Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: February 9, 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 CBM2015-00174
`Patent 7,810,144 B2
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: February 9, 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 CBM2015-00174
`Patent 7,810,144 B2
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2015-00174
`Patent 7,810,144 B2
`
`
`
`INTRODUCTION
`I.
`Background
`A.
`Petitioner Motorola Mobility LLC filed a Petition (Paper 1, “Pet.”)
`requesting a covered business method patent (“CBM patent”) review of
`claims 10, 14, 15, and 41 of U.S. Patent No. 7,810,144 B2 (Ex. 1001, “the
`’144 patent”) pursuant to Section 18 of the Leahy–Smith America Invents
`Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Patent Owner
`Intellectual Ventures I LLC filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`A transitional proceeding under § 18 of the AIA may be instituted
`only for a patent that is a covered business method patent. AIA
`§ 18(a)(1)(e). Upon consideration of the Petition and Preliminary Response,
`we conclude Petitioner has not met its burden of demonstrating sufficiently
`that the ’144 patent is a CBM patent pursuant to the statutory definition in
`§ 18(d)(1) of the AIA. Therefore, we deny the Petition.
`
`
`Related Proceedings
`B.
`The parties identify Intellectual Ventures I LLC v. Motorola Mobility
`LLC, No. 1:11-cv-00908 (D. Del.), and U.S. Patent Nos. 8,406,825,
`8,185,736, 8,522,313, and 8,667,460, as well as pending application nos.
`13/987,534 and 14/807,475, all of which claim the benefit of the ’144 patent.
`Pet. 1; Paper 5, 1.
`
`The ’144 Patent
`C.
`The ’144 patent relates to the “electronic transfer of computer files
`directly between two or more computers or computing devices.” Ex. 1001,
`2:4–7. In one embodiment, the ’144 patent describes a file transfer system
`
`2
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`CBM2015-00174
`Patent 7,810,144 B2
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`having multiple personal computers (“PCs”) connected to one or more
`communication pathways (e.g., the internet or a public switched telephone
`network (PSTN)), wherein each PC runs a computer program incorporating
`functional modules that enable the direct transfer of electronic files. Id. at
`10:25–11:3, Fig. 1. A user selects one or more files to be transferred from
`the “sending PC,” and selects a “recipient PC” from a list of candidate PC
`destinations. Id. at 11:25–45. The user may also add a text message to
`accompany the transferred files. Id. at 21:39–41. A “compression control
`module” then copies and compresses any files selected for transfer and any
`text messages into a “file packet.” Id. at 11:58–67, 21:41–47. At a
`predetermined time, a control module initiates a connection with the
`destination PC, identifies the sending PC by its name and destination
`address, and transmits the packet containing the compressed files. Id. at
`12:1–6. When the transmission from the sending PC to the receiving PC is
`complete, the control module then notes the date, time, and content (e.g., file
`name and file structure) of the transfer on an event log. Id. at 12:6–9. The
`’144 patent additionally teaches that the control module in the receiving PC
`can respond to inbound file transmissions by creating a received file list, and
`may provide a visible indication that a packet has been received. Id. at
`12:16–26.
`According to one preferred embodiment of the ’144 patent, the
`sending PC can request a confirmation of the transfer, in the form of a
`returned file that includes a received file list and the identity of the recipient
`and sender. Id. at 18:66–19:4. The confirmation file may be returned from
`the receiving PC to the sending PC directly or through a third party
`authenticator. Id. at 19:4–6.
`
`3
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`CBM2015-00174
`Patent 7,810,144 B2
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`
`
`The Challenged Claims
`D.
`Petitioner challenges claims 10, 14, 15, and 41. Pet. 2–3. Claims 10
`and 41 are independent claims, and claims 14 and 15 depend from claim 10.
`Claim 10 is illustrative and reproduced below.
