Fidelity National Information Services, Inc.v.CheckFree Services Corporation

Patent Trial and Appeal Board

Dec 22, 2014

09734694 (P.T.A.B. Dec. 22, 2014)

Trials@uspto.gov
571-272-7822  
Paper 50
Date Entered: December 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

METAVANTE CORPORATION and
FIDELITY NATIONAL INFORMATION SERVICES, INC.,
Petitioner,

v.

CHECKFREE CORPORATION,
Patent Owner.
____________

Case CBM2013-00032
Patent 7,792,749 B2
____________

Before BRIAN J. McNAMARA, BARRY L. GROSSMAN, and
LYNNE E. PETTIGREW , Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

FINAL WRITTEN DECISION
37 C.F.R. § 42.73

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BACKGROUND
On December 23, 2013, we entered a Decision to Institute a covered
business method patent review, Paper 16 (“Decision to Institute), of U.S. Patent
No. 7,792,749 B2 (“the ’749 Patent”) on the grounds that claims 1–60 do not recite
patent eligible subject matter under 35 U.S.C. § 101.
In this Final Written Decision, we hold that claims 1–60 are unpatentable.
THE ’749 PATENT (EXHIBIT 1001)
The system and method of processing bill payment information described in
the ’749 Patent includes a bill presentment and payment network in which a large
number of payee and payer user stations communicate over the Internet (or other
network) with a central clearinghouse station. Ex. 1001, col. 3, ll. 59-60; col. 4, ll.
5-8; col. 9, ll. 4-35. Each of the user stations can communicate with the central
clearinghouse stations, although only certain users are registered to present or pay
bills electronically via the network. Id. at col. 9, ll. 31-35. The central
clearinghouse generates and directs the storage of billing information in
association with registered and unregistered user identifiers, as may be desired by a
registered user. Id. at col. 11, ll. 52-56. If a payee’s bills are payable
electronically, a processor directs notice of that capability be transmitted to the
payer, either through electronic media or by mail. Id. at col. 4, ll. 36-46. A
database associated with the central clearinghouse stores information, i.e., a payee-
pick-list, identifying the payees whom a registered user payer intends to pay
electronically. Id. at col. 4, ll. 47-50; col. 16, ll. 49-67. Each of the payee-pick-
lists, which can include payees who are registered users and unregistered users, is
associated with a different payer and can include payee identification and related
account information. Id. at col. 16, ll. 65-67; col. 4, ll. 58-62.
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ILLUSTRATIVE CLAIM
1. A method comprising:
executing computer-implemented instructions performed by
one or more processors for:
receiving, by a bill presentment and payment central
clearinghouse, a request that is not associated with
electronic bill presentment, the request comprising
information identifying a payee of a payor, and the
request comprising one of (i) a payment request or (ii) a
request to add the payee to a pick list associated with the
payor, wherein the payor has not previously activated
electronic bill presentment from the payee through the
clearinghouse;
accessing, from at least one database by the clearinghouse
utilizing at least a portion of the received information
identifying the payee, stored billing information;
identifying, by the clearinghouse from the accessed billing
information, a bill presentment information associated
with the payee;
generating, by the clearinghouse, a notification of the
identified bill presentment information associated with
the payee; and
transmitting, by the clearinghouse to the payor, the
generated notification.
CLAIM CONSTRUCTION
Bill presentment and central clearinghouse
In a covered business method patent review, we apply the broadest
reasonable construction to unexpired claims. 37 C.F.R. § 42.200(b). In our
Decision to Institute, we noted that claim 1 recites that a computer executes
instructions performed by one or more processors and that those instructions direct
the “bill presentment and payment central clearinghouse” to perform functions that
are recited in the claim. Dec. to Inst. 5. Patent Owner argues that a bill
presentment and payment network has a large number of payee and payer user
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stations that communicate over the Internet with the central clearinghouse station.
PO Resp. 20. Patent Owner further contends that the central clearinghouse station
is a specially programmed computer system that enables electronic bill
presentment and payment (EBPP) services. Id at 23.
Patent Owner describes the central clearinghouse as a necessary
intermediary between payers and payees interacting with each user station and
handling EBPP interactions between thousands, if not millions, of such stations,
which themselves are computers. Id. at 22. The Patent Owner Response discusses
in some detail functions that Patent Owner contends are performed by the central
clearinghouse station. These functions include registering payers and payees,
sending payments to registered and unregistered payees, generating notifications,
and performing back end tasks using specialized data formats and printers. Id. at
23–32, 34–38. Patent Owner notes that, in one configuration, the central
clearinghouse station electronically receives bills from registered billers in the
form provided by commonly used standard invoicing software packages and uses
that information to generate billing information to be stored in a database. Id. at
28.
Patent Owner contends that our construction did not appreciate that each of
the steps listed in claim 1 requires the clearinghouse computer to process particular
electronic bill payment functionalities and electronic bill presentment
functionalities. Id. at 33. According to Patent Owner a person of ordinary skill
would have understood the “bill presentment and payment central clearinghouse”
to be “a specialized computer system that executes computer software that causes
it to perform a set of functions (i.e., bill payment functions and bill presentment
functions) by interacting with other computer systems on the EBPP network.” Id.
at 35. In support of its construction, Patent Owner argues that, because the ’749
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Patent describes the EBPP central clearinghouse as the center of a specialized
financial networking environment and mediating transactions and communications
among thousands if not millions of user stations, the central clearinghouse cannot
be a general-purpose computer. Id. at 35. Patent Owner argues that the bill
presentment and payment central clearinghouse is a specially programmed
computer system that possesses the functionality necessary to perform the steps
listed in the claims, as well as actions that are not listed expressly in the claims, but
are necessary to perform the claimed steps. Id. at 35. According to Patent Owner,
these other clearinghouse functions include the ability to receive messages, create
appropriate payment directives, and create appropriate messages to be transmitted
on specific networks. Id. 34–35.  
Petitioner argues that Patent Owner incorporates into its proposed
construction limitations that are not cited in the claims and extrinsic evidence
proffered by its experts. Pet. Reply 3–4. Petitioner contends that Patent Owner's
argument focuses heavily on aspects of disclosed embodiments the claims do not
require or that the specification does not teach. Id. at 6–7. Petitioner further
contends that the claimed "clearinghouse" is not a special purpose computer
because its ability to transmit messages, access and evaluate data, and execute
transactions are all within the capabilities of general purpose computers. Id. at 7–
8. Citing the testimony of Patent Owner’s expert, Dr. John Kelly, Petitioner
contends that even a large number of user stations does not impart meaningful
limitations on the clearinghouse, other than speed of operation. Id. at 8–9.
We agree with Petitioner. Claim 1 recites the single step of executing
computer implemented instructions with one or more processors. Claim 1 recites
that those instructions include ones in which the clearinghouse receives a payment
request (or a request to add a payee to a payer’s pick list), accesses billing
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information stored in a database, identifies payee bill presentment information
from the accessed information, and generates and transmits to the payer a
notification of the bill presentment information.1 Although the one or more
processors may also execute instructions to perform routine ancillary functions for
the central clearinghouse to receive the request, access the database and transmit
the information, there are no such instructions or structures recited in claim 1.
Claim 1 of the ’749 Patent does not recite any structure for the bill presentment and
payment central clearinghouse—nor does claim 1 recite any particular software
instructions, any particular processors, any particular configuration or
interconnection of the recited “one or more processors,” or any other structure to
execute the claimed functions called for in the instructions. Thus, the bill
presentment and payment central clearinghouse in claim 1 must be construed
without structural limitations, other than being programmed to carry out the recited
functions.
Payee-pick-list
In our Decision to Institute we construed the term “payee-pick-list” or "pick-
list" to mean a list identifying the payees whom a registered user intends to pay
electronically. Dec. to Inst. 6. Patent Owner contends that the “pick-list” is a data
structure used by the central clearinghouse computer to identify payees a payer
may plan to pay electronically using the EBPP system. PO Resp. 39. Patent
Owner correctly points out that the ’749 Patent specification states that the payee-
pick-list can include payees who are both registered users and unregistered users.
Ex. 1001, col. 16, ll. 65-67. As Patent Owner notes, payment cannot be made
electronically to an unregistered user, and in such cases payments would be made

