U.S. Bancorpv.Retirement Capital Access Management Company LLC

Patent Trial and Appeal Board

Aug 22, 2014

09267255 (P.T.A.B. Aug. 22, 2014)

Trials@uspto.gov
571.272.7822
Paper No. 33
Entered: August 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

U.S. BANCORP,
Petitioner,

v.

RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY,
Patent Owner.
____________

Case CBM2013-00014
Patent 6,625,582 B2
____________

Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
On June 22, 2012, Retirement Capital Access Management Company
(“Patent Owner”) and Benefit Funding Systems LLC sued U.S. Bancorp
(“Petitioner”) for infringement of U.S. Patent No. 6,625,582 (“the ’582
patent”) (Ex. 1003) in the District Court for the District of Delaware in
Benefit Funding Systems LLC, et al. v. U.S. Bancorp, Case No 1:12-cv-803-
LPS (D. Del. filed June 22, 2012). See Paper 7, 2.
On March 29, 2013, Petitioner filed a Petition requesting a review of
the ’582 patent under the transitional program for covered business method
patents, asserting that claims 1, 13, 14, 18, 30, and 31 are directed to
unpatentable subject matter under 35 U.S.C. § 101. Paper 4. Patent Owner
filed a Preliminary Response on July 2, 2013. Paper 10. We determined
that Petitioner sufficiently demonstrated it was more likely than not that the
challenged claims were unpatentable, and we instituted a trial on September
20, 2013. Paper 12, Decision to Institute (“Dec.”).
Patent Owner filed a Response on November 20, 2013, arguing that
35 U.S.C. § 101 is not reviewable in a covered business method review and
that the challenged ’582 patent claims are patentable. Paper 19
(“PO Resp.”). Petitioner filed a Reply on January 21, 2014. Paper 23
(“Reply”). Both Patent Owner and Petitioner requested an oral hearing
under 37 C.F.R. § 42.70(a). Paper 24; Paper 26. The oral hearing was held
on April 1, 2014, a transcript of which appears in the record. Record of Oral
Hearing, Paper 32 (“Tr.”).

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II. THE ’582 PATENT
The ’582 patent generally relates to a method for enabling recipients
of Social Security payments to convert a designated portion of future
payments into currently available financial resources. Ex. 1003, col. 1, ll. 1–
5; 52–56. The patent explains that the beneficiary may access current capital
through a funding source in exchange for payment of a predetermined
portion of the beneficiary’s future retirement benefits. Id. at col. 3, ll. 20–
28. Figure 2 of the ’582 patent, reproduced below, illustrates the steps of the
method:

As shown above in Figure 2, the beneficiary first elects participation in the
program in step 24 and then designates a financial institution to act as the
depository for the beneficiary’s retirement payments and a disbursement
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agent for such retirement payments in step 26. Id. at col. 5, ll. 34–39. Step
30 involves designating a bank, insurance company, or other source of
capital to be the funding source of current capital provided to the
beneficiary. Id. at col. 5, ll. 43–46. Capital then is paid to the beneficiary
from the funding source in an amount based in part upon the present value of
a designated portion of the beneficiary’s future retirement payments in
step 34. Id. at col. 5, ll. 53–56. Step 36 involves directly depositing a future
retirement benefit into the beneficiary’s deposit account, and then a
predetermined portion of this benefit is disbursed automatically to the
funding source in step 38. Id. at col. 6, ll. 60–65. Step 42 involves a
possible premature termination of participation in the program, in which the
beneficiary may become obligated to reimburse the funding source for any
advance from resources other than the future retirement benefits. Id. at col.
6, ll. 7–12.
Claim 1, illustrates the claimed subject matter and is reproduced
below:
1. A computerized method for creating a source of
funds based on present value of future
retirement payments, comprising the steps of:

a. designating an account in a depository for a
beneficiary to receive future retirement
payments payable to said beneficiary from a
source of said retirement payments for a
preselected period of time;

b. designating a benefit provider for providing a
monetary benefit to said beneficiary;

