Filed: August 20, 2015
`
`
`Filed on behalf of Shoutpoint, Inc. and Victory Solutions, LLC
`By: Michelle E. Armond
`
`Brenton R. Babcock
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: BoxSHOUTVS@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`SHOUTPOINT, INC. and VICTORY SOLUTIONS, LLC
`Petitioners
`
`v.
`
`BROADNET TELESERVICES, LLC
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. TBD
`U.S. Patent No. 9,081,485
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`Filed on behalf of Shoutpoint, Inc. and Victory Solutions, LLC
`By: Michelle E. Armond
`
`Brenton R. Babcock
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: BoxSHOUTVS@knobbe.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`SHOUTPOINT, INC. and VICTORY SOLUTIONS, LLC
`Petitioners
`
`v.
`
`BROADNET TELESERVICES, LLC
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. TBD
`U.S. Patent No. 9,081,485
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES PURSUANT TO C.F.R. § 42.8(A)(1) .............. 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................. 2
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 3
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........................... 3
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ..................................... 4
`
`III. PAYMENT OF FEES ................................................................................... 4
`
`IV. REQUIREMENTS FOR CBM REVIEW UNDER 37 C.F.R.
`§ 42.304 ......................................................................................................... 5
`
`A. Grounds for Standing (37 C.F.R. § 42.304(a)) ................................... 5
`
`1.
`
`2.
`
`Eligibility Requirements of 37 C.F.R. § 42.302 ....................... 5
`
`Timing Requirements of 37 C.F.R. § 42.303 ........................... 5
`
`B.
`
`The ’485 Patent is a Covered Business Method Patent ...................... 6
`
`1.
`
`The ’485 Patent Is Directed To Financial Activities
`In the Telecommunications Industry ........................................ 6
`
`a.
`
`b.
`
`The ’485 Patent Is Directed to Political
`Fundraising Activities ..................................................... 8
`
`The ’485 Patent Claims Recite Screening
`Participants During a Telephone Meeting
`Based On Their Financial Contributions ...................... 11
`
`2.
`
`The Challenged Claims Are Not Directed To A
`“Technological Invention” ...................................................... 17
`
`-i-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`a.
`
`b.
`
`The Challenged Claims Do Not Recite a
`Technological Feature That is Novel and
`Nonobvious Over the Prior Art .................................... 18
`
`The ’485 Patent Does Not Solve a Technical
`Problem Using a Technical Solution ............................ 21
`
`C.
`
`D.
`
`E.
`
`Claims and Statutory Grounds
`(37 C.F.R. § 42.304(b)(1) & (b)(2)) .................................................. 23
`
`Claim Construction (37 C.F.R. § 42.304(b)(3)) ................................ 23
`
`Unpatentability of Construed Claims
`(37 C.F.R. § 42.304(b)(4)) ................................................................ 23
`
`F.
`
`Supporting Evidence (37 C.F.R. § 42.304(b)(5)).............................. 23
`
`V.
`
`THERE IS MORE THAN A REASONABLE LIKELIHOOD
`THAT THE CHALLENGED CLAIMS OF THE ’485 PATENT
`ARE UNPATENTABLE ............................................................................. 24
`
`A. Overview of the ’485 Patent .............................................................. 25
`
`1.
`
`Claim 1 .................................................................................... 26
`
`B.
`
`C.
`
`D.
`
`Summary of the Prosecution History of the ’485 Patent .................. 27
`
`Level of Ordinary Skill in the Art ..................................................... 28
`
`Claim Construction ........................................................................... 29
`
`1.
`
`2.
`
`3.
`
`“full-duplex” ........................................................................... 30
`
`“multi-mode conference” ........................................................ 31
`
`“voice response units (VRUs)” ............................................... 32
`
`-ii-
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`E.
`
`Ground 1: The ’485 Patent Is Unpatentable Under 35
`U.S.C. § 101 ...................................................................................... 35
`
`1.
`
`Alice Step One: The Claims Cover an Abstract Idea .............. 36
`
`a.
`
`b.
`
`c.
`
`The Claims of The ’485 Patent Are Directed
`To The Abstract Idea of Screening Questions
`During A Telephone Meeting ....................................... 38
`
`The Abstract Idea of the ’485 Patent Is
`Demonstrated By the Fact That It Can Be
`Performed By Human Beings ....................................... 41
`
`The ’485 Patent Preempts Long-Practiced
`Ideas in the Telecommunications Industry ................... 43
`
`2.