1 Although claim 1 recites executing instructions to notify the payer, claim 1 does
not recite executing instructions to pay the bill.
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via paper check. PO Resp. 39. Thus, even under Patent Owner’s construction
payments to unregistered users would not be made electronically using the EBPP
system. The presence of unregistered users in the payee-pick-list is not material to
this Final Written Decision.
The ’749 Patent describes the payee-pick-list as a list of payees the user may
plan to pay electronically and states that each user’s individual list is stored in the
form of a database in a memory associated with the central clearinghouse station.
Ex. 1001, col. 16, ll. 49–54. We disagree with Patent Owner’s characterization of
the payee-pick-list as a data structure merely because it is used directly by the
programmed central clearinghouse computer system. PO Resp. 40. Claim 1
recites receiving a request to add a payee to a pick-list associated with the payer,
but does not recite any limitations concerning the pick-list. The specification refers
to a database known as a payee-pick-list that includes certain information such as
payee identifiers, street addresses, cities, states, zip codes, phone numbers and
consumer account numbers. Ex. 1001, col. 16, 61–65. Nothing in this list of
common information associated with the payee requires any particular data
structure. Thus, we do not import a data structure limitation into the construction
of "payee-pick-list” or "pick-list."
Billing information
In our Decision to Institute, we declined to adopt Patent Owner’s proposal
that the term "billing information" be construed as a data construct within an EBPP
system. Patent Owner now contends that “billing information” should be
construed to have its ordinary meaning, which Patent Owner argues is
“information related to billing.” PO Resp. 40. Petitioner argues that “billing
information” does not have any patentable weight. Pet. Reply 11. We have
determined that the construction of “billing information” is not material to this
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Final Written Decision, and we construe the term to have its ordinary and
customary meaning.
§ 101 SUBJECT MATTER ELIGIBILITY
Independent claims 1, 20, 40, 59 and 60
Patent Owner disputes our preliminary finding in the Decision to Institute
that claim 1 is silent as to how the computer has any significance to performing the
claimed method. PO Resp. 4. Patent Owner contends our preliminary finding is
contradicted by evidence showing the claims define a specifically programmed
component and the steps it will perform in an EBPP system. Id. According to
Patent Owner the steps recited in the claims reflecting this functionality only exist
and are relevant within the claimed EBPP system. Id. at 4, 76. Patent Owner
further states that these steps cannot be performed on a general-purpose computer
lacking the functionality conferred by the programming of the computer. Id. at 4.
At the same time, Patent Owner states that the claims do not concern
providing essential information needed for electronic bill payment, but instead
define a specific computer-based notification function. Id. at 4–5. According to
Patent Owner, the notification function operates within a particular bill
presentment and payment system that informs users of the availability of electronic
bills or electronic bill presentment within that system in certain defined
circumstances. Id. at 5, 45. We agree with Patent Owner that claim 1 does not
recite electronic bill payment and is limited to the notification function. However,
we do not agree with Patent Owner’s contention that, because the claims are drawn
to an element of an EBPP programmed to notify a payer about payee billing
information, they constitute patentable subject matter.
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court applied a two-step test for determining whether a claim recites
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patentable subject matter. First, we determine whether the claims at issue are
directed to one or more patent-ineligible concepts, i.e., laws of nature, natural
phenomenon and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider
whether the elements of each claim, both individually and as an ordered
combination, transform the nature of the claim into a patent-eligible application to
ensure that the patent in practice amounts to significantly more than a patent upon
the ineligible concept itself. Id. Thus, the first step in our analysis is to consider
whether the claims of the ’749 Patent recite a patent-ineligible concept.
Patent Owner describes the central clearinghouse as a necessary
intermediary between payers and payees interacting with each user station and
handling EBPP interactions between thousands, if not millions, of such stations,
which themselves are computers. Id. at 22. In Alice, the Supreme Court
considered claims drawn to a method of exchanging financial obligations between
two parties using a third-party intermediary to mitigate settlement risk and
concluded that on their face, claims drawn to the concept of an intermediated
settlement, like the hedging in Bilski, is an “abstract idea” beyond the scope of
§ 101. Id. at 2355–57.2 We conclude that the claims of the ’749 Patent, which are
directed to a clearinghouse that acts as an intermediary between a payer and the
payee by notifying the payer about payee bill presentment information, are not
directed to patent-eligible subject matter. The steps recited in claim 1, and in each

