emnos USA Corp.v.dunnhumby Limited

Patent Trial and Appeal Board

Dec 30, 2015

10955946 (P.T.A.B. Dec. 30, 2015)

Trials@uspto.gov Paper No. 7
571-272-7822 Entered: December 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EMNOS USA CORP.,
Petitioner,

v.

DUNNHUMBY LIMITED,
Patent Owner.
____________

Case CBM2015-00162
Patent 8,214,246 B2
____________

Before PATRICK R. SCANLON, JENNIFER MEYER CHAGNON, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208
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I. INTRODUCTION
Petitioner emnos USA Corp. filed a Petition (Paper 2, “Pet.”)
requesting covered business method patent review of claims 1–9, 11–14, 16–
19, 21, 23–32, 34, 35, 37–45, 51–56, 58, 60, 62–67, and 69–73 of U.S.
Patent No. 8,214,246 B2 (Ex. 1001, “the ’246 patent”). Patent Owner
dunnhumby Limited filed a Preliminary Response (Paper 6, “Prelim.
Resp.”).
We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C.
§ 324(a), the Director may not authorize a covered business method patent
review unless the information in the petition, if unrebutted, “would
demonstrate that it is more likely than not that at least 1 of the claims
challenged in the petition is unpatentable.” As explained below, we do not
institute a covered business method patent review because the Petition does
not establish that the ’246 patent qualifies as a covered business method
patent.
A. The ’246 Patent
The ’246 patent describes a method for retailers to perform analysis
on transaction data, such as retail sales and consumer data, from a remote
location using an internet connected computer. Ex. 1001, 1:6–9, 1:32–36.
According to the ’246 patent, in the retail sector, “[d]emand for products and
the prices that consumers are willing to pay for them are continuously
changing.” Id. at 1:12–13. The detailed knowledge of market conditions
that is necessary to excel in the retail market “can best be obtained from a
sophisticated analysis of retail sales data.” Id. at 1:19–20. The ’246 patent
seeks to fill a need for retailers to access and perform individualized analysis
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on large compilations of data from retail transactions with minimal delay.
Id. at 1:24–28.
Figure 1, which is reproduced below, is a schematic representation of
the system according to one embodiment. Id. at 6:20–22.

