Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 32
`Entered: April 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`UNWIRED PLANET, LLC,
`Patent Owner.
`
`Case CBM2014-00004
`Patent 7,463,151 B1
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 32
`Entered: April 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`UNWIRED PLANET, LLC,
`Patent Owner.
`
`Case CBM2014-00004
`Patent 7,463,151 B1
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, JENNIFER S. BISK, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`CBM2014-00004
`Patent 7,463,151 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Petitioner, Google Inc., filed a Petition pursuant to § 18 of the Leahy-
`
`Smith America Invents Act (“AIA”).1 Paper 1 (“Pet.”). The Petition
`
`challenged claims 21 and 22 (“the challenged claims”) of U.S. Patent No.
`
`7,463,151 B1 (“the ’151 patent”). On April 8, 2014, we instituted a
`
`transitional covered business method patent review based upon Petitioner’s
`
`assertion that the challenged claims are unpatentable under 35 U.S.C. §§ 101
`
`and 112, second paragraph. Paper 8 (“Dec.”). A consolidated hearing for
`
`CBM2014-00004, CBM2014-00005, CBM2014-000006, IPR2014-00027,
`
`IPR2014-00036, IPR2013-00037, involving the same parties, was held
`
`January 13, 2015. Paper 31 (hearing transcript).
`
`This is a Final Written Decision under 35 U.S.C. § 328(a). Based on
`
`the record presented, we are persuaded that Petitioner has shown by a
`
`preponderance of the evidence that the challenged claims are unpatentable
`
`under 35 U.S.C. § 101.
`
`B. The ’151 Patent
`
`The ’151 patent relates to mobile wireless networks—providing
`
`mobile services using short-range radio communication (“SRC”)2 devices.
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`2 Within the ’151 patent, the abbreviation “SRC” is used several times, most
`often to refer to “short-range radio communication.” See e.g., Ex. 1001,
`5:21–23, 8:17 (claim 21). A few instances of the “SRC” abbreviation,
`however, refer to “short range communication” without the word “radio.”
`Id. at 7:32–33 (claim 17), 8:30–32 (claim 22). Neither party asserts that the
`abbreviation “SRC” has a different meaning when referring to the phrase
`“short range communication” without the word “radio.” Thus, for purposes
`of this Decision, we treat “SRC” as having the same meaning everywhere it
`is used in the ’151 patent.
`
`2
`
`
`
`CBM2014-00004
`Patent 7,463,151 B1
`
`Ex. 1001, 1:7–10. An SRC device is described, for example, as a radio
`
`frequency identification (“RFID”) tag, “a Bluetooth base station or
`
`transponder, or a WiFi device such as a wireless router,” which may or may
`
`not be fixed physically within a mobile network. Id. at 2:9–21.
`
`The ’151 patent recognizes that, at the time of filing, it could be
`
`difficult to locate a mobile terminal (e.g., a cellular telephone) within a
`
`mobile network. Id. at 1:65–67. For example, using the cell servicing the
`
`mobile terminal to determine location may not result in a clearly defined
`
`location if the cell covered an overly large physical area. Id. at 1:67–2:4.
`
`On the other hand, using a Global Positioning System (“GPS”) to determine
`
`location could be excessively time consuming. Id. at 2:4–8. To address
`
`these problems, the ’151 patent discloses using an SRC device to locate a
`
`mobile terminal. Id. at 1:23–30. In addition to locating the mobile terminal,
`
`the SRC device can be used to authenticate and provide services to the
`
`mobile terminal. Id.
`
`The ’151 patent describes an example in which the SRC device
`
`provides identification information to a mobile terminal configured to
`
`communicate with the SRC device (“an SRC-enabled mobile terminal”). Id.
`
`at 1:40–47. The mobile network (or an SRC device information server
`
`coupled to the mobile network) then allows a service to be provided to that
`
`mobile terminal upon authentication of the identification information. Id.
`
`Figure 1 of the ’151 patent, reproduced below, illustrates this embodiment.
`
`3
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`CBM2014-00004
`Patent 7,463,151 B1
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`
`
`Figure 1 is a diagram of an SRC system using an RFID tag as the SRC
`
`device. Id. at 1:51–52, 3:7–11. RFID-enabled mobile terminal 105 can read
`
`information from RFID tag 110 and can connect to mobile network 125. Id.
