Unified Patents Inc.v.Finnavations LLC

Patent Trial and Appeal Board

Nov 30, 2015

12121730 (P.T.A.B. Nov. 30, 2015)

Trials@uspto.gov Paper No. 13 571.272.7822 Entered: November 30, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UNIFIED PATENTS INC., Petitioner, v. FINNAVATIONS LLC, Patent Owner. ____________ Case IPR2015-01209 Patent 8,132,720 B2 ____________ Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and CARL M. DEFRANCO, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 I. INTRODUCTION A. Background Unified Patents Inc., (“Petitioner”) filed a Petition requesting inter partes review of claims 1-20 of U.S. Patent No. 8,132,720 B2 (Ex. 1001, “the ’720 patent”) pursuant to 35 U.S.C. §§ 311-319. Paper 1 (“Pet.”). IPR2015-01209 Patent 8,132,720 B2 2 Finnavations LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. For the reasons described below, we deny institution of inter partes review. B. Related Proceedings Both Petitioner and Patent Owner state that the ’720 patent is the subject of numerous pending proceedings in the U.S. District Courts. Pet. 1-3; Paper 6, 2-3; Paper 9, 2-3. C. The ’720 patent The ’720 patent is titled “Financial Management System” and issued on March 13, 2012. Ex. 1001, 1. The ’720 patent claims priority to Provisional Application No. 60/155,102, filed on September 22, 1999. Id. The ’720 patent discloses a financial management system that includes a financial assistant and a personal financial management program. Id. at col. 2, l. 65-col. 3, l. 16. The financial assistant intercepts transaction data from a user’s online transaction with a merchant and transmits the data to a personal financial management program. Id. Figure 1 of the ‘720 patent is reproduced below. IPR2015-01209 Patent 8,132,720 B2 3 Figure 1 depicts a flow chart of a preferred embodiment of the method of the ’720 patent. Id. at col. 2, ll. 51-52. At step 101, the financial assistant is invoked by the user or invoked automatically by an event, such as the conclusion of an online transaction. Id. at col. 3, ll. 28-40. The financial assistant then intercepts the transaction data, such as purchase amount and IPR2015-01209 Patent 8,132,720 B2 4 payee, and copies the transaction data. Id. at col. 3, ll. 41-58; Fig. 1, steps 102-103. The financial assistant receives additional transaction data, such as a category or remarks. Id. at col. 3, ll. 59-62; Fig. 1, step 104. Finally, the financial assistant transmits all the transaction data to a personal financial management program. Id. at col. 4, ll. 6-8; Fig. 1, step 105. Figure 3 of the ’720 patent is reproduced below. Figure 3 depicts a graphical user interface (“GUI”) of the financial assistant that allows a user to provide additional transaction data, such as a category, to the intercepted transaction data prior to the transaction data being transmitted to the personal financial management program. See id. at col. 5, ll. 10-40. The user transmits the transaction data by selecting accept button 308. Id. IPR2015-01209 Patent 8,132,720 B2 5 D. Asserted Grounds of Unpatentability Petitioner asserts the following grounds of unpatentability: Ground Claims Prior Art § 103 1-7 and 11-20 Williams1 and Chancey2 § 103 8-10 Williams, Chancey, and Schrader3 § 103 1-7, 11-12, and 14-18 Schutzer4 and Chancey § 103 8-10 Schutzer, Chancey, and Schrader § 103 13, 19, and 20 Schutzer, Chancey, Mäkipää,5 and Tannenbaum6 Petitioner proffers Wells7 and the Declaration of Dr. Michael Shamos (Ex. 1002, “Shamos Decl.”) to support its unpatentability analysis in the Petition. II. ANALYSIS A. Claim Construction We interpret claims using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 1 Williams et al., U.S. Patent No. 5,815,657 (issued Sept. 29, 1998) (Ex. 1004). 2 Chancey et al., U.S. Patent No. 5,842,185 (issued Nov. 24, 1998) (Ex. 1005). 3 Schrader et al., U.S. Patent No. 5,903,881 (issued May 11, 1999) (Ex. 1006). 4 Schutzer et al., U.S. Patent No. 5,920,848 (issued July 6, 1999) (Ex. 1007). 5 Mäkipää et al., U.S. Patent No. 6,394,341 B1 (issued May 28, 2002) (Ex. 1008). 6 Tannenbaum, U.S. Patent No. 5,521,363 (issued May 28, 1996) (Ex. 1009). 7 Wells et al., U.S. Patent No. 6,446,048 B1 (issued Sept. 3, 2002) (Ex. 1010). IPR2015-01209 Patent 8,132,720 B2 6 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1276-78 (Fed. Cir. 2015). