LinkedIn Corporationv.AvMarkets Incorporated

Patent Trial and Appeal Board

Nov 10, 2014

11944153 (P.T.A.B. Nov. 10, 2014)

Trials@uspto.gov Paper 30
571-272-7822 Entered: November 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LINKEDIN CORP.,
Petitioner,

v.

AVMARKETS INC.,
Patent Owner.
____________

Case CBM2013-00025
U.S. Patent 7,856,430 B1
____________

Before MICHAEL P. TIERNEY, JONI Y. CHANG, and
WILLIAM V. SAINDON, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
Covered Business Method Patent Review
35 U.S.C. §328(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Petitioner LinkedIn Corporation (“LinkedIn”) filed a Petition (Paper
2, “Pet.”) requesting review under the transitional program for covered
business method patents of claims 1–17 of U.S. Patent 7,856,430 B1 (“the
’430 patent”) (Ex. 1001). On November 12, 2013, pursuant to 35 U.S.C.
§ 324, we instituted this trial as to claims 1–3, 5–7, 9–11, and 13–15 on one
ground of unpatentability, 35 U.S.C. § 101 (Paper 13, “Dec. to Inst.”).
Patent Owner AvMarkets filed a Patent Owner Response (Paper 19, “PO
Resp.”), and LinkedIn filed a Reply (Paper 20, “Reply”).
AvMarkets filed a Motion to Exclude (Paper 22, “PO Mot. to
Exclude”) testimony from Petitioner’s Declarant, Dr. Michael Freedman.
LinkedIn filed an Opposition (Paper 25, “Pet. Exclude Opp.”) and
AvMarkets filed a Reply (Paper 26, “PO Exclude Reply”).
An oral hearing in this proceeding was held on June 3, 2014. A
transcript of the hearing is included in the record (Paper 29, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that LinkedIn has shown by
a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 of
the ’430 patent are unpatentable.
A. The ’430 Patent
The ’430 patent is titled “Method for Generating Increased Numbers
of Leads Via the Internet.” The patent generally describes generating sales
leads on the Internet through the creation of Web pages to display
information. Ex. 1001, col. 1:1–13. The patent explains that Web pages
containing items indexed by search engines generate greater sales leads
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because potential customers can find those items using a search engine. Id.
at col. 3:46–56. In order to generate the Web pages for display on the
Internet, the method involves receiving a list of data items and listing the
data items as hyperlinks on a Web page. Id. at col. 6:10–16 (receive list),
37–47 (list data). The patent specifies that when a hyperlink is activated, the
invention generates a Web page showing the data item in a title, URL
(Uniform Resource Locator), meta-tag, or text of the generated Web page.
Id. at col. 6:48–58. In additional embodiments, the invention can: provide
access credentials specifying authorized users of the Web site; generate an
index of non-duplicative data items after receiving the data items; and
include a prompt on the generated Web page. Id. at col. 6:7–10
(credentials), 20–36 (index); col. 7:10–14 (prompt).
B. Illustrative Claim
Of the challenged claims, claims 1, 5, 9 and 13 are independent
claims. Independent claim 1 is illustrative of the ’430 patent and is
reproduced below:
1. A method for generating increased numbers of sales leads
for each of a plurality of sellers of parts via a network
implemented by a computer executing computer readable
instructions to perform the steps of:
receiving one or more part numbers for said parts from
each of the plurality of sellers;
listing each of said part numbers as a part number
hyperlink on a Web page; and
generating a part number Web page for any activated part
number hyperlink wherein the part number Web page includes
two or more components each of which incorporates the part
number from said activated part number hyperlink, wherein
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each such component is selected from the group consisting of a
title, a URL, a meta-tag and a text entry.
Ex. 1001, 8:45–60.
C. Related Proceeding
Both parties indicate that the ’430 patent was asserted in AvMarkets,
Inc. v. LinkedIn Corporation, No. 13-cv-00230-LPS (D. Del), pending in the
U.S. District Court for the District of Delaware. Pet. 11, Prelim. Resp. 5.
D. Alleged Grounds of Unpatentability Instituted in Trial
Petitioner alleges that claims 1–3, 5–7, 9–11, and 13–15 are
unpatentable under 35 U.S.C. § 101.