`
`at 3:11–19. Mobile network 125 is coupled to RFID tag information server
`
`130. Id. at 3:19–24. In this embodiment, when a subscriber using mobile
`
`terminal 105 initiates an action that requires a location determination, such
`
`as whether mobile terminal 105 is located in home zone 120, mobile
`
`terminal 105 may look to find a nearby RFID tag. Id. at 3:25–28. If mobile
`
`terminal 105 finds any RFID tags within its range, such as RFID tag 110,
`
`that RFID tag provides RFID tag identification information (SRC device
`
`information) to mobile terminal 105. Id. at 3:28–32. Mobile terminal 105
`
`sends the acquired RFID tag identification information to RFID tag
`
`information server 130, which in turn verifies whether the provided RFID
`
`tag identification information matches the subscriber’s home zone. Id. at
`
`3:32–36. If the information matches, home zone services may be provided
`
`to mobile terminal 105. Id. at 36–38.
`
`4
`
`
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`CBM2014-00004
`Patent 7,463,151 B1
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`The ’151 patent also describes using an SRC device such as RFID tag
`
`110 in public or commercial environments—as opposed to the home
`
`environment shown in Figure 1—such as a retail store, airport, or shopping
`
`mall. Id. at 4:4–7. Because the SRC device need not be fixed physically
`
`within the network, it may “be mounted on an advertising vehicle.” Id. at
`
`4:13–16. A customer with an appropriate SRC-enabled mobile terminal may
`
`obtain an access code from any SRC device within range, which code may
`
`then be used to obtain “a mobile service free of charge or at a promotional
`
`rate over a mobile network.” Id. at 4:7–12. This mobile service or reduced
`
`rate may be available temporarily while the SRC device is in range of the
`
`mobile terminal or while an advertisement is displayed on the mobile
`
`terminal. Id. at 4:13–18.
`
`C. Related Matters
`
`Petitioner states that the ’151 patent has been asserted against
`
`Petitioner in a related district court proceeding in the District of Nevada.
`
`Pet. 59. Additionally, Petitioner filed a petition for an inter partes review in
`
`the following proceeding before the Board involving the ’151 patent:
`
`IPR2014-00027. A final written decision in IPR2014-00027 is entered
`
`concurrently with this decision.
`
`Furthermore, U.S. Patent No. 7,203,752 (“the ’752 patent”) and U.S.
`
`Patent No. 7,024,205 (“the ’205 patent”) are involved in the same district
`
`court proceeding identified above, and also concern location-based, mobile
`
`service technology. The ’752 patent and the ’205 patent are not, however, in
`
`the same patent family as the ’151 patent. Petitioner has requested Office
`
`review of the ’752 patent (Case Nos. CBM2014-00006 and IPR2014-00037)
`
`and the ’205 patent (Case Nos. CBM2014-00005 and IPR2014-00036).
`
`5
`
`
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`CBM2014-00004
`Patent 7,463,151 B1
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`
`
`D. The Challenged Claims
`
`Petitioner challenges claims 21 and 22 of the ’151 patent. Both
`
`claims are independent and recite the following:
`
`21. A method for providing a promotional mobile service to
`a short-range radio communication (SRC) enabled mobile
`terminal over a mobile network, the method comprising:
`
`receiving SRC device information from the SRC-enabled
`mobile terminal over the mobile network, the SRC device
`information acquired by the SRC-enabled mobile terminal from
`an SRC device;
`
`authenticating the SRC device information; and
`
`in response to authenticating the SRC device information
`providing the promotional mobile service to the SRC-enabled
`mobile terminal over the mobile network on a time-limited
`basis.
`
`Ex. 1001, 8:16–27.
`
`22. A method for receiving an advertisement over a mobile
`network, the method comprising:
`
`acquiring short range communication (SRC) device
`information from a SRC device using an SRC-enabled mobile
`terminal;
`
`providing the SRC device information to a mobile
`service provider over the mobile network; and
`
`receiving the advertisement over the mobile network.
`
`Ex. 1001, 8:28–35.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In the Decision to Institute, we concluded that the term “SRC,” as
`
`used in both claims 21 and 22, “encompasses, at least, RFID, Bluetooth, and
`
`WiFi communications.” Dec. 7–8. In its Response (Paper 19, “PO Resp.”),
`
`6
`
`
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`CBM2014-00004
`Patent 7,463,151 B1
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`Patent Owner asserts that the term properly should be interpreted as “radio
`
`communications of a nominal range of 100 meters or less, such as used by
`
`practical systems performing typical applications of RFID, Bluetooth, and
`
`Wi-Fi communications.” PO Resp. 8 (emphasis omitted). Petitioner does
`
`not agree, arguing that 100 meters is an arbitrary cutoff. Paper 21 (“Reply”)
`
`6–10.