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Any special definition for a claim term must be set forth in the specification with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner propose constructions for various claim terms. Pet. 10-13; Prelim. Resp. 1-8. Based upon our review of the record before us, however, no explicit construction of any claim term is needed at this time. B. Grounds Under 35 U.S.C. § 103 Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented 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, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550 IPR2015-01209 Patent 8,132,720 B2 7 U.S. at 407 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). i. Claims 1-7 and 11-20 over Williams and Chancey Independent claim 1 requires: a financial assistant comprising: a set of graphical user interface generation executable code configured to generate a graphical user interface at the conclusion of the online transaction, the graphical user interface comprising: . . . a category field configured to accept user input, and an accept button. Ex. 1001, col. 7, ll. 53-62. Independent claims 12 and 19 recite a similar requirement. Id. at col. 8, ll. 50-56, col. 9, l. 25-col. 10, l. 4. Petitioner states that “[the financial assistant] is shown by the Williams electronic wallet, and the GUI of Fig. 11.” Pet. 20; id. at 30, 33- 34. Petitioner, however, asserts that memo field 2150, depicted in Williams’ Figure 21, teaches the claimed category field. Id. at 22-23, 34. Petitioner states “Fig. 21 shows a ‘memo’ field at the lower left, which inherently can be used for a category.” Id. at 23. Petitioner asserts that Chancey teaches prompting a user to enter a category code. Id. at 15-16, 23 (citing Ex. 1005, col. 2, ll. 32-34). Petitioner argues that “[o]ne of skill in the art would understand that a ‘memo’ field would commonly be used to record a transaction type, or IPR2015-01209 Patent 8,132,720 B2 8 category, and thus would be motivated to incorporate the category and prompt of Chancey into Williams as a matter of design choice to categorize the transaction before exporting it to Quicken, rather than afterward.” Id. at 16. Petitioner further argues that the combination of Chancey and Williams is obvious because Wells shows such a combination and, in particular, shows a user categorizing a transaction prior to downloading transaction data to Quicken. Id. at 16-18. Petitioner cites to paragraphs 63-68 and 106-113 of the Shamos Declaration for support. Id. at 18. Independent claims 1, 12, and 19 also require that the personal financial management application transaction data from the fields of the GUI are transmitted to the personal financial management application when the accept button is activated. Ex. 1001, col. 8, ll. 1-6, 60-65, col. 10, ll. 8-13. Petitioner asserts that Williams’ disclosure of pressing accept button 1140 on the GUI depicted in Figure 11 teaches this claim element. Pet. 24-25, 31, 34. Patent Owner argues, on the other hand, that neither Chancey nor Williams discloses a financial assistant that has a GUI that displays the claimed transaction data and claimed category field, at the conclusion of an online transaction. Prelim. Resp. 12-13, 20-22. Williams is titled “System, Method and Article of Manufacture for Network Electronic Authorization Utilizing an Authorization Instrument.” Ex. 1004, 1. Williams discloses an electronic system that emulates a wallet. Id. at col. 2, ll. 56-63. Williams’ Figure 11 is reproduced below. IPR2015-01209 Patent 8,132,720 B2 9 Figure 11 depicts an authorization display screen. Id. at col. 31, ll. 3- 4. The authorization display screen displays the details of an electronic transaction and allows a user to accept or cancel a transaction. Id. at col. 31, ll. 4-7; col. 4, l. 64-col. 5, l. 13. As can be seen above, the authorization display screen indicates a payment method, a purchase amount, and a payee and includes accept button 1140. The authorization display screen does not include a category field or a memo field. “Pressing the accept button 1140 signals the user’s acceptance of the transaction, and it records the transaction data into the wallet’s register.” Id. at col. 31, ll. 14-17. Williams discloses a register that lists all transactions associated with a wallet. Id. at col. 33, ll. 5-9; Fig. 20. A register detail display is launched by double-clicking on a transaction in the wallet register. Id. at col. 33, ll. 52-58. Williams’ Figure 21 is reproduced below. IPR2015-01209 Patent 8,132,720 B2 10 Figure 21 depicts the register detail display. Id. at col. 33, ll. 52-53. The register detail display includes a memo field 2150, which is used to view or edit a short memo text for each transaction. Id. at col. 33, ll. 63-64. Memo field 2150 does not appear in a GUI until after the transaction data is transmitted to the register (i.e., the personal financial management application). Williams discloses that an alternative embodiment in which the register is replaced with Quicken. Id. at col. 36, ll. 16-18. Chancey is titled “Method and System for Electronically Tracking Financial Transactions.” Ex. 1005, 1. Chancey discloses a computerized system that automatically enters financial transactions from a financial statement, such