II. ANALYSIS
There is a single patentability challenge raised against claims 1–3, 5–
7, 9–11, and 13–15 of the ’430 patent. Specifically, LinkedIn contends that
1–3, 5–7, 9–11, and 13–15 of the ’430 patent are unpatentable under
35 U.S.C. § 101. AvMarkets opposes LinkedIn’s challenge and moves to
exclude certain evidence from the proceeding. Paper 22. Prior to analyzing
LinkedIn’s patentability challenge, we first analyze AvMarkets’ Motion to
Exclude so that we may define the scope of the evidentiary record.
A. AvMarkets’ Motion to Exclude
AvMarkets’ Motion to Exclude seeks to exclude the Declaration of
Michael J. Freedman, Ex. 1012, on the theory that it represents belated new
evidence as opposed to rebuttal evidence. Paper 22, 3. According to
AvMarkets, Dr. Freedman’s testimony raises two issues that could have
been raised in the Petition but were not: 1) Dr. Freedman’s testimony that
the claims at issue require only a general purpose computer; and
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2) Dr. Freedman’s testimony regarding the state of the art at the time of the
invention in 2007. Id. at 4–8. LinkedIn disagrees with AvMarkets’
characterization of Dr. Freedman’s testimony and contends that the
testimony responds directly to two issues that were raised for the first time in
the Declaration of Paul Pollastro, the founder and CEO of the Patent Owner
AvMarkets.
While a Motion to Exclude may raise issues related to admissibility of
evidence, it is not an opportunity to file a Sur-Reply, and also is not a
mechanism to argue that a Reply contains new arguments or relies on
evidence that should have been included in the prima facie case. Here,
AvMarkets’ Motion to Exclude contains such improper arguments, and is in
the nature of a Sur-Reply. Moreover, as discussed below, AvMarkets’
arguments also are without merit.
According to AvMarkets, LinkedIn has failed to provide sufficient
supporting evidence to demonstrate that the challenged claims are directed
to a general purpose computer. AvMarkets states that Dr. Freedman’s
Declaration is not responsive to AvMarkets’ Patent Owner Response but
was submitted with LinkedIn’s Reply Brief to remedy an evidentiary
deficiency in the LinkedIn’s Petition. The Petition, however, specifically
contends that AvMarkets’ claimed recitation of a general-purpose computer
cannot save its challenged claims from abstractness. Pet. 23. LinkedIn’s
Petition further contends that AvMarkets’ claims do not satisfy the machine-
or-transformation test as the claims are directed to a general purpose
computer, and cites the ’430 patent as emphasizing that the software
implementation on such a computer is boundless and, thus, not specifically
programmed. Id. at 26. The ’430 patent states explicitly that the invention
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may be described in the general context of computer-executable instructions
executed by one or more computers or other devices. Ex. 1001, 8:19–21.
Dr. Freedman’s Declaration confirms that the ’430 patent describes the use
of a general purpose computer but does so in the context of rebutting
AvMarkets’ Pollastro Declaration. For example, Dr. Freedman testifies that
“Mr. Pollastro is incorrect in opining that the claims of the ’430 patent could
not be practiced on a general-purpose computer” and goes on to elaborate as
to why Mr. Pollastro is “mistaken.” Ex. 1012 ¶ 36. We hold that
Dr. Freedman’s testimony concerning the ’430 patent’s claimed use of a
general purpose computer is appropriate rebuttal evidence.
AvMarkets contends that Dr. Freedman’s testimony concerning the
state of the art in 2007 is not rebuttal evidence but submitted to remedy
LinkedIn’s evidentiary deficiency concerning what was conventional in the
art as of 2007. Paper 22, 8–11. LinkedIn’s Petition, however, cites to the
