, Petitioner does not cite binding authority for the existence of a presumption. See Req. Reh’g 12. Moreover, although Petitioner argued in the Petition that classification in Class 705 is evidence that the Office believes the ’111 patent is related to the financial services industry, Petitioner did not argue that such classification gives rise to a presumption, even though the single Board decision cited by Petitioner in the Request for Rehearing issued prior to the date on which the Petition was filed. See Pet. 9; Req. Reh’g 12 (citing Hulu, LLC v. Intertainer, Inc., Case CBM2014-00053, slip op. at 12 (PTAB June 23, 2014) (Paper 11)); see also Dec. 10–11 (addressing Petitioner’s Class 705 argument). Thus, Petitioner has not shown that our Decision misapprehended or overlooked any matters or arguments regarding the classification of the ’111 patent in Class 705. Turning to Petitioner’s second contention, we are not persuaded that our Decision overlooked any analysis in the Petition as to whether the claims 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 ’111 patent satisfies the “financial product or service” requirement of section 18(d)(1) consumed only two pages of text in the Petition. See Pet. 7–9. As discussed above and in the Decision, Petitioner’s argument was limited to citing two passages from the written description and asserting that the ’111 patent was classified in Class 705. See Dec. 9–10 (citing Pet. 7–9). Petitioner argues that we overlooked analysis in the Petition demonstrating that the claims of the ’111 patent, including claim 13, are CBM2014-00162 Patent 8,484,111 B2 5 directed to a change management mechanism 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. 4–6, 8–9, 12, 14, 15, 21, 22). As is evident from Petitioner’s numerous 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 claims 13–18 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. 10. 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 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 CBM2014-00162 Patent 8,484,111 B2 6 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. IV. ORDER Accordingly, it is: ORDERED that Petitioner’s Request for Rehearing is denied. CBM2014-00162 Patent 8,484,111 B2 7 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

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