PTAB

CBM2018-00017

Fiserv Inc v. Mirror Imaging LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method Of Obtaining An Electronically-Stored Financial Document
  • Brief Description: The ’118 patent relates to a method for managing and retrieving electronically-stored financial documents. The method involves using two separate storage systems, one on-site and one remote, and directing documents to a specific system by comparing a "document parameter" (such as the document's age) against a predetermined threshold.

3. Grounds for Unpatentability

Ground 1: Unpatentability Under 35 U.S.C. § 101 - Claims 1-40 are directed to an abstract idea.

  • Prior Art Relied Upon: While a §101 challenge, Petitioner referenced non-patent literature to demonstrate the underlying concept is a long-standing, fundamental practice, such as Hudson (a 1993 library guide, Ex. 1015) and materials describing conventional computer components (Ex. 1027-1034).
  • Core Argument for this Ground:
    • Prior Art Mapping (for Abstract Idea): Petitioner argued that all challenged claims are directed to the patent-ineligible abstract idea of organizing, storing, and retrieving documents based on their inherent characteristics. Under the first step of the Alice framework, this was framed as a fundamental, long-standing human activity. Petitioner presented an analogy to a pre-computer library, which would store vital records in different physical locations (e.g., a closet for older records, a card catalog for newer ones) based on a date parameter, and a librarian would retrieve them by comparing the requested date to the storage system's criteria. The ’118 patent, Petitioner contended, simply applies this same abstract organizational logic using generic computers.
    • Motivation to Combine (for §103 grounds): Not applicable for a §101 ground.
    • Expectation of Success (for §103 grounds): Not applicable for a §101 ground.
    • Key Aspects: Petitioner argued that under the second step of Alice, the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application.
      • The independent claims merely recite storing documents in two locations based on a parameter, using a computer terminal to make a request, comparing the parameter to a threshold, and automatically accessing the correct location. Petitioner asserted that these steps simply describe the abstract idea and add nothing more than the use of generic, off-the-shelf computer components (e.g., storage systems, processing units, terminals) performing their well-understood, conventional functions.
      • The dependent claims were argued to add no inventive concept. They allegedly only recite conventional options, such as specifying the type of storage media (claims 2-11), identifying routine document parameters (e.g., account number, check number in claims 12-18), or performing well-known post-retrieval activities like reproducing and distributing documents (claims 19-20).

4. Key Claim Construction Positions

  • Petitioner asserted that no specific claim construction was necessary to resolve the §101 unpatentability ground.
  • However, Petitioner referenced admissions made by the Patent Owner in prior litigation to support its argument that the claimed elements are generic. For example, Patent Owner previously defined "computer terminal" as "a device having a display (e.g., a monitor) and a data entry mechanism (e.g., a keyboard and/or a mouse)" and "storage system" as "related computer hardware and software that electronically stores and permits retrieval of the financial documents." Petitioner used these prior generic definitions to reinforce its contention that the claims recite only conventional technology.

5. Key Technical Contentions (Beyond Claim Construction)

  • Business Problem vs. Technical Problem: Petitioner contended that the ’118 patent does not solve a technical problem related to computer networks or data processing. Instead, the patent's stated purpose is to solve a business problem: reducing "back office production" costs and enabling outsourcing of document storage. Petitioner argued that applying an abstract idea to a business practice using generic computers is not a technical solution that confers patent eligibility.
  • Manual Performance of Key Steps: A central contention was that the core logic of the claims could be performed manually. Petitioner highlighted language in the ’118 patent suggesting the critical "comparing" step is a mental process that can be accomplished by "a bank employee, such as a bank teller." This, Petitioner argued, underscores the abstract nature of the claims and the lack of a true technological invention.

6. Arguments Regarding Discretionary Denial

  • The petition was filed as a Covered Business Method (CBM) review. Petitioner argued that the Board should not exercise its discretion to deny institution.
  • The core reasons provided were that this was the first petition filed by this group of Petitioners against the patent, and it relied on a single, straightforward §101 ground that would not place a substantial burden on Board resources. Petitioner also asserted that review was necessary to protect its interests and the interests of its customers, who had been charged with infringement by the Patent Owner.

7. Relief Requested

  • Petitioner requested the institution of a Covered Business Method review and the cancellation of claims 1-40 of Patent 7,552,118 as unpatentable under 35 U.S.C. § 101.