As shown in Figure 1, the system is segmented into several tiers.
User tier 30 includes the components though which the user accesses the
web-based service, which is provided by web server 40 in presentation
tier 32. Id. at 8:31–33. Web server 40 provides authentication functions 46
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to identify the user and navigation functions 48 to control navigation through
project ordering. Id. at 8:42–48. Management database 54 in management
tier 34 stores input data and parameters selected by the user in setting up the
analysis projects. Id. at 8:56–59. The ’246 patent includes the following
description of processing tier 36 and data tier 38:
In the Processing Tier 36, the analysis project processing
software 56 constructs executable analysis project scripts 58,
which are executed on subsets of the retail sales, consumer and
other data resident in a database 60. . . . [T]he executable
analysis project scripts 58 are constructed from appropriate
script templates 61 obtained from the Data Tier 38, where the
script templates 61 are loaded with the input data, parameters
and other selections input by the user.
Id. at 9:29–37.
In operation, a user logs into web server 40 from a remote location via
computer 44, enters the parameters for the desired analysis project, and
submits the project for processing. Id. at 10:29–33. The project is then
processed at management, processing, and data tiers 34, 36, and 38. Id. at
10:34–36. Specifically, “the project is encoded in a way that incorporates
the user-selected parameters into an executable script written in an
appropriate commercially available scripting language.” Id. at 11:52–55.
Analysis project processing software 56 retrieves the user-selected
parameters from shop management database 54 and “begins creating the
analysis project script 58 for the particular analysis by inserting those
parameters into a new script file template 61.” Id. at 12:3–5. After the
analysis project script is executed, data returned by analysis project
processing software 56 is inserted into interactive spreadsheet template
file 63 to generate interactive project 65. Id. at 10:36–40, 12:48–52.
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Claim 1, reproduced below, is illustrative of the challenged claims for
the purposes of this Decision:
1. A method for performing a transaction-related
analysis, comprising the steps of:
providing one or more computerized databases that
include at least one of transaction and consumer data for one or
more establishments, the at least one of transaction and
consumer data including one or more transaction records
associating at least a product identification code with a
consumer identification code;
formulating an analysis project request via a user
interface that is operatively coupled to a computer system
having access to the database; and
generating, by the computer system, an analysis project
on the at least one of transaction and consumer data in response
to receiving the analysis project request;
wherein the step of formulating the analysis project
request includes the steps of, selecting, via the user interface,
the analysis project from a predefined list of available analysis
projects;
obtaining, by the computer system a template of
executable database analysis scripts based, at least in part, upon
the selected analysis project;
selecting, via the user interface, one or more analysis
parameters associated with the analysis project; and
loading, by the computer system, the selected one or
more analysis parameters with the template of executable
database analysis scripts to construct an executable analysis
project script to be executed against on the at least one of
transaction and consumer data in the generating step;
wherein the step of selecting, via the user interface, one
or more analysis parameters associated with the analysis project
includes the step of selecting one or more products from a list
of available products;
wherein the step of selecting, via the user interface, one
or more analysis parameters associated with the analysis project
includes the step of selecting a time frame in which to limit the
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analysis of the at least one of transaction and consumer data;
and
wherein the method further includes the step of
executing, by the computer system, the executable analysis
project script on the at least one of transaction and consumer
data to produce result data.
Id. at 17:8–49.
B. Asserted Challenge
Petitioner challenges claims 1–9, 11–14, 16–19, 21, 23–32, 34, 35,
37–45, 51–56, 58, 60, 62–67, and 69–73 as invalid under 35 U.S.C. § 103
over Anderson
1
in view of Oracle Pro*C
2
and MicroStrategy DSS
3
. Pet. 17,
31–79.
C. Related Proceedings
The ’246 patent has been asserted against Petitioner in dunnhumby
USA, LLC v. emnos USA Corp., Case No. 1:13-cv-00399 (N.D. Ill.)
(“Parallel District Court Case”). Pet. 5–6; Paper 5, 1; Ex. 1002.
Before filing the Petition in this proceeding, Petitioner filed another
petition for covered business method patent review of the ’246 patent.
emnos USA Corp. v. dunnhumby Limited, Case CBM2015-00116 (Paper 2)
(“the ’116 CBM Petition”). The ’116 CBM Petition challenged the same
claims of the ’246 patent as the Petition in this proceeding, but the challenge
in the ’116 CBM Petition was based on 35 U.S.C. § 101. Id. at 18. On
November 10, 2015, we issued a Decision Denying Institution, in which we

1
Anderson et al., U.S. Patent No. 5,974,396, issued Oct. 29, 1999
(Ex. 1026).
2
SYED MUJEEB AHMED ET AL., ORACLE CORP., PRO*C/C++ PRECOMPILER
PROGRAMMER’S GUIDE, RELEASE 9.2 (2002) (Ex. 1041).
3
Archived pages from the website of MicroStrategy, Inc. relating to DSS
Agent, as collected in Exhibit 1043.
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determined that the ’116 CBM Petition did not establish that the ’246 patent
qualifies as a “covered business method patent” under § 18(d)(1) of the
AIA
4
. emnos USA Corp. v. dunnhumby Limited, Case CBM2015-00116,
slip op. at 13 (PTAB Nov. 10, 2015) (Paper 8) (“the ’116 CBM Decision”).
Specifically, we determined that Petitioner’s showing on the technological
invention portion of the test for covered business method patent eligibility
was insufficient. Id. at 7–13.
II. ANALYSIS
A petition for covered business method patent review must set forth
the petitioner’s grounds for standing, including “demonstrat[ing] that the
patent for which review is sought is a covered business method patent.”
37 C.F.R. § 42.304(a). A “covered business method patent” is “a patent that
claims a method or corresponding apparatus for performing data processing
or other operations used in the practice, administration, or management of a
financial product or service, except that the term does not include patents for
technological inventions.” AIA § 18(d)(1) (emphasis added); see 37 C.F.R.
§ 42.301(a).
Section III.D. of the Petition presents Petitioner’s arguments and
evidence concerning the technological invention portion of the test for
covered business method patent eligibility. See id. at 11–16. Petitioner sets
forth the same content as the corresponding section of the ’116 CBM
Petition. Compare Pet. 11–16, with ’116 CBM Petition 13–18. These
sections of the petitions also rely on the same evidence, including the same
Declaration of Dr. Padhraic Smyth dated May 1, 2015. See Ex. 1004. Thus,

