American Express Co.v.Metasearch Systems, LLC

Patent Trial and Appeal Board

Mar 13, 2015

13564392 (P.T.A.B. Mar. 13, 2015)

Trials@uspto.gov Paper 70
571-272-7822 Date Entered: March 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
RELATED SERVICES COMPANY, INC., EXPEDIA, INC.,
HOTELS.COM LP, HOTELS.COM GP, LLC, HOTWIRE, INC., ORBITZ
WORLDWIDE, INC., PRICELINE.COM, INC.,
TRAVELOCITY.COM LP, and YAHOO! INC.,
Petitioner,

v.

METASEARCH SYSTEMS, LLC
Patent Owner.
____________

Case CBM2014-00001
Patent 8,326,924 B1
____________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
BARBARA A. BENOIT, Administrative Patent Judges.

BLANKENSHIP, 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 October 1, 2013, American Express Company, et al. (collectively,
“Petitioner”) filed a petition requesting a review of U.S. Patent No. 8,326,924
B1 (“the ’924 patent”) under the transitional program for covered business
method patents,
1
asserting that claims 1–12 are directed to unpatentable subject
matter under 35 U.S.C. §§ 101 and 103(a). See Paper 20, Corrected Petition
(“Petition” or “Pet.”). The parties filed a joint motion, which the Board
granted, to withdraw Petitioner’s challenge of all claims except for claims 2, 6,
and 8. Patent Owner filed a preliminary response on January 3, 2014. See
Paper 26 (“Prelim. Resp.”). We determined that Petitioner sufficiently
demonstrated it was more likely than not that the challenged claims were
unpatentable, and we instituted a trial on March 20, 2014. Paper 29, Decision
to Institute (“Decision”).
Patent Owner filed a patent owner response on July 15, 2014. See Paper
45 (“PO Resp.”). Petitioner filed a reply to the patent owner response on
September 11, 2014. See Paper 52 (“Pet. Reply”). Patent Owner filed a motion
to amend the patent on July 15, 2014. See Paper 46 (“Mot. to Amend”).
Petitioner filed an opposition to Patent Owner’s motion to amend on September
11, 2014. See Paper 51 (“Opp. to Mot. to Amend”). Patent Owner filed a reply
to the opposition on October 2, 2014 (Paper 57). Patent Owner filed a motion
for observation on cross-examination on September 16, 2014. See Paper 60
(“Mot. for Observ.”). Petitioner filed a response to Patent Owner’s motion for
observation on October 23, 2014. See Paper 61 (“Resp. to Mot. for Observ.”)
Each of Patent Owner and Petitioner requested an oral hearing under 37 C.F.R.

1
Pursuant to Section 18 of the Leahy-Smith America Invents Act (“AIA”)
(Pub. L. No. 112-29, 125 Stat. 284 (2011)).
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§ 42.70(a). Paper 63; Paper 64. The oral hearing was held on December 5,
2014. A transcript of the hearing is in the record. Paper 69, Record of Oral
Hearing (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This is a final written
decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that
follow, we determine that Petitioner has demonstrated by a preponderance of
the evidence that claims 2, 6, and 8 are unpatentable, and we deny Patent
Owner’s motion to amend.

A. Instituted Grounds
The Board instituted trial as to claims 2, 6, and 8 of the ’924 patent on the
following grounds of unpatentability.
(1) Claims 2, 6, and 8 are directed to non-statutory subject matter under
35 U.S.C. § 101; and
(2) Claims 2, 6, and 8 would have been obvious under 35 U.S.C. § 103(a)
over the following printed publications:
Mamma.com Web site captured by Internet Archives (May 5,
1998). (Ex. 1005) (“Mamma.com”)

Uwe M. Borghoff et al., Constraint-based Information Gathering
for a Network Publication System, PROC. PAAM ’96, Apr. 22-24, 1996 (Ex.
1006)

Uwe M. Borghoff et al., Agent-Based Document Retrieval for the
European Physicists: A Project Overview, PROC. 2ND INT’L CONF. ON THE
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PRACTICAL APPLICATION OF INTELLIGENT AGENTS & MULTI-AGENT TECH.
(PAAM ’97), Apr. 21-23, 1997 (Ex. 1007).
2

B. Related Matters
In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it has
been sued for infringement of the ’924 patent. Pet. 1. The ’924 patent is
involved in the following U.S. District Court proceedings: MetaSearch Sys.,
LLC v. Am. Express Co., No. 1:12-cv-01225-LPS (D. Del. filed Sept. 28, 2012);
MetaSearch Sys., LLC v. Expedia Inc., No. 1:12-cv-01188-LPS (D. Del. filed
Sept. 21, 2012); MetaSearch Sys., LLC v. Orbitz Worldwide, Inc., No. 1:12-cv-
01190-LPS (D. Del. filed Sept. 21, 2012); MetaSearch Sys., LLC v.
Priceline.com Inc., No. 1:12-cv-01191-LPS (D. Del. filed Sept. 21, 2012);
MetaSearch Sys., LLC v. Travelocity.com, LP, No. 1:12-cv-01189-LPS (D. Del.
filed Sept. 21, 2012); MetaSearch Sys., LLC v. TravelZoo Inc., No. 1:12-cv-
01222-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v. Yahoo! Inc.,
No. 1:12-cv-01223-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v.
Kayak Software Corp., No. 1:12-cv-01224-LPS (D. Del. filed Sept. 28, 2012);
and MetaSearch Sys., LLC v. Bookit.com Inc., No. 1:12-cv-01226-LPS (D. Del.
filed Sept. 28, 2012). Paper 18, 2. U.S. Patent No. 8,239,451 B1, which issued
from a parent application of the ’924 patent, is the subject of Case CBM2014-
00050 (PTAB 2013).

2
Consistent with the parties’ references to the evidence, we refer to the
Borghoff articles, collectively, as “Knowledge Broker” or “the Knowledge
Broker references.”