2 In Bilski v. Kappos, 561 U.S. 593 (2010), the Supreme Court found unpatentable,
as abstract ideas, claims drawn to hedging against the financial risk of commodity
price fluctuations where the claims recited the steps of initiating a series of
financial transactions between commodity providers and consumers, identifying
market participants with a counter-risk for the same commodity and initiating a
series of risk balancing transactions between those market participants and the
commodity provider.
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of independent claims 20, 40, 59, and 60, are carried out by a clearinghouse that
receives a request from a payer to provide payee information or add a payee to the
payer’s pick-list. The claims recite receiving a request and are not limited to any
particular number of such requests. The clearinghouse retrieves the payee
information from a database and generates and transmits a responsive notification
message to the payer. Thus, independent claims 1, 20, 40, 59, and 60 are drawn to
the patent-ineligible concept of executing instructions in which an intermediary
receives a request, retrieves information from a database, and transmits the
information to the requester.
The second step in the analysis requires us to determine whether the claims
do significantly more than simply describe the abstract method. Ultramercial, Inc.
v. Hulu, LLC, 772 F. 3d 709, 715 (Fed. Cir. 2014) (citing Mayo, 132 S.Ct. at 1297).
Patent Owner argues that the first step recited in claim 1, receiving a payment
request or a request to add a payee to the payer’s pick list, is an electronic message
transmitted by a user station computer accessing the EBPP system. Id. at 41.
Thus, the clearinghouse must be programmed to process the payment request and
maintain a payee pick list and operate within an EBPP network. Id. at 42. Patent
Owner argues that the second and third steps of claim 1, in which the
clearinghouse accesses a database identifying stored billing information and
identifies bill presentment information, make it clear that a computer system is
retrieving and evaluating data stored in electronic form to identify the payee and
access payee-specific information. Id. at 43. Patent Owner also contends that the
fourth and fifth steps, generating a notification about the payee’s bill presentment
information and transmitting that information to the payer, require a computer
implementation. Id. at 44–45.
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A common thread in Patent Owner’s arguments concerning the patent-
eligibility of independent claims 1, 20, 40, 59, and 60 is that they all require an
EBPP system, i.e., the claims define a specifically programmed component and the
steps it will perform in an EBPP system. Id. at 4. The claims of the ’749 Patent do
not recite an EBPP system. Independent claims 1 and 59 are drawn to a method,
independent claims 20 and 60 are drawn to a system, and independent claim 40 is
drawn to a computer program product. Independent claims 1, 20, 40, 59, and 60
each recite a bill presentment and payment central clearinghouse. As we discussed
above in our construction of the “bill presentment and central clearinghouse,”
claim 1 recites that a computer executes instructions performed by one or more
processors and those instructions direct the “bill presentment and payment central
clearinghouse” to perform functions that are recited in the claim. The same is true
for independent claims 20, 40, 59, and 60.
Figure 1 of the ’749 Patent depicts an EBPP network in accordance with the
invention. Ex. 1001, col. 7, ll. 29–30. Figure 1 shows central clearinghouse
station 140 having a central clearinghouse station processor 140A and central
clearinghouse station memory 140B. Memory 140B stores programmed
instructions 140B1, id. at col. 9, ll. 40–44, and has databases 140B2-B7, which
store user-class information, payee information, and billing and remittance
information, id. at col. 9, ll. 20–27. Figure 1 also shows that the central
clearinghouse station communicates with user stations 110A–110H via the Internet
150 and with financial institution users 130A–130D via the Internet or a bank
network 160. Central processor 140A electronically receives bills from registered
users in the form output by commonly used standard invoicing software, such as
QuickBooks and other off-the-shelf software, and converts the received bills to
standard format billing information so that registered billers need not modify their
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existing software, other than to transmit the bills via the Internet to the central
clearinghouse, to have their bills electronically presented to the applicable
customer. Id. at col. 10, ll. 14–29.
Patent Owner does not contend that this configuration of processors and
memory is the subject matter of the claims. Indeed, there is nothing about the
system structure shown in Fig. 1 of the ’749 Patent that is any different from the
structure of a general purpose computer system. Patent Owner contends that the
claims recite patentable subject matter because the system is specially programmed
to perform the notification function within an EBPP. PO Resp. 5, 40.
We again note that the claims do not recite an EBPP. The claims in the
’749 Patent recite only a general purpose computer executing instructions to carry
out the abstract concept of an intermediary retrieving requested information from a
database and transmitting that information to the requester. Even if we construed
