Monday, October 31, 2011

BPAI finds that "selecting the product catalogs to search" does not require selection of multiple catalogs

Takeaway: A patentee in reexamination appealed an anticipation rejection of claims to an electronic procurement system. The patentee argued that the reference did not teach "maintaining at least two catalogs" as required by the claim. The patentee further argued that, even if it did, the selection feature relied on by the Examiner referred only to a single catalog, where the claim required selection of multiple catalogs since it recited "selecting the product catalogs to teach." The Board found that the reference taught both limitations, but went further to find that the selection step did not require selection of multiple catalogs. The Board offered no explanation for this interpretation. (Ex parte ePlus, Inc., BPAI 2011.) 

Details:
Ex parte ePlus, Inc.
Appeal 2010007804; Reexam 90/008,104; Tech. Center 3900
May 18, 2011

The patent in reexamination was directed to an electronic procurement system. A representative independent claim on appeal read:
26. A method comprising the steps of:
     maintaining at least two product catalogs on a database containing data relating to items associated with the respective sources;
     selecting the product catalogs to search;
     searching for matching items among the selected product catalogs;
     building a requisition using data relating to selected matching items and their associated source(s);
     processing the requisition to generate one or more purchase orders for the selected matching items; and
     determining whether a selected matching item is available in inventory.
(Emphasis added.)

In this third-party reexamination, the Examiner applied several anticipation rejections using various software product manuals. In one of the anticipation rejections (the "P.O. Writer Manual"), the Examiner read the "product catalogs" on a purchase order history through which the user could re-order a previously ordered item.

On appeal, the Patentee argued that the P.O. Writer order history did not include a catalog of data associating items with multiple sources as required by the claim. Specifically, the Applicant argued that the order history required the user to select an item and then enter a vendor number in order to re-order the item. "As any vendor may be entered regardless of whether there is any information associating Item A1000 to that vendor, it should be clear that no catalog is used or maintained in order to create a purchase order is this manner."

The Patentee further argued that P.O. Writer did not disclose selecting multiple product catalogs to search as claimed. The Examiner relied on a description of P.O. Writer's purchase order history feature as allowing the user to first select an item from "the Best Buy Catalog, as well as the Bayless catalog, or any other vendor you would like to select" and then allowing the user to by the item from "Best Buy, Bayless, or any other vendor you would like to select." However, according to the Patentee, this disclosed selecting a vendor rather than a product catalog.

The Board affirmed the P.O. Writer anticipation rejection. The Board first explained that "catalog" was broad enough to read on the disclosed purchase order history:
As discussed supra, we find that a “catalog” is defined as “an organized collection of items and associated information.” The purchase history disclosed in P.O. Writer Manual (FF 10) provides for items and associated information pertaining to different vendors. We do not find that the selection of previously ordered items from previously indicated vendors to be different from selecting catalogs and searching for items.While it is true that such a process could not be performed for items never before purchased, we find that the process steps recited in claim 26 read upon such a process as explicitly disclosed in P.O. Writer Manual.
The Board specifically adopted the Examiner's findings as to selecting multiple catalogs for search. But the Board went further to find that the limitation "selecting the product catalogs to search" did not require the selection of multiple catalogs:

While we would agree that the “maintaining” step of claim 26 requires multiple catalogs to be maintained, we do not find that the “selecting” step requires the selection of multiple catalogs. As discussed above, P.O. Writer Manual details that multiple catalogs can be maintained in the database of the system (FF 11). The system of P.O. Writer Manual could certainly infringe claim 26 if only one catalog was selected because the “selecting” step allows for multiple or a single catalog to be selected.

The Board also affirmed all the other prior art rejections.




My two cents: I was astounded by the Board's statement that the limitation "selecting the product catalogs to search" did not require selection of multiple catalogs.  After all, the word in question – catalogS – is plural. Furthermore, the claim also recites "maintaining at least two catalogs," so the rule of antecedent basis says that the thing being selected is the same thing being maintained, and the thing being maintained is absolutely plural ("at least two").

Clearly the Board is interpreting the claim language "selecting the product catalogs to search" to mean "selecting which of the catalogs to search." And in plain English, that's how a reader would usually interpret the claim language in question. But claims aren't plain English. They follow all sorts of special rules. Which lead me to the conclusion that the claim requires selecting multiple catalogs.

