On May 22, 2015, the PTAB issued its final written decision in American Express Co. v. Lunenfeld, CBM2014-00050 (Paper 51), canceling six claims of U.S. Patent No. 8,239,451 directed to online metasearching. The PTAB decided that all six claims are unpatentable under 35 USC § 101, and obvious under 35 USC § 103. The PTAB characterized the ‘452 Patent as directed to the abstract idea of searching for travel information from multiple sources and ordering travel items from the combined search results.
Before addressing the merits of the Section 101 and 103 challenges, the PTAB first concluded that the CBM procedure does not violate the patent owner’s right to a jury trial under the Seventh Amendment, and that Section 101 is recognized ground for challenge under the AIA’s Covered Business Method Review.
- In Patlex Corp. v. Mossinghoff, 758, F.2d 594, 601 (Fed. Cir. 1985), the Federal Circuit stated that reexamination proceedings do not violate the Seventh Amendment’s guarantee of trial by jury. Quoting from that decision, the Board observed that “[a] defectively examined and therefore erroneously granted patent must yield to the reasonable Congressional purpose of facilitating the correction of governmental mistakes.” FWD at 9. The Board was not persuaded that there existed a constitutionally-significant difference between reexamination proceedings and CBM proceedings brought under the AIA.
- The Board observed (a) that 35 USC 282(b)(2) lists among the grounds that may be raised in a CBM review the “invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability;” (b) the Federal Circuit has recognized Section 101 as a “condition for patentability;” and, (c) the AIA’s legislative history makes clear Congress’s intent to permit CBM review premised upon Section 101. Id. at 26-27 (emphasis supplied).
With respect to the merits of the Section 101 challenge the Board first concluded that the challenged claims were directed to an abstract idea: essentially the idea of buying a trip chosen from multiple options provided through a knowledgeable broker. Id. at 29. The Board rejected the patent owner’s argument that that the specific novel combination of elements claimed would reduce concerns surrounding preemption of the abstract idea, noting that “a novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible.” Id. at 35. Next, the Board distinguished the Federal Circuit’s decision in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), concluding that the challenged claims did nothing more than apply conventional internet functioning to an abstract idea—the equivalent of the pre-internet practice of using a human travel agent to search sources and to compile a summary of travel options. Id. at 41-42.
The Board also denied the patent owner’s motion to amend its claims, concluding that proposed amendments adding requirements of a plurality of servers, a database, and a storage device were inadequate to overcome the Section 101 challenge.
The Board’s decision is also noteworthy for its rejection of the patent owner’s arguments that the petitioner’s declarant (expert) was not one of ordinary skill in the art. The Board concluded that there need be no “perfect match between the expert’s experience and the field of art in question.” Id. at 12-13. In rejecting the patent owner’s argument, the Board also noted that the patent owner did not file a motion to exclude the expert’s opinions as incompetent. Thus, the Board addressed the merits of the patent owner’s argument even though the argument was not procedurally presented in accordance with the Board’s rules.