Zuili v. Google LLC

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

PATRICK ZUILI,

Appellant

v.

GOOGLE LLC,

Appellee

______________________

2017-2161, 2017-2258, 2017-2267

______________________

Appeals from the United States Patent and Trade-

mark Office, Patent Trial and Appeal Board in Nos.

CBM2016-00008, CBM2016-00021, CBM2016-00022.

______________________

Decided: February 9, 2018

______________________

PATRICK ZUILI, Boca Raton, FL, pro se.

ANDREW JOHN PINCUS, Mayer Brown LLP, Washing-

ton, DC, for appellee. Also represented by PAUL

WHITFIELD HUGHES, SAQIB SIDDIQUI, JONATHAN

WEINBERG; ROBERT G. PLUTA, Chicago, IL.

______________________

Before PROST, Chief Judge, REYNA and WALLACH, Circuit

Judges.

2 ZUILI v. GOOGLE LLC

WALLACH, Circuit Judge.

Appellee Google LLC (“Google”) filed petitions with

the U.S. Patent and Trademark Office’s (“USPTO”) Pa-

tent Trial and Appeal Board (“PTAB”), seeking covered

business method (“CBM”) patent review of claims 1–3, 6,

10, 14–15, 18–19, and 21 of U.S. Patent No. 7,953,667

(“the ’667 patent”), claims 1–3, 5–6, 10–11, 14–15, and 17

of U.S. Patent No. 8,326,763 (“the ’763 patent”), and

claims 1, 5, 9, and 11 of U.S. Patent No. 8,671,057 (“the

’057 patent”) (collectively, “the Asserted Claims”) (collec-

tively, “the Patents-in-Suit”). The Patents-in-Suit teach a

method and system that relate to identifying invalid or

illegitimate “impressions” and “clicks” for online “pay-per-

click” and “pay-per-impression” advertisers. 1 ’057 patent,

Abstract; see ’667 patent, Abstract; ’763 patent, Abstract.

The PTAB issued three final written decisions in

which it found, inter alia, (1) the Patents-in-Suit eligible

for CBM review pursuant to the Leahy-Smith America

Invents Act (“AIA”), Pub L. No. 112-29, § 18, 125 Stat.

284, 329–31 (2011); and (2) the Asserted Claims directed

to patent-ineligible subject matter under 35 U.S.C. § 101

(2012). 2 See Google Inc. v. Zuili (Google I), No. CBM2016-

00021, 2017 WL 2080392, at *20 (P.T.A.B. May 5, 2017)

(’667 patent); Google Inc. v. Zuili (Google II), No. CBM-

2016-00022, 2017 WL 2116956, at *19 (P.T.A.B. May 5,

2017) (’763 patent); 3 Google Inc. v. Zuili (Google III), No.

1 Pay-per-click is “when advertisers pay upon users

actually clicking,” and pay-per-impression is “when adver-

tisers pay based on number of views.” ’057 patent, Ab-

stract.

2 Congress did not amend § 101 when it passed the

AIA. See generally Pub. L. No. 112-29, 125 Stat. 284.

3 Because of the similarities between the specifica-

tions of the ’763 and ’667 patents and the nearly identical

nature of the PTAB’s reasoning in Google I and Google II,

ZUILI v. GOOGLE LLC 3

CBM2016-00008 (P.T.A.B. Apr. 24, 2017) (’057 patent)

(Appellee’s App. 1000–37). Appellant Patrick Zuili ap-

peals. We have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(4)(A) (2012). We affirm.

DISCUSSION

Mr. Zuili has three primary contentions on appeal,

arguing (1) the Patents-in-Suit are not eligible for CBM

review, see Appellant’s Br. 51–63, (2) the PTAB erred in

finding the Asserted Claims patent-ineligible under § 101,

see id. at 63–72, and (3) the overall integrity of the PTAB

proceedings may be compromised, see, e.g., id. at 18–36,

93–96. We address each argument in turn.

I. Eligibility for CBM Review

“CBM review is limited to patents ‘that claim a meth-

od or corresponding apparatus for performing data pro-

cessing or other operations used in the practice,

administration, or management of a financial product or

service, except that the term does not include patents for

technological inventions.’” Blue Calypso, LLC v. Groupon,

Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016) (quoting Pub. L.

No. 112-29, § 18(d)(1), 125 Stat. at 331). In evaluating

whether a patent falls within the technological invention

exception, the PTAB considers “whether the claimed

subject matter as a whole recites a technological feature

that is novel and unobvious over the prior art; and solves

a technical problem using a technical solution.” 37 C.F.R.

