throbber
Filed: May 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`SALLY BEAUTY HOLDINGS, INC. and SALLY BEAUTY SUPPLY LLC
`
`Petitioners
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`
`Patent Owner
`__________________________________
`
`Case No. CBM2016-00030
`U.S. Patent No. RE43,715
`__________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`Filed on behalf of:
`Patent Owner Intellectual Ventures I LLC
`By: Brenton R. Babcock
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email: BoxPGL38@knobbe.com
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`Page No.
`
`I. 
`
`II. 
`
`INTRODUCTION AND SUMMARY OF ARGUMENT ............................ 1 
`
`LEGAL STANDARDS ................................................................................. 6 
`
`A. 
`
`Eligibility for CBM Review ................................................................ 6 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Sally Beauty bears the burden of establishing that
`the ’715 Patent is a covered business method patent ................ 6 
`
`The determination of whether the ’715 Patent is
`eligible for covered business method patent review
`is based on what the patent’s claims recite ............................... 6 
`
`Specification examples do not establish that a patent
`is a CBM Patent unless the examples clearly show
`that the claimed invention has particular application
`involving financial activities ..................................................... 7 
`
`The determination of whether the ’715 Patent is for
`a technological invention is based upon an analysis
`of the claimed subject matter as a whole ................................ 10 
`
`The Board’s determination whether the ’715 Patent
`is a covered business method patent must disregard
`statutorily disclaimed claims ................................................... 10 
`
`III.  THE PETITION SHOULD BE DENIED BECAUSE IT DOES
`NOT ESTABLISH THAT THE ’715 PATENT IS A COVERED
`BUSINESS METHOD PATENT ................................................................ 11 
`
`A. 
`
`The ’715 Patent is directed to technologies common in
`business environments that have no particular relation to
`the financial services sector ............................................................... 11 
`
`-i-
`
`

`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`1. 
`
`2. 
`
`Claims 20–50 of the ’715 Patent are directed to
`technologies common in business environments that
`have no particular relation to the financial services
`sector ....................................................................................... 12 
`
`a. 
`
`b. 
`
`The Petition’s entire argument fails because it
`focuses solely on disclaimed claims 1, 9, and
`14 .................................................................................. 13 
`
`None of the language of claims 20–50 is tied
`to financial services ...................................................... 14 
`
`The specification of the ’715 Patent is also directed
`to technologies common in business environments
`that have no particular relation to the financial
`services sector ......................................................................... 21 
`
`a. 
`
`a. 
`
`The Board has not held that any mention of
`any financial transaction in the specification
`makes a patent a CBM patent ....................................... 22 
`
`The ’715 Patent specification does not have
`particular application involving financial
`activities ........................................................................ 25 
`
`3. 
`
`Sally Beauty does not rely upon the file history of
`the ’715 Patent ........................................................................ 28 
`
`B. 
`
`The ’715 Patent is directed to a technological invention .................. 28 
`
`1. 
`
`Sally Beauty failed to establish that the ’715 Patent
`does not recite a novel and unobvious technological
`feature ...................................................................................... 29 
`
`-ii-
`
`

`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`2. 
`
`The ’715 Patent solves a technical problem using a
`technical solution .................................................................... 32 
`
`IV.  Statutory construction of the CBM statute .................................................. 35 
`
`A. 
`
`B. 
`
`The plain meaning of the CBM-eligibility test focuses
`solely on the claims, as properly interpreted in view of the
`specification. ...................................................................................... 36 
`
`The legislative history of the CBM statute does not support
`Sally Beauty’s expansive interpretation of “CBM patent.” .............. 37 
`
`V. 