the central clearinghouse limitation to require an EBPP, limiting the abstract idea
to a particular technological environment is insufficient to save a claim. Alice, 134
S. Ct. at 2358 (citing Bilski, 561 U.S. at 610–11). The claims of the ’749 Patent do
not transform the abstract idea into patent eligible subject matter, because both
individually and as an ordered combination, they simply instruct the practitioner to
implement the abstract idea with routine, conventional activity. Ultramercial,772
F. 3d ay 716.. After Alice there can remain no doubt that recitation of generic
computer limitations does not make an otherwise ineligible claim patent-eligible.
DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505, --- F.3d ---, 2014 WL
6845152, at *9 (Fed. Cir. Dec. 5, 2014)
In DDR Holdings 2014 WL 6845152, at *12, the Federal Circuit found
patent-eligible claims drawn to retaining website visitors by manipulating
interactions with the Internet to yield a desired result that overrides a routine and
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conventional sequence of events. In contrast, the independent claims of the ’749
Patent do not recite performing any unconventional steps. At most, a computer
implementation carrying out the claimed steps acts in a routine manner to facilitate
a large number of transactions. As the Federal Circuit noted in Ultramercial, any
transformation from the use of computers or the transfer of content between
computers is merely what computers do and does not change the analysis.
Ultramercial,772 F. 3d at 717.
Patent Owner makes similar arguments for the remaining independent
claims. Patent Owner contends that claim 20 further demonstrates a particular
computer system because it recites that the clearinghouse system has a
communications interface connected to a network and at least one processor. PO
Resp. at 46–47. However, invocation of the Internet adds no inventive concept.
Ultramercial,772 F. 3d at 716.
According to Patent Owner, the machine readable medium containing
software recited in claim 40 can only be implemented on a computer system that
possesses specific functionality in which the central clearinghouse is connected to
an EBPP network to deliver the notifications to a user station. PO Resp. at 48–49.
The fact that a claim relies on a method that is implemented on a computer or is
directed to a computer-readable medium that causes a computer to implement
certain steps are not per-se indicators of patentability. Rather, a challenged claim,
properly construed, must incorporate enough meaningful limitations to ensure that
it claims more than just an abstract idea and is not a mere “drafting effort designed
to monopolize [an abstract idea] itself.” Mayo, 132 S. Ct. at 1297. In order for a
machine to impose a meaningful limitation on the scope of a method claim, it must
play a significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be
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achieved more quickly. SiRFTech., Inc. v. Int’l Trade Comm’n., 601 F.3d. 1319,
1333 (Fed. Cir. 2010). Claim 40, which recites a computer readable medium with
code to perform the same steps as those recited in claim 1, includes no such
limitations.
Patent Owner contends that independent claim 59 is patent-eligible because
it recites adding the payee to the payer’s pick-list and transmitting the pick-list to
the payer. PO Resp. at 50–51. Patent Owner adds that claim 59 is directed to a
particular type of EBPP programmed to have the functional capability of
maintaining a pick list for each payer and to operate within an EBPP network
connected to multiple payee and payer stations. Id. at 51. Patent Owner argues that
claim 60 recites a system implementing the method recited in claim 59 and is
patent eligible for similar reasons. Id. at 53–54. As previously discussed, limiting
the abstract idea to a particular technological environment is insufficient to save a
claim. Alice, 134 S. Ct. at 2358 (citing Bilski, 561 U.S. at 610–11). None of the
limitations in claims 59 and 60 changes the claimed abstract concept or departs
from the ordinary use of a computer to perform routine functions. Claims that
recite a method of doing business on a computer and do no more than merely recite
the use of the computer for its ordinary functions are not patent-eligible. Bancorp
Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278-79 (Fed. Cir. 2012)
(computer used for its most basic function, the performance of repetitive
calculation, does not impose a meaningful claim limitation).
For the reasons discussed above, we conclude the independent claims 1, 20,
40, 59 and 60 of the ’749 Patent do not recite patent-eligible subject matter.
Claims 2, 21, and 41
Claim 2, which depends from claim 1, recites that the step of identifying the
payee bill presentment information involves matching a portion of the received
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information identifying a payee to the billing information and subsequently
determining that the bill presentment information is available. Claims 21 and 41
recite a system and a computer program product with elements corresponding to
those of claim 2. Patent Owner contends that these claims are directed to a specific
method, machine-readable medium, or system that can only function when
implemented on or integrated with a computer system that possesses specific
functionality because the functions recited in these dependent claims cannot be
performed manually or outside the central clearinghouse station and EBPP
network. PO Resp. 55. However, matching the bill presentment information to a