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C. The ’924 Patent
The ’924 patent describes a method for metasearching
3
on the Internet
that includes causing an advertisement associated with the search to be
displayed along with the results of the search. Ex. 1001, Abstract.
Claim 2 is illustrative of the claims and is reproduced below.
2. A process for metasearching on the Internet, wherein the
steps of the process are performed by a metasearch engine
executing on a hardware device, the process comprising the steps
of:

(a) receiving a Hypertext Transfer Protocol request from a
client device for the metasearch engine to send at least one search
query to a plurality of unique hosts that provide access to
information to be searched, wherein the Hypertext Transfer
Protocol request from the client device is associated with at least
one travel related item that may be ordered from a plurality of
travel related items that may be ordered;

(b) sending the at least one search query to the plurality of
unique hosts in response to the Hypertext Transfer Protocol request
received from the client device;

(c) receiving search results from the plurality of unique hosts
in response to the at least one search query sent to the plurality of
unique hosts;

(d) incorporating the received search results into a results list
and incorporating the results list into a response;

(e) causing at least one advertisement associated with the at
least one item that may be ordered to be displayed in the response;

3
A discussion of “metasearching” appears in our claim interpretation section,
infra.
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(f) communicating the response from the metasearch engine
to the client device;

(g) receiving another Hypertext Transfer Protocol request
from the client device for placing an order for the at least one item;

(h) processing the order.

II. ANALYSIS
A. Claim Interpretation
During a review before the Board, we construe the claims in accordance
with the broadest reasonable interpretation in light of the specification.
37 C.F.R. § 42.300(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,697–98 (Aug. 14, 2012). The claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office
must apply the broadest reasonable meaning to the claim language, taking into
account any definitions presented in the specification. Id. (citing In re Bass,
314 F.3d 575, 577 (Fed. Cir. 2002)). 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). The “ordinary and
customary meaning” is that which the term would have to a person of ordinary
skill in the art in question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).

1. Metasearch Engine
For purposes of our Decision instituting trial, we adopted Petitioner’s
proposed construction of the term “metasearching.” On that preliminary record,
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we presumed that “metasearching” refers to an unstructured keyword query or
queries to plural hosts, as requested by a user, and grouping, sorting, and
returning to the user the results received from each host. Decision 9–11.
Patent Owner submits that the term “metasearching” in the late 1990s
applied also in the context of both “semistructured” and “structured” data. PO
Resp. 4. According to Patent Owner, metasearch engines queried sources of,
for example, “structured” data such as relational databases. Id. at 5. Patent
Owner advocates a broader definition of “metasearching” than that used for
purposes of the Decision on Institution. Patent Owner contends that
“metasearching,” under the broadest reasonable interpretation in light of the
known art at the time of the invention and the patent specification, means
“sending at least one search query to plural hosts, and returning the results
received from each host.” Id. at 25.
The ’924 patent issued December 4, 2012, claiming priority through a
string of continuations and continuations-in-part to U.S. Patent Application No.
09/510,749, filed February 22, 2000. The ’924 patent consists of 422 pages,
containing 344 drawing sheets and 150 columns of text. See Ex. 1001. Other
than the Title, Abstract, and reference list, the patent does not appear to use any
form of the word “metasearch” prior to column 111. At column 111, the patent
states that “[t]he client-server multitasking system 10 [Fig. 1] of the present
invention comprises a metasearch engine, which is a search engine that sends
user requests to several other search engines, servers, clients, and/or databases,
and other suitable systems and/or devices, groups, sorts, and returns the results
from each one.” Ex. 1001, col. 111, ll. 58–63. Later text in the patent
establishes that “the metasearch system of the present invention” is
synonymous with the “client-server multitasking system” discussed in the
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earlier 110 columns of text. See, e.g., Ex. 1001, col. 112, l. 7 et seq. (“FIGS. 1
and 2 show the client-server multitasking system 10/metasearch system of the
present invention. . . .”). Although the inventor referred to the invention as a
“client-server multitasking” process or system in parent Application No.
09/510,749, in subsequent filings the Examiner recommended that the
technology be described in terms of “metasearching.” Prelim. Resp. 3. Patent
Owner adopted the recommendation. Id.
In its Patent Owner Response, Patent Owner suggests at least tangentially
that a “metasearch engine” does or requires more than “metasearching.” In
attempting to distinguish the ’924 patent claims from the prior art, Patent
Owner argues that metasearching “generally” required “on-the-fly search of
multiple external databases (which had been previously populated by a
spidering process) and combined their results, and/or sent the query to multiple
external search engines and combined the results.” PO Resp. 60 (citing Ex.
2006 ¶ 33). Patent Owner’s expert, Dr. Jaime Carbonell testifies that a
metasearch system requires “on-the-fly” search of multiple external databases
“and/or” sending the query to multiple external search engines and combining
the results. Ex. 2006 ¶ 34. Earlier in the Declaration, however, Dr. Carbonell
states that “[m]etasearch or metasearching means the process of searching
multiple databases and combining the results, or the process of issuing the same
query to multiple search engines or database management systems, which
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operate on the same or different data and again combining the results.” Id. ¶ 15
(emphases added).
4

Patent Owner also seems to suggest that a “metasearch engine” requires
some kind of special hardware. “This ‘metasearch engine’ is integral to the
claimed invention and covers specific hardware components for receiving and
transmitting signals (the metasearch engine) over a specific transfer medium
(the Internet)).” PO Resp. 51; see also id. at 51–52 (referring to “the special
hardware of the metasearch engine”). Such an interpretation of “metasearch
engine” is not consistent with the ’924 patent claims and other intrinsic
evidence. The preamble of each of claims 2, 6, and 8 recites that the steps of
the claimed process are “performed by a metasearch engine executing on a
hardware device.” The claims, thus, imply that the “metasearch engine”
consists of software, as opposed to “hardware” that may somehow “execute” on
“a hardware device.” The ’924 patent directs that the “metasearch engine” is to
be interpreted broadly, that it may consist entirely of software, and that indeed it
even should not be limited to “search engines.” As we noted supra, the
“metasearch system” is synonymous with the “client-server multitasking
system.” According to the ’924 patent:
The client-server multitasking system 10 [Fig. 1] of the
present invention, the client-server multitasking process 99, and
the multitasking process 104, which in itself is a process, the user
interfaces I1 . . . In (14), and/or the clients C1 . . . Cn (16), and/or the
server PS (18), and/or the servers S1 . . . Sz (20), and/or the
optional servers SO1 . . . SOp (22) may be constructed of hardware,