c. authorizing said depository to periodically
disburse a predetermined portion of said
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retirement payments deposited in said account
to said benefit provider during said preselected
period of time;

d. providing said monetary benefit to said
beneficiary from said benefit provider based at
least in part on present value of a designated
portion of said future retirement payments
without encumbering said beneficiary's right to
said future retirement payments and without
violating legislated proscriptions in the United
States against alienation of future retirement
benefits;

e. causing said future retirement payments to be
deposited into said account throughout said
preselected period of time;

f. causing said depository to transfer a portion of
said retirement payments deposited into said
account to said benefit provider during said
preselected period of time; and

g. reimbursing said benefit provider from
resources other than said future retirement
payments if said transfer of a portion of said
retirement payments from said depository to
said benefit provider are curtailed prior to said
end of said preselected period of time, and
making said retirement payments available for
the exclusive use of said beneficiary.

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III. ANALYSIS
A. Claim Construction
Consistent with the statute and the legislative history of the AIA,
1
the
Board will interpret claims using the broadest reasonable construction. See
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); 37 C.F.R. § 42.100(b). There is a “‘heavy presumption’” that a claim
term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (Internal citation
omitted).
Patent Owner argues that the “means for causing said future
retirement payments to be deposited into said account” limitation of system
claim 13, and the similar “means for” limitation of system claim 30,
2
should
be construed to require an “electronic funds transfer” because “direct deposit
via electronic funds transfer is the structure disclosed in the specification for
causing retirement payments (or Social Security retirement benefits) to be
deposited.” PO Resp. 29 (citing Ex. 1003, col. 5, ll. 18–22) (emphasis in
original). Patent Owner also argues that method claims 1 and 18 should be
construed similarly, and thus the term “deposited” in claims 1 and 18 should
be construed to mean “deposited via direct deposit.” Id. at 30.
Petitioner disagrees, and argues that the claimed invention may be
“performed on pen and paper, as consumers were able to deposit Social
Security or retirement payments long before computers.” Reply 6.

1
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”).
2
Claim 30 recites “means for causing said future payments of Social
Security benefits to be deposited into said account during said preselected
period of time.” (emphasis added).
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Petitioner further argues that with respect to claim interpretation, the United
States Court of Appeals for the Federal Circuit has “expressly rejected the
contention that if a patent describes only a single embodiment, the claims of
the patent must be construed as being limited to that embodiment.” Id. at 7
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)).
To construe means-plus-function language in a claim, one “must look
to the specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” In re Donaldson Co.,
Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to
construe properly the limitations in claims 13 and 30 reciting a “means for
causing said future retirement payments . . . to be deposited into said
account,” the limitations “shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents
thereof.” 35 U.S.C. § 112, ¶ 6.
3
As noted by Patent Owner (PO Resp. 29),
the corresponding structure within the specification supporting the means-
plus-function limitation states the following: “[b]enefits source 12 of system
10 disburses retirement payments directly to an individual direct deposit
account 14 in a designated depository 16. Preferably, this is accomplished
utilizing the well-known technique of electronic funds transfer.” Ex. 1003,
col. 5, ll. 18–22. Accordingly, we construe “means for causing . . . to be
deposited into said account,” recited in claims 13 and 30, to mean
“disbursing directly to said account utilizing an electronic funds transfer.”