portion of the information identifying a payee and determining the availability of
the bill presentment information as recited in claims 2, 21, and 41 do not play a
significant role in permitting the method to be performed, SiRF Tech., 601 F.3d at
1333, nor do they recite the use of the computer for anything other than its
ordinary functions. Bancorp, 687 F.3d at 1278-79. Thus, we conclude that claims
2, 21, and 41 do not recite patent-eligible subject manner.
Claims 3, 22, and 42
Claim 3, which depends from claim 1, recites that identifying the payee bill
presentment information involves identifying an indication that the payee is an
electronic biller, which is capable of electronic bill presentment to the payer
through the clearinghouse. Claims 22 and 42 recite a system and a computer
program product with elements corresponding to those of claim 3. Patent Owner
contends that, in order to provide the claimed indication, the central clearinghouse
station must be able to access and utilize certain data structures, i.e., data structures
for payees that include information regarding the electronic bill presentment
capability of each payee who is also a registered electronic biller. PO Resp. 55–56.
No such data structures are recited in claims 3, 22, and 42, nor are they disclosed in
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the ’749 Patent. Merely providing an indication that the payee is an electronic
biller does not alter the claimed abstract concept. Thus, we conclude that claims 3,
22, and 42 do not recite patent-eligible subject matter.
Claims 4, 23, and 43
Claim 4, which depends from claim 3, recites executing computer
instructions for receiving the payee’s request to activate electronic bill presentment
of bills for the payer through the clearinghouse and, in response, initiating
activation of the requested electronic bill presentment. Claims 23 and 43 recite a
system and a computer program product with elements corresponding to those of
claim 4. Patent Owner contends that initiating activation of electronic bill
presentment by the central clearinghouse is an electronic process because the
clearinghouse would need to track and determine whether a payer has activated
that feature. PO Resp. 56. According to Patent Owner, the activation of bill
presentment has ramifications on other steps of the process which specify that the
system will generate notifications only if the payer has not previously activated
electronic bill presentment from the payee through the clearinghouse. Id. at 56–57.
Patent Owner contends that, for this reason, limitations in claims 4, 23, and 43 are
directed to a specific method, machine-readable medium or system that can only
function when implemented on or integrated with a computer system that possesses
specific functionality. Patent Owner imports into the claims limitations that are not
recited. Claims 4, 23, and 43 recite only the abstract concept of initiating activation
of the electronic bill presentment in response to the received request. Thus, we
conclude that claims 4, 23, and 43 do not recite patent-eligible subject matter.
Claims 5, 24, and 44
Claim 5 depends from claim 4 and recites that initiation of activation
includes the clearinghouse transmitting a notification of the payee’s request for
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electronic bill presentment. Claims 24 and 44 recite a system and a computer
program product with elements corresponding to those of claim 5. Patent Owner
argues that claims 5, 24, and 44 recite specific tasks the EBPP must perform in
response to an activation request and implicate sending a message over a network.
PO Resp. 57–58. However, for the reasons discussed above, limitations
concerning transmitting a notification do not change the fact that these claims are
drawn to an abstract concept and do not recite patent-eligible subject matter.
Claims 6, 25, and 45
Patent Owner contends that the functionality recited in claims 6, 25, and 45
specify a particular manner of configuring the EBPP system and that the EBPP
system must maintain and utilize certain data structures during certain processes.
Id. at 58–60. As discussed above, the claims of the ’749 Patent do not recite an
EBPP system or data structures. Patent Owner reads into the claims limitations
that are not recited in them. Claim 6 depends from claim 1 and further recites the
abstract concept in which identifying the payee’s bill presentment information
includes identifying an indication that an electronic bill from the payee to the payer
is available through the clearinghouse. Claims 25 and 45 recite a system and a
computer program product with elements corresponding to those of claim 6. In the
absence of limitations that play a significant role in permitting the method to be
performed or recite the computer performing anything other than its ordinary
functions, we conclude that claims 6, 25, and 45 do not recite patent-eligible
subject matter.
Claims 7, 26, and 46
Patent Owner contends that the functional limitations in claims 7, 26, and 46
require the central clearinghouse station to be able to transmit information
associated with electronic bills to the consumer in response to a request for the bill
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and can only be achieved by electronic means. PO Resp. 60–61. Patent Owner
reads into the claims limitations that are not recited in them. Claim 7 only recites
executing computer instructions for the clearinghouse to receive a request for the
