Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 33
`Entered: March 21, 2016
`
`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 CBM2015-00004
`Patent 6,658,464 B2
`____________
`
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 33
`Entered: March 21, 2016
`
`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 CBM2015-00004
`Patent 6,658,464 B2
`____________
`
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`A.
`
`INTRODUCTION
`
`I.
`PROCEDURAL HISTORY
`Petitioner, Motorola Mobility, LLC, filed a Petition (Paper 1, “Pet.”)
`requesting a review of claims 1, 8, 16, and 17 (“the challenged claims”) of
`U.S. Patent No. 6,658,464 B2 (Ex. 1001, “the ’464 patent”). Patent Owner,
`Intellectual Ventures I, LLC, filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). We instituted review of challenged claims 1, 8, 16, and 17 as being
`directed to patent-ineligible subject matter under 35 U.S.C. § 101 (Paper 9,
`“Inst. Dec.”).
`Subsequently, Patent Owner filed a Patent Owner Response (Paper 17,
`“PO Resp.”), and Petitioner filed a Reply (Paper 22, “Pet. Reply”).
`Patent Owner did not file a motion to amend.
`Petitioner filed a Motion to Exclude certain evidence, which is
`discussed in Section III below.
`Oral hearing was held on Thursday, December 3, 2015, and a
`transcript of the oral hearing is included in the record. Paper 32 (“Tr.”).
`We have jurisdiction under 35 U.S.C. §§ 6(b)(4) and (c), and this
`Final Written Decision is entered pursuant to 35 U.S.C. § 328(a). For the
`reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1, 8, 16, and 17 of the ’464 patent
`are unpatentable.
`
`RELATED MATTERS
`1. Other Covered Business Method Review
`The ’464 patent is related to U.S. Patent No. 6,557,054 B2 which was
`the subject of covered business method review CBM2015-00005, now
`
`B.
`
`2
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`terminated. See Motorola Mobility LLC, v. Intellectual Ventures LLC,
`CBM2015-00005 (PTAB Apr. 23, 2015) (Paper 15).
`2. Office Proceedings
`The ’464 patent is the subject of Inter Partes Reexamination
`Proceeding Control No. 95/002,093 and Ex Parte Reexamination Proceeding
`Control No. 90/013,205, which the Patent Office merged into a single
`proceeding on September 5, 2014. Pet. 29.
`3. Related Litigation
`Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–
`29, 125 Stat. 284 (2011) (“AIA”) provides for the creation of a transitional
`program for reviewing covered business method patents, and limits review
`to persons or their privies that have been sued or charged with infringement
`of a “covered business method patent.” AIA § 18(a)(1)(B); see 37 C.F.R.
`§ 42.302. The parties indicate that Patent Owner asserted the ’464 patent
`against Petitioner in Intellectual Ventures I, et al. v. Motorola Mobility, Inc.,
`Civil Action No. 11-908-SLR (D. Del.). Pet. 2 (citing Ex. 1002); Paper 5, 1.
`4. Patent Owner’s Jurisdictional Termination Request
`Patent Owner asks that the Board
`terminate this proceeding for lack of jurisdiction because
`Petitioner should not be allowed to re-litigate whether the ’464
`patent qualifies as a CBM patent after fully litigating that issue
`in an earlier CBM petition, which resulted in the Board finding
`that the Petitioner failed to prove that the ’464 patent qualified
`as a CBM patent.
`
`PO Resp. 79.
`The earlier petition Patent Owner refers to is CBM2014-00084 by this
`Petitioner. In that case, we determined that Petitioner had not demonstrated
`adequately that the ’464 patent is a covered business method patent. See
`
`3
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`Motorola Mobility, LLC v. Intellectual Ventures I, LLC, Case CBM2014-
`00084, slip op. at 2 (PTAB Aug. 6, 2014) (Paper 18); Inst. Dec. 2–3.
`Patent Owner does not cite any authority supporting a lack of
`jurisdiction in these circumstances, nor does Patent Owner otherwise explain
`persuasively why a prior petition denies the Board jurisdiction.
`Consequently, we deny Patent Owner’s request to terminate the proceeding
`on this basis.
`
`
`A.
`
`II. THE CLAIMED SUBJECT MATTER
`THE ’464 PATENT
`The ’464 patent is titled “User Station Software that Controls
`Transport, Storage, and Presentation of Content from a Remote Source,” and
`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, (54); Abstract; 5:15–18,
`5:25–29. We describe the patent in greater detail in the analysis that follows.