3
Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
§ 112(f). Because the ’582 patent has a filing date before September 16,
2012 (effective date), we will refer to the pre-AIA version of § 112.
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Unlike the means-plus function claims, we are not persuaded by
Patent Owner’s argument that the term “deposited” in method claims 1 and
18 should similarly be interpreted to mean “deposited via direct deposit.”
PO Resp. 30–33. Patent Owner fails to point to any support in the
specification of the ’582 patent that would require the construction of the
term “deposited” to mean a direct deposit or electronic funds transfer. If an
inventor acts as his or her own lexicographer, the definition must be set forth
in the specification with reasonable clarity, deliberateness, and precision.
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998). The specification of the ’582 patent does not set forth expressly
a definition of “deposited.” In fact, as cited above, the ’582 patent states that
deposits are “[p]referably” conducted with the “well-known technique of
electronic funds transfer,” but the specification does not limit the term
“deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis
added). Even in cases where the specification describes only a single
embodiment, the claims are not necessarily limited to that embodiment.
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (It is not enough that the only embodiment, or all of the embodiments,
contain a particular limitation to limit a claim to that particular limitation.).
Here, the specification itself indicates that electronic deposits are preferable,
but not required. Therefore, we do not adopt Patent Owner’s proposed
construction of “deposited” recited in claims 1 and 18 as limited to
“deposited via direct deposit.”