`10. A method for transferring files from a first device to
`a second device over a communications network, comprising:
`displaying, on the first device, a collection of file
`identifiers, wherein each file identifier represents a
`selectable file;
`receiving, at the first device, a user selection of at least one
`file identifier representing a file selected to be
`transferred to the second device;
`displaying, on the first device, a collection of destinations
`identifiers, wherein each destination
`identifier
`represents a remote device having a numbered
`destination address on a circuit switched or packet
`switched network;
`receiving, at the first device, a user selection of at least one
`destination identifier as selection of the second device:
` displaying, on the first device, a data entry field in which
`a text message can be entered;
`receiving, at the first device, the text message;
`encapsulating, at the first device, the text message with the
`selected file into a single combined file;
`generating, at the first device, a unique transaction
`identifier that identifies a transfer of the single
`combined file;
`transferring, from the first device to the second device, the
`single combined file, including:
`sending, to the second device at its numbered
`destination address, the single combined file
`receiving, at the second device, the single combined
`file irrespective of user action at the second device;
`
`4
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`CBM2015-00174
`Patent 7,810,144 B2
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`the second device, a delivery
`generating, at
`confirmation message confirming reception of the
`single combined file;
`to an
`second device
`transmitting,
`from
`the
`authenticating device of
`the communications
`network, the delivery confirmation message; and
`generating, at the authenticating device, a delivery
`report that indicates a delivery event and a time of
`the delivery event;
`providing, at the second device, an alert indicating
`reception of the single combined file;
`displaying, on the second device, an identification of the
`first device in relation to at least one of the selected file
`or the associated text file, wherein the identification
`includes at least one of a communications address of
`the first device, a name of the first device, or a
`username associated with the first device; and
`displaying, on the second device, at least a portion of
`content of the selected file or the text message.
`
`
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`5
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`CBM2015-00174
`Patent 7,810,144 B2
`E. Asserted Grounds of Unpatentability
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`Reference(s)
`
`
`
`Basis
`
`Claim(s)
`Challenged
`10, 14, 41
`10, 14, 41
`15
`
`Overend (Ex. 1004)1
`Overend and Kara (Ex. 1005)2
`Overend, Kara, and Rasmussen
`(Ex. 1006)3
`
`§ 102
`§ 103
`§ 103
`
`Pet. 12.
`
`II. ANALYSIS
`Whether the ’144 Patent Is a Covered Business Method Patent
`The Parties’ Positions
`1.
`A threshold question is whether the ’144 patent is a “covered business
`method patent,” as defined by the AIA.
`Petitioner states that the ’144 patent “generally recite[s] a method for
`transferring files from a ‘first device’ to a ‘second device’” that includes
`generic operations such as displaying, transferring, and receiving steps.
`Pet. 3–4. Petitioner argues that “[t]he claimed file transfer method supports
`financial service-related business models such as that of the ‘International
`Postal Service business model’” wherein service users pay for the direct
`transfer of files from a sender (e.g., the claimed “first device”) to a recipient
`(e.g., the claimed “second device”) using a credit system. Id. at 4 (citing
`
`
`1 U.S. Patent No. 5,379,340, issued Jan. 3, 1995.
`2 WO 98/11716, published Mar. 19, 1998.
`3 U.S. Patent No. 5,373,149, issued Dec. 13, 1994.
`6
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`CBM2015-00174
`Patent 7,810,144 B2
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`Ex. 1001, 34:60–64, 35:4–10). Petitioner contends that, according to the
`Specification of the ’144 patent, a sending device has a number of purchased
`credits, and the credit system charges a credit for each successful file
`transfer. When the sending device runs out of credits, no files may be
`transferred until additional credits are purchased, which can be done using
`the file transfer method disclosed in the ’144 patent by transmitting a credit
`card number or bank account information to an authorizing computer
`system. Id. at 4–5 (citing Ex. 1001, 30:27–29, 30:35–41, 30:66–31:11,
`31:67–32:2). Thus, Petitioner argues that the claims of the ’144 patent
`concern transmitting files in support of a financial credit system,
`including (1) transmitting credit card numbers or business
`account numbers using the claimed file transfer method and (2)
`charging credits purchased using such credit card numbers or
`business account numbers for transmitting files and preventing
`file transfers if a user runs out of purchased credits. Each of these
`activities is financial in nature, incidental to a financial activity
`or complementary to a financial activity.
`Id. at 7–8.
`
`Petitioner also contends that statements made during the prosecution
`of U.S. Patent Application No. 10/167,697 (“the ’697 application”), a related
`family member of the ’144 patent, are consistent with the characterization of
`the ’144 patent as a system directed to managing data delivery in a financial
`product or service related to purchased credits. Id. at 5–6 (referring to
`statements regarding a fee being charged for delivery of requested files and
`sending credit requests).