`
`CLAIM CONSTRUCTION ........................................................................ 42 
`
`VI.  THE PTAB MAY DENY THE PETITION EVEN IF IT
`REACHES THE MERITS ........................................................................... 43 
`
`VII.  CONCLUSION ............................................................................................ 45 
`
`
`
`-iii-
`
`

`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`In re Alappat,
`33 F.3d 1526 (Fed. Cir. 1994) (en banc) ............................................................ 31
`
`Experian Marketing Solutions, Inc. v. RPost Commc’ns. Ltd.,
`CBM2014-00010, Paper 20 (P.T.A.B. Apr. 22, 2014) ........................... 10, 30, 32
`
`Great West Casualty Co. v. Intellectual Ventures II LLC,
`CBM2015-00171, Paper 10 (P.T.A.B. Feb. 9, 2016) ................................... 11, 13
`
`Helmsderfer v. Bobrick Washroom Equipment, Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) .......................................................................... 18
`
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`CBM2014-00160, Paper 11 (P.T.A.B. Jan. 29, 2015) .................................passim
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00004, Paper 10 (P.T.A.B. Jan. 25, 2013) .......................................... 7
`
`Qualtrics, LLC v. OpinionLab, Inc.,
`CBM2016-00003, Paper 9 (P.T.A.B. Apr. 13, 2016) ................................... 16, 17
`
`Ratzlaf v. United States,
`510 U.S. 135 (1994) ...................................................................................... 36, 37
`
`Salesforce.com, Inc. v. Applications in Internet Time LLC,
`CBM2014-00162, Paper 11 (P.T.A.B. Feb. 2, 2015) ..................................passim
`
`Salesforce.com, Inc. v. VirtualAgility, Inc.,
`CBM2013-00024, Paper 16 (P.T.A.B. Nov. 19, 2013) ...............................passim
`
`SEGA of America, Inc. v. Uniloc USA, Inc.,
`CBM2014-00183, Paper 11 (P.T.A.B. Mar. 10, 2015) ............................ 9, 25, 26
`
`State Street Bank & Trust Co. v. Signature Fin. Grp.,
`149 F.3d 1368 (Fed. Cir. 1998) .................................................................... 38, 39
`
`-iv-
`
`

`
`TABLE OF AUTHORITIES
`(cont’d)
`
`OTHER AUTHORITIES
`
`Page No(s).
`
`35 U.S.C. § 100 ........................................................................................................ 37
`
`35 U.S.C. § 101 .............................................................................................. 6, 42, 43
`
`35 U.S.C. § 103 .................................................................................................... 6, 43
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 253 .................................................................................................. 11, 13
`
`37 C.F.R. § 42.207 ....................................................................................... 10, 11, 13
`
`37 C.F.R. § 42.301 ............................................................................................. 10, 29
`
`Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 (2011) § 18(d)(1) ..................................passim
`
`M.P.E.P. § 2111.03 .................................................................................................. 17
`
`Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ..........................................................passim
`
`
`
`
`
`
`
`
`
`-v-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`The ’715 Patent claims an apparatus and method “of integrating and
`
`delivering data available over a network.” Ex. 1001, claim 20 (emphasis added).
`
`The claims further recite a specific computer network architecture for
`
`integrating public and private data and formatting the data for delivery to a user
`
`system. Id. The claimed computer network architecture is not a combination of
`
`generic computer hardware defined at a high-level of generality, but requires
`
`detailed inter-relationships between the computer hardware and software elements
`
`set forth in the claims.
`
`The ’715 Patent does not attempt to claim every computer networking
`
`architecture, or even a large majority of them. For example, the ’715 Patent does
`
`not cover many of the client-server computer networking architectures that were
`
`and still are in common use on the Internet and the World Wide Web. Indeed, the
`
`specification of the ’715 Patent expressly states that the specific computer
`
`networking technology claimed in the ’715 Patent is an improvement on the prior
`
`art computer networking technology of the Internet and the World Wide Web.