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B. Patent Owner’s Arguments that Section 101 Is Not a Proper
Ground Upon Which a Covered Business Method Patent
Review May Be Maintained
Patent Owner argues that covered business method patent review is
limited under the 35 U.S.C. § 282(b) to “conditions for patentability.”
PO Resp. 37–38. Furthermore, Patent Owner argues the determination of
patent eligibility under 35 U.S.C. § 101 is not a condition for patentability,
such as those set forth in 35 U.S.C. §§ 102–103. Id. at 38–44. We disagree.
Under the AIA, any ground that could be raised under 35 U.S.C.
§ 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions
not relevant here) in a covered business method review. See also 35 U.S.C.
§ 321(b); AIA §18(a)(1). The grounds under § 282(b)(2) and (3) are:
(2) Invalidity of the patent or any claim in suit on any ground
specified in part II as a condition for patentability.
(3) Invalidity of the patent or any claim in suit for failure to comply
with—
(A) any requirement of section 112, except that the failure to
disclose the best mode shall not be a basis on which any claim of a
patent may be canceled or held invalid or otherwise unenforceable; or
(B) any requirement of section 251.
As recognized by the Supreme Court, § 101 is a condition for patentability.
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966), the
Supreme Court stated that the 1952 Patent Act “sets out the conditions of
patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The
Supreme Court has also addressed invalidity under § 101 when it was raised
as a defense to an infringement claim under § 282. See Mayo Collaboration
Servs. v. Prometheus Labs, Inc., 132 S.Ct. 1289, 1293 (2012). The Federal
Circuit has also recognized that § 101 is a condition for patentability that can
be raised as an affirmative defense under 35 U.S.C. § 282(b)(2). For
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example, in Dealertrack, Inc. v. Huber, the majority rejected the dissent’s
contention that §101 is not a “condition for patentability,” stating that “the
‘defenses provided in the statute’ § 282, include not only the conditions of
patentability in §§ 102 and 103, but also those in § 101.” 674 F.3d 1315,
1330 n.3 (Fed. Cir. 2012) (citing Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)) (“It has long been
understood that the Patent Act sets out the conditions for patentability in
three sections: sections 101, 102, and 103.”).
The legislative history of the AIA also makes it clear that Congress
intended the Office to consider challenges brought under § 101 for post-
grant reviews. For example, with certain exceptions not relevant here, the
covered business method patent review program employs the same standards
and procedures as the post grant review program. AIA § 18(a)(1). The
specified purpose of the covered business method review program was to
allow the Office to revisit business method patents post-Bilski and evaluate
whether the patents were too abstract to be patentable under § 101. See 157
Cong. Rec. S1367 (daily ed. Mar. 8, 2011). Accordingly, we are not
persuaded by Patent Owner’s argument that 35 U.S.C. § 101 is not a proper
ground upon which a covered business method patent review may be
maintained.
C. 35 U.S.C. § 101 Patentability Analysis
1. Overview
Section 101 of the Patent Act defines subject matter eligibility and the
Supreme Court has “long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347,
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2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics,
Inc., 133 S.Ct. 2107, 2116 (2013) (internal quotation marks and brackets
omitted)). “The ‘abstract ideas’ category embodies the longstanding rule
that ‘[a]n idea of itself is not patentable.’” Alice Corp., 134 S.Ct. at 2355
(citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (quotations omitted)).
In Alice Corp., the Supreme Court emphasized the “Mayo
framework,” which provides “a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts.” Id. (citing Mayo, 132
S.Ct. at 1298). Under the Mayo framework, “[w]e must first determine
whether the claims at issue are directed to a patent-ineligible concept.” Id.
Next, “we consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S.Ct. at 1297–1298). To be patentable, a claim must do
more than simply state the law of nature or abstract idea and add the words
“apply it.” Mayo, 132 S.Ct. at 1294; Benson, 409 U.S. at 67. Furthermore,
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice Corp., 134
S.Ct. at 2358. “Thus, if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that
addition cannot impart patent eligibility.” Id. (internal citation omitted).
A challenged claim, properly construed, must incorporate enough
meaningful limitations to ensure that it claims more than just an abstract idea
and not just a mere “‘drafting effort designed to monopolize the [abstract
