Takeaway: The Board may refuse to adopt a district court claim construction ruling, even if the Board considers the construction under the Phillips standard.

In its Final Written Decision, the Board determined that all of the challenged claims of the ’740 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’740 Patent relates generally “to a method and system for entering data relating to an insurance claim for a damaged vehicle,” wherein the “data is processed into a valuation report that is transmitted through the world wide web.”

The Board began with claim construction, noting that the claim terms are accorded their broadest reasonable interpretation in light of the specification. The Board first discussed the term “insurance claim.” Patent Owner disagreed with the Board’s construction in the Decision on Institution, stating that it should be construed as a “request to recover market value or repair cost in association with an insurance policy.” The Board disagreed, and found that the specification merely states that an “insurance claim” “may” or “typically” includes Patent Owner’s construction, but not that it must. Therefore, the Board saw no reason to deviate from the construction of “data related to an insurance claim for a damaged vehicle” as adopted in the Decision on Institution. The Board noted that the district court in the co-pending litigation adopted Patent Owner’s construction, but found that even using a Phillips standard, the Board would not agree with the district court’s construction.

The Board then reviewed the term “valuation report for the damages vehicle.” Patent Owner again disagreed with the Board’s construction of the term in its Decision on Institution. The Board retained its construction from the Decision on Institution, noting that Patent Owner did not cite to any part of the specification to support its limitation of the claim term.

Next, the Board turned to whether the challenged claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. Petitioner argued that the claims are directed to an abstract idea, and no other component recited in the claims transforms the patent-ineligible concept to a patent-eligible application of that concept. The Board began by reviewing whether the challenged claims are directed to a patent-ineligible concept, such as an abstract idea. Petitioner contended that claim 1 is directed to the abstract concept of “valuing a damaged vehicle based on information about that vehicle,” which Petitioner asserts is a “core insurance practice that has been carried out by claims adjusters for ages,” and could also be practiced in the mind or by using pen and paper. The Board agreed that the claims are directed to an abstract idea––the fundamental concept of providing a vehicle valuation using information about the vehicle––and all the steps of the claims could be performed without the use of a computer.

The Board then reviewed whether additional elements transform the nature of the claim into a patent-eligible application of an abstract idea. Petitioner contended that the claims lack any form of an inventive concept, and merely employ conventional and generic components, such as a computer, web page, and web server. The Board agreed that the only technological features recited in the challenged claims are generic computer implementation systems performing generic computer functions. Patent Owner argued that the challenged claims do not pre-empt the concept of obtaining a valuation report because the report could be provided by fax or mail and not used the claimed system. However, the Board found that this supports the conclusion that the claims are patent-ineligible.

The Board then determined whether the challenged claims are anticipated by or obvious over Reimel. The Board agreed with Petitioner’s analysis that Reimel anticipates the challenged claims as well as renders them obvious. The Board was not convinced Patent Owner’s arguments based upon its claim constructions that were not adopted by the Board, or by Patent Owner’s other arguments regarding limitations that it alleged are not disclosed by Reimel.

The Board next turned to Patent Owner’s Motion to Amend. The Board found that even if it were to assume that Patent Owner had shown written description support for the substitute claims in the published parent application, Patent Owner had not demonstrated that the claims are patentable. The Board found that Patent Owner failed to show how the added limitations convert the claims into patent-eligible subject matter under 35 U.S.C. § 101. The Board also noted that Patent Owner failed to establish that the claims are patentable over the prior art. The Board agreed with Petitioner that the added limitations are suggested by Reimel. Therefore, the Board denied the Motion.

Mitchell International, Inc. v. Audatex North America, Inc., CBM2014-00171
Paper 25: Final Written Decision
Dated: February 19, 2016
Patent 7,912,740 B2
Before: Lora M. Green, William V. Saindon, and Patrick M. Boucher
Written by: Green