`
`Patent Owner argues that the claims of the ’144 patent are directed to
`“technologies common in business environments that have no particular
`relation to the financial services sector,” which can be used by anyone, in
`any industry, to communicate data from one device to another. Prelim.
`
`7
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`CBM2015-00174
`Patent 7,810,144 B2
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`
`Resp. 10–11. Patent Owner further argues that Petitioner has not
`“explain[ed] how any claim limitation recites a financial operation or is even
`remotely related to any financial operation,” and, therefore, has failed to
`show that the ’144 patent claims a method for performing data processing
`used in the practice, administration, or management of a financial product or
`service. Id. at 13.
`Patent Owner also contends that the one example in the Specification
`of the ’144 patent wherein the operator of the file transfer system charges
`credits for use of the system, and account information used to purchase
`credits can be transferred by the file transfer system itself, does not convert
`the ’144 patent into a covered business method patent. Id. at 17. According
`to Patent Owner, Petitioner’s interpretation “would cover almost every data
`communications invention ever made, because the usage of virtually every
`data communications device, just like virtually every service, can be paid for
`using money and virtually every such device can be used to transmit
`financial information.” Id. at 18. Patent Owner offers the telephone,
`telegraph, and a cable modem as specific examples, arguing that these are all
`data communications devices, and that patents describing how these devices
`work would not become CBM patents simply because the specification says
`that a customer can be charged money for using them or could add money to
`an account for using the devices by placing a telephone call, sending a
`telegram, or sending a message through the cable modem to a bank. Id. at
`18–19.
`Patent Owner further argues that the file history of the ’697
`application fails to establish that the ’144 patent is a covered business
`method patent. Id. at 21–23. Patent Owner notes that the applicant in the
`
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`Patent 7,810,144 B2
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`’697 application was attempting to obtain claims that were distinct from
`those in the ’144 patent, and, therefore, the arguments during prosecution of
`the ’697 application are not pertinent to the question of what the ’144 patent
`claims. Id. at 21. Specifically, Patent Owner points out that the claims in
`the ’697 application included a limitation that expressly recites “debiting a
`credit account,” whereas the claims in the ’144 patent do not. Id. at 22.
`For the reasons explained below, we conclude that the ’144 patent is
`not a “covered business method patent.”
`Analysis
`2.
`Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional
`proceeding only for a patent that is a CBM patent. Section 18(d)(1) of the
`AIA defines the term “covered business method patent” to mean “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.”
`For purposes of determining whether a patent is eligible for a covered
`business method patent review, the focus is on what the patent claims. See
`37 C.F.R. § 42.301(a), definition of CBM patent; see also 77 Fed. Reg.
`48,734, 48,736 (Aug. 14, 2012), Response to Comments on Notice of
`Proposed Rulemaking, response to comment 8. A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. at 48,736.
`
`9
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`CBM2015-00174
`Patent 7,810,144 B2
`
`
`
`In promulgating rules for CBM patent review, the Office considered
`the legislative intent and history behind the AIA’s definition of “covered
`business method patent.” See 37 C.F.R. § 42.301(a), definition of CBM
`patent; see also 77 Fed. Reg. at 48,736, Response to Comments on Notice of
`Proposed Rulemaking, responses to comments 3 and 5. The “legislative
`history explains that that definition of covered business method patent was
`drafted to encompass patents claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.”
`See 157 Cong. Reg. S5432 (daily ed. Sept 8, 2011) (statement of Sen.
`Schumer) and 77 Fed. Reg. at 48,735 (quoting 157 Cong. Rec. S5432).
`To that end, Petitioner does not explain adequately, and we are unable
`to discern, how any of the independent or dependent claims of the ’144
`patent recite a method or apparatus “for performing data processing or other
`operations used in the practice, administration, or management of a
`financial product or service.” On their face, the claims of the ’144 patent
`are directed to a general method or corresponding apparatus for transferring
`files from a first device to a second device, and we are unable to identify
`specifically any claim terms that could be considered “financial in nature.”
`In view of this, we agree with Patent Owner that the claims, at least facially,
`relate to “technologies common in business environments that have no
`particular relation to the financial services sector.” Prelim. Resp. 10.