idea].’” Alice Corp., 135 S.Ct. at 2357 (quoting Mayo, 132 S.Ct. at 1297).
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“Simply appending conventional steps, specified at a high level of
generality,” is not “enough” for patent eligibility. Id. (quoting Mayo, 132
S.Ct. at 1292). Thus, we analyze the claims to determine whether the claims
embody a patent-eligible application of an abstract idea or merely nothing
more than the abstract idea itself.
2. Claims 1, 13, 14, 18, 30, and 31 are not meaningfully
limited under 35 U.S.C. § 101
Petitioner challenges claims 1, 13, 14, 18, 30, and 31 as unpatentable
under 35 U.S.C. § 101. Pet. 8. Patent Owner disagrees, and argues, inter
alia, that the claims are not directed to an abstract idea because they include
meaningful limitations that “cover less than the identified abstract concept.”
PO Resp. 16.
In accordance with the Supreme Court’s “framework for
distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts,” we must first “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts.” Alice Corp., 132 S.Ct. at 2355. In Alice Corp., the Supreme
Court determined that the claims at issue were “drawn to the concept of
intermediated settlement,” i.e., the use of a third party to mitigate settlement
risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk
hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of
intermediated settlement is ‘a fundamental economic practice long prevalent
in our system of commerce.’” Alice Corp., 132 S.Ct. at 2356 (citations
omitted). With respect to the first step of the “Mayo framework,” the
Supreme Court concluded in Alice Corp. that “there is no meaningful
distinction between the concept of risk hedging in Bilski and the concept of
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intermediated settlement” in Alice Corp. and that “[b]oth are squarely within
the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 132
S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are
directed to the abstract concept of advancing funds based on future
retirement payments. Reply 4. Patent Owner does not disagree. Tr. 40
(Patent Owner’s counsel stated at the oral hearing that Patent Owner is
“happy to accept what [Petitioner] claim[s] is the abstract concept.”).
Similar to the concept of intermediated settlement in Alice Corp. and the
concept of risk hedging in Bilski, we find that the concept of advancing
funds based on future retirement payments is an economic practice long
prevalent in our system of commerce and squarely within the realm of
abstract ideas.
Step two of the Supreme Court’s “Mayo framework” requires that we
consider the elements of the claim and determine whether there is an
“element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 132 S.Ct. at 2355 (quoting Mayo,
132 S.Ct. at 1294). Patent Owner states that claim 1 requires providing a
monetary benefit “without encumbering said beneficiary’s right to said
future retirement payments and without violating legislated proscriptions in
the United States against alienation of future retirement benefits,” and argues
that these are meaningful and substantive limitations that cause the claims to
cover less than the identified abstract concept. PO Resp. 16. Patent Owner
presents similar arguments with respect to the similar limitations recited in
independent claims 13, 18, and 30. Id.
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Petitioner disagrees and argues that the “without encumbering”
recitation in each claim requires only that the transaction be lawful, and,
thus, only theoretical illegal methods of advancing future retirement benefits
are excluded from the abstract concept. Reply 5. We agree. Requiring that
a transaction be lawful is a routine and conventional practice in business
transactions. The Supreme Court has provided guidance that “simply
appending conventional steps, specified at a high level of generality, to laws
of nature, natural phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable.” Mayo, 132 S.Ct. at 1300. Furthermore,
the argued limitation in claim 1 is recited at a high level of generality, as
neither the claims themselves nor the specification provide any guidance as
to how the “without encumbering” step is performed. Therefore, we
determine the “without encumbering” limitation is a conventional and highly
generalized step that does not meaningfully limit the claims beyond the
abstract idea.
We note that the preamble for claims 1 and 18 both recite a
“computerized method.”
4
“[A] preamble does not limit claim scope if it
‘merely states the purpose or intended use of an invention.’” Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., Case No. 2013-1600,
2014 WL 3377201 at *5 (Fed. Cir. 2014) (affirming a finding that the
recitation of a “digital image reproduction system” in the preamble of the
claims did not limit the claims and that the claims were directed to a patent

