PTAB

CBM2013-00048

eBay Inc v. Cronos Technologies LLC

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1. Case Identification

2. Patent Overview

  • Title: Remote Ordering System
  • Brief Description: The ’110 patent describes a business method and system for remote electronic commerce. The technology centers on a user's ability to create, manipulate, and reuse an electronic "order list" (i.e., a shopping cart) on a user device to order products or services from merchants via a remote processing system.

3. Grounds for Unpatentability

Ground 1: Obviousness over Prodigy and Peapod References - Claims 1-3, 8-15, 17-19, 22, 24, 26-28, 31-36, 41, 43-44 are obvious over Viescas, Filepp, and Peapod.

  • Prior Art Relied Upon: Viescas (The Official Guide to the Prodigy Service, 1991), Filepp (Patent 5,347,632), and Peapod (Peapod User Manual v. 3.1, 1992).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references disclosed every element of the challenged claims. Viescas and Filepp described the Prodigy online service, a large-scale system developed by IBM and Sears that allowed users to shop from multiple merchants using a personal computer and modem. The Peapod manual described an online grocery shopping service that featured the ability for users to create, save, load, and modify reusable "personal lists" to streamline recurring orders. Petitioner asserted that these systems collectively taught a remote ordering terminal (a PC) that accesses merchant databases via a central server over a multi-user network, uses a user identifier, creates lists of items identified by codes, and transmits those lists for fulfillment.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these teachings for several reasons. First, Viescas and Filepp both described the same Prodigy service and would naturally be considered together. Second, as both Prodigy and Peapod operated competing online shopping services in the same geographic area (Chicago) in the early 1990s, a POSITA would have been motivated to incorporate Peapod’s efficient reusable shopping list feature into a general e-commerce platform like Prodigy. This would improve user experience and reduce network bandwidth, a primary design goal of the Prodigy system as stated in Filepp.
    • Expectation of Success: The combination involved applying known software features (reusable lists) to known e-commerce platforms using standard, commercially available hardware (MS-DOS PCs, modems) and network infrastructure (the public switched telephone network). The result would have been predictable and achievable with a reasonable expectation of success.

Ground 2: Obviousness over Core Combination plus HP150 - Claims 16 and 42 are obvious over Viescas, Filepp, and Peapod in view of HP150A/HP150B.

  • Prior Art Relied Upon: Viescas, Filepp, Peapod, and HP150A/HP150B (Hewlett Packard HP 150 user and programmer manuals, 1984).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed the limitations in claims 16 and 42 requiring a "touch-sensitive display." The HP150 manuals described one of the first personal computers to incorporate an infrared (IR) touch-screen display. The manuals taught how to use the touch-screen as a command entry device, including activating on-screen function key labels. The primary references (Viescas, Filepp, Peapod) all described systems intended to be used with MS-DOS compatible personal computers, like the HP 150.
    • Motivation to Combine: A POSITA would find it an obvious design choice to implement the known online shopping applications of Prodigy and Peapod on a PC equipped with a known touch-screen interface like the HP150. This would simply provide an alternative, user-friendly input method, which was a well-known design goal in the art.
    • Expectation of Success: Integrating existing software with a different, but known, hardware input device was a routine and predictable task for a POSITA at the time.

Ground 3: Obviousness over Core Combination plus Shepley or DeAngelis - Claims 2, 13, 33, 35, and 36 are obvious over Viescas, Filepp, and Peapod in view of Shepley or DeAngelis.

  • Prior Art Relied Upon: Viescas, Filepp, Peapod, Shepley (Patent 5,478,989), and DeAngelis (Patent 4,654,482).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground provided additional, explicit teachings for specific data types recited in certain dependent claims. For claims 13 and 33 ("nutritional data"), Shepley taught a system for providing shoppers with nutritional information for food products, retrievable from a networked database. For claims 2, 35, and 36 ("user account number"), DeAngelis was cited as admitted prior art that explicitly taught using a "customer's account number" to identify a user in an ordering system.
    • Motivation to Combine: A POSITA would combine Shepley's nutritional data feature with an online grocery service like Peapod to meet obvious consumer demand for such information. Similarly, using a numeric account number as taught by DeAngelis was a fundamental and well-known method for identifying users in any commercial transaction system.
  • Additional Grounds: Petitioner also asserted that claims 1-3, 8-15, 17-19, 22, 24, 26-28, 31-36, 41, and 43-44 are anticipated under 35 U.S.C. §102 by each of Viescas, Filepp, and Peapod individually. Claim 12 was also challenged as indefinite under 35 U.S.C. §112 for allegedly reciting "at least one data entry device" twice.

4. Key Claim Construction Positions

  • Claim Preambles: Petitioner argued that the preambles of independent claims 1 and 22 should be given no patentable weight, consistent with the Patent Owner’s asserted litigation positions. This construction would broaden the scope of the claims by not limiting the claimed elements to being part of a "remote ordering terminal."
  • "Printed Matter" Doctrine: Petitioner contended that several claim terms reciting types of information—specifically "nutritional data," "pictorial representation," "unit price," and "promotional information"—were equivalent to non-functional printed matter. The argument was that this information, as claimed, merely describes content displayed to a user and does not create a functional relationship with, or alter the operation of, the underlying system. Therefore, these terms should be given no patentable weight.
  • "Touch-Sensitive Display": Based on the patent’s specification, Petitioner argued that the broadest reasonable interpretation of this term must include displays using an infrared (IR) mechanism, a technology known since at least 1984.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-3, 8-19, 22-28, 31-36, and 41-44 of Patent 5,664,110 as unpatentable.