4
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”).
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for the same reasons as discussed in the ’116 CBM Decision, Petitioner’s
showing on the technological invention portion of the test for covered
business method patent eligibility is insufficient.
To recapitulate those reasons, the first consideration in determining
whether a patent is for a technological invention is “whether the claimed
subject matter as a whole recites a technological feature that is novel and
unobvious over the prior art.” 37 C.F.R. § 42.301(b). Petitioner argues that
the claims of the ’246 patent do not recite a technological feature that is
novel and unobvious because “the closest [independent claims 1, 29, and 62]
come to reciting anything technological are the words ‘computer,’
‘database,’ and ‘database analysis scripts.’” Pet. 14. But Petitioner
addresses only certain elements of the claims and fails to assess any of the
claims as a whole. See, e.g., E*Trade, Case CBM2014-00123, slip op. at 7–
9 (Paper 15); Bloomberg L.P. v. Quest Licensing Corp., Case
CBM2014-00205, slip op. at 9 (PTAB Apr. 7, 2015) (Paper 16); Apple, Inc.
v. ContentGuard Holdings, Inc., Case CBM2015-00046, slip op. at 10
(PTAB June 3, 2015) (Paper 12). By focusing only on the portions of the
claims reciting computers, databases, and database analysis scripts,
Petitioner failed to address the subject matter of any claim in the ’246 patent
as a whole.
Particularly lacking in Petitioner’s analysis of this first consideration
is any discussion of the novelty or nonobviousness of the script template
limitations,
5
a focal point throughout the prosecution of the ’246 patent. See

5
Claim 1 recites that the computer system obtains “a template of executable
database analysis scripts” and loads “the selected one or more analysis
parameters with the template of executable database analysis scripts to
construct an executable analysis project script.” Ex. 1001, 17:26–34. The
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generally emnos USA Corp. v. dunnhumby Limited, Case CBM2015-00116,
slip op. at 9–11 (PTAB Nov. 10, 2015) (Paper 8) (summarizing the role of
the script template limitations in the prosecution history of the ’246 patent);
Ex. 1005,
6
6–18 (detailing the prosecution history of the ’246 patent).
Despite the central role of the script template limitations during
prosecution of the ’246 patent, Section III.D. of the Petition does not provide
any explanation as to why those limitations were known or obvious as
technological features. The Petition asserts that it was known to use scripts
to run database queries, see Pet. 15, but does not address the novelty or
obviousness of loading or feeding user-selected parameters into a script
template to construct an executable script. The Smyth Declaration of May 1,
2015 addresses the script template limitations, but is insufficient to show
that these limitations were known or obvious in view of the prior art because
Dr. Smyth states only that SQL prepared statements were known, without
explaining why (or even asserting that) the script template claim limitations
encompass such SQL prepared statements. See Ex. 1004 ¶ 26.
We note that a later section of the Petition, Section VIII.B., does
address the script template limitations as part of the obviousness case against