’430 patent and its prosecution history to demonstrate that the claimed
invention merely involves creating a product catalog and placing the catalog
on the internet in a searchable format so that existing search engines will
index the catalog. Paper 2, 20–27. AvMarkets submitted Mr. Pollastro’s
Declaration to support their contention that the ’430 patent does not claim
every possible way of creating a product catalog and that the claims contain
meaningful limitations such that a general purpose computer would not be
able to perform the claimed steps. Paper 19, 7–8 and 14. Dr. Freedman’s
testimony on behalf of LinkedIn is submitted to rebut Mr. Pollastro’s
opinion, as Dr. Freedman testifies as to the important aspects of a computer,
which were well known to a person of ordinary skill in the art at the time of
the invention. Ex 1012 ¶¶ 19–36. We hold that Dr. Freedman’s testimony
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concerning the state of computer art at the time of the invention is
appropriate rebuttal evidence.
AvMarkets’ Motion to Exclude the testimony of Dr. Freedman,
Ex. 1012, is denied.
We also hold that both Mr. Pollastro and Dr. Freedman are qualified
to testify as to the level and knowledge of one of ordinary skill in the art as
of 2007, the time of the invention. Specifically, one of ordinary skill in the
art would have at least a bachelor’s degree in computer science or equivalent
experience in the art of software and hardware development, including the
development of Web applications. Ex. 1012 ¶ 3; Ex. 2001 ¶ 4. Mr.
Pollastro is qualified to testify as, at the time of the invention, he was a
Microsoft Certified Professional who had years of experience building and
managing servers for an in-house network. Ex 2001 ¶¶ 2–3. Dr. Freedman
is qualified to testify as, at the time of the invention, he possessed a
Bachelor’s degree and Master’s degree from the Massachusetts Institute of
Technology in Computer Science and Engineering, and a Ph.D. in Computer
Science from New York University. Ex. 1012 ¶ 3.
B. Claim Construction
The Board interprets claims of unexpired patents using the “broadest
reasonable construction in light of the specification of the patent in which
[they] appear[].” 37 C.F.R. § 42.300(b); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Trial Practice
Guide”); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)
and In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms are
given their plain and ordinary meaning as would be understood by a person
of ordinary skill in the art at the time of the invention and in the context of
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the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc). “There are only two exceptions to this general
rule: 1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of a claim
term either in the specification or during prosecution.” Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
1. Previously Interpreted Terms
In the Decision on Institution, we interpreted various claim terms of
the ’403 patent as follows:
Claim Term
(Claims)
Interpretation
“parts”
(1–4, 9–7)
“Products marketed by sellers”
“part
number”
(1–4, 7, 9–
17)
“Any number that could represent a product, part of a
product, or a person”
“Web page”
(all)
“A document available on the World Wide Web”
“hyperlink”
(all)
“A link on one document to retrieve another piece of that
document or another document”
“meta-tag”
(all)
“An HTML tag that provides information about a Web page
without affecting how the page is displayed. . . .”
“BLOB
field”
(2, 6, 10, 14)
“A user input field for accepting Binary Large Objects,
which comprises not only the traditional character, numeric,
and memo fields but also pictures or other data that
consumes a large amount of space”