4
Although Patent Owner does not appear to argue in the Patent Owner
Response that the word “metasearch” in the context of the instant claims
requires any kind of “on-the-fly” operation, to the extent it may so argue, we
find the argument unpersuasive for the reasons expressed at pages 9 and 10 of
our Decision on Institution.
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firmware, software, machines, and/or operating systems, and/or
combinations thereof, and/or other suitable means, and/or other
components and/or systems, and/or combinations thereof. Such
hardware, firmware, software, machines, and/or operating systems,
and/or combinations thereof, other components and/or systems,
and/or other suitable means, and/or combinations thereof may have
therein and/or be resident therein, but are not limited to computer
components and/or systems, television and/or telecommunications
components and/or systems, merger of television and computer
systems, and/or merger of television and/or computer and/or
telecommunications systems, networks, simulators, interactive
technologies and/or systems, cybernetics and/or cybernetic
systems, and/or combinations thereof.
The clients C1 . . . Cn (16), the server PS (18), the servers
SO1 . . . SOz (20), and/or the optional servers SO1 . . . SOp (22)
may be search engines, and/or sites, and/or servers, and/or clients,
and/or URL's, and/or databases, and/or locations on the network,
and/or other suitable components and/or systems, and/or other
suitable means, and/or combinations thereof, which may be
capable of communicating on the network 24. The scope of the
client-server multitasking system 10 of the present invention, the
client-server multitasking process 99, and the multitasking process
104, however, is not limited to search engines, and/or sites, and/or
servers, and/or clients, and/or URL's, and/or databases, and/or
locations on the network, and/or other suitable components and/or
systems, and/or other suitable means, and/or combinations thereof,
which may be capable of communicating on the network 24, as it
is recognized that other components, systems, technologies, and/or
operating systems exist and/or emerge that may make use of the
benefits of the present invention, and are either on the horizon
and/or are recognized to be forthcoming.

Ex. 1001, col. 106, l. 34 – col. 107, l. 6 (emphases added).
In short, a “metasearch engine” is at most “a search engine that sends
user requests to several other search engines, servers, clients, and/or databases,
and other suitable systems and/or devices, groups, sorts, and returns the results
from each one.” Id. at col. 111, ll. 58–63. In accordance with Patent Owner’s
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definition of “metasearching” (PO Resp. 25), we interpret a “metasearch
engine” in the context of the ’924 patent claims as software for sending at least
one search query to plural hosts, and returning the results received from each
host.

2. Results List
The claims include the phrase “incorporating the received search results
into a results list.” Patent Owner submits that “results list” should be
interpreted in accordance with the plain and ordinary meaning of the term —
simply, “a list of information.” Prelim. Resp. 21–22.
We find Patent Owner’s interpretation to be consistent with the required
broadest reasonable interpretation of the term. The term “list” is not at issue.
Accordingly, we interpret “results list” as a list of information. The phrase
“incorporating the received search results into a results list” means
incorporating the received search results into a list of information.

B. Section 101
1. 35 U.S.C. § 101— Principles of Law
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements
of this title.” 35 U.S.C. § 101. Supreme Court precedents provide three
specific exceptions to the broad categories of § 101: laws of nature, physical
phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S. 593, 601 (2010).
“The ‘abstract ideas’ category embodies the longstanding rule that ‘[a]n idea of
itself is not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
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2347, 2355 (2014) (citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(quotations omitted)).
In Alice, the Supreme Court referred to the framework set forth in Mayo
Collaboration Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible applications
of those concepts.” Alice, 134 S. Ct. at 2355. In the first step, “we determine
whether the claims at issue are directed to one of those patent-ineligible
concepts.” Id. “If so, we then ask, ‘[w]hat else is there in the claims before
us?’” Id. (quoting Mayo, 132 S. Ct. at 1297). In the second step, 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. Step two of the analysis may be described
as a search for an “inventive concept”—i.e., 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. Id. (citing
Mayo, 132 S. Ct. at 1294).

2. Section 101 Analysis
Petitioner submits that the claimed invention is directed to the abstract
idea of “marketing an item on a metasearch Web site with keyword ads and
some way to order the item.” Pet. 24; Pet. Reply 4. Patent Owner responds that
Petitioner selectively focuses only on the claim elements directed to keyword
advertisements and ordering, failing to consider the claims as a whole. PO
Resp. 37.
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Patent Owner’s argument, however, disregards step one of the Alice
analysis. Any novelty in implementation of the abstract idea is a factor to be
considered only in the second step of the Alice analysis. Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). In Ultramercial,
5
for example,
the representative claim was directed to a method for distribution of products
over the Internet, which included providing a media product for sale at an
Internet website. 772 F.3d at 712. The claim recited eleven steps for displaying
an advertisement in exchange for access to copyrighted media. 772 F.3d at
714–15. Yet, the U.S. Court of Appeals for the Federal Circuit found that this
“ordered combination of steps” recited “an abstraction—an idea, having no
particular concrete or tangible form.” 772 F.3d at 715. “The process of
receiving copyrighted media, selecting an ad, offering the media in exchange
for watching the selected ad, displaying the ad, allowing the consumer access to
the media, and receiving payment from the sponsor of the ad all describe an
abstract idea, devoid of a concrete or tangible application.” Id.
In this case, representative claim 2 recites eight steps for a search that is
“associated with at least one travel related item,” and which include receiving
the search results, communicating the results along with an advertisement,
receiving an order for the item, and processing the order. See Ex. 1001, col.
145, ll. 33–61. Although the claimed process requires computer hardware and
software (e.g., step (a) of claim 2, “receiving a Hypertext Transfer Protocol
request from a client device”), we agree with Petitioner that the claim embraces