§ 42.301(b) (2017). We have reviewed the PTAB’s inter-

pretation of the language of AIA § 18(d)(1) in Google I–III

and determine that it accords with our case law. See

Google II, 2017 WL 2116956, at *4–5, *7–8; Appellee’s

App. 1006–11, 1013–14. Accordingly, “[w]e review the

for ease of reference we cite only to the ’763 patent and

Google II when referring to either patent or their related

proceedings, unless otherwise noted.

4 ZUILI v. GOOGLE LLC

[PTAB]’s reasoning” in its application of the CBM statute

“under the arbitrary and capricious standard and its

factual determinations under the substantial evidence

standard.” Blue Calypso, 815 F.3d at 1339.

The PTAB determined that claim 1 of each of the Pa-

tents-in-Suit meets the financial product or service re-

quirement because the claimed method detects fraudulent

clicks for the financial activity of pay-per-click advertis-

ing. See Google II, 2017 WL 2116956, at *5 (citing ’763

patent col. 1 ll. 35–47) (“We find . . . that a pay-per-click

system provides advertising of goods and services, for

payment of money[, and thus] is itself a financial product

and provides a financial service.”); Appellee’s App. 1012–

13 (citing ’057 patent col. 1 ll. 28–31, 48–61, col. 3 ll. 2–5)

(“[W]e find . . . each valid click is a transaction for which

the merchant is charged a fee and each invalid click is a

fraudulent transaction that should be deducted from the

merchant’s invoice.”). 4 The PTAB also found the statute’s

technological invention exception does not save any of the

Patents-in-Suit from CBM review because (1) the ’057

patent is directed to the “business problem” relating to

“undesirable level[s] of expenditure on the part of the

merchant [caused] by [user] over-clicking” rather than

using a “technical solution” to solve a “technical problem,”

4 To arrive at this conclusion, the PTAB found the

preambles of claim 1 of each of the Patents-in-Suit to be

limiting. See Google II, 2017 WL 2116956, at *6; Appel-

lee’s App. 1011–12. Although Mr. Zuili argues that none

of the claims’ preambles are limiting, see Appellant’s Br.

53–54, 59, we have independently reviewed the specifica-

tion (including the claims) of the Patents-in-Suit and find

that the relevant preambles are limiting, see Catalina

Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,

808 (Fed. Cir. 2002) (setting forth the standards to deter-

mine if a preamble is limiting).

ZUILI v. GOOGLE LLC 5

Appellee’s App. 1015–16 (internal quotation marks omit-

ted) (quoting ’057 patent col. 1 ll. 49–50), and (2) the ’667

and ’763 patents “do[] not recite a technological feature

that is novel and unobvious over the prior art,” Google II,

2017 WL 2116956, at *10; see id. at *8–9 (citing, inter

alia, ’763 patent col. 1 ll. 34–37, col. 2 ll. 13–19; Appellee’s

App. 1694–97 (testimony of Google’s expert, Stephen

Gray)). We do not detect error in the PTAB’s findings or

reasoning and, therefore, conclude that the Patents-in-

Suit are CBM patents eligible for review.

II. Patent Eligibility Under 35 U.S.C. § 101

Under § 101, a patent claim is ineligible if “(1) it is ‘di-

rected to’ a patent-ineligible concept,” such as an “abstract

idea,” and “(2), if so, the particular elements of the claim,

considered ‘both individually and “as an ordered combina-

tion,”’ do not add enough to ‘“transform the nature of the

claim” into a patent-eligible application.’” Elec. Power

Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.

2016) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134

S. Ct. 2347, 2355 (2014)). We review § 101 determina-

tions de novo. See Intellectual Ventures I LLC v. Syman-

tec Corp., 838 F.3d 1307, 1312 (Fed. Cir. 2016).