See Dec. on Inst. 4–6. The parties do not dispute these interpretations in
their Patent Owner Response and Reply. We adopt the above claim
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constructions based on our previous analysis, and see no reason to deviate
from those constructions for purposes of this decision.
C. Covered Business Method Patent
We determined, in the Decision on Institution, that the ’430 patent is a
covered business method patent as defined in § 18(a)(1)(E) of the America
Invents Act and 37 C.F.R. § 42.301, because at least one claim of the ’430
patent is directed to a covered business method. Paper 22, 7–13.
D. Claims 1–3, 5–7, 9–11, and 13–15 of the ’430 Patent are
Unpatentable as Directed to Non-Statutory Subject Matter
LinkedIn challenges claims 1–3, 5–7, 9–11, and 13–15 of the ’430
patent under 35 U.S.C. § 101, as directed to patent-ineligible subject matter.
Pet. 18–27. AvMarkets disagrees and maintains that its claims are directed
to patent-eligible processes because the claims contain significant
meaningful limitations and do not preempt the abstract idea of creating a
product catalog. PO Resp. 3–16.
1. Section 101 Subject Matter Eligibility
For claimed subject matter to be patent eligible, it must fall into one of
four statutory classes set forth in 35 U.S.C. § 101: a process, a machine, a
manufacture, or a composition of matter. The Supreme Court recognizes
three categories of subject matter that are ineligible for patent protection:
“laws of nature, physical phenomena, and abstract ideas.” Bilski v. Kappos,
130 S. Ct. 3218, 3225 (2010) (internal quotations and citation omitted). A
law of nature or an abstract idea by itself is not patentable; however, a
practical application of the law of nature or abstract idea may be deserving
of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293–94 (2012). To be patentable, however, a claim must
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do more than simply state the law of nature or abstract idea and add the
words “apply it.” Id.
In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
Supreme Court recently clarified the process for analyzing claims to
determine whether claims are directed to patent-ineligible subject matter. In
Alice, the Supreme Court applied the framework set forth previously in
Mayo, “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If they are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1291, 1297). In other words, the second step is to “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. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski, 130 S. Ct. at 3230 (quoting Diamond v.
Diehr, 450 U.S. 175, 191–92 (1981)).
The patents at issue in Alice claimed “a method of exchanging
financial obligations between two parties using a third-party intermediary to
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mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of
hedging risk in Bilski v. Kappos, 130 S. Ct. at 3240—which the Court
deemed “a method of organizing human activity”—Alice’s “concept of
intermediated settlement” was held to be “‘a fundamental economic practice
long prevalent in our system of commerce.’” Alice, 134 S. Ct. at 2356.
Similarly, the Court found that “[t]he use of a third-party intermediary . . . is
also a building block of the modern economy.” Id. “Thus,” the Court held,
“intermediated settlement . . . is an ‘abstract idea’ beyond the scope of
§ 101.” Id.
2. AvMarkets’ Challenged Claims Are Unpatentably
Abstract
AvMarkets’ claims are in substance directed to creating a product
catalog to generate sales leads. Ex. 1001, claim 1 and col. 1:6–13. In the
Decision to Institute, we held that the concept of creating a product catalog
is an abstract idea as it represents a “disembodied concept.” Dec. to Inst. 14.
AvMarkets does not dispute that the ’430 patent claims are directed to an
abstract idea. Accordingly, we analyze the ’430 patent claims to determine
whether they incorporate sufficient meaningful limitations to ensure that the
claims are more than just an abstract idea. Mayo, 132 S. Ct. at 1297.
3. Claim 1 Does Not Contain Significant Meaningful
Limitations Beyond the Abstract Idea
LinkedIn contends that claim 1 only adds “conventional and routine
limitations to the underlying abstract idea.” Pet. 24. AvMarkets disagrees,
and contends that the claims add meaningful limitations and do not preempt
the abstract idea of creating a product catalog. PO Resp. 3–16.
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a. General Purpose Computer
AvMarkets contends that its claimed invention cannot be performed
on a mere general purpose computer and requires specially programmed web
servers in order to function. Id. at 14. To support its position, AvMarkets
relies upon the testimony of Mr. Pollastro, who testifies that the step of
“receiving and listing part numbers” can only be accomplished through the
use of computers capable of operating server software. Id. (citing Ex. 2001
¶ 10). Further, AvMarkets relies upon Mr. Pollastro’s testimony that the
claims require a computer specially configured to work as a server in order
to generate the claimed web page having a product index. PO Resp. 14
(citing Ex. 2001 ¶¶ 9–10).
The ’430 patent states that the invention may be described in the
general context of computer-executable instructions that are executed by one
or more computers or other devices. Ex. 1001, 8:19–21. Consistent with
this generic computer hardware description, Dr. Freedman testifies that Web
servers and databases were conventional, generic, and did not require
“special” programming as of 2007, the time of the invention. Ex. 1012 ¶ 19.
Dr. Freedman testifies that the division between computers that act as
servers and those that cannot is a false division, just as laptops and desktops
are effectively identical except in their external form factors. Id. ¶ 21.
Dr. Freedman supports his opinion with a thorough analysis of the three
important aspects of a computer: the physical hardware, the software
operating system, and the software applications running on the operating
system. Id. ¶¶ 22–36.