as a credit card statement, into a financial account. Id. at Abstract, col. 2, ll. 4-18. Chancey further discloses that the financial transactions are categorized, based upon a merchant category code, in the process of entering them into the financial account. Id. at col. 2, ll. 21-35. IPR2015-01209 Patent 8,132,720 B2 11 Wells is titled “Web-Based Entry of Financial Transaction Information and Subsequent Download of Such Information.” Ex. 1010, 1. Wells discloses a system where a user can enter transaction information via a user interface on a remote device, such as a personal digital assistant; upload the information to a central database coupled to a website; and then download the information to a financial application, such as Quicken, on another computer. See id. at col. 3, ll. 28-56. Wells’ Figure 4(b) is reproduced below. Figure 4(b) depicts text entry window 402’. Id. at col. 13, ll. 57-60. Text entry window 402’ includes a plurality of data entry fields, including category field 416’. Id. at col. 12, l. 61-col. 13, l. 14. A user can enter financial transaction data into the fields and upload the financial transaction data to server 121 by selecting enter-transaction button 419. Id. A user can IPR2015-01209 Patent 8,132,720 B2 12 then download the financial transaction data to a personal financial application on another computer. Id. at col. 14, ll. 54-63. Separate from the disclosure of the text entry window 402’, Wells states: Alternatively, any of the input devices could be the combination of a computer and a web-site where financial transactions occur electronically, the computer having contacted the web-site for this purpose (see FIG. 1(c)). Thus, for example, transaction information associated with an Internet purchase can be automatically uploaded from the vendor’s web- site to database 127. If this occurs, then the transaction information will have been, at least substantially instantaneously, uploaded to database 127 without any additional effort or expense on the purchaser’s part. Id. at col. 8, ll. 45-56. Wells, however, does not disclose whether category information is included in the information uploaded from the vendor. We are persuaded that the Petition fails to sufficiently establish that it would have been obvious to one of ordinary skill in the art to modify Williams’ authorization display screen depicted in Figure 11 to include a category field configured to accept user input as disclosed in Chancey. Petitioner and its declarant, Dr. Shamos, assert that categorizing the transaction before exporting it to the personal financial management application is a matter of design choice and rely upon Chancey and Wells for support. Pet. 16; Shamos Decl. ¶ 66. Although Chancey and Wells both disclose a category field configured to accept user input, neither Chancey nor Wells teaches including such a category field on a GUI generated prior to the acceptance of an online transaction, like Williams’ authorization display screen depicted in Figure 11. As discussed above, Chancey discloses that the financial transactions are categorized in the process of entering them into a financial account from a financial statement. Wells IPR2015-01209 Patent 8,132,720 B2 13 discloses a user uploading financial transaction data to a server via a text entry window after a transaction concludes and separately discloses uploading transaction data from a vendor without any additional effort on the user’s part. This does not sufficiently establish that it would have been obvious to one of ordinary skill in the art to modify Williams’ authorization display screen depicted in Figure 11, which is generated prior to the acceptance of a transaction, to include a category field configured to accept user input. Neither Petitioner nor its declarant, Dr. Shamos, provide sufficient other rationale as to why providing a category filed configured to accept user input on Williams’ GUI depicted in Figure 11 would merely be a matter of design choice. Upon this record, we determine that Petitioner fails to establish that there is a reasonable likelihood that claims 1, 12, and 19, and claims 2-7, 11, 13-18, and 20, dependent therefrom, are unpatentable under 35 U.S.C. § 103(a) over Williams and Chancey. ii. Claims 8-10 over Williams, Chancey, and Schrader Claims 8-10 depend from claim 7, which depends from claim 1. For the same reasons discussed above with regards to claim 1, we determine that Petitioner fails to establish that claims 8-10 are unpatentable under 35 U.S.C. § 103(a) over Williams, Chancey, and Schrader. Petitioner does not rely upon Schrader to cure the deficiency discussed above. iii. Claims 1-7, 11-12, and 14-18 over Schutzer and Chancey a. Independent Claims 1 and 12 Independent claim 1 requires: a set of personal financial management application transmission IPR2015-01209 Patent 8,132,720 B2 14 executable code that transmits the personal financial management application transaction data from the fields of the graphical user interface to the personal financial management application when the accept button is activated. Ex. 1001, co1. 