4
The preamble of claim 1 recites: “A computerized method for creating a
source of funds based on present value of future retirement payments.” The
preamble of claim 18 recites: “A computerized method for creating a source
of funds based on present value of future Social Security retirement
benefits.”
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ineligible abstract idea) (quoting Bicon, Inc. v. Straumann Co., 441 F.3d
945, 952 (Fed.Cir.2006)). Here, the recitation of “computerized method” in
the preamble of claims 1 and 18 merely states the intended use of the
claimed invention and does not provide any antecedent basis for limitations
in the body of the claim. Catalina Mktg. Intl., Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (preamble is not limiting “where a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention.”)
(quotations omitted). Therefore, we determine that use of “computerized
method” in the preamble of claims 1 and 18 does not meaningfully limit the
claims.
Petitioner argues that the challenged claims can be performed using
pen and paper. Pet. 33; Reply 6. Patent Owner argues that the claims of the
’582 patent are not directed towards purely mental processes because the
claims require the use of a computer. PO Resp. 29. More particularly,
Patent Owner argues that a computer is integral to the claims, and must be
viewed in light of the other substantive limitations including creating a
source of funds based on future retirement payments, such as Social
Security. Id. at 36. Patent Owner further argues that the computer required
by the claims is not a general purpose computer because the electronic funds
transfer requires programming a computer with particular software.
Id. at 35.
Petitioner counters that Patent Owner’s arguments improperly attempt
to import limitations from the specification into the claims. Reply 6.
Petitioner further argues that even if method claims 1 and 18 were construed
to be limited to direct deposits, such a reading only would require a
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computer as an obvious mechanism to increase efficiency. Id. at 7 (citing
Bancorp Servs., L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266, 1279 (Fed.
Cir. 2012)).
With respect to method claims 1 and 18, as noted above, we decline to
construe “deposited” as requiring “direct deposit” or any computerized
implementation. Furthermore, we determine that the steps of method claims
1 and 18 could be performed as a series of verbal transactions exchanging
physical money or via pen and paper. In CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372, 1373 (Fed. Cir. 2011), the Federal
Circuit determined that the method claims there, directed to fraud
determination, “can be performed in the human mind, or by a human using a
pen and paper” and “a method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101.”
Additionally, we conclude that the “deposited” limitation of claims 1
and 18 does not provide a meaningful limitation to the abstract idea.
Nonetheless, even if the “deposited” limitation of method claims 1 and 18 of
the ’582 patent were read to require a computer, the use of a computer to
perform direct deposit with electronic funds transfer “simply performs more
efficiently what could otherwise be accomplished manually.” Bancorp, 687
F.3d at 1279. Contrary to Patent Owner’s assertions that the ʼ582 patent
invention requires specialized hardware and software, the ’582 patent states
that the “present invention utilizes known computer capabilities and
electronic communications links to effect the automated implementation of
various aspects of the inventive financial program, for example, to carry out
the electronic transfer of funds into and out of the individual deposit account
of a program participant.” Ex. 1003, col. 2, ll. 30–35 (emphasis added). As
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the Supreme Court held in Gottschalk v. Benson, 409 U.S. 63 (1972), claims
do not become patent-eligible under § 101 simply for reciting a known,
general purpose computer. See id. at 67 (invalidating as patent-ineligible
claimed processes that “can be carried out in existing computers long in use,
no new machinery being necessary,” or “can also be performed without a
computer.”). In Alice Corp., the Supreme Court determined that “the claims
at issue amount to ‘nothing significantly more’ than an instruction to apply
the abstract idea of intermediated settlement using some unspecified, generic
computer.” Alice Corp., 132 S.Ct. at 2360 (quoting Mayo, 132 S.Ct. at
1298). Similarly, we conclude that even if we were to construe the
“deposited” limitation of claims 1 and 18 to require a computer, the claims
amount to nothing significantly more than an instruction to apply the
abstract idea of advancing funds based on future retirement payments using
an unspecified, generic computer. Accordingly, we conclude that claims 1
and 18 do not add meaningful limitations beyond the recited abstract idea.
Unlike method claims 1 and 18, claims 13 and 30 are system claims
that include the means-plus-function limitation of “means for causing . . . to
be deposited into said account.” As discussed above, we construe these
means limitations to require “disbursing directly to said account utilizing an
electronic funds transfer.” In Alice Corp., the Supreme Court concluded that
the system claims were not patentable for substantially the same reasons as
the method claims because “system claims recite a handful of generic
computer components configured to implement the same idea” as the
method claims. Alice Corp., 132 S.Ct. at 2360. The Supreme Court has
warned that a “draftsman’s art” should not trump the prohibitions against
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patenting abstract ideas. See Alice Corp., 132 S.Ct. at 2359 (citing Mayo,
132 S.Ct. at 1294 (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))).
We determine that system claims 13 and 30 are directed to the same
abstract idea as method claims 1 and 18. Furthermore, the means-plus
function limitations merely require “utilizing the well-known technique of
electronic funds transfer.” Ex. 1003, col. 5, ll. 21–22 (emphasis added).
Accordingly, as to these claims, we conclude that the use of a computer in a
generalized fashion to increase efficiency does not meaningfully limit an
otherwise abstract claim. See, e.g., id.; Gottschalk, 409 U.S. at 67; Bancorp,
687 F.3d at 1279. Dependent claims 14 and 31, which recite “wherein the
benefit provider is a source of capital,” also do not meaningfully limit the
claims.
Patent Owner argues that Petitioner has not provided sufficient factual
evidence to support unpatentability and that a § 101 analysis requires factual
inquiries into the nature of the invention. PO Resp. 6–10. Patent Owner
further argues that Petitioner fails to provide expert testimony to support its
challenge. Id. Patent Owner contends that the only evidence pointed to by
Petitioner is the ’582 patent itself, which “is not evidence of whether each of
the indisputably substantive limitations on the abstract concept would have
been routine or convention[al].” Id. at 8.
Petitioner counters that the ’582 patent describes easily
understandable technology and, in such cases, expert testimony is not
required. Reply 11 (citing Lee v. Mike’s Novelties, Inc., 543 Fed. Appx.
1010, 1015 (Fed. Cir. 2013) (“Expert testimony is not necessary in patent
cases involving technology that is ‘easily understandable.’”) (internal
citation omitted)). Petitioner further argues, in addition to the non-technical
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nature of the claims, expert testimony is not required to determine “whether
claims recite a computer limitation that provides a meaningful limitation.”
Id.
We agree with Petitioner. Neither the claims nor the specification
provide complex technological implementations or modifications of these
technologies. In fact, the ’582 patent describes implementing electronic
funds transfer and direct deposit by “utiliz[ing] existing computer
capabilities” and “utilizing the well-known technique of electronic funds
transfer.” Ex. 1003, col. 5, l. 2; col. 5, ll. 21–22 (emphasis added).
Furthermore, the “without encumbering” limitation encompasses an easily
understood concept and recites no specific technological mechanism for
achieving its result.
Patent Owner further argues Petitioner has not provided any evidence
that the “without encumbering” limitation was routine or conventional.
PO Resp. 19–20. Patent Owner argues that because the record does not
contain such evidence, we have no basis to find that the “without
encumbering” limitation was insignificant, conventional, or routine. Id. at
19. We are not persuaded by Patent Owner’s argument because, as noted
above, extrinsic or expert evidence may not be required for simple or easily
understandable limitations like the “without encumbering limitation.” The
“without encumbering” limitation can generally be described as “complying
with the United States laws and regulations,” i.e., performing a transaction
without breaking the law. See Ex. 1003, col. 1, ll. 47–48. Additionally, the
specification fails to provide a technological solution for achieving the
“without encumbering” result.
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Patent 6,625,582 B2