`
`CHALLENGED CLAIMS
`Of the challenged claims, claim 1 is the sole independent claim, and
`claims 8, 16, and 17 depend from independent claim 1. Reproduced below
`
`are the challenged claims:1
`
`B.
`
`
`1 In claim 1, we added line breaks and annotated the steps (a)–(d) to
`facilitate review.
`
`4
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`A software product for use at a user station, the user
`1.
`station including a processor and a storage device, the software
`product comprising computer executable instructions that, when
`executed by the processor:
`(a) enable a user at the user station to select content from
`each of a plurality of independent publishers;
`(b) 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,
`(c) 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
`(d) effect presentation of the stored content to the user at
`the user station with a user interface that is customized to the
`respective publishers.
`
`The software product as set forth in claim 1, wherein the
`8.
`transport of the selected content to the user station is effected
`without user intervention.
`
`16. The software product as set forth in claim 1, wherein the
`transport of the selected content to the user station is effected
`using a non-proprietary data transfer protocol.
`
`17. The software product as set forth in claim 1, wherein the
`communications network is the Internet.
`
`CLAIM CONSTRUCTION
`In our Institution Decision, we determined that because the claims of
`the ’464 patent have expired, the broadest reasonable construction standard
`does not apply. See Inst. Dec. 5; 37 C.F.R. § 42.300(b) (requiring the claims
`of an unexpired patent to be given the broadest reasonable construction in
`light of the specification). Neither party challenges that determination.
`
`C.
`
`5
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`We also determined that the language of claim 1 demonstrates that the
`steps recited therein must be performed in the order written. Inst. Dec. 6–9.
`In making this determination, we considered the District Court claim
`construction submitted by Petitioner. See Ex. 1010, 51–54 (cited at Pet. 30–
`31).2 Patent Owner agrees with our interpretation that the steps must be
`performed in the order written. PO Resp. 24 (citing Ex. 2010 ¶ 51).
`Petitioner contends that claim 1 does not require that the steps be performed
`in the order written, but does not provide an explanation for that assertion.
`See Pet. Reply 7–8. Petitioner asserts that even if claim 1 requires the steps
`to be performed in the order presented in the claim, the claims remain patent
`ineligible subject matter. Id.
`Independent claim 1 is a method claim that does not recite an order
`for the steps contained therein. Our reviewing court has adopted a two-part
`test for determining if the steps of a method claim that do not otherwise
`recite an order, must nonetheless be performed in the order in which they are
`written. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
`2003). First, “we look to the claim language to determine if, as a matter of
`logic or grammar, they must be performed in the order written.” Altiris, 318
`F.3d at 1369–70 (citations omitted); see also Mformation Techs., Inc. v.
`Research In Motion Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (a claim
`“requires an ordering of steps when the claim language, as a matter of logic
`or grammar, requires that the steps be performed in the order written, or the
`specification directly or implicitly requires” an order of steps) (quoting
`TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir.
`
`2 Petitioner cited, but did not necessarily agree with, the District Court claim
`construction. Pet. 30–31.
`
`6
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`2008)). If this is not the case, then “we next look to the rest of the
`specification to determine whether it ‘directly or implicitly requires such a
`narrow construction.’” Altiris, 318 F.3d at 1370 (citations omitted).
`For the reasons that follow, the language of claim 1 demonstrates that
`the steps must be performed in the order written.
`Claim 1 is directed to a software product comprised of computer
`executable instructions for use at a user station that includes a processor and
`a storage device. Step (a) recites “enable a user at the user station to select
`content,” and step (b) recites “effect transport of the selected content.” Step
`(b) requires effecting transport of the content that was selected (i.e., “the
`selected content”) in step (a). Use of the past tense of select (i.e., “selected”)
`in step (b) indicates that selection of the content occurred before transport
`was effected. Consequently, the language of claim 1 indicates that step (a)
`(the selecting step) must occur before step (b) (the transporting step).
`Likewise, step (c) effects storage of “the transported content,” meaning the
`content transported in step (b), and step (d) requires effecting presentation of
`“the stored content,” meaning the content that was stored in step (c).