5
The Court’s decision is sometimes referenced as Ultramercial III. The
Federal Circuit heard the second appeal from the U.S. District Court after the
Supreme Court vacated the Federal Circuit’s first decision. 772 F.3d at 711–12.
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the abstract idea of marketing an item on a metasearch Web site with keyword
ads and providing a way to order the item.
Next, or in step two of the analysis, we search for an “inventive
concept”— i.e., 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, 134 S. Ct. at 2355. In this case, the
claims recite, for the most part, an ordered combination of steps that contain
Internet operations that were conventional at the time of invention. For
example, the claims recite communicating with a client device using a
Hypertext Transfer Protocol [HTTP]. Momma.com demonstrates that browsers
on Internet client devices used such a protocol at the time of invention. See Ex.
1005, 10 (for “Microsoft Internet Explorer,” go to the address
“http://www.mamma.com”).
The claims further recite a “metasearch engine,” which also was
conventional at the time of invention. See id. at 5 (“Mamma is a meta search
engine”); see also Prelim. Resp. 3 (Patent Owner did not claim that
“metasearching” was novel at the time of invention). Patent Owner argues that
designing more than a “rudimentary” metasearch engine in the late 1990’s was
not a trivial task. PO Resp. 44. The argument is premised on the assumption
that the claims require more than “rudimentary” metasearching. The claims
recite, however, as in claim 2, a “metasearch engine to send at least one search
query to a plurality of unique hosts”—e.g., a metasearch engine capable of
sending a single search query to a plurality (e.g., two) different hosts. The
claims are drawn to implementing the abstract idea of marketing an item on a
metasearch Web site with keyword ads and some way to order the item with
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routine, conventional activity. Such an implementation does not transform the
abstract idea into patent eligible subject matter.
The invention here is unlike that in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Federal Circuit
found that although the patent claims at issue involved computers and the
Internet, the claims addressed the problem of retaining website visitors that, if
adhering to the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host’s website after “clicking” on
an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
“[T]he claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
Id. The Court went on to distinguish the invention from that in Ultramercial.
Unlike the claims in Ultramercial, the claims at issue here specify
how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink.
Instead of the computer network operating in its normal, expected
manner by sending the website visitor to the third-party website
that appears to be connected with the clicked advertisement, the
claimed system generates and directs the visitor to the above-
described hybrid web page that presents product information from
the third-party and visual “look and feel” elements from the host
website. When the limitations of the ’399 patent’s asserted claims
are taken together as an ordered combination, the claims recite an
invention that is not merely the routine or conventional use of the
Internet.

DDR Holdings, 773 F.3d at 1258–59.
This case involves an invention more similar to that in Ultramercial than
DDR Holdings. Illustrative claim 2 recites receiving a Hypertext Transfer
Protocol (conventional Internet protocol) request, associated with a travel
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related item, from a client device for a metasearch engine (known in the art) to
send a search query to (conventional) hosts. The claim recites further that the
received search results are displayed with an advertisement associated with an
item that may be ordered, receiving a conventional Internet protocol request
from the client device for placing an order, and processing the order. The
Internet is used in its normal, expected, and routine manner for requesting,
receiving, and processing data. The claim contains little more than a directive
to “use the Internet” to implement the abstract idea embraced by the claims.
The transformation of an abstract idea into patent-eligible subject matter
“requires ‘more than simply stat[ing] the [abstract idea] while adding the words
“apply it.”’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294).
Patent Owner argues that the claims do not preempt the use of abstract
ideas like keyword ads and online ordering. PO Resp. 40, 42–43. But limiting
application of an abstract idea to a particular technological environment—such
as the Internet—has long been held insufficient to save a claim. See Alice, 134
S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski, 561 U.S. at 610–11; Diamond
v. Diehr, 450 U.S. 175, 191 (1981); see also Ultramercial, 772 F.3d at 716
(“Narrowing the abstract idea of using advertising as a currency to the Internet
is an ‘attempt[ ] to limit the use’ of the abstract idea ‘to a particular
technological environment,’ which is insufficient to save a claim.”) (quoting
Alice, 134 S. Ct. at 2358).
Patent Owner submits, further, that the claims satisfy the machine-or-
transformation test. PO Resp. 47. The Supreme Court instructs us that the
“Court’s precedents establish that the machine-or-transformation test is a useful
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and important clue, an investigative tool, for determining whether some claimed
inventions are processes under § 101.” Bilski, 561 U.S. at 604.
6

Patent Owner argues that the claims include “transformative” steps such
as:
(1) receiving a HTTP request to send at least one search query and
sending the at least one search query to a plurality of unique hosts;
(2) receiving search results from the plurality of unique hosts and
communicating the response to the client device; and (3) receiving
another HTTP request to place an order for at least one travel
related item and processing the order.

PO Resp. 47. “Each of these transformative steps require[s] receiving data in
an original syntax and transforming that data into an entirely different syntax in
order to enable communication of the search request, results, or order.” Id.
Searching, retrieving, and organizing data do not represent a type of
“transformation” that has been determined sufficient to render a claimed
method statutory by the Supreme Court or by the Federal Circuit. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (mere collection and organization of data regarding credit card numbers
and Internet addresses is insufficient to meet the transformation prong of the
test). The conventional computer operations, such as receiving data, sending
data, searching for data, and processing data, do not transform the abstract idea
into a patent-eligible application of the idea. Cf. Mayo, 132 S. Ct. at 1298
(purely “conventional or obvious” limitations are “normally not sufficient to

6
Statements that may be read as questioning application of the test in the
“Information Age” in Part II.B.2 of the opinion were not adopted by a majority
of the Court. See id. at 596 n.1.

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18
transform an unpatentable law of nature into a patent-eligible application of
such a law”).

