Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 10
`Entered: May 4, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AT&T MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case CBM2015-00185
`Patent 5,339,352
`_______________
`
`Before GEORGIANNA W. BRADEN, FRANCIS L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 10
`Entered: May 4, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AT&T MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case CBM2015-00185
`Patent 5,339,352
`_______________
`
`Before GEORGIANNA W. BRADEN, FRANCIS L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`
`INTRODUCTION
`I.
`AT&T Mobility LLC (“Petitioner”) filed a Corrected Petition (Paper
`6, “Pet.”) to institute a covered business method patent review of claims 1, 2,
`5, and 9 of U.S. Patent No. 5,339,352 (Ex. 1001, “the ’352 patent”).
`Intellectual Ventures II LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324.
`Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered
`business method patent review unless the information in the petition, if
`unrebutted, “would demonstrate that it is more likely than not that at least 1
`of the claims challenged in the petition is unpatentable.” For reasons that
`follow, the information presented in the Petition does not establish that the
`ʼ352 patent qualifies as a covered business method patent for purposes of
`section 18(d)(1) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112–29, 125 Stat. 284, 331 (2011). Accordingly, we decline to institute
`a covered business method patent review of claims 1, 2, 5, and 9. See
`35 U.S.C. § 324(a).
`
`II.
`
`BACKGROUND
`
`A. Related Proceedings
`Petitioner informs us that the ’352 patent is the subject of district court
`case Intellectual Ventures II LLC v. AT&T Mobility LLC, No. 1:13-cv-01631
`(D. Del.). Pet. 2 (citing Ex. 1009); see Paper 5, 1 (Patent Owner’s
`Mandatory Notices).
`B. The ’352 Patent
`The ’352 patent discloses systems and methods for providing
`Directory Assistance Call Completion (“DACC”) services to cellular
`telephone users. Ex. 1001, Abst. One embodiment of the ’352 patent
`
`2
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`provides a system that implements a DACC service for cellular subscribers.
`Id. at 5:58–62. Figure 1, reproduced below, illustrates an exemplary
`architecture for such a system.
`
`
`
`
`As shown in Figure 1, above, wireless subscriber 11 communicates with
`mobile telephone switching office 17 via cell site antenna 13. Ex. 1001,
`6:12–18. The “mobile telephone switching office or ‘MTSO’ is owned and
`operated by the cellular carrier” and “provides a switched connection point
`between the network operated by the cellular carrier and the landline
`telephone network.” Id. at 1:41–44. The MTSO connects to switch 21 of an
`operator service system (OSS 20). Id. at 6:32–35. The OSS “functions as a
`directory assistance service system.” Id. at 6:38–39.
`Per the ’352 patent, any existing interconnection between MTSO 17
`and OSS 20 is replaced with “dedicated trunk 19.” Id. at 6:32–33. In one
`embodiment, dedicated trunk 19 uses Feature Group D signaling. Id. at
`6:32–35. Feature Group D is a type of switched access service signaling that
`“provide[s] customer access to alternate long distance interexchange carriers
`(IXC’s).” Id. at 7:36–39.
`
`3
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`Use of a dedicated trunk serves as a means for OSS 20 to identify the
`carrier and to determine whether the caller can use directory assistance. Id.
`at 3:21–24. The dedicated trunk has an “area code and exchange number”
`(referred to as the NPA-NXX). Id. at 8:33–35. The NPA-NXX of the
`dedicated trunk is also the NPA-NXX of the wireless switch, e.g., MTSO 17.
`Id. at 8:33–35. The trunk has a fixed location and the NPA-NXX of the
`dedicated trunk provides present location information for the calling wireless
`customer. Id. Therefore, OSS 20 can use the NPA-NXX of the dedicated
`trunk, rather than the received calling number (ANI), to check eligibility for
`directory assistance and calculate charges for call completion: “The
`operator service system will establish whether completion requests would
`meet the intra-LATA criteria using the area code and exchange data (NPA-
`NXX) of the dedicated trunk and the NPA-NXX area code and exchange
`data of the destination identified in the directory listing.” Ex. 1001, 9:45–
`50. LATA being the Local Access and Transport Area. Id. at 6:7–8.