`Accordingly, the plain language of claim 1 suggests that the steps
`must be performed in the order presented. See PO Resp. 25; see also E-Pass
`Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222 (Fed. Cir. 2007) (holding
`that where subsequent steps to completed results of the prior step, the steps
`of the claim must be performed in order). We consider this interpretation, in
`light of the specification, as interpreted by a person of ordinary skill in the
`art. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc) (“The construction that stays true to the claim language and most
`
`7
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`naturally aligns with the patent’s description of the invention will be, in the
`end, the correct construction.”).
`
`Patent Owner’s annotated version of Figure 6 of the ’464 patent
`follows:
`
`
`Figure 6 is a schematic diagram showing some of the benefits that can flow
`to a user when an information transport software component is used, with
`steps A–D circled and labeled by Patent Owner. PO. Resp. 27; Ex. 1001,
`5:61–65 (referring to Figure 1), 5:43–48, 14:54–59.
`As shown at the left edge of Figure 6, time flows from the top down,
`indicating that A–D, which correspond to steps (a)–(d) of claim 1, occur in
`sequence. In step (a), the selecting step, user 100 “selects a transport
`operation from a user interface screen in containing information product 12.”
`Ex. 1001, 15:43–45 (see circled area labeled “A” above). Information
`product 12 then calls information transport component 14 to activate
`transport. Id. at 15:45–46. In step (b), the transporting step, information
`transport component 14 executes transport object 62. Id. at 15:46–51 (see
`
`8
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`circled area “B” above). Following transport, in step (c), the storage step,
`information transport component 14 initiates store-and-process-of-fetched
`object 106 and execution of the store and process operation may be passed to
`containing information product 12. Id. at 16:10–13 (see circled area “C”
`above). In step (d), the presenting step, the user can use the product (e.g., by
`effecting presentation). Id. at 16:13–14 (see circled area “D” above).
`Consequently, the specification is consistent with the interpretation that the
`steps of claim 1 must be performed in order presented. See PO Resp. 27.
` We interpret claim 1 to require that the claimed steps are performed in
`the order presented.
`
`
`III. MOTION TO EXCLUDE
`
`A.
`
`INTRODUCTION
`As mentioned above, Petitioner filed a Motion to Exclude certain
`exhibits. Paper 24 (“Mot.”). Patent Owner filed an Opposition to the
`Motion (Paper 26, “Opp.”), and Petitioner filed a Reply to the Opposition
`(Paper 29, “Opp. Reply”). For the following reasons, Petitioner’s motion is
`denied.
`Petitioner seeks to exclude Exhibits 2010–2013, 2016–2018, and
`2020. Mot. 1. Each of the exhibits at issue was submitted in association
`with Patent Owner’s Response on July 8, 2015. Petitioner’s objections to
`these exhibits were timely. Paper 19 (submitted July 15, 2015); 37 C.F.R.
`§ 42.64(b)(1).
`
`9
`
`
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`B.
`
`EXHIBIT 2010 – THE DECLARATION OF DR. SHORT
`Petitioner presents five arguments that all or some of the Declaration
`of Dr. Short (Ex. 2010) should be excluded. Before addressing those
`arguments, we observe that Dr. Short’s qualifications align sufficiently with
`the challenged subject matter (software for use on a user station) such that
`his knowledge is helpful in understanding the evidence and determining
`facts in issue. For example, as noted by Patent Owner, Dr. Short has a Ph.D.
`in Electrical Engineering and more than 35 years of experience as a
`practicing engineer, which includes experience in computer programming.
`Opp. 2–3; Ex. 2010 ¶¶ 5–7; Ex. 2019 (Dr. Short’s personal data sheet).
`1. Omitted Information
`Petitioner contends that Dr. Short’s Declaration should be excluded
`because it fails to identify all materials that he considered in forming his
`opinion. Mot. 2–3; Opp. Reply 2.
`This argument is unpersuasive for two independent reasons. First,
`Petitioner’s objections do not mention an alleged failure to identify all
`material relied upon, and consequently the objection did not identify the
`grounds for the objection with sufficient particularity to permit Patent
`Owner to correct in the form of supplemental evidence. See
`37 C.F.R. § 42.64(b)(1), (c).
`Second, our rules provide that the opinion of an expert witness may be
`given little or no weight if the expert does not disclose the underlying facts
`or data on which the opinion relies. See 37 C.F.R. § 42.65. Therefore, the
`absence of such underlying facts or data is a matter relating to the weight to
`be given such evidence rather than to the admissibility of that evidence.
