RetailMeNot Inc v. Honey Science Corp

1. Case Identification

• Case #: PGR2019-00060
• Patent #: 10,140,625
• Filed: August 23, 2019
• Petitioner(s): RetailMeNot, Inc.
• Patent Owner(s): Honey Science Corp.
• Challenged Claims: 1-19

2. Patent Overview

• Title: System and method for interfacing with a webpage.
• Brief Description: The ’625 patent describes a system and method, typically implemented as a browser extension, that interfaces with a third-party e-commerce website. The system automatically identifies, tests, and applies digital coupon codes during an online checkout process to find and apply the code that provides the greatest savings for the user.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-19 are directed to an abstract idea.

• Prior Art Relied Upon: This ground is based on 35 U.S.C. §101 and the Alice/Mayo framework, not a prior art combination.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that all challenged claims are directed to the abstract idea of using coupons to obtain discounts—a fundamental economic practice—and the mental processes of comparing options and selecting the best one. The petition asserted that under step one of the Alice/Mayo test, the claims focus on this abstract concept. Representative method claim 11 recites steps corresponding to the conventional, real-world process of coupon redemption: receiving codes, identifying where to input them, trying them, determining the discount, and choosing the best one.
  • Key Aspects: Petitioner contended that under step two of the Alice/Mayo test, the claims fail to provide an inventive concept that transforms the abstract idea into a patent-eligible application. The claims merely recite the automation of the abstract idea using generic and conventional computer components (e.g., a browser, network, display, memory) performing their well-understood functions. The petition argued that adding computer functionality to increase speed or efficiency does not confer patent eligibility. Dependent claims were said to add only routine elements, such as using a data entry field (claims 2, 12), displaying a progress bar (claims 4, 14), or specifying the use of well-known machine-learning algorithms (claims 8, 17), none of which were argued to be inventive.

Ground 2: Indefiniteness under §112 - Claims 5, 7, and 16 are indefinite.

• Prior Art Relied Upon: This ground is based on 35 U.S.C. §112, not prior art.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that dependent claims 5, 7, and 16 are invalid for indefiniteness because they recite "the server" without a proper antecedent basis. Neither independent claim 1 nor 11, from which these claims depend, introduces "a server."
  • Key Aspects: The petition asserted this was not an obvious typographical error but the result of a deliberate amendment during prosecution where the Patent Owner intentionally removed "a server system" from the independent claims. This action allegedly left the dependent claims fatally ambiguous. Petitioner contended that a person of ordinary skill in the art (POSITA) would be unable to determine the scope of these claims with reasonable certainty, especially since the specification discloses at least three different types of servers (a code/configuration server, a feedback server, and a software server) that could plausibly be "the server." Reading the deleted limitation back into the claims would be contrary to Federal Circuit law.

4. Key Claim Construction Positions

• Petitioner contended that the term "the server" in claims 5, 7, and 16 is indefinite due to a lack of antecedent basis. This indefiniteness is central to Ground 2.
• Petitioner also noted that the term "the list" in claims 8, 11, 15, 17, and 19 lacks an antecedent basis.
• For the purposes of its §101 analysis in Ground 1, Petitioner stated it would apply the Patent Owner's proposed construction for "automatically" as "without human intervention," while maintaining the term needs no construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution.
• It was argued that the petition does not present the same or substantially the same arguments previously presented to the Office under §325(d), as the examiner did not have the benefit of the recently-revised §101 guidance or the Petitioner's detailed analysis.
• Petitioner also asserted that no other petitions have been filed, and institution would be an efficient use of the Board's resources, as the petition shows it is more likely than not that the challenged claims are unpatentable.

6. Relief Requested

• Petitioner requests institution of a Post Grant Review (PGR) and cancellation of claims 1-19 of the ’625 patent as unpatentable.