Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: April 20, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
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`
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`CBM2015-00174
`Patent 7,810,144 B2
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`I.
`INTRODUCTION
`Petitioner Motorola Mobility LLC filed a Request for Rehearing of
`our Decision (Paper 8, “Dec.”) denying institution of 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”). Paper 9 (“Req.
`Reh’g”). In our Decision, we determined 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 Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Dec. 13.
`For the reasons that follow, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id. Upon a request for rehearing, the
`decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`III. DISCUSSION
` CBM Standing
`1.
`Petitioner contends that in our Decision, we “declined to look to
`features in the specification of the ’144 patent in determining whether the
`claims are directed 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’ under AIA § 18(d)(1),” and
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`that we “misapprehended or overlooked that the features in the specification
`relied on by Petitioner explain that the claimed methods are ‘used in the
`practice, administration, or management of a financial product or service,’
`and that the intended scope of CBM review includes such claims.” Req.
`Reh’g 2. Petitioner cites to pages 2–8 of the Petition in support of its
`contentions, which contain Petitioner’s entire argument that the ’144 patent
`qualifies as a CBM. See id. at 2–4; Pet. 2–8. Thus, it appears that Petitioner
`contends that the Board misapprehended or overlooked Petitioner’s
`argument that the Specification of the ’144 patent “makes clear that the
`claimed file transfer method supports the practice, administration, and
`management of a financial product or service, in particular, a financial credit
`system.” Req. Reh’g 3.
`We are unpersuaded that we overlooked or misapprehended
`Petitioner’s argument. To the contrary, as stated explicitly at pages 6–7 of
`our Decision, we acknowledged expressly Petitioner’s arguments on pages
`2–8 of the Petition, and, in evaluating those arguments, determined that
`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.”
`Id. at 12. In any case, we have reconsidered Petitioner’s arguments anew,
`but, nevertheless, determine that our previous analysis of and disagreement
`with Petitioner’s argument, as articulated on pages 10–13 of the Decision, is
`still correct.
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`Specifically, we are unpersuaded that we “declined to look to features
`in the specification” (Req. Reh’g 2) or “refus[ed] to look to the specification
`of the ’144 patent” (id. at 14) in determining that the information presented
`in the Petition does not establish that the ’144 patent qualifies as a CBM. As
`an initial matter, we note that in the Petition, Petitioner identified certain
`disclosures in the ’144 patent discussing the International Postal Service
`business model, including the use of a crediting system in that business
`model (Pet. 4), but that the Petition did not identify further the majority of
`the citations or arguments,1 for example, in the paragraph spanning pages 4–
`6 of the Rehearing Request. Nevertheless, it is unnecessary to parse which
`portions of the ’144 patent were cited in the Petition, as the Board, in
`actuality, considered the entire Specification of the ’144 patent (including
`those portions cited for the first time in the Rehearing Request) despite the
`fact that Petitioner directed us to only a small portion of the Specification in
`support of its position that the ’144 patent is a CBM. See Pet. 3–5. To that
`end, we note that Petitioner did cite what we would also characterize as the
`strongest evidence that the ’144 patent is a covered business method patent.
`We just disagree, for the reasons set forth on pages 10–13 of the Decision,
`that those citations are as intertwined throughout the ’144 patent to the
`degree advocated for by Petitioner. Specifically, we note that the citations
`outside of the International Postal Service business model section are, as
`noted on page 12 of the Decision, sparse, non-limiting, and only used as
`
`
`1 Petitioner does not identify where the statements such as “the specification
`of the ’144 patent only contemplates systems that include the financial credit
`system” and “the ’144 patent does not contemplate the claimed file transfer
`method being implemented without a financial credit system” appear in the
`Petition. See 37 C.F.R. 42.71(d).
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`exemplary substitutes for otherwise generic data, with no indication of any
`special treatment for any data that is allegedly financial in nature.
`Moreover, given that the claims are one step removed from the
`Specification, the fact that Petitioner’s disagreement appears to be with the
`characterization of certain portions of the Specification underscores even
`more the lack of a sufficient relationship between the claims and “finance.”
`Relatedly, Petitioner asserts that the Board misapprehended or
`overlooked the above-identified portions of the ’144 patent in stating, on
`page 12 of the Decision, that “the International Postal Service business
`model and the associated crediting system appear to be described in only one
`discrete portion of the Specification . . . with no clear ties to specific claim
`language.” Our analysis here is the same as set forth supra, and we note
`further that the Petition itself states that “[w]ithin the International Postal
`Service business model, the claimed file transfer method supports the ‘credit
`system [that] controls the number of transmissions a specific sending PC
`may send.’” Pet. 4 (emphasis added).
`Petitioner also argues that our analysis is inconsistent with past Board
`decisions finding patents to be CBM patents, and refers to the discussion of
`other cases in the Decision as being “incorrect.” Req. Reh’g. 9–12.
`Generally, we note that the decisions to which Petitioner cites are not
`precedential and are not binding on this panel. Furthermore, we disagree
`that our Decision is inconsistent and incorrect. Our review of the allegedly
`conflicting decisions reveals that the determination of whether a patent is a
`CBM is a highly fact dependent inquiry. See, e.g., Motorola Mobility LLC v.
`Intellectual Ventures I LLC, CBM2015-00005, slip. op. at 7–8 (Mar. 27,
`2015) (Paper 10); Informatica Corp. v. Protegrity Corp., CBM2015-00010,
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`slip. op. at 11 (May 11, 2015) (Paper 13); Google Inc. v. SimpleAir, Inc.,
`CBM2014-00170, slip. op. at 6 (Jan. 22, 2015) (Paper No. 13). As discussed
`in the Decision, we determined, based upon the specific facts of this case,
`that the ’144 patent is not a CBM. Dec. 12.
`We, thus, are not persuaded that we abused our discretion in
`determining 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.
`2. Expanded Panel Request
`Patent Owner requests that an expanded panel that includes the Chief
`Judge consider this Request for Rehearing because
`(1)
`the proceeding “involves an
`issue of exceptional
`importance,” and (2) “[c]onsideration by an expanded panel is
`necessary to secure and maintain uniformity of the Board’s
`decisions, such as where different panels of the Board render
`conflicting decisions on issues of statutory interpretation . . . , or
`a substantial difference of opinion among judges exists on issues
`of statutory interpretation.” Standard Operating Procedure 1,
`Rev. 14, Section III.A.
`Req. Reh’g. 13.
`Discretion to expand a panel rests with the Chief Judge, who, on
`behalf of the Director, may act to expand a panel on a suggestion from a
`judge or panel. AOL Inc. v. Coho Sicensing LLC, Case IPR2014-00771, slip
`op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (informative). The Chief Judge
`was informed of Patent Owner’s request, and the Chief Judge declined to
`expand the panel.
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`CBM2015-00174
`Patent 7,810,144 B2
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`IV. ORDER
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`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
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`CBM2015-00174
`Patent 7,810,144 B2
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`
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`PETITIONER:
`Naveen Modi
`Joseph Palys
`Daniel Zeilberger
`PAUL HASTINGS LLP
`MotorolaMobility-IV-CBM@paulhastings.com
`
`
`
`
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`PATENT OWNER:
`
`Brenton R. Babcock
`Ted M. Cannon
`Bridget A. Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`2bzs@knobbe.com
`BoxPGL30@knobbe.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
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