Takeaway: Under the Alice decision, the Board may find a claim to be patent-ineligible if it is directed to one of the patent-ineligible concepts and does not include additional limitations that transform the nature of the claim into a patent-eligible application.

In its Final Written Decision, the Board concluded that Petitioner had proven by a preponderance of the evidence that each of claims 1-3, 5-7, 9-11, and 13-15 of the ’430 patent are unpatentable under 35 U.S.C. § 101. Also, the Board denied Patent Owner’s Motion to Exclude the Declaration of Dr. Freedman.

The Board had instituted trial as to claims 1-3, 5-7, 9-11, and 13-15 of the ’430 patent based on a single ground of unpatentability, namely, that these claims were not directed to patent-eligible subject matter under 35 U.S.C. § 101. The ’430 patent relates to generating increased numbers of sales leads via the creation of Internet Web pages to display information.

The Board’s Final Written Decision first addressed Patent Owner’s Motion to Exclude, which Patent Owner had filed to seek the exclusion of Dr. Freedman’s Declaration because, according to Patent Owner, it incorporated belated new rather than rebuttal evidence. In particular, it was Patent Owner’s position that this Declaration raised several issues for the first time that were not raised in the Petition, but could have been.  The Board ended up denying the Motion to Exclude as containing improper arguments (i.e., it was in the nature of a Sur-Reply) and being without merit.  According to the Board, although “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.”

The Board relied on case law – including the U.S. Supreme Court’s recent decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) – to analyze the claims under 35 U.S.C. § 101.  In accordance with the two-step test for patent-eligibility set forth inAlice, the Board must first determine whether the challenged claims are directed to one of the patent-ineligible concepts and, if so, then consider the claim limitations “individually and as an ordered combination” to analyze if there are additional limitations recited that “transform the nature of the claim into a patent-eligible application.”

Applying such precedent, the Board found that the claimed invention only required the use of a general-purpose computer. The Board also found that the claims did not recite limitations which meaningfully limit the abstract idea.  In reply to Patent Owner’s argument that the claims do not preempt the abstract idea of creating a product catalog, the Board cited case law indicating that the limitation “of an abstract idea to a specific field of use or adding token postsolution activity does not make an abstract concept patentable.”

LinkedIn Corp. v. AvMarkets Inc., CBM2013-00025 
Paper 30: Final Written Decision 
Dated: November 10, 2014
Patent: 7,856,430 B1 
Before: Michael P. Tierney, Joni Y. Chang, and William V. Saindon 
Written by: Tierney
Related Proceeding: AvMarkets, Inc. v. LinkedIn Corp., No. 13-cv-00230-LPS (D. Del.)