8, ll. 1-6. Similarly, claim 12 requires “executable code that transmits the personal financial management application transaction data from the category field of the graphical user interface to the personal financial management application when the accept button is activated.” Id. at col. 8, ll. 60-65. Petitioner argues that independent claims 1 and 12 are unpatentable over Schutzer and Chancey. Pet. 38-50. Specifically, Petitioner argues that the above claim requirement is taught by Schutzer alone. See id. at 41-42, 49. Petitioner argues that Schutzer teaches that its system can import information into a financial planner, such as Quicken. See id. at 39 (citing Ex. 1007, col. 15, ll. 49-52). With regards to claim 1, Petitioner states: Schutzer shows the “downloading” and “transferring” to the “financial software application.” Fig. 8 shows an “OK” button, which one of skill in the art would recognize as initiating the download. The downloaded data can be imported to a “financial planner, such as Quicken.” It would be an obvious matter of design choice to instead have these two steps combined, so that the OK button downloads and imports the information to the financial planner.” Id. at 41. Petitioner states that claim 12 is unpatenable for the same reasons (id. at 46 (“claim 12 is shown by Schutzer and Chancey for the same reason as discussed above”)); however, Petitioner equates the claimed accept button to OK button 347 in Figure 27, not Figure 8, of Schutzer in the claim chart (id. at 49). Petitioner cites to paragraph 78 of the Shamos Declaration for support. Id. at 41. IPR2015-01209 Patent 8,132,720 B2 15 Patent Owner argues that Schutzer fails to disclose the claimed requirement because “Schutzer only discloses that a program such as Quicken can receive undescribed data only after the ‘Financial Planning’ button in Figure 9 of Schutzer is selected.” Prelim. Resp. 35-36 (citing Ex. 007, col. 14, ll. 49-52). Patent Owner further argues that Petitioner provides no rationale or analysis as to why the “payment reminder window” in Figure 8 can be used or combined with the “Financial Planning” icon in Figure 9. Id. at 36. Schutzer is titled “Method and System for Using Intelligent Agents for Financial Transactions, Services, Accounting, and Advice.” Ex. 1007, 1. Schutzer discloses a system that has a GUI that allows a user to access various functions of the system. Id. at col. 13, ll. 11-13. Figure 9 of Schutzer is reproduced below. Figure 9 depicts menu window 130 of the system, which has buttons that allow a user to choose various functions. Id. at col. 13, ll. 49-52. If a user selects Make Payment button 133, another window 310 appears with buttons IPR2015-01209 Patent 8,132,720 B2 16 that allow a user to choose Payment button 313. Id. at col. 15, ll. 54-57; Fig. 24. If the user chooses Payment button 313 from window 310, pop-up window 340 appears. Id. at col. 16, ll. 6-7; Fig. 24. Figure 27 of Schutzer is reproduced below. Figure 27 depicts pop-up window 340. Pop-up window 340 contains the following fields: From Account 341, Payee Name 342, Amount 343, Date 344, and Category 345. Id. at col. 16, ll. 17-13. Pop-up window 340 also includes an OK button 347. Id. To make a payment, a user can provide the appropriate information for each field and select OK. Id. Similarly, the user may also choose to set up recurring payments by selecting Recurring Payment button 314 in window 310 and providing the appropriate information in pop-up window 360. Id. at col. 15, ll. 55-59, col. 16, ll. 21-27; Figs. 24, 29. Users are reminded of when a recurring payment is due by alarm window 110. Id. at col. 13, ll. 23-30; Fig. 6. If the user selects a recurring payment reminder in alarm window 110, window 120 IPR2015-01209 Patent 8,132,720 B2 17 appears. Id. at col. 13, ll. 38-41; Fig. 8. Figure 8 of Schutzer is reproduced below. Figure 8 depicts window 120, which contains the following fields: From Account 121, Payee Name 122, Amount 123, and Date 124 and contains OK button 125. Id. at col. 13, ll. 42-46. To make a payment, a user selects OK button 125. Id. If a user selects Financial Planning button 135 from menu window 130, depicted in Figure 9 above, “the system automatically executes a financial planner, such as Quicken. The user can then import information from the system into the planner.” Id. at col. 15, ll. 49-52; see also id. at col. 4, ll. 50-53. We are not persuaded that the Petition sufficiently establishes that it would have been obvious to one of