`
`1. Intrinsic Evidence
`
`The parties agree that the ’151 patent does not define expressly the
`
`term “SRC.” The ’151 patent does, however, give some context from which
`
`to discern the meaning of the term. For example, the ’151 patent states that
`
`“[t]he term ‘SRC technology,’ as used herein, may include any short-range
`
`radio communications technology now existing or yet to be developed,
`
`including, for example, radio frequency identification (‘RFID’), IEEE
`
`802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at
`
`2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-
`
`enabled mobile terminals” as including RFID, Bluetooth, and WiFi related
`
`devices). Moreover, the ’151 patent describes several embodiments of the
`
`invention. The first embodiment involves an RFID system. Id. at 3:7–8.
`
`The second embodiment is described as a “hybrid system” using “Bluetooth,
`
`WiFi, WiMAX, or any other wireless protocol” to connect with an RFID
`
`reader. Id. at 4:19–34.
`
`Based on this disclosure, it is clear that “SRC,” as used in the ’151
`
`patent, encompasses communications at a range used by the technologies
`
`named in the specification—RFID, Bluetooth, and WiFi—and other short-
`
`range radio communication technologies. The question is whether the
`
`7
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`CBM2014-00004
`Patent 7,463,151 B1
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`broadest reasonable interpretation also includes, as Patent Owner proposes,
`
`the additional limitation that this nominal range is 100 meters or less.
`
`Within the specification, Patent Owner points to only one passage
`
`expressly supporting a range limitation of 100 meters—Figure 1—which
`
`includes the following label: “RFID ‘home zone’ 100 meter range.” PO
`
`Resp. 7–8. As Petitioner, however, correctly points out, Figure 1 is simply
`
`one embodiment using an RFID tag as an SRC device. See Ex. 1001, 3:7–8.
`
`Elsewhere in the specification, another embodiment includes an “integrated
`
`RFID reader [that] may emit radio waves in ranges between one inch to 100
`
`feet or more, depending upon its power output and the radio frequency
`
`used.” Reply 6 (quoting Ex. 1001, 3:46–49). We agree with Petitioner that
`
`the specification does not suggest that the 100 meter label in Figure 1 is
`
`intended to represent the upper limit of the communication range of RFID
`
`technology, much less the upper bound of SRC technology in general.
`
`Moreover, we are not persuaded that the intrinsic evidence limits the range
`
`of “SRC” in the ’151 patent to any particular numeric value. Instead, the
`
`’151 patent consistently refers to various technologies as exemplary of SRC
`
`without any particular numeric restriction on range.
`
`2. Extrinsic Evidence
`
`Faced with this paucity of intrinsic evidence, Patent Owner turns to
`
`extrinsic evidence, including testimony from Dr. Georgios B. Giannakis.
`
`Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood
`
`meaning in the art of “a nominal range of 100 meters or less, such as used by
`
`practical systems performing typical applications of RFID, Bluetooth, and
`
`Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all
`
`three examples of SRC technologies listed by the ’151 patent have “a
`
`8
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`CBM2014-00004
`Patent 7,463,151 B1
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`practical upper range in a typical deployment that is nominally 100 meters
`
`or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts
`
`upon which it is based. Dr. Giannakis points to no factual support for his
`
`specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore,
`
`give very little weight to Dr. Giannakis’s testimony concluding that the term
`
`SRC, as used in the ’151 patent, includes a specific upper bound of 100
`
`meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
`
`281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going
`
`to factual determinations . . . may render the testimony of little probative
`
`value in a validity determination.”).
`
`Patent Owner also relies on several publications to support its
`
`proposed construction, including the following excerpts (PO Resp. 8–13):
`
`1. “Short Range Devices (SRD) are essentially low power radio
`communications systems . . . . Typically, the range of an SRD is
`a few cm up to 100 metres. Car key fobs and wireless alarms
`are examples of SRDs, as are Bluetooth and WiFi devices.