bill from the payer and to transmit to the payer information associated with the
electronic bill. Claims 26 and 46 recite a system and a computer program product
with elements corresponding to those of claim 7. In the absence of limitations that
play a significant role in permitting the method to be performed or recite the
computer performing anything other than its ordinary functions, we conclude that
claims 7, 26, and 46 do not recite patent-eligible subject matter.
Claims 8, 27, and 47
Claim 8, which depends from claim 7, recites the clearinghouse transmitting
to the payee a notification of the payer’s request to receive the electronic bill.
Claims 27 and 47 recite a system and a computer program product with elements
corresponding to those of claim 8. Patent Owner argues that these claims require
using a network to transmit messages. PO Resp. 61. As discussed above, use of a
network, such as the Internet, is not sufficient to cause the claims to become
patent-eligible subject matter. Thus, we conclude that claims 8, 27, and 47 do not
recite patent-eligible subject matter.
Claims 9, 28, and 48
Claim 9, which depends from claim 7, recites the clearinghouse receiving a
request to pay the electronic bill and remitting payment. Claims 28 and 48 recite a
system and a computer program product with elements corresponding to those of
claim 9. Patent Owner argues that, to remit payment on a bill, the clearinghouse
must use information associated with the bill to generate a pay directive or
remittance information that associates the payment with the bill. PO Resp. 62.
Patent Owner further argues that to remit payment the clearinghouse requires
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specialized software to process the data and create the messages inherently
required by the claims. Id. Patent Owner does not argue that the functionality of
receiving a request to pay an electronic bill and remitting payment is any less
abstract than the functionality recited in the claims from which claims 9, 28, and
40 depend. The claimed function, i.e., for the clearinghouse to act as an
intermediary to facilitate payment between the payer and the payee, is a patent
ineligible concept. Claims 9, 28, and 48 do not recite any software or computer
program that requires a computer to perform anything other than its basic
functions. Thus, we conclude that claims 9, 28, and 48 do not recite patent-eligible
subject matter.
Claims 10, 29, and 49
Claim 10, which depends from claim 1, recites that the information
identifying the payee includes first information and includes the additional step of
the clearinghouse identifying second payee identification information, wherein the
clearinghouse transmits the notification to the payer with the second information
identifying the payee. Claims 29 and 49 recite a system and a computer program
product with elements corresponding to those of claim 10. We conclude that there
is nothing about transmitting first and second information about the payee that
alters the abstract nature of the claimed subject matter. Thus, we conclude that
claims 10, 29, and 49 do not recite patent-eligible subject matter.
Claims 11, 30, and 50
Claim 11, which depends from claim 1, recites the additional step of the
clearinghouse storing the payee identification information in a database and that
the step of the clearinghouse identifying bill presentment information can occur
before or after storing the payee identification information. Claims 30 and 50 recite
a system and a computer program product with elements corresponding to those of
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claim 11. Patent Owner contends that claims 11, 30, and 50 describe functionality
required to implement the creation and maintenance of payee pick lists and
updating databases maintained by the system. PO Resp. 64. However, for the
reasons discussed above, storing information in a database is a routine function of
computers and does not rise to the level of patent-eligible subject matter. Thus, we
conclude that claims 11, 30, and 50, do not recite patent-eligible subject matter.
Claims 12, 31, and 51
Claim 12, which depends from claim 1, recites the clearinghouse receiving
second bill information associated with the payee’s bills, identifying, from the
information, a payee’s electronic bill that is available for the payer through the
clearinghouse, and transmitting to the payer a notification of the electronic bill’s
availability. Claims 31 and 51 recite a system and a computer program product
with elements corresponding to those of claim 12. Similar to our analysis of
claims 10, 29, and 49, we conclude that there is nothing in identifying second bill
information and transmitting a notification to the payer that changes the abstract
nature of the claimed subject matter. Thus, we conclude that the limitations recited
in claims 12, 31, and 51 do not limit the scope of the corresponding claims and that
claims 12, 31, and 51 do not recite patent-eligible subject matter.
Claims 13, 32 and 52
Claim 13 depends from claim 12 and recites that the second bill information
is received after receipt of the information identifying the payee. Claims 32 and 52
recite a system and a computer program product with elements corresponding to
those of claim 13. Patent Owner argues that claims 13, 32, and 52 recite
limitations that further tie the claims to a particular EBPP system because they
describe functionality the central clearinghouse must have to continue receiving
bill information from a payee for a payer. PO Resp. 65. The order of the receipt of