`Further, Petitioner does not identify a Federal Rule of Evidence that supports
`
`10
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`exclusion as requested, and Petitioner’s citation to the Federal Rules of Civil
`Procedure (FRCP) is unpersuasive because the Board has not adopted those
`rules. See Mot. 2; Opp. Reply 2; 37 C.F.R. § 42.62 (applying the Federal
`Rules of Evidence (“Fed. R. Evid.”) to inter partes reviews); see generally
`Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., Case
`IPR2013-00453, slip op. at 8 n.5 (PTAB Jan. 6, 2015) (Paper 88) (noting
`that the Board has not adopted the Federal Rules of Civil Procedure).
`2. Attorney Argument, Paragraph 58
`Petitioner contends that Dr. Short’s statement that the claimed
`software was somehow “unpredictable” should be excluded because it is
`attorney argument disguised as expert opinion. Mot. 3–4 (referring to
`Dr. Short’s statement at Ex. 2010 ¶ 58 and citing Salas v. Carpenter, 980
`F.2d 299, 305 (5th Cir. 1992); Romanelli v. Long Island R.R. Co., 898 F.
`Supp. 2d 626, 634 (S.D.N.Y. 2012)); Opp. Reply 2–3. This argument is
`unpersuasive for three independent reasons.
`First, Petitioner’s objections did not mention paragraph 58, and did
`not allege that any portion of the Declaration is attorney argument disguised
`as an expert opinion. See Paper 19, 1–2. Consequently, the objections did
`not permit Patent Owner to correct in the form of supplemental evidence.
`See 37 C.F.R. § 42.64(b)(1), (c).
`Second, we disagree with Petitioner’s characterization that the cited
`testimony is attorney argument. Rather, as explained by Patent Owner,
`Dr. Short was referring to the mental leap that would be required to reach the
`claimed subject matter. See Opp. 4–5.
`Third, the cases cited by Petitioner do not support excluding the
`paragraph at issue. Salas, the first case cited by Petitioner, deals with expert
`
`11
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`testimony in jury trials. Salas, 980 F.2d at 305. The policy considerations
`for excluding expert testimony, such as those implemented by the
`gatekeeping framework established by the Supreme Court in Daubert v.
`Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), are less compelling in
`bench proceedings such as inter partes reviews than in jury trials.
`In Romanelli, the second case cited by Petitioner, the court stated that
`an expert may not testify regarding the existence of a duty, and thus
`Mr. Romanelli, as a lay witness, also could not do so. Romanelli, 898 F.
`Supp. 2d at 634 (citing In re Air Disaster at Lockerbie Scot., 37 F.3d 804,
`827 (2d Cir. 1994)). Dr. Short provides his opinion regarding the
`unpredictability of the claimed software instructions, not the existence of a
`duty. See Ex. 2010 ¶ 58.
`3. Unreliable Sources, Paragraphs 25–50
`Petitioner contends that paragraphs 25–50 of Dr. Short’s Declaration
`should be excluded because his testimony relies on unreliable sources, and
`because these paragraphs omit Dr. Short’s personal knowledge about similar
`technology. Mot. 4–5 (citing Daubert, 509 U.S. at 592).
`Regarding sources, Petitioner’s Motion mentions that Exhibit 2011,
`referenced by Dr. Short, was published in 2009 and explains the status of the
`internet in 1989. Mot. 4. However, Petitioner objected to Dr. Short’s
`Declaration because it was “not based upon data on which experts in this
`field would reasonably rely.” Paper 19, 1–2. Petitioner did not specify
`which of the nine sources of information Dr. Short relied upon, was
`unreliable. See Ex. 2010 ¶ 9 (listing information sources). Absent such
`information, Patent Owner did not have sufficient opportunity to correct in
`the form of supplemental evidence. 37 C.F.R. § 42.64(b)(1), (c).
`
`12
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`Further, Petitioner’s observation that Exhibit 2011 was published in
`2009 and explains the state of the internet in 1989 does not demonstrate
`persuasively that the source is unreliable. That is, the passage of time,
`without more, does not demonstrate the exhibit is unreliable.
