Paper No. 17
`Entered: August 6, 2014
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`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00083
`Patent 6,557,054 B2
`____________
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
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`

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`CBM2014-00083
`Patent 6,557,054 B2
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`
`I.
`INTRODUCTION
`Motorola Mobility LLC (“Petitioner”) filed a Revised Petition (“Pet.”) to
`institute a covered business method patent review of claims 151, 159, 161, 162,
`181, 189, 191, 192, 256, 264, 266, and 267 of U.S. Patent No. 6,577,054
`(“the ’054 patent,” Ex. 1001). Paper 7. Patent Owner Intellectual Ventures I LLC
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”) on June 18, 2013.
`Paper 15. We have jurisdiction under 35 U.S.C. § 324.
`Upon consideration of the Petition and Preliminary Response, we determine
`that Petitioner has not demonstrated that the ’054 patent is a “covered business
`method patent,” and therefore deny the institution of a covered business method
`patent review.
`
`A. The ’054 Patent (Ex. 1001)
`The ’054 patent, titled “Method and System for Distributing Updates by
`Presenting Directory of Software Available for User Installation That is Not
`Already Installed on User Station,” relates to systems and methods of distributing
`electronic information updates for a number of different products to multiple,
`uncoordinated user stations using a non-proprietary network. Ex. 1001, 1:29-33.
`The method provides a distribution service that distributes the updates and a
`transport component at each user station that automatically communicates, through
`the non-proprietary network, with the distribution service and obtains updates for
`at least a subset of the products installed on that user station. Id. at 5:19-32. The
`transport component “is intended to be used in conjunction with any of a wide
`range of electronic information products.” Id. at 7:43-46.
`
`B.
`
`Related Matters
`The ’054 patent is asserted against Petitioner in Intellectual Ventures I v.
`Motorola Mobility, Inc., No. 11-908 (SLR) (D. Del.). Pet. 1.
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`CBM2014-00083
`Patent 6,557,054 B2
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`C.
`
`Illustrative Claim
`Petitioner challenges claims 151, 159, 161, 162, 181, 189, 191, 192, 256,
`264, 266, and 267 of the ’054 patent. Claims 151, 181, and 256 are independent
`claims. Claim 151 is illustrative, and reads as follows:
`for distributing
`151. A computer
`implemented method
`software updates from a remote computer system to a user station, the
`method comprising:
`presenting, at the user station, as a function of an identification
`of software already installed on the user station, a directory of
`software updates available for installation on the user station;
`sending to the remote computer system over a communications
`network a selection of software updates for installation on the user
`station, wherein the selection of software updates is selected at the
`user station as a function of the directory; and
`the
`receiving
`from
`the
`remote computer system over
`communications network software updates indicated by the selection.
`
`II. ANALYSIS
`Section 18 of the America Invents Act provides for the creation of a
`transitional program for reviewing covered business method patents. See Leahy-
`Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011). A
`“covered business method patent” is a patent that “claims a method or
`corresponding apparatus for performing data processing 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.” AIA
`§ 18(d)(1); see 37 C.F.R. § 42.301(a). We begin with the technological invention
`inquiry.
`To determine whether a patent is directed to a technological invention, and
`therefore, ineligible for covered business method patent review, we consider
`(1) whether the claimed subject matter as a whole recites a technological feature
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`CBM2014-00083
`Patent 6,557,054 B2
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`that is novel and unobvious over the prior art; and (2) solves a technical problem
`using a technical solution. 37 C.F.R. § 42.301(b). Petitioner contends that
`the ’054 patent is not directed to a technological invention. Pet. 9-10. Petitioner
`states:
`The technologies recited in the patent claims – a computer and a
`network – were well-known in the prior art and thus do not render the
`claims drawn to technological inventions, even if the recited methods
`are presumed to be novel and non-obvious (which they are not). See
`Exhibit 1003, pp. 7-8. Moreover, the combination of these well-
`known technologies leads to a normal, expected, or predictable result,
`which is nothing more than identifying data, displaying data,
`transmitting data between two computers over a network, and
`receiving software. Thus, the methods claimed in the ’054 patent fall
`squarely within the Office Trial Practice Guide’s guidelines for what
`is not a technological invention.