`
`Specifically, the ’715 Patent explains that the prior art computer networking
`
`architecture did not sufficiently allow an individual to access and view both public
`
`and private data simultaneously. Ex. 1001 at 2:5-8. The ’715 Patent then explains
`
`that “viewing combinations of public and private data usually includes jumping
`
`-1-
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`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`between two or more websites, viewing only one at a time, or using two separate
`
`digital viewing devices, such as two computer screens.” Id. at 2:8-12.
`
`Thus, the inventors created a new computer networking architecture by
`
`connecting computer hardware and software elements in a unique architecture with
`
`specifically defined inter-relationships that enable the new computer networking
`
`architecture to integrate and deliver public and private data to a user. Therefore, the
`
`claimed invention of the ’715 Patent falls squarely within the technical field of
`
`computer networking or computer communications. Indeed, the USPTO classified
`
`the claims of the ’715 Patent in the class for “electrical computers and digital
`
`processing systems: network resources access controlling.” Id. at cover (class
`
`709/229); Ex. 2001 at 1.
`
`The relevant claims of the ’715 Patent, therefore, are directed to computer
`
`networking. Because they do not “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,” the ’715 Patent does not fall
`
`within the limited category of “business method patents” that Congress intended to
`
`subject to the extraordinary scrutiny of a CBM review. Indeed, none of the relevant
`
`claims of the ’715 Patent expressly recite any financial operation, and the Petition
`
`fails to establish anything to the contrary.
`
`-2-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`In fact, the claims of the ’715 Patent are directed to communications
`
`network technology that Congress did not want to subject to CBM review.
`
`Specifically, the legislative history of the AIA makes clear that Congress intended
`
`to exclude from CBM review “technologies common in business environments
`
`across sectors and that have no particular relation to the financial services sector,
`
`such as computers, communications networks, and business software.” Ex. 2002
`
`at S5441 (emphasis added). The ’715 Patent claims communications network
`
`technology that has become “common in business environments across sectors and
`
`that ha[s] no particular relation to the financial services sector” because the
`
`claimed system and method can be used by anyone, in any industry, to facilitate
`
`integration and delivery of data available over a network. The claimed invention
`
`can integrate and display millions of types of public data—including data on
`
`weather, sports scores, technical specifications, scientific journal articles, and
`
`cooking recipes—with private data, such as social networking messages, emails, or
`
`calendar data, and it is not specifically designed to distribute financial information
`
`in particular. The Board has found that such general-purpose inventions—i.e.,
`
`those that can be used across a wide variety of industries with no particular relation
`
`to financial services—are not subject to CBM review. See, e.g., Salesforce.com,
`
`Inc. v. Applications in Internet Time LLC, CBM2014-00162, Paper 11 at 9
`
`(P.T.A.B. Feb. 2, 2015) (denying institution of a CBM petition because the
`
`-3-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`claimed invention had no particular relation to the financial services sector, even
`
`though the specification states that the invention is usable in the context of
`
`regulatory activities related to “banking, financial and securities activities”)
`
`[hereinafter Salesforce v. Applications].
`
`Because Sally Beauty has no plausible argument that the claims of the ’715
`
`Patent are not directed to financial activities, Sally Beauty also argues that the ’715
`
`Patent is nevertheless a CBM patent because the specification includes examples in
`
`which the computer networking system is used to display financial data. But the
`
`fact that the disclosed computer networking architecture could be used to display
`
`financial data does not make the ’715 Patent a CBM patent. Indeed, the computer
`
`networking architecture claimed can be used to display virtually every other type
`
`of data across every field or industry. These are not CBM-eligible claims any more
`
`than a television is a covered business method simply because it can show stock
`
`market quotes and financial programming. The claimed invention of the ’715
`
`Patent is defined by the claimed language: it is a computer networking architecture
`
`for integrating and delivering data over a network. The claimed invention is not
`
`defined by the type of data—financial or otherwise—that a hypothetical user of
`
`that invention may theoretically choose to display.
