Autodesk, Inc. petitioned for covered business method review of two "Automated pricing system" patents of Uniloc USA, Inc. and Uniloc Luxembourg, S.A. CBM 2016-00042 re USPN 7783523; CBM 2016-00043 re USPN 8515820. In parallel September 2017 decisions, the PTAB invalidated the patents for claiming patent-ineligible subject matter.
The patents (the '820 Patent is a continuation of the '523 Patent) are directed to "add-on computer software code" for generating a price schedule from an electronic construction plan file. Generally, the patents aim to provide increased efficiency and accuracy in the construction cost estimation process, towards avoiding cost overruns and issues with obtaining construction loans.
The PTAB ruled that the patents are ineligible for being directed to the abstract idea of generating prices for construction -- a task that can be accomplished without automation. The PTAB further found that no additional inventive concepts were covered in the claims to render them patent-eligible. Specifically, the PTAB cited to evidence offered by the petitioner (Autodesk) showing that pricing software add-ons for electronic construction plan files were known prior to the effective dates of the patents. The PTAB, citing the Supreme Court's Alice decision, further found that the patents claimed merely "linkage of existing materials and equipment to existing price determination processes, as claimed here, appears to be '"well-understood, routine, conventional activit[y]" previously known to the industry.'"
The PTAB also rejected Uniloc's argument that the overcoming of a Sec. 101 rejection bars a finding of ineligibility during a covered business method review.
Along with the application of the Alice decision, the PTAB reaffirmed the institution of the proceedings under the intervening case law regarding the scope of CBM proceedings. Namely, it confirmed that the construction plan "price schedule" claims are subject to covered business method review for having "a financial activity element" beyond the mere possibility of a potential sale of a good or service.
The PTAB's analysis reaffirming CBM institution depended on its interpretation of the "price schedule" claim elements. The "price schedule" language in all the relevant claims was interpreted to include "pricing data," and, thereby, the claims featured "a financial activity element." This analysis was applicable to all versions of the relevant claims across the "Automated pricing system" patents, whether reciting a method, system, or non-transitory computer readable medium. The PTAB further added that no exclusion applied.