Takeaway: Any novelty in implementation of the abstract idea is a factor to be considered only in the second step of the Alice analysis.

In its Final Written Decision, the Board determined Petitioner had shown by a preponderance of the evidence that claims 2, 6, and 8 of the ’924 patent are unpatentable. The grounds of unpatentability for these claims included both patent-ineligibility under 35 U.S.C. § 101 and obviousness under 35 U.S.C. § 103(a). The Board denied Patent Owner’s Motion to Amend as well.

The instituted grounds of unpatentability considered by the Board were that claims 2, 6, and 8 of the ’924 patent are directed to non-statutory subject matter under 35 U.S.C. § 101, and that these same claims would have been obvious under 35 U.S.C. § 103(a) in view of the Mamma.com web site and multiple Knowledge Broker references. Petitioner certified at the outset that it had been sued for infringement of the ’924 patent.

The ’924 patent relates to a method for so-called “metasearching” on the Internet. The method involves display of an advertisement associated with the search along with the results of the search.

After a detailed claim construction analysis, and consistent with Patent Owner’s definition, the Board interpreted the claim term “metasearching” to mean “sending at least one search query to plural hosts, and returning the results received from each host.” The Board went on to conclude that, in accordance with Patent Owner’s definition of “metasearching,” the claim term “metasearch engine” refers to “software for sending at least one search query to plural hosts, and returning the results received from each host.” The Board interpreted the claimed “results list” as meaning “a list of information,” and the claim phrase “incorporating the received search results into a results list” to mean “incorporating the received search results into a list of information.”

The Board conducted its § 101 using the two-step test relied upon by the U.S. Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). In this regard, Patent Owner had argued that Petitioner had selectively focused “only on the claim elements directed to keyword advertisements and ordering, failing to consider the claims as a whole” when Petitioner argued that “the claimed invention is directed to the abstract idea of ‘marketing an item on a metasearch Web site with keyword ads and some way to order the item.’” The Board found that Patent Owner’s argument disregarded step one of the Alice analysis, however, and thus concluded that “[a]ny novelty in implementation of the abstract idea is a factor to be considered only in the second step of the Alice analysis.” Consequently, the Board agreed with Petitioner that “the claim embraces the abstract idea of marketing an item on a metasearch Web site with keyword ads and providing a way to order the item.”

The Board then performed step two of the Alice analysis to ascertain whether the claims incorporated “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.” In concluding that the claims did not recite an inventive concept sufficient to satisfy step two of the Alice test, the Board noted that “the claims recite, for the most part, an ordered combination of steps that contain Internet operations that were conventional at the time of invention”; that “[t]he claims further recite a ‘metasearch engine,’ which also was conventional at the time of invention”; that “limiting application of an abstract idea to a particular technological environment—such as the Internet—has long been held insufficient to save a claim”; and that Patent Owner was not correct in asserting that “the claims satisfy the machine-or-transformation test.”

As for the 35 U.S.C. § 103(a) challenge, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 2, 6, and 8 are unpatentable as having been obvious over the Knowledge Broker references and Mamma.com under 35 U.S.C. § 103(a). In reaching this conclusion, the Board found that “Patent Owner’s evidence in support of a long-felt but unmet need is entitled to little weight in support of nonobviousness.” While Patent Owner had attempted to rely on the Declaration of its Dr. Carbonell to show evidence relating to secondary considerations, the Board found that this Declaration was lacking because it did not point to any evidence in the record in support of the allegations. As summarized by the Board, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a).”

Finally, Patent Owner had filed a Motion to Amend that was contingent upon the Board’s determination that original claims 2 and 8 are unpatentable.” In that Motion, Patent Owner requested the replacement of claims 2 and 8 with new claims 13 and 14, respectively. As characterized by the Board, “[p]roposed substitute claim 13 has pricing information in the database and a results list, and substitute claim 14 does not.” The Board denied Patent Owner’s Contingent Motion to Amend because it found that Patent Owner had not sufficiently shown that the proposed substitute claims are patentable over the prior art.

American Express Company, American Express Travel Related Services Company, Inc., Expedia, Inc., Hotels.com LP, Hotels.com GP, LLC, Hotwire, Inc., Orbitz Worldwide, Inc., Priceline.com, Inc., Travelocity.com LP, and Yahoo! Inc. v. Metasearch Systems, LLC, CBM2014-00001
Paper 70: Final Written Decision
Dated: March 13, 2015
Patent: 8,326,924 B1
Before: Howard B. Blankenship, Karl D. Easthom, and Barbara A. Benoit
Written by: Blankenship 
Related Proceedings: MetaSearch Sys., LLC v. Am. Express Co., No. 1:12-cv-01225-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v. Expedia Inc., No. 1:12-cv-01188-LPS (D. Del. filed Sept. 21, 2012); MetaSearch Sys., LLC v. Orbitz Worldwide,Inc., No. 1:12-cv-01190-LPS (D. Del. filed Sept. 21, 2012); MetaSearch Sys., LLC v. Priceline.com Inc., No. 1:12-cv-01191-LPS (D. Del. filed Sept. 21, 2012); MetaSearch Sys., LLC v. Travelocity.com, LP, No. 1:12-cv-01189-LPS (D. Del. filed Sept. 21, 2012); MetaSearch Sys., LLC v. TravelZoo Inc., No. 1:12-cv-01222-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v. Yahoo! Inc., No. 1:12-cv-01223-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v. Kayak Software Corp., No. 1:12-cv-01224-LPS (D. Del. filed Sept. 28, 2012); MetaSearch Sys., LLC v. Bookit.com Inc., No. 1:12-cv-01226-LPS (D. Del. filed Sept. 28, 2012); and CBM2014-00050 (PTAB 2013)