Takeaway: The Board may construe the phrase “computer implemented method” recited in a claim in a manner that does not foreclose the possibility of some of the method steps being performed manually.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-14 of the ’937 patent are unpatentable.  The Board also addressed certain Motions to Exclude that Petitioner had filed, and denied Patent Owner’s Motion to Amend.

The Petition for Covered Business Method review had challenged claims 1-4 of the ’937 patent, and the Board had instituted trial with respect to these claims.  The instituted grounds were: anticipation of claims 1-3, 5-8, and 10-14 by TDHS System under 35 U.S.C. § 102(b); obviousness of claims 1-8 and 10-14 over the TDHS System under 35 U.S.C. § 103(a); obviousness of claim 9 over the TDHS System in view of Belford under 35 U.S.C. § 103(a); obviousness of claims 1-14 over the Mather Method under 35 U.S.C. § 103(a); and lack of written description under 35 U.S.C. § 112, ¶ 1.

The TDHS System and the Mather Method were instances of prior public use, whereas Belford was a prior publication in the form of a newspaper article.  As evidence of the TDHS System and the Mather Method, Petitioner provided transcripts of depositions of Kerby Spruiell, Bobby Keith Graves, and James Sunyar, as well as other documentation.

The ’937 patent relates to “a health care financing system in which health care grant information can be analyzed to determine whether a patient qualifies for a health care grant.”  It claims “[a] computer implemented method for determining eligibility of a patient to receive health care financial assistance.”

Using the broadest reasonable interpretation standard for claims in an unexpired patent, the Board: construed the recited “computer implemented method” to mean that “[a]t least one of the recited steps must be performed by a computer;” construed the recited “inputting patient data associated with the patient” to “[encompass input by a human being into the input fields of a graphical user interface, but not limited to such input;” interpreted the word “derived” in the recited phrase “inputting credit information derived from a credit report of the patient” to mean “received from a source;” and interpreted the word “database” in the recited phrase “populating at least one database” to mean “an organized collection of data.”

Patent Owner had relied upon Declarations by Phillip Dolamore, Stephen Gray, and Raymond S. Sims, in asserting its positions.  Petitioner moved to exclude “¶ 10 of the Dolamore Declaration as lacking personal knowledge,” “the entirety of the Gray Declaration as unreliable,” and “the entirety of the Sims Declaration as irrelevant and unreliable” (with “specific focus” provided by Petitioner “on ¶¶ 4, 12, 13, 28–35, 37, 45, and 46” of the latter document.  For various stated reasons, the Board ended up excluding the second sentence of paragraph 10 of the Dolamore Declaration, did not exclude any of the Gray Declaration, and did not exclude any of the Sims Declaration.

Patent Owner had moved to exclude both the CSA/FS document relied upon by Petitioner to describe the “functionality of various TDHS System modules,” as well as an accompanying letter from Robert Patterson (Open Records Coordinator of the Texas Health and Human Services Commission).  According to Patent Owner, the CSA/FS was “incomplete, unauthenticated, and hearsay under Fed. R. Evid. 106, 802, and 901” and the Patterson letter failed to sufficiently authenticate the CSA/FS document and was not timely submitted.  The Board denied Patent Owner’s Motion to Exclude on these points, finding that “Patent Owner waived its evidentiary objections to CSA/FS by failing to make a timely objection.”

Petitioner had also provided a transcript of the deposition of Kathy Babcock from a district court proceeding in connection with Patent Owner’s assertion that Petitioner had copied “a commercial embodiment of the’937 patent.”  Patent Owner attempted to exclude this transcript as being “irrelevant and unduly prejudicial.”  The Board disagreed, finding that this testimony had not been shown to be irrelevant or prejudicial.

The Board then proceeded to conclude that Petitioner’s evidence, “including the claim charts in the Petition[,] the transcript of Mr. Spruiell’s deposition[,] the transcript of Mr. Graves’s deposition[,] and relevant portions of CSA/FS[,]” had shown by a preponderance of the evidence that claims 1-3, 5-8, and 10-14 of the ’937 patent are anticipated by the TDHS System.

The Board also concluded that claims 1-3, 5-8, and 10-14 would have been obvious in view of the TDHS System “[t]o the extent any of the features performed manually in the TDHS System are asserted to be performed through the use of a computer.”  In reaching this conclusion, the Board noted that its construction of the phrase “computer implemented method” did not “foreclose the possibility of some steps being performed manually.”

The Board further concluded that claim 9 would have been obvious in view of the TDHS System and Belford.  In doing so, the Board found that “[i]identification of the problem and how it is solved by Belford provides sufficient articulated reasoning with rational underpinnings to support the legal conclusion of obviousness.”

Still further, the Board found that a preponderance of the evidence had shown that claims 1-14 would have been obvious in view of the Mather Method, and that the asserted secondary considerations of commercial success and alleged copying by Petitioner did not outweigh Petitioner’s evidence of obviousness.

Finally, the Board concluded that Petitioner had established by a preponderance of the evidence that claims 1-14 are unpatentable due to a lack of sufficient written description in the patent specification.  As stated by the Board, “[t]he only specification support for a debt-to-income ratio identified by Patent Owner is provided in the context of qualification criteria, not patient data and credit information as required by the extracting and combining step.” (Emphasis in original.)

Search America, Inc. v. Transunion Intelligence, LLC, CBM2013-00037
Paper 67: Final Written Decision
Dated: February 3, 2015
Patent: 7,333,937 B2
Before: Thomas L. Giannetti, Carl M. DeFranco, and Patrick M. Boucher
Written by: Boucher
Related Proceedings: TransUnion Intelligence, LLC, v. Search America, Inc., Case No. 0:11-cv-01075-PJS-FLN (D. Minn.); Search America, Inc. v. TransUnion Intelligence LLC, Case CBM2013-00038 (PTAB)