`
`The Board has not broadly held that any mention of any financial transaction
`
`in the specification makes a patent a CBM patent. Rather, the Board has properly
`
`-4-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`found that challenged patents are not CBM patents where, as here, the claims lack
`
`financial limitations and the specification does not show that the claimed invention
`
`has any particular relation to the financial services sector. See, e.g., Salesforce v.
`
`Applications, CBM2014-00162, Paper 11 at 9. Accordingly, the Board should deny
`
`the Petition at least because Sally Beauty failed to show that the ’715 Patent meets
`
`the financial product or service prong of the CBM-eligibility test.
`
`In addition, Sally Beauty failed to show that the ’715 Patent is not directed
`
`to a technological invention. To the contrary, the inventors’ new computer
`
`networking architecture solved a technical problem with a technical solution. The
`
`technical problem was that the deficient prior art computer networking architecture
`
`did not sufficiently allow an individual to access and view both public and private
`
`data simultaneously. The inventors’ technical solution was to create a new
`
`computer networking architecture that is better able to integrate and deliver data
`
`over a network so that users no longer need to “jump[] between two or more
`
`websites, viewing only one at a time, or us[e] two separate digital viewing devices,
`
`such as two computer screens.” Ex. 1001 at 2:8-12. Moreover, Sally Beauty failed
`
`to show that the claimed subject matter as a whole is either old or non-obvious.
`
`Therefore, the Board should also deny the Petition at least because Sally Beauty
`
`did not establish that the ’715 Patent is not a technological invention.
`
`
`
`-5-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`Because the ’715 Patent is not a CBM patent, the Board lacks jurisdiction to
`
`consider the Petition further. Thus, the Board should deny the Petition on that basis
`
`alone and need not reach the question of patent-eligibility under 35 U.S.C. § 101 or
`
`patentability under 35 U.S.C. §§ 103 or 112. If the Board does reach the § 101
`
`issue, however, the Board should deny the Petition because it failed to establish
`
`that it is more likely than not that the claims of the ’715 Patent are patent-
`
`ineligible. Likewise, if the Board does reach the § 103 or § 112 issue, the Board
`
`should deny the Petition because it failed to establish that it is more likely than not
`
`that the claims of the ’715 Patent are unpatentable.
`
`II. LEGAL STANDARDS
`
`A. Eligibility for CBM Review
`
`1.
`
`Sally Beauty bears the burden of establishing that the ’715 Patent
`is a covered business method patent
`
`The Board’s Trial Practice Guide states that “[a] petitioner in a CBM
`
`proceeding must demonstrate that the patent for which review is sought is a
`
`covered business method patent.” Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,763 (Aug. 14, 2012). Failure to do so compels denial of the petition.
`
`2.
`
`The determination of whether the ’715 Patent is eligible for
`covered business method patent review is based on what the
`patent’s claims recite
`
`The AIA defines the phrase “covered business method patent” as “a patent
`
`that claims a method or corresponding apparatus for performing data processing or
`
`-6-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`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.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`
`(2011) (“AIA”) § 18(d)(1) (emphasis added). Accordingly, the Board has stated
`
`that the “determination of whether a patent is eligible for covered business method
`
`review is based on what the patent claims.” Liberty Mut. Ins. Co. v. Progressive
`
`Cas. Ins. Co., CBM2012-00004, Paper 10 at 5 (P.T.A.B. Jan. 25, 2013) (emphasis
`
`added). This focus on “what the patent claims” is mandated by the CBM statute.
`
`Because the CBM statute expressly defines a CBM patent in terms of what the
`
`patent claims, the Board has no statutory authority to base its determination of
`
`whether a patent is a CBM patent on anything other than the claims.
`
`3.