C. Conclusion § 101 — Non-Statutory Subject Matter
We have considered the Petition and all of Patent Owner’s rebuttal
arguments and evidence relied upon in its Patent Owner Response. On this
record, we conclude that Petitioner has demonstrated by a preponderance of the
evidence that claims 2, 6, and 8 are unpatentable under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

D. Section 103(a)
We instituted trial on the additional ground that claims 2, 6, and 8 are
unpatentable under 35 U.S.C. § 103(a) over Knowledge Broker and
Mamma.com.

1. Knowledge Broker and Mamma.com
Petitioner submits that each limitation of the ’924 patent’s claim 1 is
taught by Knowledge Broker except for causing an “advertisement,” associated
with the item that may be ordered, to be displayed in the response. Pet. 75–77
(claim chart).
7
Petitioner refers to Mamma.com’s teaching of advertisements
being returned in addition to the descriptive information that is part of the
search results. Id. at 76–77, 78; Ex. 1005, 7–9 (unnumbered pages). In
particular, Mamma.com describes offering key word purchases for targeted

7
Although Petitioner’s claim chart addresses claim 1 as representative, the
Petition elsewhere explains the basis on which the addition or deletion of
language in otherwise similar claims (e.g., 2, 6, and 8) is deemed not to render
the claimed subject matter nonobvious. Pet. 51–53.
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advertising by third party buyers, such that an advertising banner of the buyer’s
choice can be shown according to words entered by the user of the metasearch
engine. Ex. 1005, 8. Although the Knowledge Broker references are directed,
in the main, to retrieval of physics publications, Petitioner submits that the
references identify the need for a commercial application or business model.
Pet. 78; Ex. 1007, 12–13 (the launch of a commercial service was pending, but
different business models were being evaluated).

2. Placing and Processing an Order
Patent Owner responds that Knowledge Broker fails to teach steps (g)
and (h) as recited in illustrative claim 2—“receiving another Hypertext Transfer
Protocol request from the client device for placing an order for the at least one
item” and “processing the order.” PO Resp. 57. Patent Owner argues “there is
no disclosure that Knowledge Broker processed the order for an item with the
same capabilities of an e-commerce site.” Id. We agree with Petitioner,
however, that the argument is not commensurate with the scope of the claims.
See Pet. Reply 1. Patent Owner has not established what may be required by
the “capabilities” of an “e-commerce site,” much less that the present claims are
limited to such requirements. Under the broadest reasonable interpretation of
the claims, each of Knowledge Broker and Mamma.com teaches steps (g) and
(h). Pet. Reply 8; Ex. 1042 ¶¶ 32–42.

3. Incorporating a Results List
Patent Owner also argues limitations appearing in claims 2 and 6 with
respect to incorporating the received search results into a results list and
incorporating the results list into a response. PO Resp. 57–58. According to
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Patent Owner, the references are silent as to whether they create a “results list.”
Id. at 58. Patent Owner’s argument does not address, however, Knowledge
Broker’s teachings of presenting the results obtained from different servers,
presenting information always in the same order, and the user being able to
view results in various formats and rankings. Pet. 76; Ex. 1007, 8–12.
Moreover, Momma.com describes organizing query results into a
uniform format and presenting the results “by relevance and source.” Pet. 76;
Ex. 1005, 3, 4. Momma.com, thus, teaches that the response to a query includes
results in a uniform format with information as to relevance and source—i.e., a
list of information.
Although the applied evidence might not contain the literal phrase
“results list,” each of Knowledge Broker and Mamma.com teaches, within the
scope of claims 2 and 6, incorporating the received search results into a results
list and incorporating the results list into a response. “What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007).
Further, contrary to Patent Owner’s assertion, the claims do not require that
“unstructured and structured search results” be “presented in a combined
‘results list.’” PO Resp. 58.

4. “Metasearch Engine” and Knowledge Broker
Patent Owner argues also that Knowledge Broker “was not a metasearch
engine,” referring to Dr. Carbonell’s Declaration (Ex. 2006 ¶¶ 31–34). PO
Resp. 22–23. Dr. Carbonell’s testimony might reflect different uses and types
of “metasearch engines” that were known to one of ordinary skill in the art, but
it does not apply the broadest reasonable interpretation of the term to the
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disclosure of Knowledge Broker. Although extrinsic evidence may be useful,
“it is unlikely to result in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence.” Phillips v. AWH Corp.,
415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). The ’924 patent defines a
“metasearch engine” as “a search engine that sends user requests to several
other search engines, servers, clients, and/or databases, and other suitable
systems and/or devices, groups, sorts, and returns the results from each one.”
Ex. 1001, col. 111, ll. 58–63. A “metasearch engine” in the context of the ’924
patent claims is software for sending at least one search query to plural hosts,
and returning the results received from each host. Section II.A.1, supra.
Figure 1 of Knowledge Broker (Ex. 1006, 8) is reproduced below.
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Figure 1 shows the architecture of the Constraint Based Knowledge
Brokers (CBKB) system for the Physicists Network Publishing System (PNPS),
which includes: (1) the graphical user interface; (2) the knowledge brokers
which handle constrained requests and corresponding answers; (3) wrappers
that include an independent data repository that mediates between constraint-
based knowledge brokers and several database-dependent components; and
(4) the external archives (information repositories) that are accessible via the
corresponding interface using a variety of supported protocols such as HTTP.
Ex. 1006, 7.
Counsel for Patent Owner was questioned at the oral hearing as to how
Patent Owner’s definition of “metasearching” (PO Resp. 25) might distinguish
over Knowledge Broker as depicted in its Figure 1.
JUDGE BLANKENSHIP: So what does this require that
Knowledge Broker does not do?

MR. MARTINEZ: Well, for starters, Knowledge Broker
doesn’t return the results. I mean, that part is absolutely clear.
And that was a key part of the Metasearch engine. You have to be
able to return the results.

JUDGE EASTHOM: What does it return in Knowledge
Broker?

MR. MARTINEZ: You would simply get a listing of - - or
the subset of articles, or the article that had been found with that
topic.