`RFID systems are also SRDs” (emphasis added). Ex. 2009, 2.3
`
`2. “Short-range wireless systems have a range of 100 meters or
`less. They often combine with systems wired to the Internet to
`provide communication over long distances.” Ex. 2008, 40.4
`
`3. “802.11b and 802.11g advertise usable distances up to about
`300 feet [91.44 meters].” Ex. 2004, 38.5
`
`4. “[T]wo factors—frequency and antenna height . . . reduces the
`WiFi range estimate to less than 100 m.” Ex. 2003, 363.6
`
`
`3 ETSI World Classic Standards, Short Range Devices, www.etsi.org.
`4 A Long-Term View of Short-Range Wireless, David G. Leeper, IEEE
`Computer Magazine, 34–44 (June 2001).
`5 IEEE 802.11 Experiments in Virginia’s Shenandoah Valley, David R.
`Fordham, QST Magazine, 35–41 (July 2005).
`
`9
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`CBM2014-00004
`Patent 7,463,151 B1
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`5. “Table 1 summarizes typical parameters for cellular mobile
`systems and WLARNs (WiFi).” PO Resp. 11.
`
`
`
`Table 1 lists the link rate, range, and frequency band for
`different wireless systems. Ex. 2005, 16–17 (stating the link
`range of “Cellular” as “A few km,” “WI-FI” as “< 100 m,” and
`“WIMax” as “?”).7
`
`According to Patent Owner, several of these publications are evidence that
`
`Petitioner’s expert, Dr. Donald Cox, has acknowledged that SRC typically
`
`refers to an upper range of 100 meters. PO Resp. 10–12 (citing Exs. 2003,
`
`2005). Petitioner disagrees, noting that although the references indicate that
`
`under certain conditions, WiFi could have a range of 100 meters, the overall
`
`theme of these publications is that SRC technology does not have a
`
`particular numeric upper bound on range, but varies depending on multiple
`
`factors. Reply 7–8. We agree with Petitioner and are not persuaded that the
`
`excerpts provided by Patent Owner show that “SRC” is, in general, limited
`
`to an upper range of 100 meters.
`
`Moreover, Patent Owner concedes that the excerpts above are “only a
`
`small fraction of the body of literature referencing the use of [SRC].” PO
`
`
`6 Chapter 19, Fundamental Limitations on Increasing Data Rate in Wireless
`Systems, Donald C. Cox, The Mobile Communications Handbook, Third
`Ed., 355–68 (2013).
`7 Fundamental Limitations on Increasing Data Rate in Wireless Systems,
`Donald C. Cox, IEEE Communications Magazine, 16–17 (Dec. 2008).
`
`10
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`CBM2014-00004
`Patent 7,463,151 B1
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`Resp. 13. Patent Owner, however, does not even assert that the other
`
`“thousands of patents and patent publications” referring to SRC consistently
`
`use the term to mean communications with an upper range of 100 meters.
`
`See PO Resp. 6–13. We are, therefore, not persuaded that Patent Owner’s
`
`extrinsic evidence adds anything to our understanding of the term “SRC” as
`
`it is used in the ’151 patent.
`
`3. Conclusion
`
`Thus, we conclude that the broadest reasonable construction of “SRC”
`
`is not necessarily limited, as Patent Owner proposes, to 100 meters. Instead,
`
`we interpret “SRC” to be communications at a range used by technologies
`
`such as RFID, Bluetooth, and Wi-Fi.
`
`B. Indefiniteness
`
`Petitioner contends claims 21 and 22 of the ’151 patent are
`
`unpatentable under 35 U.S.C. § 112, ¶ 2,8 because the claim term “SRC” is
`
`indefinite. Pet. 32–34. In particular, Petitioner contends “short” is vague
`
`and relative, and the ’151 patent specification provides no standard for
`
`evaluating shortness. Id. at 33. According to Petitioner, the three example
`
`technologies—RFID, Bluetooth, and Wi-Fi—each have varying ranges and
`
`together provide no upper bound, such that a skilled artisan would have
`
`difficulty evaluating whether a signal outside of these three examples has a
`
`range that is short. Id. at 33–34 (citing Ex. 1002 ¶¶ 34–38).
`
`
`8 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶¶ 1, 2, and 6 as
`35 U.S.C. §§ 112(a), (b), and (f). Because the ’151 patent has a filing date
`before September 16, 2012 (effective date of § 4(c)), we will refer to the pre-
`AIA version of 35 U.S.C. § 112.
