PTAB Rules Second Metasearching Patent Unpatentable
On May 22, 2015, the Patent Trial and Appeal Board found claims of U.S. Patent No. 8,239,451 B1 of Metasearch Systems, LLC, unpatentable under Section 101 and Section 103 of the Patent Act. The decision concluded a Covered Business Method Review Proceeding (CBM2014-00050) filed and tried by Klarquist Sparkman, LLP, on behalf of American Express Co., Expedia, Inc., Orbitz Worldwide, Inc., Priceline.com Inc., Travelocity.com LP, and Yahoo! Inc. d/b/a Yahoo! Travel, and their affiliates American Express Travel Related Services Company, Inc., Hotels.com LP, Hotels.com GP, LLC, and Hotwire, Inc. in response to the 2012 lawsuits filed by Metasearch Systems, LLC in the District of Delaware against these companies. On March 13, 2015, the same Petitioners similarly prevailed in the PTAB against a second patent asserted by Metasearch Systems. (See Klarquist Defeats Metasearching Patent at PTAB).
The Board ruled unpatentable all six challenged claims of the ’451 patent under both Sec. 101 and Sec. 103 of the Patent Act. The Board held that two of the claims are directed to “the abstract idea of searching for travel information from multiple sources and ordering travel items from the combined search results.” (Decision, p. 21). The four remaining claims are directed to “the abstract idea of … searching for travel information from multiple sources, providing an advertisement associated with the travel search results, and ordering travel items from the combined search results for claims.” (Decision, p. 35). “[A]s Petitioner observes, the challenged claims deal with intangibles such as requests, responses, information, searches, queries, and advertisements.” (Decision, pp. 34-35). To these abstract ideas, the claims add only “conventional web-based methods.” (Decision, p. 39).
The Board also ruled each claimed method obvious over a combination of prior art references.
This patent is asserted in nine lawsuits in the District of Delaware stayed pending this and the earlier CBM proceeding.
American Express Co., Expedia, Inc., Orbitz Worldwide, Inc., Priceline.com Inc., Travelocity.com LP, and Yahoo! Inc. d/b/a Yahoo! Travel were represented in the CBM proceeding by Klarquist attorneys J. Christopher Carraway, Kristen Reichenbach, and John Vandenberg.