ordinary skill in the art to modify Schutzer so that the transaction information is downloaded to the financial planner when either OK button 125 or OK button 347 is selected. As can be seen from the discussion above, Schutzer discloses that selecting either OK button 125 or 347 causes the payment to be made and discloses importing information from the system into a financial planner only after Financial IPR2015-01209 Patent 8,132,720 B2 18 Planning button 135 is selected from menu window 130 Id. at col. 13, ll. 44-45; col. 15, ll. 49-52; col. 16, ll. 12-13. Schutzer, thus, fails to disclose that selecting either OK button 124 or 347 causes the payment information to be downloaded to the financial planner. Further, Petitioner fails to provide sufficient evidence to support its statements that “one of skill in the art would recognize [selecting the OK button] as initiating the download” and that “[i]t would be an obvious matter of design choice to instead have these two steps combined, so that the OK button downloads and imports the information to the financial planner.” See Pet. 41. Petitioner cites to paragraph 78 of the Shamos Declaration. Id. However, Dr. Shamos’ testimony does not support these statements. See Shamos Decl. ¶ 78 (Dr. Shamos testifies that Schutzer expressly discloses transmitting data to Quicken by selecting the Financial Planning button 135 from window 130 and that this function cannot be performed without transmission executable code). Petitioner’s assertions of what one of ordinary skill in the art would recognize and what would be an obvious matter of design choice is nothing more than attorney argument unsupported by the relied upon evidence. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Upon this record, we determine that Petitioner fails to establish that there is a reasonable likelihood that claims 1 and 12, and claims 2-7, 11, and 14-18, dependent therefrom, are unpatentable under 35 U.S.C. § 103(a) over Schutzer and Chancey. IPR2015-01209 Patent 8,132,720 B2 19 iv. Claims 8-10 over Schutzer, Chancey, and Schrader Claims 8-10 depend from claim 7, which depends from claim 1. For the same reasons discussed above with regards to claim 1, we determine that Petitioner fails to establish that claims 8-10 are unpatentable under 35 U.S.C. § 103(a) over Schutzer, Chancey, and Schrader. Petitioner does not rely upon Schrader to cure the deficiency discussed above. v. Claims 13, 19, and 20 over Schutzer, Chancey, Mäkipää, and Tannenbaum a. Independent Claim 19 Like claim 12, independent claim 19 requires: a set of personal financial management application transmission executable code that transmits the personal financial management application transaction data from the category field of the graphical user interface to the personal financial management application when the accept button is activated. Ex. 1001, col. 10, ll. 8-13. As for claim 12, Petitioner relies upon Schutzer alone to teach this limitation. See Pet. 56. For the same reasons discussed above with regards to claim 12, we determine that Petitioner fails to establish that claim 19 is unpatentable under 35 U.S.C. § 103(a) over Schutzer, Chancey, Mäkipää, and Tannenbaum. Petitioner does not rely upon Mäkipää or Tannenbaum to cure the deficiency discussed above. b. Dependent Claims 13 and 20 Claim 13 depends from 12, and claim 20 depends from claim 19. For the same reasons discussed above with regards to claims 12 and 19, we determine that Petitioner fails to establish that claims 13 and 20 are IPR2015-01209 Patent 8,132,720 B2 20 unpatentable under 35 U.S.C. § 103(a) over Schutzer, Chancey, Mäkipää, and Tannenbaum. Petitioner does not rely upon Mäkipää or Tannenbaum to cure the deficiency discussed above. III. CONCLUSION On this record, we determine that Petitioner fails to demonstrate a reasonable likelihood of prevailing on the grounds of: claims 1-7 and 11-20 are obvious over Williams and Chancey; claims 8-10 are obvious over Williams, Chancey, and Schrader; claims 1-7, 11-12, and 14-18 are obvious over Schutzer and Chancey; claims 8-10 are obvious over Schutzer, Chancey, and Schrader; and claims 13, 19, and 20 are obvious over Schutzer, Chancey, Mäkipää, and Tannenbaum. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that institution of inter partes review is denied as to all challenged claims of the ’720 patent. PETITIONER: Paul C. Haughy Scott E. Kolassa KILPATRICK TOWNEND & STOCKTON LLP phaughey@kilpatricktownsend.com SKolassa@kilpatricktownsend.com IPR2015-01209 Patent 8,132,720 B2 21 Jonathan Stroud UNIFIED PATENTS, INC. jonathan@unifiedpatents.com PATENT OWNER: Gregory Perrone Gary R. Sorden BRAXTON, HILTON & PERRONE, PLLC Perrone@bhp-ip.com Sorden@bhp-ip.com Kevin W. Guynn Atanu Das Steven P. Fallon GREER, BURNS & CRAIN, LTD. docket@gbclaw.net