`
`11
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`CBM2014-00004
`Patent 7,463,151 B1
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`Patent Owner responds that a person of ordinary skill in the art would
`
`understand that the upper bound of communication ranges for the example
`
`technologies, in “typical” deployments is 100 meters. PO Resp. 14–18.
`
`Although, as discussed above, we do not agree that the broadest reasonable
`
`interpretation of “SRC” necessarily includes the upper bound of 100 meters,
`
`we agree with Patent Owner that a person of ordinary skill in the art would
`
`understand sufficiently what subject matter claims 21 and 22 of the ’151
`
`patent cover.
`
`Although a term may be relative, it is not necessarily indefinite.
`
`Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
`
`(Fed. Cir. 1984) (“That some claim language may not be precise, however,
`
`does not automatically render a claim invalid.”). We are persuaded a person
`
`of ordinary skill in the art would understand that short-range communication
`
`covers a communication range “shorter” than the range covered by mobile
`
`networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372
`
`(Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term
`
`“short-range communication protocol,” which was construed to mean “a set
`
`of procedures required to initiate and maintain short-range communication
`
`between two or more devices” where short-range communications similarly
`
`included Bluetooth and WiFi technologies, but did not include a numeric
`
`upper bound on range), cert. granted in-part on other grounds, 135 S.Ct.
`
`752 (U.S. Dec. 5, 2014) (No. 13-896).
`
`The ’151 patent expressly describes mobile networks as including
`
`“cellular networks such as Global System for Mobile Communications
`
`(‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division
`
`Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’)
`
`12
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`networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes
`
`interoperability between the various systems, contrasting them by size. For
`
`example, in describing the problems encountered when locating mobile
`
`terminals, the Specification describes “cell sizes [that] have grown to cover
`
`up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to
`
`this problem is employing “at least one SRC device.” Id. at 2:9–11. The
`
`’151 patent also describes employing the “at least one SRC device . . . within
`
`a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the
`
`specification makes reasonably clear to the person of ordinary skill the range
`
`of SRC in comparison to the range of mobile networks—and in turn the
`
`scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492
`
`F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite
`
`where the specification makes reasonably clear that the term means “very
`
`close to or at the edge of”).
`
`The extrinsic evidence is consistent with this understanding of the
`
`term. Dr. Giannakis stated that “[o]ne of ordinary skill in the art would
`
`understand that the practical upper range of an SRC is substantially less than
`
`the practical upper range of a typical mobile cellular network.” Ex. 2001
`
`¶ 25.9 Petitioner relies on Dr. Cox’s testimony as evidence that a person of
`
`ordinary skill in the art would be unable to identify whether a certain
`
`technology is sufficiently short to be within the range of “SRC.” Pet. 33–34
`
`
`9 Although Dr. Giannakis does not provide factual support for this statement,
`we find more credible, and give more weight to, this conclusory statement
`referring to how a person of ordinary skill generally would understand
`various terms, than Dr. Giannakis’s conclusory statements referring to a
`particular numeric value (such as the 100 meter upper bound discussion of
`¶¶ 22–24).
`
`13
`
`
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`CBM2014-00004
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`(citing Ex. 1002 ¶¶ 34–38). Dr. Cox notes that one reason he concludes the
`
`term “short” is indefinite is that the ’151 patent does not provide examples
`
`that are not short-range. Ex. 1002 ¶ 37 (“Had the specification also listed
`
`examples that are not short-range, perhaps they would have more
`
`meaning.”). As discussed above, however, the ’151 patent expressly points
`
`out that using SRC devices within mobile networks can solve the problem of
`
`“cell sizes [that] have grown to cover up to 20 km in diameter or even
`
`wider,” indicating that “SRC” refers to a range substantially smaller than
`
`that of cellular networks. Ex. 1001, 2:1–2. Thus, we are persuaded that the
`
`language of claims 21 and 22, viewed in light of the intrinsic evidence, is
`
`sufficiently definite to have informed those skilled in the art about the scope
`
`of the invention with reasonable certainty such that they would have
`
`understood what was being claimed. See Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S.Ct. 2120, 2129 (2014); Ex Parte Miyazaki, 89
`
`USPQ2d 1207, 1213 (BPAI 2008) (precedential). The proffered extrinsic
`
`evidence does not persuade us otherwise.
`
`Accordingly, we are not persuaded that Petitioner has shown by a
`
`preponderance of the evidence that the challenged claims are unpatentable
`
`under 35 U.S.C. § 112, ¶ 2.