`Regarding the allegation that Dr. Short omitted personal knowledge
`about similar technology, Petitioner did not effectively object on such a
`basis. See Paper 19, 1–2; 37 C.F.R. § 42.64(b)(1), (c). Further, Petitioner
`does not cite, and we are not aware of, any authority for excluding expert
`testimony based upon a failure to identify personal knowledge of similar
`technology.
`4. Subject Matter Knowledge, Paragraphs 52–56
`Petitioner contends that paragraphs 52–56 of Dr. Short’s Declaration
`should be excluded because Dr. Short admits he has little or no knowledge
`of the subject matter presented, and therefore, his testimony amounts to
`attorney argument improperly presented as expert testimony. Mot. 5–6
`(citing Dr. Short’s testimony at Ex. 1012, 23:6–11, 52:23–53:3); Opp. Reply
`4.
`
`Dr. Short did not admit he has little or knowledge of the subject matter
`presented; rather, Dr. Short stated that he is not a financial expert. See Ex.
`1012, 23:6–11. We agree with Patent Owner that Dr. Short does not need to
`be a financial expert in order to competently opine on how a person having
`ordinary skill in the art would have understood the claims. Opp. 8. We
`disagree with Petitioner’s characterization that Dr. Short’s testimony
`demonstrates that he has “no idea” what solving a technical problem using a
`technical solution means. See Mot. 6; Ex. 1012, 52:23–53:3. As explained
`above, Dr. Short’s qualifications align with the challenged subject matter
`
`13
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`sufficiently so that his knowledge is helpful in understanding the evidence
`and determining facts in issue. See Opp. 8
`5. Reliance on Articles, Paragraphs 11–12
`Petitioner argues that the Board should exclude Dr. Short’s testimony
`that criticizes Dr. Clark’s identification of the level of skill in the art. Mot 6–
`7 (referring to the testimony at Ex. 2010 ¶¶ 11–12). In particular, Petitioner
`emphasizes that Dr. Short states he was not aware of a Bachelor of Science
`level software engineering program in 1994, yet, Dr. Short’s employer at the
`time, the University of Utah, was developing a program. Id. at 7 (citing
`Dr. Short’s testimony at Ex. 1012, 41:7–10).
`Even accepting, for the sake of argument, that Dr. Short contradicted
`himself, contradictory testimony would go to the weight afforded that
`evidence, not its admissibility. Perhaps more importantly, we disagree with
`Petitioner’s characterization of the evidence. Dr. Short’s statement that he
`was unaware of any Bachelor of Science level software engineering program
`in 1994 is consistent with a program being in development at that time. See
`Ex. 2010 ¶ 11; Ex. 1012, 41:7–10.
`6. Conclusion3
`Consequently, Petitioner has not demonstrated that any portion of the
`Declaration of Dr. Short should be excluded. See 37 C.F.R. §§ 42.20(c),
`42.22, 42.64(c).
`
`
`
`3 Petitioner essentially repeats these arguments and argues that Dr. Short’s
`Declaration should be given little or no weight. See Pet. Reply 23–25. We
`considered these arguments when weighing Dr. Short’s Declaration.
`
`14
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`C.
`
`EXHIBIT 2011 - EXCERPTS FROM THE INTERNET
`Petitioner contends that pages 6–9 of Exhibit 2011 should be excluded
`as hearsay under Fed. R. Evid. 802 and for lack of proper authentication
`under Fed. R. Evid. 901. Mot. 8. Petitioner made corresponding and timely
`objections. See Paper 19, 2.
`We agree with Patent Owner, that Exhibit 2011 contains excerpts from
`a textbook that qualifies as a learned treatise under Fed. R. Evid. 803(18),
`and, therefore, should not be excluded under Fed. R. Evid. 802. See Opp.
`10.
`
`We also agree with Patent Owner that the distinctive characteristics
`found on the tile page, table of contents, and copyright page of Exhibit 2011
`are sufficient to support a finding that the exhibit is what Patent Owner
`claims it to be. See Fed. R. Evid. 901(a), (b)(4). See Opp. 10–11; Ex. 2011,
`1–9.4
`Consequently, Petitioner has not demonstrated that Exhibit 2011
`should be excluded. See 37 C.F.R. §§ 42.20(c), 42.22, 42.64(c).
`
`EXHIBITS 2012, 2013, 2018, AND 2020
`D.
