Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper No. 18
`Filed: August 6, 2014
`
`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 CBM2014-00084
`Patent 6,658,464 B2
`_______________
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN,
`and JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`I. INTRODUCTION
`
`Petitioner, Motorola Mobility, LLC, filed a revised Petition (“Pet.”)
`
`requesting a review of claims 1, 8, 16, and 17 of U.S. Patent No. 6,658,464
`
`B2 (iss. Dec. 2, 2003) (Ex. 1001, “the ’464 patent”). Paper 7. Patent
`
`
`Tel: 571.272.7822
`
`
`Paper No. 18
`Filed: August 6, 2014
`
`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 CBM2014-00084
`Patent 6,658,464 B2
`_______________
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN,
`and JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`I. INTRODUCTION
`
`Petitioner, Motorola Mobility, LLC, filed a revised Petition (“Pet.”)
`
`requesting a review of claims 1, 8, 16, and 17 of U.S. Patent No. 6,658,464
`
`B2 (iss. Dec. 2, 2003) (Ex. 1001, “the ’464 patent”). Paper 7. Patent
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`Owner, Intellectual Ventures I, LLC, filed a Preliminary Response (“Prelim.
`
`Resp.”). Paper 16. 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 ’464 patent is a
`
`“covered business method patent,” and therefore deny the institution of a
`
`covered business method patent review.
`
`
`
`A.
`
`The ’464 Patent (Ex. 1001)
`
`
`
`The ’464 patent, titled “User Station Software that Controls Transport,
`
`Storage, and Presentation of Content from a Remote Source,” relates to a
`
`method and corresponding software for operating a user station for
`
`communications with a multiplicity of independently-operated data sources
`
`via a non-proprietary network. Ex. 1001, Abstract; 5:15–18, 25–29.
`
`The ’464 patent includes claims 1–78, and claims 1, 20, 39, and 58 are
`
`independent. Independent claim 1 is directed to a software product for use
`
`at a user station and is reproduced below:
`
`
`1. A software product for use at a user station, the user station
`including a processor and a storage device, the software product
`comprising computer executable
`instructions
`that, when
`executed by the processor:
`enable a user at the user station to select content from
`each of a plurality of independent publishers;
`effect transport of the selected content from each of the
`plurality of publishers
`to
`the user
`station over a
`communications network and, without user intervention, effect
`storage of the transported content to the storage device such that
`the content is retained on the storage device upon shutting
`down of the user station and/or deactivation of the software
`product; and
`
`2
`
`
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`effect presentation of the stored content to the user at the
`user station with a user interface that is customized to the
`respective publishers.
`
`Claims 8, 16, and 17 depend from independent claim 1.
`
`
`
`
`
`B. Related Matters
`
`
`
`Petitioner asserts that it is being sued for infringement of the
`
`’464 patent in Intellectual Ventures I. v. Motorola Mobility, Inc., Civil
`
`Action No. 11-908 (SLR) (D. Del) (filed Oct. 6, 2011). Pet. 1 (citing
`
`Ex. 1002).
`
`
`
`II. ANALYSIS
`
`A threshold question is whether the ’464 patent is a “covered business
`
`method patent,” as defined by the Leahy-Smith America Invents Act, Pub.
`
`L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Specifically, section
`
`18(a)(1)(E) of the AIA directs that the Board may institute a transitional
`
`proceeding only for a patent that is a covered business method patent. It is
`
`Petitioner’s burden to demonstrate that the ’464 patent is a covered business
`
`method patent. See 37 C.F.R. § 42.304(a). In making this determination,
`
`the focus is on the claims. See Transitional Program for Covered Business
`
`Method Patents—Definitions of Covered Business Method Patent and
`
`Technological Invention, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012)
`
`(Final Rule). A patent need have only one claim directed to a covered
`
`business method to be eligible for review. Id. For the reasons explained
`
`
`
`3
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`below, we conclude that Petitioner fails to demonstrate that the ’464 patent
`
`is a “covered business method patent” under AIA Section 18(d)(1).
`
`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); 37 C.F.R. § 42.301(a).
`
`Therefore, patents for technological inventions are not covered business
`
`method patents. Although ordinarily the issue of whether the claimed
`
`method or apparatus is used in the practice, administration, or management
`
`of a financial product or service is considered first, followed by whether it is
`
`a technological invention is considered, that sequence is neither essential nor
`
`required. In this case, we begin with the technological invention inquiry.
`
`Determining whether a patent is for a technological invention is a
`
`two-pronged inquiry requiring consideration of whether the claimed subject
`
`matter as a whole: (1) “recites a technological feature 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). The following claim drafting
`
`techniques, for example, typically do not render a patent a “technological
`
`invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`
`
`
`
`
`
`4
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`
`14, 2012).
`
`Petitioner states:
`
`[E]ach claim of the ’464 patent is an apparatus for sending,
`receiving, and viewing content. 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 apparatus was
`presumed to be novel and non-obvious.
