PTAB

CBM2015-00094

MaxMind Inc v. Fraud Control Systemscom Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of Billing a Purchase Made Over a Computer Network
  • Brief Description: The ’942 patent discloses a method and system for detecting fraud in electronic transactions initiated over a computer network. The invention involves receiving a transaction request that includes a user's Internet address and then evaluating that address with a fraud control system to determine if the transaction may be fraudulent.

3. Grounds for Unpatentability

Ground 1: Claims 1-30 are Unpatentable under 35 U.S.C. § 101

  • Prior Art Relied Upon: While this ground is based on § 101, Petitioner cited numerous references to establish the abstract nature of the claimed concept and the conventionality of its implementation. Key references included: CyberSource (Patent 6,029,154), Kraus (Patent 3,920,908), Penzias (Patent 5,311,594), and RFC1366 (an IETF standard for IP address allocation).
  • Core Argument for this Ground: Petitioner argued that all challenged claims are directed to patent-ineligible subject matter under the two-step framework from Alice Corp. v. CLS Bank Int’l.
    • Abstract Idea: Petitioner asserted that the claims are directed to the abstract idea of fraud prevention in non-face-to-face transactions. This was argued to be a long-standing, fundamental economic practice that predates the internet, having been implemented in telephone commerce and through early credit card systems using printed "negative databases" of stolen card numbers. The claims merely take this abstract practice and apply it in the context of the Internet. Petitioner also contended that the claimed method steps—receiving a request and evaluating information—are a purely mental process that can be performed by a human without a computer.
    • Lack of Inventive Concept: Petitioner argued that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recite applying the abstract idea using generic, conventional computer components.
      • Independent Claims (1 and 16): Petitioner contended that independent method claim 1 and system claim 16 do not add an inventive concept. Terms like "computerized," "over a computer network," and "fraud control system" were argued to be nothing more than instructions to implement the abstract idea on a generic computer. The system claims were argued to be no different in substance, merely reciting generic hardware like a "processor" to perform the same abstract functions. The data-gathering steps (receiving payment method, account identifier, amount) were described as insignificant pre-solution activity.
      • Dependent Claims (2-15 and 17-30): Petitioner systematically argued that the dependent claims fail to add an inventive concept, instead reciting only routine and conventional activities. For example, comparing an Internet address to a "negative database" (claims 3-4) was described as the electronic equivalent of checking a "hot list" of stolen credit cards, a basic computer record-keeping function. Evaluating transaction velocity (claim 7), checking for repeated requests (claim 8), and associating an IP address with a geographic location or physical address (claims 6, 9, 10) were all asserted to be well-known, conventional techniques for fraud detection that do not represent an improvement to computer technology itself. The final outcomes of denying, approving, or holding a transaction for manual review (claims 11-13) were argued to be inherent to any fraud-checking process.

4. Key Claim Construction Positions

  • Petitioner argued that no specific claim construction was necessary to resolve the challenge. The central argument was that the claims, even under the broadest reasonable interpretation, are directed to an abstract idea. Petitioner contended that because the claims disclose no more than an abstract idea "garnished with accessories," no reasonable construction could bring them within the scope of patent-eligible subject matter.

5. Relief Requested

  • Petitioner requests the institution of a Covered Business Method patent review and the cancellation of claims 1-30 of the ’942 patent as unpatentable under 35 U.S.C. § 101.