`
`Alice Step Two: The ’485 Patent Provides No
`Additional Inventive Concept ................................................. 47
`
`a.
`
`b.
`
`There Are No Inventive Concepts In The ’485
`Patent ............................................................................ 47
`
`The ’485 Patent Recites Only Conventional
`Computers and Telecommunications
`Equipment ..................................................................... 49
`
`3.
`
`The Remaining Challenged Claims Are Not Patent-
`Eligible .................................................................................... 54
`
`VI. CONCLUSION ............................................................................................ 68
`
`-iii-
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Adams v. Frontier Broad. Co.,
`555 P.2d 556 (Wyo. 1976) ............................................................................ 45, 46
`
`Adv. Fiber Techs. v. J & L Fiber Servs.,
`674 F.3d 1365 (Fed. Cir. 2012) .......................................................................... 33
`
`Agilysys, Inc. v. Ameranth, Inc.,
`CBM2014-00014, 2014 WL 1440414 (P.T.A.B. Mar. 26, 2014) ................ 18, 21
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .................................................................................passim
`
`AmDocs (Israel) Ltd. v. Openet Telecom, Inc.,
`56 F. Supp. 3d 813 (E.D. Va. 2014) ................................................................... 51
`
`Apple, Inc. v. Ameranth, Inc.,
`CBM2014-0013, 2015 WL 1324399
`(P.T.A.B. Mar. 20, 2015) ........................................................................ 40, 50, 51
`
`Apple Inc. v. SightSound Techs., LLC,
`CBM2013-00020, Paper 14 (P.T.A.B. Oct. 8, 2013) ........................................... 6
`
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`133 S. Ct. 2107 (2013) ................................................................................... 35
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) .....................................................................................passim
`
`Bloomberg Inc. v. Markets-Alert PTY Ltd.,
`CBM2013-00005, Paper 18 (P.T.A.B. Mar. 29, 2013) ...................................... 19
`
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) ...................................................................passim
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank,
`776 F.3d 1343 (Fed. Cir. 2014) ...................................................................passim
`
`-iv-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`CRS Advanced Techs., Inc. v. Frontline Techs., Inc.,
`CBM2012-00005, Paper 17 (P.T.A.B. Jan. 23, 2013) ............................... 6, 7, 19
`
`In re Cuozzo Speed Techs.,
`No. 2014-1301, 2015 WL 4097949 (Fed. Cir. July 8, 2015) ............................. 29
`
`DietGoal Innovations v. Bravo Media LLC,
`33 F. Supp. 3d 271 (S.D.N.Y. 2014) ............................................................ 20, 51
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972) ......................................................................................... 36
`
`Intellectual Ventures I LLC v. Capital One Bank,
`___ F.3d ____, No. 2014-1506, 2015 WL 4068798
`(Fed. Cir. July 6, 2015) ....................................................................................... 37
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-0002, Paper 66 (P.T.A.B. Jan. 23, 2014) ......................................... 12
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) .................................................................................passim
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .............................................................. 32, 33, 34
`
`Planet Bingo, LLC v. VKGS LLC,
`576 F. App’x 1005 (Fed. Cir. 2014) ....................................................... 41, 42, 66
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) .....................................................................passim
`
`Versata Dev. Grp. v. SAP America, Inc.,
`___ F.3d ____, No. 2014-1194, 2015 WL 4113722
`(Fed. Cir. July 9, 2015) ................................................................................... 7, 29
`
`Walker Digital, LLC v. Google, Inc.,
`66 F. Supp. 3d 501 (D. Del. 2014) ...................................................................... 51
`-v-
`
`
`
`TABLE OF AUTHORITIES
`(cont’d)
`
`Page No(s).