`Exhibit Title
`2012
`DYNASHUTTLE™ Corp., Product and Service Overview
`2013
`DYNASHUTTLE™ Corp., Company Backgrounder
`2018
`Teleshuttle, Teleshuttle™, Formerly Dynashuttle Corp,
`Announces CD-ROM/Online Hybrids For Vista Intermedia and
`Electronic Book Technologies (1995)
`Teleshuttle Corp., Teleshuttle (1996)
`
`2020
`
`
`4 Pages 1–9 of this Exhibit are not properly numbered.
`
`15
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`Petitioner contends that pages 1–4 of Exhibit 2012 should be excluded
`because they are not relevant and may lead to unfair prejudice. Mot. 8–9
`(citing Fed. R. Evid. 402 and 403). Specifically, Petitioner contends that the
`Exhibit does not relate to whether the claims recite patent eligible subject
`matter under 35 U.S.C. § 101. Id. Petitioner also contends that pages 1–4
`should be excluded as hearsay under Fed. R. Evid. 802 and for lack of
`proper authentication under Fed. R. Evid. 901. Id. Petitioner made
`corresponding and timely objections. See Paper 19, 2–3. Petitioner further
`contends that the entirety of Exhibits 2013, 2018, and 2020 should be
`excluded for the same reasons. Mot. 9–10, 12–14. Petitioner made
`corresponding and timely objections. See Paper 19, 3–5.
`Patent Owner contends that the Exhibits at issue are relevant for two
`reasons: (1) to rebut the obviousness allegations made by Petitioner, and (2)
`to show that the claimed invention is directed to a concrete implementation
`rather than an abstract idea. Opp. 14. Regarding what Patent Owner refers
`to as “obviousness allegations,” a more accurate characterization is that
`Petitioner relies upon Ogaki to demonstrate that the ’464 patent is a covered
`business method patent as defined by the AIA. See Inst. Dec. 9–16.
`Whether the ’464 patent is a covered business method patent remains an
`issue in this case. See PO Resp. 28–61; Pet. Reply 7–13. Further, whether
`the challenged claims are directed to a concrete implementation or an
`abstract idea is a relevant inquiry under 35 U.S.C. § 101. Significantly,
`Petitioner has the burden of persuasion regarding exclusion of these exhibits,
`and Petitioner does not respond to Patent Owner’s reasons why the exhibits
`are relevant. See Opp. Reply; 37 C.F.R. §§ 42.20(c), 42.22.
`
`16
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`The exhibits at issue have some tendency to make a fact of
`consequence in these inquiries more or less probable. Consequently,
`Petitioner has not persuaded us that they are not relevant.
`We are persuaded by Patent Owner’s assertion that the exhibits at
`issue have distinctive characteristics that demonstrate that the exhibits are
`what Patent Owner claims them to be. See Opp. 13–14. For example,
`Exhibits 2012 and 2013 have virtually identical formatting and share some
`descriptive text regarding the DYNASHUTTLE commercial product, and
`Exhibits 2018 and 2020 have the same company contact information. Opp.
`14; Exs. 2012, 2013. Petitioner responds that the fact that the exhibits have
`common formatting, layout, and font type is not evidence that the documents
`are reliable. Opp. Reply 5. Patent Owner did more than point out that the
`exhibits have common formatting, layout, and font type. The exhibits have
`other distinctive characteristics that demonstrate the exhibits are what Patent
`Owner claims them to be. For example, Exhibits 2012 and 2013 each
`describe the DYNASHUTTLE product as providing simple and seamless
`data transport. Opp. 14; Ex. 2012, 1; Ex. 2013, 1. The Company address
`and phone number are also the same. See Opp. 14; Ex. 2012, 1; Ex. 2018, 1;
`Ex. 2020, 2; see also PO Resp. 16 (explaining that DYNASHUTTLE was
`renamed Teleshuttle).
`Regarding hearsay, Patent Owner contends that Exhibits 2012, 2013,
`2018, and 2020 are more than 20 years old and thus qualify as an exception
`to hearsay in this proceeding under Fed. R. Evid. 803(16). Opp. 12–13.
`Indeed, each of these Exhibits appears to be at least 20 years old. Ex. 2012,
`1 (1994); Ex. 2013, 1 (1994); Ex. 2018, 2 (1994); Ex. 2020, 3 (January
`1996). Petitioner responds that these Exhibits do not qualify for the ancient
`
`17
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`documents exception to hearsay because authenticity has not been
`established. Opp. Reply 5. As explained above, Petitioner has not
`persuaded us that Patent Owner made an inadequate showing regarding
`authenticity.