`In other embodiments of the ’352 patent, modification to existing
`OSSs are necessary in order to implement the inventions of ’352 patent for
`data recording and billing purposes. Id. at 5:30–32. For example,
`“[e]xisting OSS switches are programmed to treat calls received on trunks
`using Feature Group D signaling as interexchange carrier calls and provide
`appropriate translations for routing and billing.” Id. at 12:35–38. But,
`according to the ’352 patent, this processing is not compatible with directory
`assistance call completion. Id. at 12:38–40. Therefore, OSS 20 is modified
`to bypass “the interexchange carrier translations for calls received over the
`dedicated trunk 19.” Id. at 12:49–51. Additionally, OSS 20 is modified to
`use the NPA-NXX of dedicated trunk 19 (and corresponding MTSO) during
`
`4
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`eligibility checking “to indicate the point of origin of the landline
`connection” (id. at 12:53–55) and “to calculate any distances needed to set
`call rates or toll charges for the landline connection” (id. at 13:10–13).
`C. Illustrative Claims
`As noted above, Petitioner challenges claims 1, 2, 5, and 9 of the ’352
`patent, of which claim 1 is the only independent claim. Claim 1 is
`illustrative of the challenged claims and is reproduced below:
`1. A method of providing a directory assistance call completion
`service to a wireless communication service subscriber
`comprising:
`receiving a request for directory assistance from a wireless
`communication
`terminal at a mobile communications
`switching office;
`forwarding data identifying the wireless communication terminal from
`the mobile communications switching office to an operator service
`system;
`establishing a landline communication link between the mobile
`communications switching office and the operator service system to
`provide
`two way communications between
`the wireless
`communication terminal and the operator service system;
`receiving information from the wireless communication terminal
`identifying a particular listing from a directory of listings;
`retrieving a destination number corresponding to the identified listing;
`receiving a request for completion of a communication link between
`the wireless communication terminal and a station identified by the
`destination number;
`establishing a landline communication link to provide a complete
`communication connection between the wireless communication
`terminal and the identified station; and
`recording the identity of the wireless communication terminal in the
`operator service system.
`
`Ex. 1001, 13:41–14:2.
`
`5
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`D. The Asserted Ground of Unpatentability
`Petitioner asserts claims 1, 2, 5, and 9 of the ’352 patent are
`unpatentable based on the grounds set forth in the table below:
`References
`Basis
`Challenged Claim(s)
`
`§ 101
`1, 2, 5, and 9
`Padden and Chadha
`§ 103(a)
`1, 2, and 5
`Padden, Chadha, and Suzuki § 103(a)
`9
`
`Pet. 22.
`
`III. COVERED BUSINESS METHOD (CBM) PATENT REVIEW
`
`A. Standing to File a Petition for CBM Review
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18 limits
`reviews to persons or their privies who 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. As discussed above in Section II.A., Petitioner
`represents it has been sued for infringement of the ’352 patent and is not
`estopped from challenging the claims on the grounds identified in the
`Petition. Pet. 2–3 (citing Ex. 1005).
`
`B. Qualifying as a CBM Patent for CBM Review
`
`The parties dispute whether the ’352 patent is a “covered business
`method patent,” as defined in the AIA and 37 C.F.R. § 42.301. See Pet. 9–
`13; Prelim. Resp. 10–30. It is Petitioner’s burden to demonstrate that
`the ’352 patent is a covered business method patent. See 37 C.F.R.
`§ 42.304(a). For the reasons discussed below, we determine Petitioner has
`
`6
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`made an insufficient showing that the ’352 patent is a “covered business
`method patent.”
`The AIA defines “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); see 37 C.F.R. § 42.301(a). The
`legislative history of the AIA “explains that the 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.’” 77 Fed. Reg. 48,374, 48,735 (Aug.