We find that the claimed invention merely requires the use of a
general-purpose computer. This finding is based on the teachings of the
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’430 patent Specification and Dr. Freedman’s testimony. We credit the
testimony of Dr. Freedman over that of Mr. Pollastro, as Dr. Freedman’s
testimony is consistent with the teachings of the ’430 Specification and
provides a thorough, well-reasoned analysis as to why the ’430 claims
require nothing more than a general-purpose computer.
b. Listing Part Numbers as Hyperlinks of Webpages
and Part Number Web Pages
AvMarkets contends that its claims have very specific requirements
that are meaningful limitations to the abstract idea of providing a product
catalog. PO Resp. 11. For example, AvMarkets contends that meaningful
limitations include:
(1) a Web page on which part numbers are listed as hyperlinks;
(2) a part number Web page; (3) the part number Web page
being “created automatically, at the time of accessing”; and
(4) the part number Web page including two or more
components each of which incorporates the part number from
the activated part number hyperlink, wherein each such
component is selected from the group consisting of a title, a
URL, a meta-tag and a text entry.
Id.
LinkedIn disputes AvMarkets’ characterization of the above
limitations as meaningful limitations. Reply 5. According to LinkedIn, the
additional limitations are accomplished using conventional Internet
technology and that the listing of part numbers or data items on a Web page
was well known in 2007. Id. at 5–9.
The ’430 patent Specification teaches that billions of documents were
available on the Internet from hyperlinked data at the time of the invention.
Ex. 1001, 1:15–16. The ’430 Specification also discloses that it was known
in the art to generate Web pages upon activation of a hyperlink. Id. at 1:52–
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2:25. Further, the ’430 Specification discloses that it was known in the art to
include information in the title, metadata, and text of a Web page such that it
would be indexed. Id. at 3:4–14. Accordingly, we find that the limitations
AvMarkets has identified as meaningful represent merely routine computer
technology used in conjunction with a conventional network—the Internet
with its billions of existing documents—in a conventional manner,
generating Web pages upon activation of a hyperlink.
AvMarkets’ contentions focus on the alleged meaningful limitations
appearing in each of the challenged independent claims, claims 1, 5, 9,
and 13. Although argued separately by AvMarkets, we have reviewed the
remaining challenged dependent claims, dependent claims 2–3, 6–7, 10–11
and 14–15, and likewise are persuaded that the remaining claims lack
limitations that meaningfully limit the abstract idea. See Reply 9–10.
4. Preemption
AvMarkets contends that its independent claims do not preempt the
abstract idea of creating a product catalog. PO Resp. 5. According to
AvMarkets, a person of ordinary skill in the art can provide product catalogs
via the Internet using methods that differ from the claimed invention. Id. at
7. AvMarkets states that, since there exist other methods of providing
product catalogs on the Internet, the claims are not an inherent attempt to
preempt every way of creating a product catalog and providing it via the
Internet. Id. at 9–10.
Limiting an abstract idea to a specific field of use or adding token
postsolution activity does not make an abstract concept patentable. Diehr,
450 U.S. 175, 191–192; Parker v. Flook, 437 U.S. 584, 590 (1978) (“[t]he
notion that post-solution activity, no matter how conventional or obvious in
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itself, can transform an unpatentable principle into a patentable process
exalts form over substance.”). The fact that AvMarkets’ claims could be
written differently does not demonstrate that the limitations added to the
abstract idea are meaningful. Receiving part numbers, listing part numbers
on a Web page, and generating a part number Web page for any activated
part number hyperlink represent insignificant post-solution activity as they
do not represent significant meaningful limitations on the claims.
Specifically, creating a product catalog would require some form of data
gathering (receiving part numbers) and displaying them in the catalog
(listing part numbers on a Web page). Further, the generation of a part
number Web page merely employs conventional, routine steps to ensure that
the data could be retrieved on the Internet, which is in effect a standardized
manner of ensuring that a document can be located and retrieved, like a card
catalog in a library. We hold that the additional limitations in AvMarkets’
claims that seek to narrow the application of the abstract idea of creating a
product catalog are merely an attempt to limit the use of the abstract idea to
a particular technological environment, which has long been held
insufficient to save a claim in this context. See Alice, 134 S. Ct. at 2358;
Mayo, 132 S. Ct. at 1294; Bilski, 561 U.S. at 610–11; Diehr, 450 U.S. at
191.
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III. CONCLUSION
We conclude Petitioner has proven, by a preponderance of the
evidence, that claims 1–3, 5–7, 9–11, and 13–15 of the ’403 patent are
unpatentable under 35 U.S.C. § 101; and, Patent Owner has not shown it is
entitled to exclude Dr. Freedman’s Declaration, Ex. 1012.
IV. ORDER
For the reasons given, it is hereby:
ORDERED that Petitioner has established by a preponderance of the
evidence that claims 1–3, 5–7, 9–11, and 13–15 of the ’403 patent are
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied;
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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PETITIONER:

Jordan Becker
Bing Ai
Christopher Kao
Brock Weber
PERKINS COIE LLP

JBecker@perkinscoie.com
BAi@perkinscoie.com
ckao@perkinscoie.com
bweber@perkinscoie.com

PATENT OWNER:

Timothy J. Haller
Brian E. Haan
Oliver D. Yang
NIRO, HALLER & NIRO

haller@nshn.com
bhaan@nshn.com
oyang@nshn.com