`
`OTHER AUTHORITIES
`35 U.S.C. § 101 .................................................................................................passim
`
`157 CONG. REC. S1364–65 (daily ed. Mar. 8, 2011) ................................................. 7
`
`Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered
`Business Method Patents; Final Rule, 77 Fed. Reg. 48,680
`(Aug. 14, 2012) ............................................................................................ 5, 7
`
`Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and
`Technological Invention; Final Rule, 77 Fed. Reg. 48,734
`(Aug. 14, 2012) ........................................................................................ 11, 12
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756
`(Aug. 14, 2012) ............................................................................ 18, 19, 20, 29
`
`
`
`-vi-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`TABLE OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 9,081,485 (“the ’485 Patent”)
`
`File History for U.S. Patent No. 9,081,485
`
`Declaration of Professor Nader Bagherzadeh, Ph.D.
`
`Excerpts from Report and Recommendation of Claim
`Construction Master [Dkt. 89] in
`Broadnet Teleservices, LLC vs. Shoutpoint, Inc. and Victory
`Solutions, LLC, No. 1:12-cv-02921 (D. Colo.)
`
`Order on Claim Construction [Dkt. 97] in
`Broadnet Teleservices, LLC vs. Shoutpoint, Inc. and Victory
`Solutions, LLC, No. 1:12-cv-02921 (D. Colo.)
`
`File History for U.S. Patent No. 8,266,535
`
`Steven E. Clayman, Arenas of interaction in the mediated
`public sphere, POETICS Vol. 32, No. 1, pp. 29-49 (2004)
`
`RICHARD DAVIS & DIANA OWEN, NEW MEDIA AND AMERICAN
`POLITICS (1998)
`
`Amitai Etzioni, Minerva: An Electronic Town Hall, POLICY
`SCIENCES, Vol. 3, pp. 457-474 (1972)
`
`Richard Frankel et al., An Empirical Examination of
`Conference Calls as a Voluntary Disclosure Medium, J. OF
`ACCOUNTING RESEARCH, Vol. 37, No. 1, pp. 133-150 (1999)
`
`James Katz et al., Public attitudes toward voice-based
`electronic messaging technologies in the United States: A
`national survey of opinions about voice response units and
`telephone answering machines, BEHAVIOUR & INFORMATION
`TECHNOLOGY, Vol. 16, No. 3, pp. 125-144 (1997)
`
`1012
`
`NEWTON’S TELECOM DICTIONARY (27TH ED. 2013)
`
`Table of Exhibits, Page 1
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`
`Exhibit No.
`
`Description
`(annotated)
`
`1013
`
`1014
`
`1015
`
`Peter Grant & Gregory Zuckerman, Redialing the Internet
`Frenzy?, WALL ST. J., Nov. 13, 2013, C1, C3
`
`U.S. Patent No. 6,434,191 (Agrawal, et al.) (filed 9/1/2000)
`
`Excerpts from Amended Complaint (Dkt. 17) in
`Broadnet Teleservices, LLC vs. Shoutpoint, Inc. and Victory
`Solutions, LLC, No. 1:15-cv-940 (D. Colo.)
`
`Table of Exhibits, Page 2
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`Petitioners Shoutpoint, Inc. and Victory Solutions, LLC (collectively,
`
`“Shoutpoint” or “Petitioners”) request covered business method review of U.S.
`
`Patent No. 9,081,485 (“the ’485 Patent”), purportedly owned by Broadnet
`
`Teleservices, LLC (“Patent Owner”).
`
`I. INTRODUCTION
`
`A citizen walks into a meeting held by a political candidate at a local
`
`community hall. He sits in the back row and listens to the candidate speak to
`
`constituents and answer questions. The candidate solicits support, including
`
`financial contributions to his campaign. The citizen raises his hand to ask a
`
`question. He is taken aside by one of the candidate’s aides. In a hushed
`
`conversation, the citizen and aide introduce themselves and discuss the question
`
`for the candidate. After screening the question, the aide directs the citizen to stand
`
`in line at one of the microphones. After two others ask their own questions, it is
`
`the citizen’s turn. The citizen asks his question and the candidate responds. The
`
`citizen again takes his seat and the meeting continues.
`
`Political meetings have occurred since the founding of this country. Citizens
`
`have long gathered in local meeting halls to engage in dialogue with political
`
`candidates. Likewise, screening questions is well known. People have screened
`
`questions during meetings and media programs for decades. Thus, there is nothing
`
`patentable about the political meeting scenario described above. However, the
`
`-1-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`CBM patent at issue in this Petition purports to cover just such meetings with
`
`screened questions that are conducted over the telephone.