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Patent Owner further argues that Petitioner’s defense of non-
infringement of the ’582 patent in the related district court lawsuit shows
that there may be non-infringing alternatives, and thus, there is no pre-
emption because the claims of the ’582 patent do not encompass the full
scope of an abstract idea. PO Resp. 28 (citing CLS Bank Int’l v. Alice Corp.
Pty Ltd., 717 F.3d 1269, 1282 (Fed. Cir. 2013)). Petitioner counters that the
Federal Circuit has rejected the argument that a defendant cannot plead both
non-infringement and invalidity under § 101. Reply 12 (citing Bancorp, 687
F.3d at 1280).
In Bancorp, the Federal Circuit stated that “[t]he Federal Rules permit
a party to plead in the alternative,” and thus, an “assertion of non-
infringement does not detract from its affirmative defense of invalidity under
§ 101.” Bancorp, 687 F.3d at 1280. Furthermore, we note that pre-emption
is only one test to determine whether a claim is directed to an abstract idea.
A claim is not patent-eligible where it merely recites an abstract idea
and adds additional steps that merely reflect routine, conventional activity of
those of ordinary skill in the art. See Mayo, 132 S.Ct. at 1298. For the
foregoing reasons, we determine that claims 1, 13, 14, 18, 30, and 31 of the
’582 patent recite nothing more than abstract concepts that constitute non-
patentable subject matter.
D. Petitioner’s Motion to Exclude
Petitioner filed a Motion to Exclude (Paper 25, “Mot. to Exclude”) on
February 2, 2014. The Motion to Exclude seeks to exclude Ex. 2016, a New
York Times article titled, “Federal regulators are expected to crack down on
short-term, high-cost credit offered by large banks like Wells Fargo and U.S.
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Patent 6,625,582 B2

21

Bank.” Mot. to Exclude 1 (citing Ex. 2016). Petitioner alleges Ex. 2016 is
inadmissible based on relevance, prejudice, and hearsay. See Id.
Ex. 2016 was not relied upon at the oral hearing and was not relied
upon in reaching our decision. Accordingly, Petitioner’s motion to exclude
is dismissed as moot.

IV. CONCLUSION
This is a final written decision of the Board under 35 U.S.C. § 328(a).
We determine that claims 1, 13, 14, 18, 30, and 31 are unpatentable under 35
U.S.C. § 101.

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 13, 14, 18, 30, and 31 of the ’582 patent are
unpatentable;
FURTHER ORDERED that Petitioner’s motion to exclude is
dismissed as moot; and
FURTHER ORDERED that, because this is a final written decision,
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.

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Patent 6,625,582 B2

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For Petitioner:

Anthony Son
Brian Pandya
Ryan Corbett
WILEY REIN LLP
ason@wileyrein.com
bpandya@wileyrein.com
rcorbett@wileyrein.com

For Patent Owner:

Casey Griffith
Shital Desai
KLEMCHUK KUBASTA LLP
casey.griffith@kk-llp.com
sita.desai@kk-llp.com