PTAB

IPR2020-00402

FedEx Corp v. Flectere LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Computerized Form Processing System
  • Brief Description: The ’506 patent discloses a computerized form processing system that tracks changes to data entered into electronic forms. The system is designed to provide an integrity check and audit trail by monitoring, verifying, and storing user modifications to form fields.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-9 and 11-31 over Williams, Smithies, and Wolff

  • Prior Art Relied Upon: Williams (Patent 5,600,554), Smithies (Patent 5,544,255), and Wolff (Patent 5,774,887).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Williams taught the foundational elements of independent claim 1, including a computerized form processing system for HR and payroll data with a database, viewer, data entry device (keyboard), and an "Audit Trail Component" that monitors and records changes. Petitioner asserted that Smithies, which discloses a system for capturing and verifying electronic signatures on documents using a pen-based computer, taught the claimed "sign off" and "authorization" routines. Smithies's system was designed for integration with other applications via APIs and included signature capture, verification against templates, and checksum generation to ensure document integrity. Petitioner contended that Wolff, which discloses an electronic form system with field-specific code segments that process data as it is entered, taught prompting a user for sign-off on a field-by-field basis, as opposed to Williams's collective, form-level sign-off.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Smithies with Williams to improve the security and accountability of the form processing system. Williams already contemplated an audit trail, and incorporating Smithies's electronic signature capture would provide a more robust, user-specific authorization for changes than a simple save prompt, a predictable improvement. A POSITA would be further motivated to incorporate Wolff's field-by-field prompting as an obvious design choice to enhance data integrity, allowing changes to be verified immediately, thereby preventing data loss and making users more aware of the gravity of each change.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these references. The integration involved combining known software modules (a form system, a signature capture API, and field-level processing logic) to achieve the predictable result of a more secure electronic form system with a granular audit trail.

Ground 2: Obviousness of Claims 10 and 32 over Williams, Smithies, Wolff, and Shelton

  • Prior Art Relied Upon: Williams (Patent 5,600,554), Smithies (Patent 5,544,255), Wolff (Patent 5,774,887), and Shelton (Patent 5,325,478).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Williams, Smithies, and Wolff and added Shelton to address the limitations of dependent claims 10 and 32, which require an output routine configured to "automatically flag on the output any changes to information entered into a field." Petitioner argued that Shelton disclosed this exact feature. Shelton describes a system for displaying consolidated information (e.g., hospital patient records) that maintains a historical record and explicitly teaches identifying modified data by displaying it in a "different font, a different color, blinking text, etc." to make it visually distinct.
    • Motivation to Combine: A POSITA would have been motivated to add Shelton's visual flagging feature to the system of Williams/Smithies/Wolff. The primary system already created a detailed audit trail (from Williams) and visually flagging the specific fields that were changed (from Shelton) would alert a user to modifications more efficiently. This would improve the utility of the audit trail by allowing a user to quickly see what was changed before needing to consult the log for details, thereby improving the overall efficiency of error identification.
    • Expectation of Success: Integrating a known visual indication method for modified data into an electronic form system was a simple and predictable modification for a POSITA.

4. Key Claim Construction Positions

  • Petitioner argued that the claim terms "monitoring routine," "field modification verification routine," and "authorization routine" should be given their plain and ordinary meaning and are not "means-plus-function" terms under 35 U.S.C. §112, ¶ 6.
  • Petitioner contended that the claims themselves recite sufficient structure for performing the recited functions (e.g., a routine that "actively monitor[s] whether previously entered information...is being changed"). It was argued that a POSITA would understand these routines as software-based structures without needing to consult the specification.
  • This position was central to the invalidity argument, as it meant the prior art only needed to disclose the recited functions, rather than a specific corresponding structure from the ’506 patent’s specification.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should institute review because the asserted grounds presented prior art and arguments that were not considered during the original prosecution of the ’686 application, which issued as the ’506 patent.
  • Specifically, Petitioner noted that the primary references of Williams, Smithies, and Wolff were never cited or applied by the Examiner. While Shelton was cited during prosecution, it was argued to be used here in a new combination with uncited art to challenge dependent claims, which is a new argument not previously considered by the Office.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-32 of the ’506 patent as unpatentable under 35 U.S.C. §103.