`
`
`
`In particular, the ’485 Patent describes and claims the abstract idea of a
`
`political or other telephone meeting where callers ask pre-screened questions. The
`
`patent claims are drafted in such broad and abstract terms that they cover patent-
`
`ineligible subject matter under 35 U.S.C. § 101. Indeed, all of the limitations of
`
`the ’485 Patent claims could be accomplished by people at a conventional meeting
`
`in a local meeting hall where participants’ questions are screened before allowing
`
`them to be asked in the meeting. As a result, the ’485 Patent would broadly
`
`foreclose any telephone meeting with pre-screened questions and shut down a
`
`broad range of teleconferencing services. The conventional software and
`
`telephone equipment recited in the patent do not add anything inventive to save the
`
`claims from ineligibility. Thus, the ’485 Patent is unpatentable under Section 101.
`
`II. MANDATORY NOTICES PURSUANT TO C.F.R. § 42.8(A)(1)
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), the mandatory notices identified in 37
`
`C.F.R. § 42.8(b) are provided below as part of this Petition.
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Shoutpoint, Inc. and Victory Solutions, LLC are the Petitioners and real
`
`parties-in-interest for this Petition for CBM review. Shoutpoint Inc. is a wholly
`
`owned subsidiary of NDS-SP Holdings, Inc.
`
`-2-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ’485 Patent and related U.S. Patent No. 8,881,027 (“the ’027 Patent”)
`
`are currently the subject of litigation in Broadnet Teleservices, LLC vs. Shoutpoint,
`
`Inc. and Victory Solutions, LLC, No. 1:15-cv-00940-CBS (D. Colo.) (“District
`
`Court Litigation”). Ex. 1015.
`
`Petitioners are filing a petition for CBM review of the ’027 Patent
`
`concurrently herewith.
`
`The ’485 Patent is a continuation of U.S. Patent No. 8,266,535, which is also
`
`currently the subject of litigation in in Broadnet Teleservices, LLC vs. Shoutpoint,
`
`Inc. and Victory Solutions, LLC, No. 1:12-cv-02921-CMA-KMT (D. Colo.)
`
`(“District Court ’535 Patent Litigation”). The two Colorado district court cases
`
`have been consolidated.
`
`Patent applications claiming priority to the ’535 Patent are currently pending
`
`before the PTO. E.g., U.S. Patent App. No. 13/298,903.
`
`C. Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Petitioners provide the following designation of counsel:
`
`Lead Counsel
`Michelle E. Armond (Reg. No. 53,954)
`
`Back-up Counsel
`Brenton R. Babcock (Reg. No. 39,592)
`
`2mea@knobbe.com
`
`2brb@knobbe.com
`
`BoxSHOUTVS@knobbe.com
`
`Edward M. Cannon (Reg. No. 55,036)
`
`-3-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`Lead Counsel
`
`
`
`Back-up Counsel
`2tmc@knobbe.com
`
`Postal and Hand-Delivery Address:
`
`Postal and Hand-Delivery Address:
`
`Knobbe, Martens, Olson & Bear, LLP
`
`Knobbe, Martens, Olson & Bear, LLP
`
`2040 Main Street, 14th Floor
`
`2040 Main Street, 14th Floor
`
`Irvine, CA 92614
`
`Irvine, CA 92614
`
`Telephone: (949) 760-0404
`
`Telephone: (949) 760-0404
`
`Facsimile: (949) 760-9502
`
`Facsimile: (949) 760-9502
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`
`
`Petition. The above identified Lead and Back-up Counsel are registered
`
`practitioners associated with Customer No. 20,995 listed in the Power of Attorney.
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Petitioners hereby consent to
`
`service by email at the following email address: BoxSHOUTVS@knobbe.com.
`
`III. PAYMENT OF FEES
`
`The fee set forth in 37 C.F.R. § 42.15(b) for this Petition has been paid:
`
`$45,550 ($12,000 request fee; $18,000 post-institution fee; $4,000 fee for
`
`requesting review of 36 claims; $11,550 post-institution for requesting review of
`
`36 claims). The undersigned further authorizes payment for any additional fees
`
`-4-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`that might be due in connection with this Petition to be charged to Deposit Account
`
`No. 11-1410.