`14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)). To
`determine whether a patent is eligible for a covered business method patent
`review, the focus is on the claims. See Transitional Program
`for Covered Business Method Patents—Definitions
`of Covered Business Method Patent and Technological Invention; Final
`Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (Response to Comment
`4: “[T]he definition . . . is based on what the patent claims.”). A patent need
`have only one claim directed to a covered business method to be eligible for
`review. Id.; see Versata Dev. Grp., Inc. v. SAP Am. Inc., 793 F.3d 1306,
`1326–27 (affirming Board and accepting analysis of single claim as
`representative of determination whether to institute a covered business
`method patent review).
`Petitioner contends the ’352 patent is a covered business method
`patent, because the ’352 patent specification and claims “are directed to
`collecting and recording data (e.g., the identity of a wireless caller) for
`
`7
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`billing for call completion services from an OSS.” Pet. 9 (citing Ex. 1001,
`Abst, Claim 1). Petitioner notes that the specification includes embodiments
`for “facilitat[ing] billing all charges incurred by directory assistance call
`completion services provided to a mobile wireless communication terminal,
`such as a cellular telephone, to the subscriber who actually requests the call
`completion service,” and “facilitat[ing] billing for the service to the
`individual customers.” Id. (citing Ex 1001, 2:54–58, 2:63–64). Petitioner
`also relies on the last limitation of claim 1 to support its position, arguing
`that claim 1 recites the step of “forwarding data identifying the wireless
`communication terminal from the mobile communications switching office
`to an operator service system,” and such data is collected for the purpose of
`“recording the identity of the wireless communication terminal in the
`operator service system.” Id. at 10. According to Petitioner, the collecting
`and recording of the billing information for use in operator services in Claim
`1 is an activity that is “financial in nature, incidental to a financial activity or
`complementary to a financial activity” in that it recites recording billing
`information for billing purposes. Id. (citing Ex. 1001, 14:1–2).
`Petitioner further argues that claims 2 and 9 recite activities that are
`“financial in nature, incidental to a financial activity or complementary to a
`financial activity” in that they recite ”form[ing] a billing record” and
`“determin[ing] if the subscriber has subscribed” to a particular service. Id.
`(citing Ex. 1001, 14:3–8, 14:50–53).
`Patent Owner disputes Petitioner’s position, contending that none of
`the claims recites a method used in the practice, administration, or
`management of a financial product or service; rather, each claim recites a
`method for performing an operation used in a communications network.
`
`8
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`Prelim. Resp. 11. Patent Owner argues that Petitioner misstates claim 1,
`specifically the final step of claim 1––“recording the identity of the wireless
`communication terminal in the operator services system”––to argue that this
`step “recites recording billing information for billing purposes.” Id. at 12
`(citing Pet. 10). Patent Owner explains, however, that nowhere does claim 1
`recite the word “billing” and that the limitation for “recording” is not
`recording billing information for billing purposes. Id. at 12–13 (citing
`Ex. 1001, 3:57–4:16; Ex. 2002, 27–28).
`Patent Owner further argues that claim 2 cannot be used to support
`Petitioner’s arguments that the ’352 patent qualifies as a covered business
`method. Id. at 17–18 (citing Ex. 2003). Specifically, Patent Owner argues
`that it filed a statutory disclaimer disclaiming claims 2, 3, 7, and 17, and as a
`consequence of the disclaimer, the Board should not base its determination
`on whether or not to institute a trial on claim 2 or any of the other disclaimed
`claims. Id. at 18.
`With respect to claim 9, Patent Owner argues that Petitioner’s analysis
`is conclusory, and, in any event, claim 9 is not directed to a financial product
`or service. Id. at 19–20. Patent Owner asserts that, just as with claim 1,
`claim 9 does not recite any financial terms or an activity involving the
`movement of money or extension of credit in exchange for a product or
`service. Id. at 20.
`We agree with Patent Owner. First, as noted above, Patent Owner has
`filed a statutory disclaimer under 37 C.F.R. § 1.321(a) of claims 2, 3, 7, and
`17. See Prelim. Resp. 17–18 (citing Ex. 2003). Rule 1.321(a) is the rule
`promulgated by the Office for creating a procedure for a patentee to avail
`itself of the provisions of 35 U.S.C. § 253. See MPEP § 1490. Our
`
`9
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`reviewing court has held that a patent with a statutory disclaimer is to be
`treated as though the disclaimed claims never existed. See Guinn v. Kopf, 96
`F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C.