We hold that the Asserted Claims are directed to the

abstract idea of collecting, transmitting, analyzing, and

storing data to detect fraudulent and/or invalid clicks

based on the time between two requests by the same

device or client. See, e.g., ’057 patent col. 5 ll. 17–37

(claim 1); ’667 patent col. 2 l. 61–col. 3 l. 15 (claim 1),

col. 3 ll. 46–61 (claim 10), col. 4 ll. 12–30 (claim 14), col. 4

ll. 42–60 (claim 18); ’763 patent col. 2 l. 59–col. 3 l. 8

(claim 1), col. 3 ll. 37–50 (claim 10), col. 4 ll. 17–30 (claim

14). 5 We previously have determined that similar claims

5 We cite only to the independent claims of the Pa-

tents-in-Suit because “[Mr. Zuili] has not separately

6 ZUILI v. GOOGLE LLC

are directed to patent-ineligible subject matter. See, e.g.,

Elec. Power, 830 F.3d at 1353 (finding claims that, inter

alia, “collect[]” and “analyz[e]” information directed to

abstract ideas); In re TLI Commc’ns LLC Patent Litig.,

823 F.3d 607, 609 (Fed. Cir. 2016) (finding claims that,

inter alia, “transmit[]” digital images directed to the

“abstract idea of . . . storing digital images”). Moreover,

although we have stated that claims “purporting to im-

prove the functioning of the computer . . . might not

succumb to the abstract idea exception,” Enfish, LLC v.

Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), the

Asserted Claims recite the use of generic computer com-

ponents performing conventional activities to carry out

the claimed invention, see, e.g., ’057 patent col. 5 ll. 18–19

(“web page” and “computing device”), 22 (use of conven-

tional “code” without explaining further), 26 (“communi-

cation network”); ’667 patent col. 2 l. 63 (“search engine”),

col. 3 ll. 3–4 (“plurality of links associated with a plurality

of websites”); ’763 patent col. 3 ll. 40–43 (discussing

“client side” and “server side” devices); Appellee’s

App. 1695–97 (providing a statement by Mr. Gray that

“the claimed components are generic computer compo-

nents” and that certain claims “recite generic computing

features” (emphases added)); cf. In re TLI Commc’ns, 823

F.3d at 612 (finding claims “directed to the use of conven-

tional or generic technology in a nascent but well-known

environment” do not survive Alice step one).

The Asserted Claims do not recite an inventive con-

cept. When claims, such as the Asserted Claims, are

“directed to an abstract idea” and “merely requir[e] gener-

ic computer implementation,” they “do[] not move into

argued the patent eligibility of the dependent claims and

thus has waived any argument that those claims should

be analyzed separately.” Affinity Labs of Tex., LLC v.

DIRECTV, LLC, 838 F.3d 1253, 1264 n.4 (Fed. Cir. 2016).

ZUILI v. GOOGLE LLC 7

[§] 101 eligibility territory.” buySAFE, Inc. v. Google,

Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (internal quota-

tion marks and citation omitted); see BASCOM Glob.

Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d

1341, 1350 (Fed. Cir. 2016) (recognizing that claims

directed to an abstract idea that add “the requirement to

perform it on the Internet” do not state an inventive

concept). We have considered Mr. Zuili’s remaining § 101

arguments and conclude that the Asserted Claims are not

patent eligible.

III. Integrity of the PTAB Proceedings

Mr. Zuili asserts various theories that the integrity of

the PTAB proceedings have been tainted. See, e.g., Appel-

lant’s Br. 18–36, 93–96. We have independently reviewed

Mr. Zuili’s claims in light of the record but find his claims

insufficiently supported. For instance, Mr. Zuili avers

that the USPTO’s Director sought to improperly influence

the PTAB proceedings by stacking the judges on the CBM

panel to Mr. Zuili’s detriment, see, e.g., id. at 10–12;

however, the USPTO’s Director has delegated the author-

ity to assign PTAB panels, see Manual of Patent Examin-

ing Procedure § 1002.02(f)(3) (9th ed. Rev. 8, Jan. 2018);

see also 35 U.S.C. § 6(c), and Mr. Zuili has not presented

evidence to contradict the PTAB panel’s statement that it

acted “independently,” Google II, 2017 WL 2116956, at

*17 (internal quotation marks and citation omitted).

Similarly, Mr. Zuili claims the PTAB erred in relying on

certain testimony submitted to support Google because

the declarants were not reliable due to “inherent con-

flict[s] of interest[],” Appellant’s Br. 20, but Mr. Zuili

candidly admitted to the PTAB that he “can’t prove” his

allegations, Appellee’s App. 1545; see id. at 1542. Accord-

ingly, we reject Mr. Zuili’s unsupported accusations.

CONCLUSION

We have considered Mr. Zuili’s remaining arguments

and find them unpersuasive. Accordingly, the Final

8 ZUILI v. GOOGLE LLC

Written Decisions of the U.S. Patent and Trademark

Office’s Patent Trial and Appeal Board are

AFFIRMED

COSTS

Each party shall bear its own costs.