Tr. 64:20 – 65:5.
As shown in Figure 1 of Knowledge Broker (reproduced supra),
however, the graphical user interface customizes display of the results,
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generating a “user-friendly result presentation.” Knowledge Broker provides
further details of the results of a query.
After the complete request has been submitted by the user, a
check is performed to ensure that sufficient, and only valid
attributes, are chosen. If this is not the case, the user is
immediately informed, before a time-consuming external request is
initiated.
The final results of a single or complex query are displayed
via the WWW-based user interface. For this reason, the constraint
representation of the answer is retransformed into a more user-
friendly attribute/value format which may be presented to the user
at different levels of granularity. For each answer given, the
maximal available information (which may also include abstracts,
matched lines of plain text) can be accessed by a provided
hyperlink.

Ex. 1006, 12.
Knowledge Broker, thus, does return the results of a query. Upon further
questioning, Patent Owner’s counsel indicated that the definition of
“metasearch engine” that would distinguish over Knowledge Broker is provided
by the Declaration of Petitioner’s expert Dr. Oren Etzioni (Ex. 1008), because
Dr. Etzioni lists a variety of metasearch engines but does not include
Knowledge Broker, and further indicated at his deposition that he had not heard
of Knowledge Broker. See Tr. 67:4–18.
JUDGE BLANKENSHIP: Where is the definition of
Metasearch engine that you are relying on that would distinguish
over Knowledge Broker?

MR. MARTINEZ: Well, I would just start with, you know,
Professor Etzioni as a person of skill in this field, and in
Metasearching in particular, not identifying it as a search engine - -
as a Metasearch engine, I 'm sorry.

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JUDGE BLANKENSHIP: So the evidence is that
declaration?

MR. MARTINEZ: Yes.

Tr. 67:20 – 68:5.
Patent Owner does not allege, let alone show, however, that Dr. Etzioni
purported to list every known metasearch engine in his Declaration or ever
expressed the opinion that Knowledge Broker did not describe a metasearch
engine. Further, Petitioner’s expert Mr. Gary Liao applies Patent Owner’s
definition of “metasearching” to the specific disclosure of Knowledge Broker
(Pet. Reply 9; Ex. 1042) and concludes that Knowledge Broker meets all the
requirements (Ex. 1042 ¶ 17). Dr. Carbonell’s Declaration (Ex. 2006) speaks of
different things that metasearch engines were known to do, but does not address
the required broadest reasonable interpretation of “metasearch engine.”
Moreover, upon cross-examination, Dr. Carbonell agreed that Patent Owner’s
definition of “metasearching” was met by Knowledge Broker. Pet. Reply 9.
Q. And then returning to the text below figure 3, the
second sentence states, quote: 12 hits were found in the global
preprint 17 service, paren, Augsburg mirror, close paren, and the
Oldenburg server all together, period, close quote.

Do you see that?

A. Yes, I see that.

Q. And does this indicate that the internal Knowledge
Broker system returned results from two of the external data
repositories?

A. It doesn't say what the distribution of the hits were.
But yes, to your question.

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Q. And those results combined had 12 hits, namely, 12
documents that were found in this search for documents with the
title containing the word “laser,” is that correct?

A. Yes.

Q. So is that portion of Exhibit 1007, does that disclose
sending at-least-one search query to plural hosts and returning the
results received from each host, is that an example?

MR. MECHELL: Objection to form.

THE WITNESS: It sends the result of processing a query
to multiple ones. That is correct.

Ex. 1041, 14 (Carbonell Deposition, 55:14 – 56:15).
We, thus, are not persuaded that Knowledge Broker fails to teach a
metasearch engine.

5. Combining Knowledge Broker and Mamma.com
Patent Owner argues that a person of ordinary skill in the art would not
have been motivated to combine the “disparate technologies” of Mamma.com
and Knowledge Broker and would not have known how to do so “without
complex, lengthy, and uncertain experimentation.” PO Resp. 62. According to
Patent Owner, the “two technologies” of “metasearch engines and structured
e-commerce comparison shopping services providing product purchase
functionality and associated advertisements—were vastly different technologies
during the late 1990s and in particular in 1999-2000.” Id. at 59. A person of
ordinary skill in the art would “not have been motivated to combine metasearch
engines with structured e-commerce comparison shopping sites due to
numerous other technical challenges present at the time.” Id. at 63.
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We agree with Petitioner, however, that the claims do not require
addressing the “technical challenges” submitted by Patent Owner. Pet. Reply
11–12. Adding advertisements to Knowledge Broker would not require
combining a metasearch engine with other “technologies” such as “structured e-
commerce comparison shopping sites.” For example, the advertisements could
be supplied from the hosts. Patent Owner acknowledges there is no limitation
as to where the advertisement comes from. Tr. 61:20–25.

E. Patent Owner’s Motion for Observation on Cross-Examination of
Mr. Gary Liao

We have considered Patent Owner’s Motion for Observation (Paper 60)
and Petitioner’s Response to the Motion (Paper 61) in making our
determinations.
Patent Owner filed the Motion for Observation on cross-examination of
Petitioner’s witness Mr. Gary Liao. Mr. Liao submitted two Declarations,
Exhibit 1009 accompanying the Petition and Exhibit 1042 accompanying
Petitioner’s Reply. Mr. Liao, however, was not deposed until Patent Owner’s
second discovery period.
The Office Trial Practice Guide describes two discovery
periods for a patent owner, the first occurring between the decision
to institute and the filing of the patent owner response and motion
to amend and the second occurring after the petitioner’s reply to
the patent owner’s response and [before] the patent owner’s reply
to petitioner’s opposition to the motion to amend.