`
`C. Non-Statutory Subject Matter
`
`“Whoever invents or discovers any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof, may obtain a patent therefor, subject to the conditions and
`
`requirements of this title.” 35 U.S.C. § 101. Supreme Court precedent
`
`provides three specific exceptions to the broad categories of § 101: laws of
`
`nature, physical phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S.
`
`14
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`CBM2014-00004
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`593, 601 (2010). “The ‘abstract ideas’ category embodies the longstanding
`
`rule that ‘[a]n idea of itself is not patentable.’” Alice Corp. Pty. Ltd. v. CLS
`
`Bank Int’l, 134 S.Ct. 2347, 2355 (2014) (citing Gottschalk v. Benson, 409
`
`U.S. 63, 67 (1972) (quotations omitted)).
`
`In Alice, the Supreme Court referred to the framework set forth in
`
`Mayo Collaboration Services v. Prometheus Laboratories, Inc., 132 S.Ct.
`
`1289 (2012), “for distinguishing patents that claim laws of nature, natural
`
`phenomena, and abstract ideas from those that claim patent-eligible
`
`applications of those concepts.” Alice, 134 S.Ct. at 2355. In the first step,
`
`“we determine whether the claims at issue are directed to one of those
`
`patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in
`
`the claims before us?’” Id. (quoting Mayo, 132 S Ct. at 1297). In the
`
`second step, we consider the elements of each claim both individually and as
`
`an ordered combination to determine whether the additional elements
`
`transform the nature of the claim into a patent-eligible application. Id. Step
`
`two of the analysis may be described as a search for an “inventive
`
`concept”—i.e., an element or combination of elements that is sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent
`
`upon the ineligible concept itself. Id. (citing Mayo, 132 S.Ct. at 1294).
`
`1. Abstract Idea
`
`Petitioner submits that the claimed invention is directed to the abstract
`
`idea of providing information and receiving an advertisement. Pet. 30.
`
`Patent Owner responds that the Petitioner fails to consider the claims as a
`
`whole, which are not abstract, but instead recite “a specific inventive
`
`implementation of providing a service to a mobile terminal over a mobile
`
`network in response to authentication of information acquired electronically
`
`15
`
`
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`CBM2014-00004
`Patent 7,463,151 B1
`
`by the mobile terminal from an SRC device.” PO. Resp. 20. According to
`
`Patent Owner, “[a]n underlying idea” of the claims “is providing a service
`
`over a mobile network,” which is not abstract because it “includes specific
`
`recitations regarding the type of information (SRC device information) and
`
`how the information is acquired (SRC device information acquired by the
`
`SRC-enabled mobile terminal from an SRC device) as well as use of the
`
`acquired information for authentication.” Id. at 27–29.
`
`We agree with Petitioner that the claimed invention is directed to an
`
`abstract idea, specifically, the abstract idea of receiving information and
`
`providing services or advertisements based on that information. The
`
`preambles and all claim limitations of both claims support this abstract idea,
`
`and the ’151 patent repeatedly discloses that the invention is directed to
`
`providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27.
`
`Patent Owner has not identified any portion of the ’151 patent inconsistent
`
`with this abstract idea, and we are persuaded that the identified abstract idea
`
`is a fundamental building block of economics, similar in nature to the
`
`abstract idea of hedging claimed in Bilski and intermediated settlement
`
`claimed in Alice.
`
`Patent Owner does not direct us to any authority for its assertion that
`
`an idea is not abstract if it includes specific recitation regarding the type of
`
`information transmitted, how that information is acquired, and whether it is
`
`used for authentication. Here, the claims are generally directed to a method
`
`of (i) receiving information over a network, (ii) authenticating that
`
`information, and (iii) providing a service to a mobile terminal or receiving
`
`an advertisement over the network, all of which inform the aforementioned
`
`abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo
`
`16
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`CBM2014-00004
`Patent 7,463,151 B1
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`Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the
`
`claimed abstract idea as “1) collecting data, 2) recognizing certain data
`
`within the collected data set, and 3) storing that recognized data in a
`
`memory” despite claim’s recitation of specific limitations, like scanner).