`
`Pet. 9. Further, according to Petitioner, the combination of a computer and
`
`network leads to a “normal, expected, or predictable result, which is nothing
`
`more than the transmission over a network of content from a remote
`
`computer system to a user station, i.e., another computer, and viewing that
`
`content.” Id. at 10.
`
`Regarding the first prong, for several reasons, Petitioner has not
`
`shown that the claimed subject matter, as a whole, does not recite a
`
`technological feature that is novel and unobvious over the prior art. See 37
`
`C.F.R. § 42.301(b). First, Petitioner’s characterization that each of the
`
`claims is an apparatus claim reciting the combination of a computer and a
`
`network is inaccurate. See Pet. 9. Rather, each of independent claims 1, 20,
`
`39, and 58 of the ’464 patent is directed to a “software product” for use at a
`
`user station. See Ex. 1001, col. 60, ll. 40–55; col. 61, l. 64–col.62, l. 12; col.
`
`63, ll. 21–42; col. 64, l. 53–col. 65, l. 8.
`
`
`
`5
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`
`
`Second, Petitioner’s contention that the claims of the ’464 patent call
`
`for “transmission” and “viewing” of content, is both inaccurate and
`
`incomplete. See Pet. 10. Petitioner’s contention is inaccurate in that the
`
`independent claims do not simply call for viewing content. Rather, the
`
`claims require effecting presentation of the content with a user interface that
`
`is either customized to the respective publisher (claims 1 and 20) or has a
`
`look and feel specific to the respective publisher (claims 39 and 58).
`
`Petitioner’s contention is incomplete in that it does not fully address the
`
`claim limitations. For example, independent claims 1 and 20 require that the
`
`software enable a user at the user station to select content from a plurality of
`
`independent publishers/service (“the selecting step”). Independent claims 39
`
`and 58 include a similar selecting step. Independent claims 1 and 20 require
`
`that the software effect storage of the content without user intervention such
`
`that it is retained on the storage device upon shutting down and/or
`
`deactivation of the software product (“the storage step”). Independent
`
`claims 39 and 58 include a similar storage step. Petitioner’s contention that
`
`the ’464 patent simply calls for “transmitting” and “viewing” of content does
`
`not cogently address the selecting and storage steps of the claims.
`
`Third, Petitioner’s contention that the claimed subject matter
`
`combines well-known, prior art structures—a computer and a network—to
`
`achieve the normal, expected, or predictable result of that combination is
`
`incorrect. See Pet. 9–10 (implying that the claims of the ’464 patent are like
`
`example (c) from the Trial Guide discussed above). The claims of the ’464
`
`patent are directed to a software product for use on a user station.
`
`Consequently, the claimed subject matter is not characterized accurately as
`
`
`
`6
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`the combining of prior art structures (i.e., a computer and a network).
`
`Further, Petitioner’s analysis focuses on the hardware elements and does not
`
`demonstrate cogently that the steps of the claimed subject matter were novel
`
`and unobvious. See Prelim. Resp. 37–39.
`
`In view of the foregoing, we agree with Patent Owner that Petitioner
`
`does not “identify any particular claim or quote the specific language of any
`
`claim” in making “conclusory, unsubstantiated allegations,” and does not
`
`consider the claimed subject matter as a whole, including software elements.
`
`See Prelim. Resp. 32, 37–39.
`
`Regarding the second prong, Petitioner acknowledges that to be a
`
`technological invention, the ’464 patent also must solve a technical problem
`
`using a technical solution. Pet. 8–9 (quoting 37 C.F.R. § 42.301(b), citing
`
`Volusion, Inc. v. Versata Software, Inc. and Versata Development Group,
`
`Inc., CBM2013-00017 (PTAB Oct. 24, 2013) (paper 8))1. Petitioner,
`
`however, provides no specific or persuasive reasoning to support the
`
`contention that the claimed invention of the ’464 patent does not solve a
`
`technical problem using a technical solution. Id. Petitioner also identifies
`
`no expert testimony in that regard.
`
`In summary, Petitioner’s analysis regarding whether the claimed
`
`subject matter, as a whole, recites a technological feature that is novel and
`
`unobvious over the prior art is conclusory, and Petitioner fails to address
`
`cogently whether the ’464 patent solves a technical problem using a
`
`technical solution. Thus, Petitioner has not demonstrated sufficiently that
`
`the claimed subject matter is not a technological invention. We need not
`
`
`1 This decision is included as Ex. 1003.
`
`7
`
`
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`reach the issue of whether any challenged claim is drawn to 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.
`
`Consequently, we conclude that Petitioner has not carried its burden
`
`of establishing that the ’464 patent is a covered business method patent.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has not
`
`demonstrated that the ’464 patent is eligible for review as a covered business
`
`method patent under AIA § 18(d)(1).
`
`
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that the petition is denied; and
`
`FURTHER ORDERED that no covered business method patent
`
`review is instituted.
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`CBM2014-00084
`Patent 6,658,464 B2
`
`
`FOR PETITIONER:
`
`John Alemanni
`KILPATRICK TOWNSEND & STOCKTON LLC
`JAlemanni@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
`
`
`
`
`
`9
`
`
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