The Software IP Report

PTAB: Patent Claims Not Supported Under 35 U.S.C. § 112, ¶1

Providing an example of claimed subject matter lacking written description in a patent specification, the Patent Trial and Appeal Board (PTAB) found selected claims of two patents invalid under 35 U.S.C § 112, ¶1, in parallel Covered Business Method Review proceedings.  Walgreen Co. v. Advanced Marketing Systems, LLC, Case CBM2016-00013, Patent 8,538,805 B2 (PTAB May 24, 2017); Walgreen Co. v. Advanced Marketing Systems, LLC, Cases CBM2016-00014 and CBM2016-00015, Patent 8,370,199 B2. (PTAB May 24, 2017).  Claims in both patents were also found anticipated by prior art – after the requisite discussion showing that the patents qualified for CBM review; this post focuses on the Section 112 questions.

The ’805 patent, entitled, “Promotion on Processor and Management System,” discloses “a specifically constructed multi-discount incentive production vehicle (MDV) distributed to select customers,” including “a specific multi-function code embedded in or associated with the vehicle, to identify the customer and permit tracking of the promotion through redemption.”  Claim 1 was the only challenged claim of the ’805 patent, and includes a recitation of

a customer account associated with a customer identification code, the customer account comprising two or more of said discounts of the discount vehicle selected by a customer to be associated with the customer account, the customer account being associated with a select code that permits tracking of said customer account during checkout, said select code uniquely identifying all the discounts for all of the plural products associated with the customer account.

The Petitioner argued that the claim failed the written description requirement of Section 112, first paragraph, because, said the Petitioner, the patent Specification never disclosed customer input to select discounts for inclusion in the claimed discount program.  The PTAB agreed.

The Petitioner’s argued that the Specification disclosed only an administrator selecting discounts for each customer.  The Patent Owner responded by arguing that a checklist shown in the figures disclosed a customer’s selection of discounts.  But the PTAB agreed with the Petitioner that this figure simply showed a customer’s shopping list.  The Patent Owner’s expert at most was able to attest to how the claimed system might have worked; the Specification did not disclose and data file by which a customer discount could have been recorded based on this selection.

The PTAB also rejected the Petitioner’s attempt to rely on disclosures related to a “customer profile” as relevant to the recited customer account.  “To the contrary,” the PTAB explained, “the use of different terms in different places in a patent indicates that they are not the same.”

The decision on the ’199 patent, of which the ’805 patent was a continuation, was similar.