Respironics, Inc. v. Zoll Medical Corp., Case IPR2013-00322, slip op. at 2
(PTAB May 7, 2014) (Paper 26) (citing Office Trial Practice Guide, 77 Fed.
Reg. at 48,757–58). It is improper to introduce issues into the proceeding that
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could have been presented during the first discovery period after Petitioner’s
Reply has been filed. See id. at 4 (“We recognize Petitioner’s concern that
Patent Owner may have chosen to defer deposing [the witness] until after filing
the Patent Owner Response in an attempt to introduce new issues into the
proceeding after Patent Owner’s response period and after first discovery period
had concluded.”).
Some of Patent Owner’s observations on cross-examination relate to
matters that should have been raised in Patent Owner’s Response such that
Petitioner would have had the opportunity for rebuttal in Petitioner’s Reply.
For example, Patent Owner submits testimony that is “relevant to Mr. Liao’s
qualifications as an expert presented by Petitioners in Exhibit 1042 at
paragraph[s] 1-3.” Mot. for Observ. 1, item 1. Yet, paragraphs 1 through 3 of
Exhibit 1042 appear to be identical to paragraphs 1 through 3 of Exhibit 1009
(Mr. Liao’s first Declaration). Similarly, item 3 (Mot. for Observ. 1–2)
challenges Mr. Liao’s “qualifications and experiences” to testify as an expert,
which presumably did not change between the filing of his first and second
Declarations. We, therefore, have not considered the merits of Patent Owner’s
item 1 and item 3.

F. Secondary Considerations —“Long Felt Need”
Patent Owner relies on Dr. Carbonell’s Declaration (Ex. 2006 ¶ 40) as
demonstrating a “long-felt need” in the art. PO Resp. 65. Dr. Carbonell
testifies that there was a “long-felt need” in the art “for combining online
searches that provided the most current, up-to-date, and complete product
purchasing information to the consumer and e-commerce for purchasing the
product. Shopping options that later became available on Google and Yahoo!
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in the 2000s supports the desirability of combined search and shopping
functionality.” Ex. 2006 ¶ 40. The need “remained unmet in the late 1990s to
2000.” Id.
The Declaration does not point to any evidence in the record in support
of the allegations. Expert testimony that does not disclose the underlying facts
or data on which the opinion is based is entitled to little or no weight. 37 C.F.R.
§ 42.65(a).
Moreover, Dr. Carbonell does not allege, let alone show, that others tried
and failed to solve the problem allegedly solved by the ’924 patent. See Tex.
Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir.
1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified
problem and evidence of efforts to solve that problem.”); In re Beattie, 974 F.2d
1309, 1313 (Fed. Cir. 1992) (declarations that failed to show a long-felt need
and failure of others to meet that need, and which offered only opinion evidence
that has little value without sufficient support, were insufficient to establish
nonobviousness).
Further, on this record, the “desirability of combined search and shopping
functionality” (Ex. 2006 ¶ 40) was not unmet at the time of invention. Patent
Owner acknowledges that e-commerce services that allowed a user to query
structured databases predated the invention. E.g., PO Reply 8–9, 12, 62
(discussing “SoftBot” and “ShopBot” e-commerce services).
For the foregoing reasons, we find that Patent Owner’s evidence in
support of a long-felt but unmet need is entitled to little weight in support of
nonobviousness.

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G. Conclusion — Unpatentability under § 103(a)
On this record, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 2, 6, and 8 are unpatentable for
obviousness under 35 U.S.C. § 103(a).

H. Patent Owner’s Motion to Amend
Contingent upon the Board’s determination that original claims 2 and 8
are unpatentable, Patent Owner requests that substitute claims 13 and 14 replace
those claims. Proposed substitute claim 13 has pricing information in the
database and a results list, and substitute claim 14 does not. Mot. to Amend 4.
Proposed substitute claim 13 is reproduced below, with changes with
respect to claim 2 shown by insertions underlined and deletions bracketed.
13 [2]. A process for metasearching on the Internet, wherein
the steps of the process are performed by a metasearch engine
executing on a hardware device, the process comprising the steps
of:

(a) receiving a Hypertext Transfer Protocol request from a
client device for the metasearch engine to send at least one search
query to a plurality of unique hosts that provide access to
information to be searched, wherein the Hypertext Transfer
Protocol request from the client device is associated with at least
one travel related item that may be ordered from a plurality of
travel related items that may be ordered;

(b) sending the at least one search query to the plurality of
unique hosts in response to the Hypertext Transfer Protocol request
received from the client device;

(c) sending at least one database query to a database in
response to the Hypertext Transfer Protocol request received from
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the client device, wherein the database comprises at least one
previously stored search result comprising price information
received in response to at least one previous search query sent by
the metasearch engine;

(d[c]) receiving search results from the plurality of unique
hosts in response to the at least one search query sent to the
plurality of unique hosts;

(e) receiving at least one database result comprising at least
a portion of the price information of the at least one previously
stored search result from the database in response to the at least
one database query sent to the database;

(f) combining the received search results with the at least
one database result into combined search results;

(g[d]) incorporating the [received] combined search results
into a results list and incorporating the results list into a response;

(h[e]) causing at least one advertisement associated with the
at least one item that may be ordered to be displayed in the
response;

(i[f]) communicating the response from the metasearch
engine to the client device;

(j[g]) receiving another Hypertext Transfer Protocol request
from the client device for placing an order for the at least one item;

(k[h]) processing the order.