`§ 253 has the effect of canceling the claims from the patent and the patent is
`viewed as though the disclaimed claims had never existed in the patent.”).
`Therefore, for the purposes of whether or not to institute a covered business
`method patent review, we treat claims 2, 3, 7, and 17 as never having
`existed, and we will not consider the now-statutorily disclaimed claims in
`our determination. See Google Inc. v. SimpleAir, Inc., CBM2015-00019 slip
`op. at 14–15 (PTAB May 19, 2014) (Paper 11); Great West Casualty Co., v.
`Intellectual Ventures II LLC, CBM2015-00171 slip op. at 7 (PTAB Feb. 9,
`2016) (Paper 10).
`Second, although we do not interpret section 18 of the AIA as
`requiring the literal recitation of financial products or services in a claim, the
`presence in the challenged claims of financial terminology, or a method step
`requiring the movement of money, weighs in favor of a financial product or
`service. See Apple, Inc. v. SightSound Techs., LLC, Case CBM2013-00020,
`slip op. at 9–13 (PTAB Oct. 8, 2013) (Paper 17) (“transferring money
`electronically”); see also FFF Enterprises, Inc. v. AmerisourceBergen
`Specialty Group, Inc., Case CBM2014-00154, slip op. at 7 (PTAB Jan. 29,
`2015) (Paper 14) (“server system creates an invoice”). Here, the claims are
`devoid of any terms that reasonably could be argued as rooted in the
`financial sector or directed to a financial transaction. See ServiceNow, Inc.
`Hewlett-Packard, Co., CBM2015-00108, slip. op. at 15 (PTAB Oct. 7,
`2015) (Paper 10).
`
`10
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`Lastly, statements in the specification that a claimed invention has
`particular utility in financial applications may weigh in favor of determining
`that a patent is eligible for a covered business method patent review;
`however, we do not find covered business method patent review available
`for patents that claim generally useful technologies that also happen to be
`useful to financial applications. J.P. Morgan Chase v. Intellectual Ventures
`II LLC, CBM2014-00160, slip op. at 6–12 (PTAB Jan. 29, 2015) (Paper
`11); see Salesforce.com, Inc. v. Applications in Internet Time LLC,
`CBM2014-00162, slip op. 10 (PTAB Feb. 2, 2015) (Paper 11) (“Petitioner’s
`contentions based on the written description alone do not show that the ’111
`patent claims a method or apparatus ‘for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service’ or claims an activity that is ‘financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”).
`Other panels of the Board have found patents not to meet the definition of
`“covered business method patent” in similar circumstances. See, e.g.,
`Google Inc. v. SimpleAir, Inc., CBM2015-00019, slip op. at 11–12 (PTAB
`May 19, 2015) (Paper 11) (claim directed to system for transmitting,
`receiving, and processing data recites “only generic, context-neutral ‘data,’”
`without any language relating to a financial product or service); Sega of Am.,
`Inc. v. Uniloc USA, Inc., CBM2014-00183, slip op. at 11–13 (PTAB Mar.
`10, 2015) (Paper 11) (claims were “directed to technology that restricts the
`use of software” where the software had “no particular relationship to a
`financial product or service”); PNC Fin. Servs. Group, Inc. v. Intellectual
`Ventures I LLC, CBM2014-00032, slip op. at 6–15 (PTAB May 22, 2014)
`(Paper 13) (claims described “software systems that have general utility not
`
`11
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`specific to any application.”); and Par Pharm. Inc. et al. v. Jazz Pharm.,
`Inc., CBM2014-00149, slip op. 10–13 (PTAB Jan. 13, 2015) (Paper 12)
`(concluding that in the context of the claim as whole, a claim relating to a
`method for controlling access to a prescription drug did not recite or require
`an activity involving the movement of money, extension of credit, or other
`financial product or service).