`Petitioner relies on the description in the Specification of the ’144
`patent, as well as the prosecution history of the ’697 application, regarding
`the International Postal Service business model and the associated crediting
`system to support its argument that the ’144 patent is a CBM patent.
`Petitioner, however, fails to address how this disclosure is related to, or
`
`10
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`CBM2015-00174
`Patent 7,810,144 B2
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`meaningfully informs our analysis of, the language of the claims.
`Specifically, Petitioner does not direct us to any claims or claim limitations
`that require users to pay for the transfer of files from a sender to a recipient,
`or any claims that require the use of the crediting system disclosed in the
`Specification.
`We recognize that some panels of this Board have imparted
`“financial” status to otherwise “generic” claims where the Specification has
`unequivocally shown that the invention is directed to something “financial in
`nature.” See, e.g., Motorola Mobility LLC v. Intellectual Ventures I LLC,
`CBM2015-00005, Paper No. 10 at 7 (PTAB March 27, 2015) (noting that
`the Specification expressly refers to “financial planning and portfolio
`management” and filing tax returns); Informatica Corp. v. Protegrity Corp.,
`CBM2015-00010, Paper No. 13 at 11 (PTAB May 11, 2015) (noting that the
`Specification expressly refers to “the field of banking”). Other panels of this
`Board, however, have not imparted “financial” status to claims that have a
`general utility when neither the claims nor Specification establish that the
`claimed invention is directed to something “financial in nature.” See, e.g.,
`Google Inc. v. SimpleAir, Inc., CBM2015-00019, Paper No. 11 at 11–13
`(PTAB May 19, 2014) (“Petitioner . . . does not explain any relationship
`between the cited portions of the Specification [referring to “stock quotes”
`or “lotto”] and the specific language of claim 1.”); J.P. Morgan Chase &
`Co. v. Intellectual Ventures II LLC, CBM2014-00160, Paper No. 11 at 11
`(PTAB January 29, 2015) (stating that claims pertaining to secure electronic
`communications had “general utility not limited or specific to any
`application” and “cover various types of transactions separate from financial
`transactions”).
`
`11
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`CBM2015-00174
`Patent 7,810,144 B2
`
`
`
`Here, we observe that the International Postal Service business model
`and the associated crediting system appear to be described in only one
`discrete portion of the Specification, again, with no clear ties to specific
`claim language, and that the ’144 patent as a whole is directed to an area of
`general utility. Additionally, the Specification’s description of transmission
`of credit card information or an account number according to the file transfer
`method recited in the claims of the ’144 patent is not itself a financial
`transaction, but rather constitutes only a minor portion of the non-limiting
`examples of the type of information that can be transferred according to the
`claimed method and apparatus. Again, none of the claims recite expressly
`credit card information or an account number. This exemplary type of file
`transfer described in the Specification does not change the fact that the
`relevant claims and claim limitations have general utility, and are not
`expressly limited to any specific application, financial or otherwise.
`In view of this, Petitioner’s contentions based on the Specification do
`not show how the ’144 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” or claims
`“activities that are financial in nature, incidental to a financial activity or
`complementary to a financial activity.”
`Additionally, we are not persuaded by Petitioner’s arguments
`regarding statements made during the prosecution of the ’697 application, as
`these arguments fail to address the claims of the ’144 patent, which is the
`focus of our inquiry.
`
`12
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`CBM2015-00174
`Patent 7,810,144 B2
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, based on the present record and particular
`facts of this case, we determine that the information presented in the Petition
`does not establish that the ’144 patent qualifies as a covered business
`method patent under § 18 of the AIA. Petitioner, therefore, has failed to
`satisfy the eligibility requirements for a covered business method patent
`review under § 18.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`
`
`13
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`CBM2015-00174
`Patent 7,810,144 B2
`
`
`
`PETITIONER:
`Naveen Modi
`Daniel Zeilberger
`Joseph Palys
`MotorolaMobility-IV-CBM@paulhastings.com
`
`
`
`
`
`PATENT OWNER:
`
`Brenton R. Babcock
`2brb@knobbe.com
`
`Ted M. Cannon
`2tmc@knobbe.com
`
`Bridget A. Smith
`2bzs@knobbe.com
`
`Tim R. Seeley
`tim@intven.com
`
`James R. Hietala
`jhietala@intven.com
`
`BoxPGL30@knobbe.com
`
`14
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