`
`IV. REQUIREMENTS FOR CBM REVIEW UNDER
`37 C.F.R. § 42.304
`
`A. Grounds for Standing (37 C.F.R. § 42.304(a)
`
`Pursuant to 37 C.F.R. § 42.304(a), the ’485 Patent is eligible for CBM
`
`Review because Petitioners meet the eligibility requirements of 37 C.F.R. § 42.302
`
`and the ’485 Patent is a covered business method patent.
`
`1.
`
`Eligibility Requirements of 37 C.F.R. § 42.302
`
`Petitioners Shoutpoint, Inc. and Victory Solutions, LLC have been sued for
`
`infringement of the ’485 Patent in the District Court Litigation, Ex. 1015, and thus
`
`Petitioners meet the requirements of AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a).
`
`Petitioners are not estopped from challenging the ’485 Patent on the grounds
`
`identified in 37 C.F.R. § 42.302(b).
`
`2.
`
`Timing Requirements of 37 C.F.R. § 42.303
`
`The ’485 Patent has a filing date before March 16, 2013 and is therefore not
`
`a “first-to-file” patent eligible for post-grant review. CBM review “is available for
`
`non-first-to-file patents, even within the first nine months of the grant of such
`
`patents.” Changes to Implement Inter Partes Review Proceedings, Post-Grant
`
`Review Proceedings, and Transitional Program for Covered Business Method
`
`Patents; Final Rule, 77 Fed. Reg. 48,680, 48,709 (Aug. 14, 2012). As such, a
`
`-5-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`petition requesting CBM Review of the ’485 Patent may be filed at any time, per
`
`37 C.F.R. § 42.303.
`
`B.
`
`The ’485 Patent is a Covered Business Method Patent
`
`The America Invents Act (“AIA”) and PTO rules define a “covered business
`
`method patent” as “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). The AIA defines a two-part test to determine whether a patent is
`
`eligible for CBM Review: (1) the patent must claim 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) the
`
`claimed invention must not be a “technological invention[].” Id. The claimed
`
`invention of the ’485 Patent satisfies both parts of the test.
`
`1.
`
`The ’485 Patent Is Directed To Financial Activities In the
`Telecommunications Industry
`
`The Board has explained that the phrase “‘financial product or service’
`
`should be interpreted broadly.” Apple Inc. v. SightSound Techs., LLC, CBM2013-
`
`00020, Paper 14 at 11 (P.T.A.B. Oct. 8, 2013). It includes within its scope patents
`
`that claim “activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.’” CRS Advanced Techs., Inc. v. Frontline
`
`-6-
`
`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`Techs., Inc., CBM2012-00005, Paper 17 at 7 (P.T.A.B. Jan. 23, 2013) (quoting 77
`
`Fed. Reg. 48,735 (Aug. 14, 2012)). The Federal Circuit has held that the definition
`
`of CBM patents “covers a wide range of finance-related activities” and “is not
`
`limited to products and services of only the financial industry, or to patents owned
`
`by or directly affecting the activities of financial institutions.” Versata Dev. Grp.
`
`v. SAP America, Inc., ___ F.3d ____, No. 2014-1194, 2015 WL 4113722, at *16
`
`(Fed. Cir. July 9, 2015).
`
`Patents are eligible for CBM Review if they cover “any ancillary activities
`
`related to a financial product or service, including . . . marketing, customer
`
`interfaces, Web site management and functionality, transmission or management of
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`data, servicing, underwriting, customer communications, and back office
`
`operations-e.g., payment processing, stock clearing.” 157 CONG. REC. S1364–65
`
`(daily ed. Mar. 8, 2011) (statement of Sen. Schumer). Indeed, the Board has
`
`previously recognized that “[n]othing in the statute, its legislative history, or the
`
`rules requires that a covered business method patent include claim elements that
`
`map directly to financial products or services.” CRS Advanced Techs., CBM2012-
`
`00005, Paper 17 at 8; see also, e.g., Versata, 2015 WL 4113722, at *16 (CBM
`
`patents are “not limited to products and services of only the financial industry”).
`
`Here, the claims and specification of the ’485 Patent show that the patent is
`
`directed to the financial activity of raising money for political campaigns during
`
`-7-
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`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`telephone meetings where constituents and political donors may ask questions.