`As Patent Owner correctly notes (Prelim. Resp. 16–17), finding that
`anything with a possible use with respect to activities involving financial
`products and services would capture claimed inventions only tangentially
`related to activities involving financial products and services and would not
`be limited to a covered business method patent. See Sony Corp. of Am. v.
`Network-1 Techs., Inc., Case CBM2015-00078, slip op. at 11–12 (PTAB
`July 1, 2015) (Paper 7)). Additionally, the Office has stated, the legislative
`history of the AIA indicates that “financial product or service” should be
`interpreted “broadly,” but “broadly” does not mean “without limits.” See
`Transitional Program for Covered Business Method Patents, 77 Fed. Reg. at
`48,736.
`Although we acknowledge the specification includes at least one
`illustrative embodiment directed to an application of the claimed method for
`billing purposes (see Ex. 1001, 2:54–64 (describing billing of wireless
`cellular subscribers)), we find that such an example is insufficient to make
`the challenged claims of the ’352 patent eligible for covered business
`method patent review. The primary justification
`for covered business method review eligibility provided by Petitioner is that
`the illustrative embodiments in the specification of the ’352 patent
`merely show that the invention may be used for billing. Pet. 9. Mere ability
`
`12
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`to use the claimed invention in a financial context, standing alone, does not
`require a finding that the financial prong has been met, especially when the
`specification as a whole suggests a broader application. See ServiceNow,
`Inc., CBM2015-00108, slip. op. at 17 (claims were directed to the general
`utility of managing a conversation in a Web service and did not cover a
`financial transaction); ServiceNow, Inc. v. BMC Software, Inc., Case
`CBM2015-00107, slip op. at 11–12 (PTAB Sept. 11, 2015) (Paper 12)
`(panel found instructive that the problem addressed by the patent was non-
`financial in nature, and that a significant portion of the specification
`described the claimed method in general terms). Petitioner’s citations to the
`specification, however, do not provide a persuasive basis to conclude that
`the claims deal with the movement of money or are involved directly in a
`financial transaction in anything other than a tangential way. Rather, we
`find that the challenged claims recite a method of general utility for
`providing a directory assistance call completion service to a wireless
`communication service subscriber, and the cited example from the ’352
`patent makes clear that any financial aspect of the invention as discussed in
`the specification is, at most, a non-limiting example. See Ex. 1001, 4:55–66,
`8:44–57; see ServiceNow, Inc., CBM2015-00108, slip. op. at 15; PNC Bank
`NA v. Parus Holding, Inc., CBM2015-00112, slip op. at 16–17 (PTAB
`Nov. 9, 2015) (Paper 11).
`The facts before us, as outlined above, establish that the claimed
`method is of general utility, and Petitioner has not introduced persuasive
`evidence to show that at least one claim of the ’352 patent recites a method
`used in the practice, administration, or management of a financial product or
`service. See 37 C.F.R. § 42.301(a); see ServiceNow, Inc., CBM2015-00108,
`
`13
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`slip. op. at 17. Accordingly, Petitioner has not met its burden of
`demonstrating that the ’352 patent is eligible for covered business method
`patent review.
`
`
`IV. CONCLUSION
`For the foregoing reasons, we are not persuaded that the ’352 patent is
`eligible for covered business method patent review.
`
`
`V. ORDER
`For the reasons given, it is
`ORDERED that, pursuant to 35 U.S.C. § 324(a), a covered business
`
`patent method review is not instituted for claims 1, 2, 5, and 9 of the
`’352 patent.
`
`
`
`
`14
`
`
`
`CBM2015-00185
`Patent 5,339,352
`
`FOR PETITIONER:
`Eliot Williams
`Jon Swenson
`Nick Schuneman
`Baker Botts LLP
`eliot.williams@bakerbotts.com
`jon.swenson@bakerbotts.com
`nick.schuneman@bakerbotts.com
`
`FOR PATENT OWNER:
` Lori Gordon
`Robert Sokohl
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`lgordon-ptab@skgf.com
`rsokohl-ptab@skgf.com
`
`James Hietala
`Tim Seeley
`Intellectual Ventures II LLC
`jhietala@intven.com
`tseeley@intven.com
`
`15
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
