Takeaway: In asserting a ground based on obviousness, the petitioner must show where each and every limitation of a claim is disclosed in the prior art and provide support for its reason to combine the references. 

In its Decision, the Board instituted covered business method patent review of all of the challenged claims (claims 1-8) of the ’883 Patent and granted Petitioner’s Motion for Joinder. The ’883 Patent relates to an affiliate manipulation system that permits consumers, Internet Service Providers, search engines, and intermediaries to maximize affiliate program participation in transactions by or through them.

The Board began with claim construction, stating that the terms are construed using their broadest reasonable construction. Although Petitioner proposed construction for four terms, the Board determined that only the term “automatic/automatically” needed to be construed. The Board interpreted it to mean “without human intervention.”

The Board then turned to the question of whether the ’883 Patent is eligible for covered business method patent review. The Board first noted that Petitioner has been sued for infringement. The Board then determined that claims 1-8 are directed at a financial product or service, noting that the claims are directed to crediting an agent for a commission from a sale and that the file history states that the system is analogous to the financial arrangement between a retail store and a salesperson in which the salesperson is awarded a commission. Finally, the Board determined that claims 1-8 are not directed to a technological invention. The Board agreed with the Petitioner that the ’883 Patent merely recites generic computer elements to accomplish the process or method of the patent, which is insufficient to show that the claimed invention is technological.

Next, the Board reviewed whether the challenged claims are more likely than not unpatentable under 35 U.S.C. § 101. The Board cited the Supreme Court’s decision inAlice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), and its emphasis on theMayo framework. Under this framework, the Board first discussed whether the challenged claims are directed to an abstract idea. Petitioner asserted that the ’883 Patent is directed to the abstract idea of redirecting affiliate commissions, and the Board was persuaded by this argument. Next, the Board determined whether the challenged claims are meaningfully limited. Petitioner argued that the claims are not meaningfully limited because they are directed to a mental process, and the Board agreed. Therefore, the Board instituted trial on this ground.

The Board then discussed the asserted grounds of unpatentability under 35 U.S.C. § 102. The Board began by assessing whether the challenged claims are anticipated by Landau. The Board cited to the Petition and found that Petitioner had shown that all of the limitations of the challenged claims are disclosed in Landau. The Board then discussed whether the challenged claims are anticipated by Priest. Again, citing to the Petition, the Board found that Petitioner had shown all of the limitations of the challenged claims are disclosed by Priest.

The Board next reviewed whether the challenged claims are obvious over Priest and McRackan. Petitioner argued that McRackan disclosed “modifying an affiliate code to make it appear that a referral is coming from a particular affiliate, regardless of its true source.” The Board found that the Petition fails to identify the location of each element of claim 1 in the McRackan reference and also does not adequately explain or support the arguments relying on inherency. The Board also stated that the Petition’s presentation of reasoning to combine the teachings of McRackan with Priest are deficient. Therefore, the Board did not institute trial on this ground.

The Board then turned to Petitioner’s Motion for Joinder with CBM2014-00185 (“the VigLink CBM”). Trial was instituted in the VigLink CBM on March 20, 2015, and the Motion for Joinder was filed on April 17, 2015. VigLink does not oppose the Motion, and Petitioner stated that it is conferring with Patent Owner in an effort to harmonize the two schedules. Trial was instituted in the VigLink CBM on the same grounds as stated above. The Board noted that the Motion for Joinder was filed within one month of the date of institution of the VigLink CBM. The Board also noted that Patent Owner did not oppose the Motion. Therefore, the Board determined that joinder would promote the efficient resolution of the proceedings.

Skimlinks, Inc. and Skimbit, Ltd. v. Linkgine, Inc., CBM2015-00087
Paper 14: Decision Instituting Covered Business Method Review and Granting Motion for Joinder
Dated: June 15, 2015
Patent 8,027,883 B2
Before: Kevin F. Turner, Phillip J. Kauffman, and Kristina M. Kalan
Written by: Kalan
Related Proceedings: Linkgine, Inc. v. Skimlinks, Inc., No. 1:14-cv-00571 (E.D. Va.); CBM2015-00086