PTAB

CBM2013-00015

Oracle Corp v. Community United IP LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method And Apparatus For A Cryptographically-Assisted Commercial Network System Designed To Facilitate And Support Expert-Based Commerce
  • Brief Description: The ’223 patent describes a system for matching a user seeking expert advice with a qualified expert. The method involves storing expert qualifications in a database, receiving and searching against a user request, transmitting the request to a matched expert, and transmitting the expert's answer back to the user.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over DEFINITY - Claims 121-122, 125, 129-130, 142-143, 147-148, 150, 159, and 163-164 are anticipated by or obvious over DEFINITY.

  • Prior Art Relied Upon: AT&T DEFINITY Generic 3 (a private branch exchange system with supporting documentation, collectively "DEFINITY").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that DEFINITY, a widely used call center system from the early 1990s, performed all steps of the challenged claims. Independent claim 121 calls for a method of electronically managing communications by matching an end user request with an expert. Petitioner asserted that DEFINITY’s "Expert Agent Selection" (EAS) feature performed this exact function. The EAS system stored agent qualifications (“skills”) in a database, received incoming calls (user requests), searched the database to match the caller’s needs (identified via the number dialed or user input) with an agent’s skills, and routed the call to the matched agent who provided an answer.
    • Key Aspects: This ground formed the foundation of the petition, asserting that the core invention was nothing more than a well-known automated call distribution system that existed years before the patent's filing date. Petitioner contended DEFINITY was a §102(a) prior art system known and used in the United States.

Ground 2: Obviousness over DEFINITY in view of AMIX - Claims 138, 140-141, 144-146, and 151-158 are obvious over DEFINITY in view of AMIX.

  • Prior Art Relied Upon: DEFINITY and American Information Exchange ("AMIX," an early online marketplace for expert services).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims related to online marketplace features like posting requests, transmitting qualifications, and managing bids. Petitioner argued that while DEFINITY provided the automated matching and call routing, AMIX disclosed the specific online commercial interactions. AMIX allowed users to post requests for expert help, review experts' qualifications and user comments, and negotiate payments. For example, claim 138 requires transmitting a request to experts and selecting from those who respond; Petitioner mapped this to AMIX's functionality of posting a request for experts to view and bid on.
    • Motivation to Combine: A POSITA would combine DEFINITY's automated routing with AMIX's online marketplace features to create a more comprehensive expert-matching system. Both systems addressed the same problem (connecting users with experts) and were commercially available in the early 1990s. Combining a telephone-based system (DEFINITY) with an online channel (AMIX) was a predictable step to improve customer service applications.
    • Expectation of Success: The combination involved applying known online marketplace principles to an existing automated call-routing system, which would have been a straightforward integration for a POSITA.

Ground 3: Obviousness over DEFINITY in view of Psychic Friends - Claims 123, 169, and 170 are obvious over DEFINITY in view of Psychic Friends.

  • Prior Art Relied Upon: DEFINITY and the Psychic Friends Network ("Psychic Friends," a 1-900 pay-per-call service).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground focused on claims requiring the remittance of payments to experts based on their answers. Petitioner asserted that DEFINITY's system, which supported 1-900 number billing, inherently disclosed a mechanism for collecting payments. The Psychic Friends Network provided a well-known and successful business model where experts (psychics) were compensated on a per-call basis, directly linking payment to the service provided.
    • Motivation to Combine: A POSITA implementing an expert-matching service on DEFINITY would have been motivated to incorporate the widely known and successful pay-per-call business model exemplified by Psychic Friends. DEFINITY was designed to handle 1-900 calls and billing, making the integration of a pay-per-call compensation structure a natural and obvious extension to monetize the expert service.
    • Expectation of Success: Given that DEFINITY already had the technical capability for flexible and per-call billing, implementing a known business model like that of Psychic Friends would have been simple and predictable.

  • Additional Grounds: Petitioner asserted numerous other obviousness grounds. These included combining DEFINITY with Freeman (Patent 5,428,608) for systems using both voice and data channels; with Hey (Patent 4,996,642) for methods of recommending items based on user criteria; with AT&T TSD-3600-E for cryptographic security features; and with Katz (Patent 4,845,739) for managing auctions via an automated call system.

4. Key Claim Construction Positions

  • “anonymous transmission” / “anonymously transmitting” (claims 134-136, 145, 166-167): Petitioner proposed this term means "transmission in which information disclosing the identity of the sender is not revealed to the recipient." This construction was important for arguing that prior art systems where the system operator knew the user's identity, but the expert did not, met these limitations.
  • “means for guaranteeing payment...” (claim 150): Petitioner argued this was a means-plus-function limitation under §112(f). This construction allowed Petitioner to map the function to prior art systems that facilitated payment (e.g., through 1-900 billing or credit card processing) without requiring a specific, novel structure for the guarantee.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claims 121-176 as unpatentable under 35 U.S.C. §§ 101, 102, and/or 103.