Paper No. 12
`Entered: August 26, 2016
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`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`AT&T MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`_______________
`
`Case CBM2015-00185
`Patent 5,339,352
`_______________
`
`Before GEORGIANNA W. BRADEN, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`BRADEN, 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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`
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`

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`CBM2015-00185
`Patent 5,339,352
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`I.
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`INTRODUCTION
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`AT&T Mobility LLC (“Petitioner”) timely filed a Request for
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`Rehearing under 37 C.F.R. § 42.71(d) on June 2, 2016. Paper 11 (“Req.
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`Reh’g”). Petitioner’s Request for Rehearing seeks reconsideration of our
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`Decision (Paper 10, “Decision”) entered on May 4, 2016, denying institution
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`of a covered business method patent review of claims 1, 2, 5, and 9 of U.S.
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`Patent No. 5,339,352 (Ex. 1001, “the ’352 patent”). See Decision 14.
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`Petitioner alleges the Board (1) overlooked important prior decisions
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`supporting consideration of disclaimed, financially explicit dependent claims
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`in determining CBM eligibility of retained antecedent independent claims,
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`and (2) misapprehended the definition of a CBM patent and the subject
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`matter disclosed in the ’352 patent. Reh’g Req. 1–2. Petitioner requests that
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`its Request for Rehearing be referred to an expanded panel for decision. Id.
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`at 2.
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`For the reasons provided below, we deny Petitioner’s request.
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`II. ANALYSIS
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`A request for rehearing “must specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, an opposition, or a reply.”
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`37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of
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`showing the decision should be modified. Id. When rehearing a decision on
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`a petition, a panel will review the decision for an abuse of discretion.
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`37 C.F.R. § 42.71(c).
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`2
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`CBM2015-00185
`Patent 5,339,352
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`A. The Subject Matter of the Challenged Patent Claims
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`Petitioner challenges our decision because it contends we
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`“misapprehended the subject matter claimed by the [challenged patent]” and
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`we “narrowly interpreted the definition of “covered business method patent”
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`in a manner inconsistent with the relevant statutory language, legislative
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`history, and reviewing court decisions.” Reh’g Req. 1–2.
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`Contrary to Petitioner’s arguments, we did not misapprehend or
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`overlook the nature of the claimed subject matter or its arguments; rather, we
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`disagreed with Petitioner’s position. Decision 10–13. Specifically, we
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`disagreed that the challenged claims recite activities that are “financial in
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`nature, incidental to a financial activity or complementary to a financial
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`activity.” Id. As explained in the Decision, we do not find covered business
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`method patent review available for patents that claim generally useful
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`technologies that also happen to be useful to financial applications. Id. at
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`11. We specifically stated:
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`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
`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
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`3
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`Patent 5,339,352
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`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 nonfinancial 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.
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`Id. at 12–13.
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`Thus, we concluded in the Decision that the claimed method is of
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`general utility, and Petitioner had not introduced persuasive evidence to
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`show that at least one claim of the ’352 patent recites a method used in the
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`practice, administration, or management of a financial product or service.
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`Id. at 13.
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`Petitioner disagrees with our conclusion, arguing that the ’352 patent
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`describes collection of billing information in explicitly non-optional terms:
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`“it is necessary to capture billing details…including the [identification] of
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`the actual calling station” in order to make directory assistance call
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`completion services to wireless callers “viable.” Reh’g Req. 13 (citing
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`Ex. 1001, 2:65–3:11). According to Petitioner, “[t]he only utility of
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`recording identity information that is described in the specification is
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`allowing accurate billing to individual users.” Id. at 13–14.
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`Petitioner, however, fails to acknowledge that one of the main
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`objectives of the ’352 patent was “to provide directory assistance call
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`Patent 5,339,352
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`completion to all subscribers, including roaming users initiating intra-LATA
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`directory assistance calls from a mobile wireless communication terminal,
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`such as a cellular telephone.” See Ex. 1001, 2:47–51. Furthermore, the
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`challenged claims at issue in the Petition are directed to methods of
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`providing directory assistance call completion services. See claims 1, 5, and
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`9.
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`Petitioner has not shown how we overlooked or misapprehended its
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`arguments or evidence as required by 37 C.F.R. § 42.71(d). Rather,
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`Petitioner uses its Request for Rehearing as an opportunity to reargue its
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`position; a position with which we disagree. Merely disagreeing with our
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`analysis or conclusions does not serve as a proper basis for a rehearing. It is
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`not an abuse of discretion to provide analysis or conclusions with which a
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`party disagrees. Thus, Petitioner’s challenge does not meet the standard set
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`forth for a request for rehearing.
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`B. Prior PTAB Decisions Regarding CBM Qualifications
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`Petitioner challenges our decision because it contends that we
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`“overlooked important prior decisions by other PTAB panels, which make
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`clear that the scope of disclaimed, financially explicit dependent claims
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`should be considered in determining CBM eligibility of a retained
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`antecedent independent claim.” Reh’g Req. 1. Petitioner specifically cites
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`to (1) Compass Bank v. Maxim Integrated Products, Inc., CBM2015-00102,
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`slip op. at 11–15 (PTAB Oct. 7, 2015) (Paper 16); (2) American Express Co.
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`v. Maxim Integrated Products, Inc., CBM2015-00098, slip op. at 8–9
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`(PTAB Sep. 22, 2015) (Paper 17); and (3) J.P. Morgan Chase & Co. v.
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`Intellectual Ventures II LLC, CBM2014-00157, slip op. at 3 (PTAB Feb. 18,
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`2015) (Paper 11), to support its position that we should consider disclaimed
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`Patent 5,339,352
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`dependent claims when analyzing whether independent claims qualify for
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`CBM review. Id. at 4–5.