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the second bill information recited in claims 13, 32, and 52 merely describes a
logical sequence of receiving information and does not limit the scope of the
corresponding claims meaningfully. Therefore, we conclude that claims 13, 32,
and 52 do not recite patent-eligible subject matter.
Claims 14, 33, and 53
Claim 14, which depends from claim 1, recites that the identified bill
presentment information comprises a first notification and adds the steps of the
clearinghouse determining payer identification information, utilizing a portion of
that payer identification information to access stored electronic billing information
for the payer, identifying for the payer an electronic bill available to the payer
through the clearinghouse, generating a second notification of a second bill
presentment information, and transmitting the second notification. Claims 33 and
53 recite a system and a computer program product with elements corresponding to
those of claim 14. Patent Owner argues that by using the information identifying
the payer, the system could identify another payee of the payer and notify the payer
of the availability of an electronic bill from that additional payee. PO Resp. 66–67.
Thus, according to Patent Owner, the claims are directed to a system that can only
function when implemented on or integrated with a computer that possesses
specific functionality. Id. However, the limitations recited in claims 14, 33, and 53
are mere functions of an intermediary and do not play a significant role in
permitting the method to be performed. Thus, we conclude that claims 14, 33, and
53 do not recite patent-eligible subject matter.
Claims 15–16, 34–35, and 54–55
Claim 15, which depends from claim 14, recites that the electronic bill is a
bill of a second payee different from the first payee. Claims 34 and 54 recite a
system and a computer program product with elements corresponding to those of
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claim 15. Claims 16, 35, and 55 recite that the second payee is an electronic biller
capable of electronic bill presentment through the clearinghouse. Patent Owner
argues that claims 15, 16, 34, 35, 54, and 55 are not directed to an abstract process,
but instead are directed to a specific applied system that provides a tangible service
to users. PO Resp. 67–68. The status of a payee as a second payee different from
the first payee or as an electronic biller does not alter the abstract concept of the
clearinghouse acting as an intermediary between the payer and payee. Thus, we
conclude that claims 15, 16, 34, 35, 54, and 55 do not recite patent-eligible subject
matter.
Claims 17–18, 36–37, and 56–57
Patent Owner argues that claims 17, 36, and 56 are directed to a specific
applied system that provides a tangible service to users, rather than to an abstract
concept. PO Resp. 68. Patent Owner argues that claims 18, 37, and 57 facilitate a
payer's future use of the EBPP system that ensures the system can provide a payer
with notifications about electronic bill presentment about any payee in which he or
she may be interested. Id. at 69. Claim 17 depends from claim 16 and recites that
the second notification comprises an indication that the second payee’s electronic
bill is available through the clearinghouse. Claims 36 and 56 recite a system and a
computer program product with elements corresponding to those of claim 17.
Claim 18 depends from claim 1 and further recites storing in the payer’s pick list
an indication of the payee’s identification. Claims 37 and 57 recite a system and a
computer program product with elements corresponding to those of claim 18.
These limitations recite storing indications of features associated with the payee,
i.e., bill availability and payee identification, but they do not change the abstract
concept recited in claims. Thus, we conclude that claims 17, 18, 36, 37, 56, and 57
do not recite patent-eligible subject matter.
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Claims 19, 38–39, and 58
Claim 19, which depends from claim 18, recites that the payer’s pick list
comprises multiple payees identified by the payer and further recites the
clearinghouse transmitting to the payer a pick list presentation that includes the
generated notification of the bill presentment information. Claims 38 and 58 recite
a system and a computer program product with elements corresponding to those of
claim 19. Claim 39, which depends from claim 38, recites that the presentation
includes bill presentment information. Patent Owner argues that a payer's pick list
is a tangible product or service that allows a user to pay bills, sign up for electronic
bill presentment, and be notified of any existing electronic bills in the context of
particular payees. PO Resp. 70. As discussed above, the ’749 Patent describes a
pick list as a database containing the list of payees for a user. Ex. 1001, col. 16, ll.
49–65. The entries in the database, i.e., payee identifiers, street addresses, cities,
states, zip codes, phone numbers, and consumer account numbers are not tangible
products or services. The fact that a payer's pick list includes multiple payees and
that the list with notification of bill presentment information can be transmitted to
the payer does not change the abstract nature of the claimed subject matter. The
clearinghouse acts as an intermediary between the payer and the payee and simply
transmits the information to the payer. Thus, we conclude that claims 19, 38, 39,
and 58 do not recite patent-eligible subject matter.

