PTAB

CBM2017-00066

Fidelity Information Services LLC v. Mirror Imaging LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Accessing Electronically-Stored Financial Documents
  • Brief Description: The ’067 patent discloses methods and systems for managing financial documents by storing them in one of two different storage systems (e.g., on-site and off-site) based on a document parameter, and subsequently retrieving them by comparing the parameter to a predetermined value.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-68 are unpatentable under 35 U.S.C. §101

  • Prior Art Relied Upon: While not a prior art-based ground, Petitioner cited numerous publications to establish the conventionality of the claimed concepts and components, including Muller (“Computerized Document Imaging Systems,” 1993), Robek (“Information and Records Management,” 1995), Sutton (“Document Management for the Enterprise,” 1996), and D’Alleyrand (various publications, 1989-1996).
  • Core Argument for this Ground:
    • Alice Step 1: Abstract Idea: Petitioner argued that all challenged claims are directed to the abstract idea of organizing, storing, and retrieving information based on its characteristics. This concept was asserted to be a fundamental and long-standing business practice, analogous to manually sorting documents into different filing cabinets based on date. Petitioner contended that the claims merely implement this well-known practice using generic computer technology. The patent specification itself was cited as acknowledging that on-site and off-site document storage and retrieval were conventional industry practices before the patent's filing date. Petitioner further argued that the Federal Circuit has consistently held that organizing and storing data based on classification is an abstract idea.
    • Alice Step 2: Lack of Inventive Concept: Petitioner contended that the claims, viewed individually and as an ordered combination, add no inventive concept to the underlying abstract idea. The recited hardware elements—such as a "processing unit," "storage system," and "fixed medium"—were argued to be generic, off-the-shelf components performing only their well-understood, routine functions. Petitioner emphasized that the patent’s allegedly novel "comparing" step is disclosed in the specification as a mental process performed by a human employee, who then manually determines which storage system to access. This human activity, rather than a novel technological process, was argued to be insufficient to confer patent eligibility. The dependent claims were argued to add only further conventional elements, such as specific types of known storage media (e.g., microfilm) or routine post-solution activities (e.g., retrieving and reproducing a document), which do not transform the abstract nature of the claims.
    • Key Aspects: Petitioner also argued that the ’067 patent fails to qualify as a "technological invention" exempt from Covered Business Method (CBM) review. The claims were said to address a business problem (the expense of "back office production") with a business solution (outsourcing storage to a lower-cost provider), rather than solving a technical problem with a specific technical solution.

4. Key Claim Construction Positions

  • Petitioner noted that while no constructions may be necessary to resolve patent eligibility, district courts had previously construed key terms. Petitioner argued these constructions support its ineligibility arguments.
  • "financial document": Construed as "a document of a financial nature, including, but not limited to, checks, checking/account statements, and documents related to checks and checking/account statements." This supports the argument that the claims are directed to a financial business practice.
  • "on-site": Construed as "located at the financial institution."
  • "off-site": Construed as "located remote from the on-site location." These terms define the conventional technological environment in which the abstract idea is practiced.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner's central technical contention was that the patent's purported point of novelty—the step of "comparing" a document parameter to a predetermined value—is not a technological implementation.
  • The specification was argued to explicitly describe this step as a human activity: an employee looks at a document, performs a mental comparison, and decides whether to access the on-site or off-site storage system. This contention was used to argue that the claims lack a technological solution and do not add "significantly more" than the abstract idea itself, as the core logic is performed by a human, not the computer.

6. Relief Requested

  • Petitioner requested institution of a CBM review and cancellation of claims 1-68 of the ’067 patent as unpatentable under 35 U.S.C. §101.