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`Petitioner’s arguments and case citations are not persuasive. First, we
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`did not overlook prior PTAB decisions that express a holding contrary to the
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`Decision. Second, contrary to Petitioner’s argument, the cited cases cited
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`are consistent with our Decision. Each cited case involves a disclaimed
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`dependent claim that recited explicit financial language. And, as discussed
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`below, in each case the panel only analyzed the remaining non-disclaimed
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`claims in determining CBM review eligibility.
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`In American Express Co. v. Maxim Integrated Products, Inc., the
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`patent owner disclaimed claim 2, arguing that the patent must be treated as
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`though the disclaim claim never existed, and that the petition failed because
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`it only analyzed claim 2. American Express Co., CBM2015-00098, slip op.
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`at 8. The panel disagreed because the petition explicitly argued “the claims”
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`of the patent and did not limit the arguments to the disclaimed claim. Id. at
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`8–9. Thus, applying the arguments in the petition to the remaining claims,
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`the panel found that at least one claim was directed to a financial product or
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`service. Id. A similar situation occurred in Compass Bank v. Maxim
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`Integrated Products, Inc., CBM2015-00102, slip op. at 11–12, where the
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`Patent Owner disclaimed claim 7, but the panel in that case only considered
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`challenged claims 1–6 and 8 to determine CBM review eligibility.
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`In J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
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`CBM2014-00157, slip op. at 3, the patent owner disclaimed dependent claim
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`12 after institution of a CBM review. The Patent Owner requested that the
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`proceeding be terminated based on its disclaimer. Id. at 2. The panel,
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`however, denied patent owner’s request explaining that standing for CBM
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`CBM2015-00185
`Patent 5,339,352
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`review is determined at the time of institution, and thus, the disclaimer had
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`no effect on determining CBM review eligibility. Id. at 2–3.
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`Contrary to Petitioner’s arguments, the cited cases do not “generally
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`hold that the disclaimed dependent claim should be considered” when
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`determining eligibility for CBM review. See Reh’g Req. 4. Petitioner has
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`not shown how we overlooked or misapprehended its arguments or evidence
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`as required by 37 C.F.R. § 42.71(d). Thus, Petitioner’s challenge does not
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`meet the standard set forth for a request for rehearing.
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`C. Consideration of Disclaimed Claim 2
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`Petitioner challenges our decision because it contends that
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`consideration of disclaimed claim 2 in construing claim 1 “is not
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`inconsistent” with relevant federal case law. Reh’g Req. 5–6. Although
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`Petitioner cites to two cases that held disclaimed claims should be treated as
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`having never existed, Petitioner argues that such holdings were limited in
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`scope. Id. at 6. According to Petitioner, neither cited case “answers the
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`question of whether disclaimed dependent claims can be used to construe the
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`scope of independent claims.” Id. Additionally, Petitioner argues that
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`disclaimed claims are relevant during claim construction, as they are still
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`part of the prosecution history. Id. Petitioner, thus, concludes that
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`consideration of a disclaimed claim in construing another independent claim
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`is “not inconsistent with Federal Circuit precedent.” Id. at 6–7.
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`We are not persuaded by Petitioner’s position. First, Petitioner has
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`not introduced any Federal Circuit precedent indicating that a disclaimed
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`claim may be used to construe a non-disclaimed claim in determining CBM
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`review eligibility. Second, Petitioner has not introduced any Federal Circuit
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`precedent indicating claims disclaimed under 35 U.S.C. § 253 should be
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`CBM2015-00185
`Patent 5,339,352
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`treated as having existed. Lastly, Petitioner has not shown how we
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`overlooked or misapprehended its arguments or evidence as required by
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`37 C.F.R. § 42.71(d). Thus, Petitioner’s challenge does not meet the
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`standard set forth for a request for rehearing.
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`D. Request for an Expanded Panel
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`Regarding Petitioner’s request for an expanded panel to address its
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`Request for Rehearing (Reh’g Req. 2), Petitioner directs us to no persuasive
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`authority that a panel of the Board is empowered to grant a request for panel
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`expansion. See Conopco, Inc. v. Procter & Gamble Co., Case
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`IPR2014-00506, slip. op at 6 (PTAB Dec. 10, 2014) (Paper 25). The
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`members of the Board deciding an institution matter are not authorized to
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`select themselves or, of their own accord, select other Board members to
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`decide the matter, upon request of a party or otherwise. As indicated in the
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`Standard Operating Procedure, the Chief Judge, on behalf of the Director,
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`may act to expand a panel on a suggestion from a judge or panel. BPAI SOP
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`1 at 1. The Standard Operating Procedure creates “internal norms for the
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`administration of the Board” but “does not create any legally enforceable
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`rights.” Id. The Chief Judge was informed of Petitioner’s request, and the
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`Chief Judge declined to expand the panel.
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`III. ORDER
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`It is hereby ORDERED that Petitioner’s request for rehearing is
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`8
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`denied.
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`

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`9
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`CBM2015-00185
`Patent 5,339,352
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`PETITIONER:
`
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`Nick Schuneman
`nick.schuneman@bakerbotts.com
`
`Jon Swenson
`jon.swenson@bakerbotts.com
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`
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`PATENT OWNER:
`
`Tim Seeley
`tim@intven.com
`
`James Hietala
`jhietala@intven.com
`
`Lori Gordon
`lgordon-PTAB@skgf.com
`
`Robert Sokohl
`rsokohl-PTAB@skgf.com