After I thought about it more, I decided that the Board's interpretation is indeed a possible interpretation. Maybe reasonable minds can differ on which one is correct. But I'm still astounded that the Board didn't give any explanation at all how they arrived at this interpretation. Instead, the Board merely concluded that "we do not find that the 'selecting' step requires the selection of multiple catalogs." This interpretation is far enough from the plain language of the claim that some analysis and explanation is needed.

The patentee filed a Request for rehearing with the Board but did not argue this claim construction issue. Instead, the Request argued a different point made in the Appeal Brief, that the references were not prior art under the "public use" prong of § 102(b). The Request was filed in July, but as of November 1, the Board hasn't yet issued a rehearing decision.

8 comments:

  1. Somewhat unworthy end of a patent that has seen a lot of action in court and made a fortune for the patent owner (and litigation counsel on both sides…).

    ePlus, Inc. v. Lawson Software, Case No. 3:09cv620 (E.D. Va. 2010), ePlus, Inc. v. Ariba, Inc., Civil No. 1:04cv612 (E.D. Va. 2005), ePlus, Inc. v. SAP America, Inc., Civil No. 3:05cv281 (E.D. Va. 2006).

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  2. Given the value of the patent, this case will likely get appealed to the Fed Circuit. Still, this is another example where the patent owner should have filed a declaration poviding evidence that the PTO interpretation was abhorent to one of ordinary skill...a person of ordinary skill does not view a purchase order as a product catalog. A purchase order generally only shows what you have actually purchased while a catalog includes all those things which you did not purchase. Purchase order forms are included in catalogs but do not constitute the entirety of the catalog.

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  3. Why didn't they just make it an alternative 103 argument that even if the reference only disclosed a single catalog, it would be obvious to have a choice of more than one catalog?

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  4. " I was astounded by the Board's statement that the limitation "selecting the product catalogs to search" did not require selection of multiple catalogs. After all, the word in question – catalogS – is plural. Furthermore, the claim also recites "maintaining at least two catalogs," so the rule of antecedent basis says that the thing being selected is the same thing being maintained, and the thing being maintained is absolutely plural ("at least two").
    "

    I've addressed your lack of ability to properly construe claims but you've managed to do it again.

    Read.

    In.

    Context.

    You maintain 2 or more. And you select one of the catalogS to search.

    " that's how a reader would usually interpret the claim language in question. "

    Thanks for the admission counsel.

    Je sus, how you lawltards make it through your day to day is a mystery.

    All this who ha over a patent on doing nothing but putting the old system of placing catalogs on your countertop in a business, picking one to look at, finding the same item in two catalogs, writing a requisition, writing a purchase order, and looking over your shoulder to see if you have the item in your store onto a GIGANTIC COMPUTER BRAIN. One O One this garbage for the good of the species.

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  5. "You maintain 2 or more. And you select one of the catalogS to search."

    The claims recite "selecting the product catalogs" not "select[ing] one of the catalogs," as you allege. Reading comprehension eludes both you and the BPAI.

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  6. The way a patent drafter recites what you're wanting to be recited is by saying "selecting the one or more product catalogs to search" or "selecting two or more of the at least two product catalogs". The reading comprehension problem is on your side. And the poor drafting is an issue on the attorneys who drafted this pos's side. This entire patent is nothing but a big debacle.

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  7. lol business methods

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  8. Well, this patent and the claims are not perfect, but good enough to stand up to relentless invalidity attacks in multiple jurisdictions, and good enough to held being infringed (and that with all those admissions with respect to the prior art in reexam and litigation/claim construction).

    The filing date was pretty early, that helps a lot. Not a lot of good, easy prior art available. Also "practising the prior art" defenses for the infringing products got nowhere, despite substantial efforts. And the claimed features are too nice to just remove from your product...

    In all the invention was just a little (but enough) ahead of the curve, and the drafting and prosecution was also not that bad, and the n used in expensive software products. Add competent (not even brilliant) litigation counsel, and you are on your way.

    And no small iApp makers were hurt in the process.

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