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Kayak Software Corp. v. Int’l Bus. Mach. Corp.

Paper No. 16, Dec. 15, 2016

CBM2016-00075 (Patent 7,072,849)


Petitioner Kayak Software et al. filed a Corrected Petition to institute a covered business method patent review of claims 1-25 of the ‘849 patent. See Paper 16, p. 2. Patent Owner IBM filed a Preliminary Response. Id.


The PTAB found that Petitioner had failed to offer sufficient reason for the PTAB to institute the CBM patent review of any of the claims at issue in the ‘849 patent under either 35 U.S.C. § 103 or 35 U.S.C. § 101, so the Petition was denied. See Paper 16, p. 21.


The ‘849 patent describes an invention relating generally to a “distributed processing, interactive computer network intended to serve very large numbers of simultaneous users.” See Paper 16, p. 3. Of the challenged claims, claims 1, 8, 13, 14, and 21 are independent. See Paper 16, p. 4.

Petitioner asserted that claims 1-25 are unpatentable under 35 U.S.C. § 103 for obviousness in light of various combinations of Reference 7, the Simon patent, Alber, and the Wilson patent. See Paper 16, p. 5. Patent Owner disagreed and said that these grounds should be denied under 35 U.S.C. § 325(d). Id. To determine if the Patent Owner’s denial should be granted, the PTAB looked to the relevant prosecution history of the ‘849 patent. See Paper 16, p. 6-7. The PTAB observed that Patent Owner had gone back and forth with the PTO for eleven or so years, dealing with rejections and amendments based upon Simon, Reference 7, Alber, and various combinations of the three. Id. Petitioner acknowledged that Reference 7, Simon, and Alber were all considered extensively during prosecution but argued that CBM patent review should still be granted because the combinations of references Petitioner alleged were never explicitly covered by the prosecution history. See Paper 16, p. 8. Patent Owner pointed out that Reference 7, Simon, and Alber were “cited by Examiner” in the ‘849 patent. Id. The PTAB agreed with Patent Owner that the Board had sufficiently considered the three references and various combinations of them. See Paper 16, p. 8-9. The PTAB also noted that while the Wilson patent was not cited during prosecution, it is substantially similar to other references that were cited. See Paper 16, p. 8-12. The PTAB concluded, based upon analysis under 35 U.S.C. § 325(d), that the arguments advanced by Petitioner concerned “the same or substantially the same prior art or arguments,” which weighed against instituting CBM review under 35 U.S.C. § 324(a). See Paper 16, p. 12.

Petitioner also asserted that claims 1-25 are unpatentable under 35 U.S.C. § 101 for failure to recite statutory subject matter. See Paper 16, p. 3. Patent Owner disagreed, and the PTAB performed the two-step Alice/Mayo analysis to determine if the claims were drawn to an abstract idea. See Paper 16, p. 13-14. Petitioner asserted that independent claims 1 and 21 were directed to abstract ideas; Patent Owner disagreed, arguing that the claims were directed to improvements in computer functionality. See Paper 16, p. 15. The PTAB said that Petitioner’s assertions were flawed, and that the proper application of the Alice/Mayo framework requires that elements of claims be considered individually (as Petitioner argued) and also in ordered combination in order to determine patentability. See Paper 16, p. 15-16. The PTAB ultimately determined that Petitioner had not sufficiently shown that independent claims 1 and 21 are direct to unpatentable abstract ideas, and there was no need to analyze the claims under the second prong of the Alice/Mayo framework. See Paper 16, p. 20.

Petitioner argued that the ‘849 patent met all the eligibility requirements for CBM review. Patent Owner disagreed and said that Petitioner had not bet the burden of showing the claims in the patent are not directed to a technological invention. The PTAB noted that even if the ‘849 patent were eligible for CBM review, the Board would still decline to institute the review because of the 35 U.S.C. § 103 and 35 U.S.C. § 101 issues.


A copy of the PTAB order can be found here.