I. Motion to Amend — Patentability of Substitute Claims Over
the Prior Art

A motion to amend claims in a covered business method patent review is
not an amendment as in patent examination or reexamination. As the moving
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party, Patent Owner bears the burden of proof to establish that it is entitled to
the relief requested. 37 C.F.R. § 42.20(c). As such, Patent Owner’s proposed
substitute claims 13 and 14 would be entered only upon Patent Owner
demonstrating the patentability of the proposed substitute claims by a
preponderance of the evidence. See, e.g., 37 C.F.R. § 42.1(d) (the “default
evidentiary standard [in proceedings before the Board] is a preponderance of
the evidence”).
Patent Owner bears the burden of proof in demonstrating the patentability
of proposed substitute claims 13 and 14 over the prior art of record, as well as
the other prior art known to Patent Owner. See Idle Free Sys., Inc. v.
Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013)
(Paper 26) (informative) (providing guidance on motions to amend in an inter
partes review, which has substantially similar requirements as motions to
amend in a post-grant review (compare 37 C.F.R. § 42.221, with 37 C.F.R.
§ 42.121)). In its motion to amend, Patent Owner must show that the conditions
for novelty and nonobviousness are met. Patent Owner should present and
discuss facts, which are pertinent to the first three underlying factual inquiries
set forth in Graham, which include: (1) the scope and content of the prior art;
(2) differences between the claimed subject matter and the prior art; and (3) the
level of ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). Patent Owner should provide some discussion and analysis regarding
the specific technical disclosure of the closest prior art known to Patent Owner,
as well as the level of ordinary skill in the art, in terms of ordinary creativity
and the basic skill set of a person of ordinary skill in the art.
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In its motion, Patent Owner submits that proposed substitute claims 13
and 14 are nonobvious over the prior art. Mot. to Amend 8–10. Patent Owner
relies on the Declaration of Dr. Kevin Almeroth (Ex. 2027).
Dr. Almeroth testifies that he has “considered the state of the art in
metasearching and database storage with caching, both generally and as they
relate to each other as of the late 1990s.” Ex. 2027 ¶ 13. Dr. Almeroth “use[s]
the phrase ‘caching’ as a way to refer to the proposed substitute claims’ use of a
database.” Id. Dr. Almeroth refers to three references, two of which relate to
“basic caching of static web documents” and a third, which relates to the
recognition that metasearch engines likely would increase the number of
queries submitted to search engines. Id. ¶ 14 (referring to Exs. 2023, 2024,
2025). Dr. Almeroth opines that it would not have been obvious to use caching
to improve response time because the substitute claims require waiting for
results from a plurality of unique hosts, thereby adding a source of delay that
caching could not resolve fully. Id. ¶ 15. Similarly, in his opinion, the use of
caching would not significantly eliminate performance bottleneck. Id.
Petitioner characterizes the argument that it would not have been obvious
for a metasearch engine to use caching as “odd” because, according to
Petitioner, the substitute claims expressly preclude caching. Opp. to Mot. to
Amend 13. Petitioner argues that caching first searches a repository of data for
user-requested data and, if that data is found and valid, it retrieves and uses that
data in lieu of re-retrieving that same data from the original (usually remote)
source. Id. (referring to Ex. 2023, 7 (Fig. 5) & 13 (10:38–45); Ex. 1044, 29:23–
30:5, 35:5–36:4; Ex. 2025, 2). Petitioner argues that the substitute claims, on
the other hand, recite instead of first searching a cache and only sometimes
searching the plural hosts, unconditionally sending a query to the plural hosts
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and unconditionally waiting for results from those hosts and combining those
results with results from the database search. Opp. to Mot. Amend 13.
We note that in its Motion to Amend, Patent Owner emphasizes that the
substitute claims differ from the original claims in “the use of a cache
database.” Mot. to Amend 4. In showing support for the “database” of the
substitute claims, Patent Owner points to the “optional database” described in
parent U.S. Application No. 09/510,749 (Ex. 2017). Mot. to Amend 12–13.
Although neither the parent application nor the ’924 patent appears to describe
or refer to the “optional” database as a “cache” database— nor do the original
or substitute claims recite a “cache” database—Patent Owner’s chart for
showing support for the newly claimed feature refers to the database as a
“cache” database. Id. In its Reply in support of the Motion to Amend, Patent
Owner does not argue that the “optional” database is a cache database but states
that “[t]he use of the term ‘cache’ in the Motion was simply shorthand to refer
to the database that stored the previous search results.” Paper 57, 3.
Although Dr. Almeroth uses the word “caching” as referring to the
substitute claims’ use of a database (Ex. 2027 ¶ 13), his Declaration next turns
to references relating to “caching” as the term was known in the art (id. ¶ 14)
and concludes that it would not have been obvious to use such prior art
“caching” in the context of the substitute claims (id. ¶ 15). Patent Owner
submits that the closest known prior art to the substitute claims is Knowledge
Broker and the three references that Dr. Almeroth refers to as “caching”
references. Mot. to Amend 9; Ex. 2027 ¶ 14. However, because there is no
apparent reason to use “caching” in the context of the subject matter of the
substitute claims (Ex. 2027 ¶ 15), Patent Owner has provided insufficient
explanation as to how “caching” references might represent the closest prior art.
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Further, Patent Owner has not explained the relevance of the allegation that the
substitute claims are nonobvious because prior art caching would not be
applicable to the claimed subject matter, when the claims do not require any
database operations for which prior art caching would be appropriate. Or, if
one assumes that the substitute claims require some particular type of
“caching,” why that “caching” would not have been obvious in view of the
closest types of “caching” in the prior art.
We conclude that Patent Owner has not demonstrated by a preponderance
of the evidence that the proposed substitute claims are patentable over the prior
art. Accordingly, we deny Patent Owner’s motion to amend.

J. Other Challenges to Proposed Substitute Claims
Petitioner contends also that the proposed substitute claims are indefinite,
not enabled, lack written description support, and are not patent eligible. Opp.
to Mot. to Amend 1–11. Because we deny Patent Owner’s motion to amend on
the basis of its insufficient showing of patentability over the prior art, we do not
reach or decide Petitioner’s other challenges with respect to the substitute
claims.

III. CONCLUSION
This is a final written decision of the Board under 35 U.S.C. § 328(a).
We determine, by a preponderance of the evidence, that claims 2, 6, and 8 are
unpatentable under 35 U.S.C. §§ 101 and 103(a).

ORDER
In consideration of the foregoing, it is hereby
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ORDERED that claims 2, 6, and 8 of the ’924 patent are unpatentable;
FURTHER ORDERED that Patent Owner’s motion to amend the patent
is denied; 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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For Petitioner:

John Vandenberg
john.vandenberg@klarquist.com

Kristen Reichenbach
kristen.reichenbach@klarquist.com

For Patent Owner:

Cyrus Morton
camorton@rkmc.com

Ryan Schultz
rmschultz@rkmc.com