`
`Individuals participate in telephone meetings where they can listen to political
`
`candidates speak, ask questions, and easily make campaign contributions. The
`
`patent describes a computer graphical user interface where campaign contributions
`
`are tracked, and participants are screened and selected to ask questions based on
`
`their campaign contributions. Political fundraising is thus a key component of the
`
`’485 Patent. This is quintessential financial activity.
`
`a.
`
`The ’485 Patent Is Directed to Political Fundraising
`Activities
`
`The ’485 Patent is explicit that the purported invention is directed to the
`
`financial activity of political fundraising. Political candidates want to raise money
`
`through campaign contributions. Individuals want to become familiar with
`
`political candidates and donate money to their campaigns. The ’485 Patent
`
`attempts to make it easier for political candidates to interact with potential donors
`
`and raise money from campaign contributions by conducting political meetings
`
`over the telephone.
`
`The Abstract of invention on the first page of the ’485 Patent touts that
`
`participants may actively participate in the telephone meeting by “speaking to the
`
`teleforum, asking a question, responding to a poll, making a donation, providing
`
`information . . . .” Ex. 1001 (’485 Patent), Abstract (emphasis added). The patent
`
`repeatedly emphasizes that active participation by callers includes making
`
`-8-
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`
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`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`monetary donations. See, e.g., id. at Col. 2:33-36 (“Active participation may
`
`include . . . making a donation . . . .” (emphasis added)); id. at 5:54-59 (“Active
`
`participation as defined herein includes . . . making a donation . . . .” (emphasis
`
`added)).
`
`The ’485 Patent provides further details on accomplishing fundraising for
`
`campaign contributions. During the telephone meeting, “[t]he host, chairperson, or
`
`other authorized party may also solicit active participation” by “request[ing] that
`
`interested participants leave the teleforum momentarily to make donations.” Id. at
`
`Col. 9:42-46. “The participants who desire to actively participate in the request for
`
`donations are transferred to an operator or automated system configured to accept
`
`credit card information or to provide an address for the mailing of a donation by
`
`check.” Id. at 9:49-53 (emphases added).
`
`The ’485 Patent describes that a computer software interface for the
`
`telephone meeting displays various information about the participants, including
`
`their personal information and their “donation status.” Ex. 1001 (’485 Patent),
`
`Col. 2:41-42, 2:47-52 (“The information displayed on the interface may
`
`include . . . personal information concerning teleforum participants, the status of
`
`participants requesting active participation, poll results, donation status . . . .”
`
`(emphasis added)). The patent teaches that political contributions can be tracked in
`
`real time during the telephone meeting via a “CapitalCall™” view (user interface)
`
`-9-
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`
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`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`that can “enhance the effectiveness of the request for donations.” Id. at Col. 9:53-
`
`60. CapitalCall™ is depicted in Figure 4 (reproduced below and boxed in red) and
`
`tracks the financial contributions made during the telephone meeting:
`
`
`
`Id. at Fig. 4 (excerpted, annotations added). Figure 4 shows that the exemplary
`
`telephone meeting for “Candidate Johnson” has resulted in an Amount Donated
`
`“$890” by financial contributions from “Charles P Raleigh $140 [by] check,”
`
`“Frank Mushow $500” and “William H Wilde $250 [by credit card] CC.” Id.
`
`
`
`The ’485 Patent describes how the telephone meeting chairperson or host
`
`uses a computer graphical user interface during the telephone meeting (referred to
`
`as “live view 200”). Ex. 1001 (’485 Patent), Col. 7:49-52. The live view 200
`
`displays “the names, phone numbers and other relevant details” for all meeting
`
`participants. Id. at 7:54-56. These other details include “individual or household
`
`-10-
`
`
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`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`income,” “past campaign contributions,” and “donation history from this and
`
`previous teleforums.” Id. at 7:67-8:8. The host uses live view 200 “to select
`
`among the prescreened or unscreened teleforum participants, or to place them in an
`
`acceptable order for asking questions or other active participation.” Id. at 8:44-47.
`
`This interface allows the host to give preference to political donors to make
`
`comments or ask questions during the telephone meeting. Indeed, Figure 4 of the
`
`’485 Patent, shows campaign donor Charles P Raleigh asking a question during the
`
`telephone meeting ahead of other callers (who had been waiting much longer):
`
`
`
`Id. at Fig. 4 (excerpted, annotations added).