`Id. at 10.
`As to the first prong of the technological invention inquiry, we are not
`persuaded that Petitioner has shown that the claimed subject matter, as a whole,
`does not recite a technological feature that is novel and unobvious over the prior
`art. Petitioner’s contention that the claimed method is the normal, expected, or
`predictable result of the combination of a computer and a network does not address
`the entire subject matter of the claims. See Pet. 10. Although a computer and
`network may be known technologies, Petitioner has not established that simply
`combining the two would normally result in that combination performing the
`specific steps claimed in the ’054 patent. For example, the method recited in
`claim 151 includes the step of “receiving from the remote computer system over
`the communications network software updates indicated by the selection,” where
`“the selection of software updates is selected at the user station as a function of the
`directory” of software updates available for installation on the user station.
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`CBM2014-00083
`Patent 6,557,054 B2
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`Petitioner’s contention that the combination of a computer and network predictably
`results in receiving software is not enough to show that the combination would
`predictably result in this specific claimed step. Petitioner’s general, conclusory
`statements, without more, are not sufficient to carry Petitioner’s burden of showing
`that at least one claim in the ’054 patent does not recite a technological feature that
`is novel and unobvious over the prior art.
`With respect to the second prong of the inquiry, Petitioner acknowledges
`that the subject matter claimed in the ’054 patent also must solve a technical
`problem using a technical solution in order to be directed to a technological
`invention. Pet. 9 (citing Ex. 1003 (Volusion, Inc. v. Versata Software, Inc., Case
`CBM2013-00017 (PTAB Oct. 24, 2013) (Paper 8)); 37 C.F.R. § 42.301).
`However, Petitioner does not provide any specific or persuasive reasoning to
`establish that the claims of the ’054 patent do not solve a technical problem using a
`technical solution. Id. at 9-10. Petitioner also does not refer to or rely on any
`expert testimony in that regard.
`It is Petitioner’s burden to “demonstrate that the patent for which review is
`sought is a covered business method patent.” 37 C.F.R. § 42.304(a). Petitioner’s
`conclusory statements regarding whether the claimed subject matter as a whole
`recites a technological feature that is novel and unobvious over the prior art and
`Petitioner’s failure to address adequately whether the subject matter claimed in
`the ’054 patent solves a technical problem using a technical solution are not
`sufficient to demonstrate that the claimed subject matter is not a technological
`invention.
`Because we find that Petitioner failed to show that the ’054 patent is not
`directed to a technological invention, we need not reach the question of whether
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`CBM2014-00083
`Patent 6,557,054 B2
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`the ’054 patent claims a method or apparatus used in the practice, administration,
`or management of a financial product or service.
`Therefore, we conclude that Petitioner has not carried the burden to establish
`that the ’054 patent is a covered business method patent.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not demonstrated
`that the ’054 patent is eligible for review as a covered business method patent
`under AIA § 18(d)(1).
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that no covered business method patent review is
`instituted.
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`CBM2014-00083
`Patent 6,557,054 B2
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`For Petitioner:
`John Alemanni
`Michael Morlock
`KILPATRICK TOWNSEND & STOCKTON LLC
`JAlemanni@kilpatricktownsend.com
`MMorlock@kilpatricktownsend.com
`
`
`For Patent Owner:
`John R. King
`Brenton R. Babcock
`KNOBBE, MARTENS, OLSON & BEAR
`2jrk@knobbe.com
`2brb@knobbe.com
`
`Matthew C. Phillips
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
`
`Donald J. Coulman
`INTELLECTUAL VENTURES MANAGEMENT
`dcoulman@intven.com
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