`
`This combination of steps recites an abstraction because it has “no
`
`particular concrete or tangible form” and is “devoid of a concrete or tangible
`
`application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
`
`2014). The details emphasized by Patent Owner do not remove the claimed
`
`methods from the realm of the abstract. These details are characteristic of
`
`the invention’s implementation, rather than its general idea. See buySAFE,
`
`Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing
`
`the claim’s abstract idea without including the claim’s “computer network”
`
`limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed
`
`limitations may “add a degree of particularity,” but do not convert the
`
`concept embodied by the majority of the limitations into something
`
`concrete).
`
`Patent Owner also asserts that the claims at issue here are not abstract,
`
`because they do “not invoke a token use in a ‘particular technological
`
`environment’ as found in Bilski,” but instead “indicate the technical
`
`environment that the method operates in, overcoming challenges previously
`
`identified in the technical environment, and providing benefits not readily
`
`available prior” to the ’151 patent. PO Resp. 25 (citing Bilski v. Kappos,
`
`130 S.Ct. 3218 (2010)). This particular argument is misplaced in this step of
`
`the analysis because “novelty in implementation of the idea is a factor to be
`
`considered only in the second step of the Alice analysis.” Ultramercial, 772
`
`F.3d at 715.
`
`17
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`Patent 7,463,151 B1
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`Finally, Patent Owner asserts that the claimed invention is not abstract
`
`because it does not fall within Alice’s articulated examples of abstract idea.
`
`PO Resp. 25–26. According to Patent Owner, the claimed subject matter
`
`“only exists within operation of a combination of man-made mobile and
`
`short-range communications systems, which precludes categorizing these
`
`claims as covering a preexisting fundamental truth” and cover “significantly
`
`more than simply providing information and receiving a service.” Id. at 26.
`
`Abstract ideas, however, are not limited to the examples set forth in
`
`Alice. While the Supreme Court has not precisely defined “abstract idea,”
`
`the Federal Circuit since Alice has invalidated patents encompassing a broad
`
`range of abstract ideas. We conclude that claims 21 and 22 of the ’151
`
`patent are comparable to other communication-based patents involving the
`
`gathering and transmission of data and services that have been invalidated
`
`after Alice. See, e.g., Content Extraction, 776 F.3d at 1345 (holding claims
`
`drawn to the “basic concept of data recognition and storage” abstract);
`
`Ultramercial, 772 F.3d at 715 (holding the “process of receiving
`
`copyrighted media, selecting an ad, offering the media in exchange for
`
`watching the selected ad, displaying the ad, allowing the consumer access to
`
`the media, and receiving payment from the sponsor of the ad all describe an
`
`abstract idea”).
`
`2. Inventive Concept
`
`Turning to the second step of the analysis, we look for additional
`
`elements that can “transform the nature of the claim” into a patent-eligible
`
`application of an abstract idea. Mayo, 132 S.Ct. at 1297.
`
`18
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`CBM2014-00004
`Patent 7,463,151 B1
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`Patent Owner asserts that even if the challenged claims recite an
`
`abstract idea, they include limitations that amount to significantly more than
`
`an abstract idea. PO Resp. 29. According to Patent Owner,
`
`Starting with the preamble of claim 21, the claimed subject
`matter is focused on a unique combination of operations
`performed within a mobile network and using SRC
`technologies to provide a service to a mobile terminal over a
`mobile network. . . . Claim 21 continues by reciting multiple
`communication elements, one occurring over the mobile
`network (receiving SRC device information from the SRC-
`enabled mobile terminal) and a second over SRC technologies,
`such as Bluetooth or Wi-Fi, (SRC device information acquired
`by the SRC-enabled mobile terminal from an SRC device).”
`
`Id. at 30. Patent Owner argues that the “involvement of the mobile network
`
`and SRC technologies . . . add meaningful and concrete limitations to the
`
`claimed subject matter” providing “specific benefits to the technological
`
`environment by allowing information gathered over communications
`
`between an SRC device and SRC-enabled mobile terminal to be distributed
`
`and authenticated within the mobile network.” Id. at 30–31.
`
`On this record, we are not persuaded that the challenged claims of the
`
`’151 patent add an inventive concept sufficient to ensure that the patent in
`
`practice amounts to significantly more than a patent on the abstract idea
`
`itself. Alice, 134 S.Ct. at 2355; see also Ultramercial., 772 F.3d at 715
`
`(“Those ‘additional features’ must be more than ‘well-understood, routine,
`
`conventional activity.’”). The mobile network, mobile terminal, SRC
`
`communicatio
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