other two independent claims include similar limitations. Claim 29 recites
that the computer system feeds “the obtained parameters into a template of
executable database analysis scripts, which corresponds to the analysis
project selection, to produce an executable job file.” Id. at 19:59–62.
Claim 62 recites that the computerized system includes “a plurality of
analysis project script executable code templates,” and that the computer
system is configured to feed “the obtained parameters into a selected one of
the plurality of analysis project script templates to produce an executable job
file.” Id. at 21:60–22:8.
6
Exhibit 1005 is the claim construction order in the Parallel District Court
Case, which includes a thorough recounting of the prosecution history of
the ’246 patent.
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the challenged claims and argues that these limitations are taught by Oracle
Pro*C. See Pet. 32–34. However, Section III.D. of the Petition, which
purports to set out Petitioner’s arguments and evidence concerning the
technological invention portion of the test for covered business method
patent eligibility, does not discuss Oracle Pro*C, or even cross-reference the
evidence or arguments of Section VIII.B. See Pet. 11–16. Other panels of
the Board have found arguments presented as part of a petitioner’s
obviousness case to be insufficient to carry the petitioner’s burden on the
technological invention inquiry. See Motorola Mobility, LLC v. Intellectual
Ventures I, LLC, Case CBM2014-00084, slip op. at 4–5 (PTAB Sept. 23,
2014) (Paper 21) (denying request for rehearing of decision denying
institution because “[t]he only portion of the Petition addressing whether a
claim as a whole recites a technological feature was addressed in our
Decision. The portion of the Petition that Petitioner contends the Board
overlooked or misapprehended addresses only whether the challenged
claims are novel and unobvious over the prior art, and does not address
whether the claimed subject matter as a whole recites a technological
feature.”) (internal citations omitted); see also Bloomberg L.P. v. Quest
Licensing Corp., Case CBM2014-00205, slip op. at 7, 9 (PTAB June 17,
2015) (Paper 18) (denying request for rehearing of decision denying
institution because petitioner did not carry burden on technological invention
inquiry, and finding unpersuasive petitioner’s arguments that focused on
portions of the petition other than the section addressing the technological
invention inquiry).
Moreover, even considering the arguments in Section VIII.B. of the
Petition, the Petition’s showing on the technological invention inquiry
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remains deficient. The Petition relies on the Oracle Pro*C reference as
disclosing the script template limitations of the independent claims, but as
Patent Owner points out, the Petition does not present evidence establishing
that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32–
34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was
published in 2002” but does not point to any specific evidence of its
publication or public availability in 2002. Id. at 33. If Petitioner’s assertion
is based on the “March 2002” statement that appears on the cover of the
Oracle Pro*C reference, that statement is hearsay, and Petitioner does not
argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see
also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip
op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner
relies on the date on the face of each exhibit and the indications of
availability of these references for download . . . for the truth of that
information, and considering that Petitioner has not established that any
hearsay exception or exclusion applies, we agree [that the statements are
inadmissible hearsay].”).
Petitioner also argues, with citation to the testimony of Dr. Smyth,
that Oracle Pro*C is a reference used by programmers who develop
applications in Oracle database environments. Pet. 33 (citing Ex. 1030
¶ 57). However, neither the Petition nor Dr. Smyth explains how or when
the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the
Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans.
Because the Petition does not establish that Oracle Pro*C qualifies as prior
art, Section VIII.B. of the Petition does not remedy the deficient showing in
Section III.D. of the Petition on the first consideration of the technological
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invention inquiry, which asks whether “the claimed subject matter as a
whole recites a technological feature that is novel and unobvious over the
prior art.” 37 C.F.R. § 42.301(b).
Regarding the second consideration in determining whether a patent is
for a technological invention, the Petition provides merely one short
paragraph of discussion, arguing that the problem addressed by the ’246
patent is not technical but “instead involves non-technical sales and
marketing issues such as effectiveness of product promotions and launches
in the marketplace.” Pet. 16 (citing Ex. 1001, 7:24–43). Patent Owner
counters that the prosecution history shows that the problem solved by
the ’246 patent was technical in nature: “how can non-technical users who
do not have knowledge of the database structure and/or of the database
scripting languages construct . . . complex database queries . . . ?” Prelim.
Resp. 38. According to Patent Owner, the solution to that problem, which
involved combining user-selected parameters into script templates to
produce an executable project script, was also technical. Id. at 38–39.
Petitioner’s arguments under the second prong are not persuasive. In
our view, there are both technical and non-technical (e.g., business) aspects
to the problem that is solved in the ’246 patent. The technical problem of
enabling retailers untrained in database queries to quickly and easily analyze
information in databases is addressed in furtherance of the business
objective of keeping up with the fast-paced retail market. Petitioner’s
arguments under the second prong do not address the technical aspects of the
problem being solved, and fail to explain why the solution is not technical.
In view of the foregoing, having considered both prongs of the test for
a technological invention, and consistent with our determination in the ’116
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CBM Decision, we conclude that Petitioner has failed to carry its burden to
show that the ’246 patent is not a patent for a technological invention.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not establish that the ’246 patent qualifies as a
“covered business method patent” under § 18(d)(1) of the AIA. Therefore,
we do not institute a covered business method patent review as to any of the
challenged claims.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’246 patent.

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PETITIONER:

Todd Siegel
Joseph Jakubek
Klarquist Sparkman, LLP
todd.siegel@klarquist.com
joseph.jakubek@klarquist.com

Peter Armenio
Quinn Emanuel Urquhart & Sullivan, LLP
peterarmenio@quinnemanuel.com

PATENT OWNER:

Barry Bretschneider
John Mueller
Baker & Hostetler LLP
bbretschneider@bakerlaw.com
CBM2015-00162@bakerlaw.com