`Consequently, Petitioner has not demonstrated that any portion of
`Exhibits 2012, 2013, 2018, or 2020 should be excluded. See 37 C.F.R.
`§§ 42.20(c), 42.22, 42.64(c).
`
`EXHIBITS 2016 AND 2017
`E.
`Exhibit Title
`2016
`Crafting a Baccalaureate Program in Software Engineering
`2017
`The Road We’ve Traveled: 12 Years of Undergraduate
`Software Engineering at the Rochester Institute of Technology
`Petitioner contends that these Exhibits should be excluded based on
`relevance and hearsay, and Petitioner made corresponding, timely
`objections. See Mot. 10–12; Paper 19, 3–4. Specifically, according to
`Petitioner, the Exhibits have “no relevance to the matter at issue in this
`proceeding, whether the claims recite patent eligible subject matter,” and the
`exhibits are not relevant to Dr. Clark’s definition of a person of ordinary skill
`in the art because Dr. Clark identified a software engineering degree as an
`alternative degree. Mot. 11–12 (referencing Dr. Clark’s testimony regarding
`the level of skill in the art at Ex. 1006 ¶ 8).
`As an initial matter, we note that contrary to what Petitioner’s
`assertion suggests, whether the claims recite patent eligible subject matter is
`not the sole issue in this proceeding. For example, we must determine
`whether the ’464 patent is a covered business method patent as defined by
`the AIA, and the level of skill in the art relates to that inquiry. Patent
`
`18
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`Owner’s expert, Dr. Short, testifies that Dr. Clark’s definition of a person of
`ordinary skill in the art is unrealistic in that there were not any Bachelor of
`Science software engineering degree programs offered in the United States
`at that time. Ex. 2010 ¶ 11 (citing Exs. 2016, 2017). Exhibits 2016 and
`2017 tend to make a fact related to the level of skill in the art more or less
`probable, and, therefore, are relevant. See Opp. 12.
`Regarding hearsay, we agree that because Dr. Short relies on the
`exhibits at issue, exclusion of the exhibits as hearsay is improper. Opp. 11
`(citing Fed. R. Evid. 703).
`Consequently, Petitioner has not demonstrated that any portion of
`Exhibits 2016 and 2017 should be excluded. See 37 C.F.R. §§ 42.20(c),
`42.22, 42.64(c).
`
`
`IV. COVERED BUSINESS METHOD (CBM) PATENT
`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
`(CBM) patent. Whether a patent is a CBM patent is a two-part inquiry: (1)
`whether the patent “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,” and (2)
`whether the patent is a technological invention (technological inventions are
`not covered business methods patents). AIA § 18(d)(1); 37 C.F.R.
`§ 42.301(a). 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); see also PO
`Resp. 28–29 (emphasizing this point).
`
`19
`
`
`
`Case CBM2015-00004
`Patent 6,658,464 B2
`
`
`A.
`
`In our Institution Decision we determined that the ’464 patent is a
`covered business method (CBM) patent. Inst. Dec. 9–16. Patent Owner
`disagrees with this determination. PO Resp. 28–61. Petitioner agrees with
`this determination. Pet. Reply 7–14. We determine whether the ’464 patent
`is a CBM patent in light of the full record.
`
`FINANCIAL PRODUCT OR SERVICE
`1. Claims
`Patent Owner argues that the challenged claims recite electronic
`content distribution operations and have no direct or indirect relationship to
`financial products or services. PO Resp. 29–30 (providing three supporting
`citations). For the reasons that follow, we are not persuaded by this
`argument.
`First, the portion of the Federal Register quoted by Patent Owner,
`when viewed in context, undermines rather than supports Patent Owner’s
`argument. See PO Resp. 29–30 (citing 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)
`(response to comment 4)). Comment 4 suggested that the definition of a
`covered business method patent, under 37 C.F.R. § 42.301(a), should be
`revised to clarify that the “determination of a ‘covered business method
`patent’ would not be satisfied by merely reciting an operating environment
`related to data processing or management of a financial product or service,
`but that eligibility should be determined by what the patent claims.” In other
`words, the comment sought to modify the definition of a c
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