MOTION TO EXCLUDE
Patent Owner moves to exclude certain paragraphs of the declaration of
Petitioner’s expert Michael Shamos. Paper 41 (“Mot. to Exclude”). Petitioner
opposes Patent Owner's Motion to Exclude on the basis that these statements
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Patent Owner moves to exclude are proper rebuttal to Patent Owner's experts.
Paper 42 (“Opp. to Mot. to Exclude”). Our Final Written Decision does not cite or
rely on any of the subject matter Patent Owner seeks to exclude. Therefore, we
dismiss Patent Owner’s Motion to Exclude.
SUMMARY
For the reasons discussed above, we conclude that it has been shown, by a
preponderance of the evidence, that claims 1–60 of the ’749 Patent do not recite
patent-eligible subject matter. 
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–60 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a final written decision, the
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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PETITIONER:
E. Robert Yoches
bob.yoches@finnegan.com

Erika Arner
erika.arner@finnegan.com

Stephen Kabakoff
stephen.kabakoff@finnegan.com

Jason Melvin
jason.melvin@finnegan.com

Jeffrey Berkowitz
jeffrey.berkowitz@finnegan.com

PATENT OWNER:
Jeffrey Kushan
jkushan@sidley.com

Thomas Broughan III
tbroughan@sidley.com