`
`b.
`
`The ’485 Patent Claims Recite Screening Participants
`During a Telephone Meeting Based On Their Financial
`Contributions
`
`“A patent having one or more claims directed to a covered business method
`
`is a covered business method patent for purposes of the review, even if the patent
`
`includes additional claims.” Transitional Program for Covered Business Method
`
`-11-
`
`
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`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`Patents—Definitions of Covered Business Method Patent and Technological
`
`Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012); see also
`
`Liberty Mutual Ins. v. Progressive Casualty Ins., CBM2012-0002, Paper 66 at 6
`
`(P.T.A.B. Jan. 23, 2014) (entire patent is eligible for CBM review where “the
`
`subject matter of at least one claim is directed to a covered business method.”).
`
`The ’485 Patent includes at least one such claim directed to a covered
`
`business method, in the form of representative dependent Claim 2. Claim 2
`
`depends from Claim 1. Claim 2 recites tracking political campaign contributions,
`
`screening participants based on their financial campaign contributions, and
`
`soliciting campaign contributions during the meeting. Both Claims 1 and 2 are
`
`reproduced below:
`
`1. A method of providing a multi-mode conference comprising:
`
`connecting a participant to the multi-mode conference in a
`listen-only mode;
`
`placing the participant into a queue for screening;
`
`bridging the queued participant into a full-duplex private
`screening sub-conference in response to the placing operation;
`
`receiving, via the full-duplex private screening sub-conference,
`one or both of the participant's identity and the participant’s
`contribution to the multi-mode conference; and
`
`-12-
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`
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`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`establishing a full-duplex connection between the participant
`and the multi-mode conference if the participant is authorized for
`active participation in the multi-mode conference based on one or
`both of the participant’s identity and the participant's contribution
`to the multi-mode conference.
`
`Ex. 1001 (’485 Patent), Col. 14:16-33 (Claim 1) (emphases added).
`
`2. The method of claim 1, further comprising:
`
`the participant requesting active
`from
`input
`receiving
`participation in the multi-mode conference; and
`
`placing the participant requesting active participation into the
`queue for screening, wherein the bridging operation is performed in
`response to the placing operation.
`
`Ex. 1001 (’485 Patent), Col. 14:34-39 (Claim 2) (emphasis added).
`
`Claim 2 simply recites the abstract idea of screening questions during a
`
`telephone meeting. See infra § V. E.1. This include political meetings. The
`
`callers to a telephone meeting, referred to as participants, are connected in listen-
`
`only mode until they are screened. Ex. 1001 (’485 Patent), Col. 14:18-23. The
`
`participants then are screened in a “full-duplex private screening sub-conference.”
`
`Id. at 14:24-25. Some participants then are selected to actively participate by the
`
`host based on their identity or “contribution” to the telephone meeting. Id. at
`
`14:28-33.
`
`-13-
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`
`
`Shoutpoint v. Broadnet
`CBM Petition – U.S. Patent No. 9,081,485
`Claim 2 shows that these telephone meetings are for the financial purpose of
`
`political fundraising activities. In other words, political candidates use these
`
`telephone meetings to solicit campaign contributions from active participants.
`
`Information about financial campaign contributions is obtained when callers are
`
`screened or can be used to determine who is allowed to ask questions during the
`
`meeting.
`
`First, dependent Claim 2 (and Claim 1 from which it depends) recounts
`
`receiving campaign contributions from meeting participants. After placing the
`
`participant into a “full-duplex private screening sub-conference,” it recites the step
`
`of “receiving . . . one or both of the participant’s identity and the participant’s
`
`contribution to the multi-mode conference.” Ex. 1001 (’485 Patent), Cols. 14:21-
`
`22, 14:24-26 (emphasis added).1 The ’485 Patent describes that participant’s
`
`“contribution” can be a campaign contribution. The only “contribution” recited in
`
`the ’485 Patent specification are “past campaign contributions.” Id. at Col. 8:2.
`
`This is also depicted in Fig. 4, which depicts participants’ financial campaign
`
`contributions during the meeting. See, e.g., id. at Fig. 4 (CapitalCall™ window).
`
`
`1 Independent Claims
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