`
`Specification examples do not establish that a patent is a CBM
`Patent unless the examples clearly show that the claimed
`invention has particular application involving financial activities
`
`
`
`In view of the CBM statute’s express language, a finding of CBM-eligibility
`
`based on the specification, rather than the claims, is of suspect legal validity. While
`
`the Board in Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024, Paper
`
`16 at 11 (P.T.A.B. Nov. 19, 2013) [hereinafter VirtualAgility] found that a patent
`
`was a CBM patent even though the claims did not explicitly recite any financial
`
`operation, that panel reasoned that the specification clearly established that “the
`
`claimed method has particular application involving financial activities.” Id.
`
`-7-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`(emphasis added). Thus, VirtualAgility was not a broad holding that a patent that
`
`discloses any financial usage of the invention is a CBM patent. Such a broad
`
`holding would go too far because it ignores the plain meaning of the CBM statute
`
`and undermines Congressional intent. For example, Senator Leahy explained that
`
`CBM review is limited to patents directed to financial operations, not patents
`
`directed to general-purpose computer or communications operations:
`
`This provision is intended to cover only those business method
`patents intended to be used in the practice, administration, or
`management of financial services or products, and not to
`technologies common in business environments across sectors and
`that have no particular relation to the financial services sector,
`such as computers, communications networks, and business
`software.
`Ex. 2002 at S5441 (emphasis added). Neither VirtualAgility nor any other holding
`
`of the Board extends the scope of CBM review to include patents to “technologies
`
`common in business environments across sectors.”
`
`
`
`Indeed, in Salesforce v. Applications, the Board declined CBM review
`
`because the patent-at-issue claimed a technology that the Board found to be
`
`“common
`
`in business environments across sectors” with “no particular
`
`relation[ship] to the financial services sector.” CBM2014-00162, Paper 11 at 9. In
`
`that decision, the Board denied CBM review even though the specification states
`
`-8-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`that the invention is usable in the context of regulatory activities related to
`
`“banking, financial and securities activities and foreign trade.” Id. Therefore,
`
`specification statements that suggest that a general-purpose invention may be used
`
`in financial contexts do not subject a general-purpose invention to CBM review.
`
`
`
`The Board has similarly denied CBM review of other general-purpose
`
`patents that had no particular relationship to the financial services sector. See, e.g.,
`
`SEGA of America, Inc. v. Uniloc USA, Inc., CBM2014-00183, Paper 11 at 11–13
`
`(P.T.A.B. Mar. 10, 2015) (declining CBM review because the claims “are directed
`
`to technology that restricts the use of software” that “has no particular relationship
`
`to a financial product or service,” even though the specification and claims
`
`included examples in which “payment details” were used in the claimed process);
`
`J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00160, Paper
`
`11 at 11 (P.T.A.B. Jan. 29, 2015) (declining to institute CBM review when the
`
`claims “have general utility not limited or specific to any application”).
`
`Accordingly, under recent Board decisions, patents to computer technology
`
`having no particular relationship to the financial services sector are not CBM
`
`patents.
`
`-9-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`4.
`
`The determination of whether the ’715 Patent is for a
`technological invention is based upon an analysis of the
`claimed subject matter as a whole
`
`The USPTO’s definition of “technological invention” is “a case-by-case”
`
`analysis based on “whether the claimed subject matter as a whole recites a
`
`technological feature that is novel and unobvious over the prior art; and solves a
`
`technical problem using a technical solution.” 37 C.F.R. § 42.301(b).
`
`Accordingly, the determination of whether a patent is for a technological
`
`invention is based upon an analysis of the claimed subject matter as a whole. See
`
`also Experian Marketing Solutions, Inc. v. RPost Commc’ns. Ltd., CBM2014-
`
`00010, Paper 20 at 7 (P.T.A.B. Apr. 22, 2014) (“To determine whether a patent is
`
`for a technological invention, we consider ‘whether the claimed subject matter as a
`
`whole recites a technological feature that is novel and unobvious over the prior art;
`
`and solves a technical problem using a technical solution.’”).
`
`5.
`
`The Board’s determination whether the ’715 Patent is a covered
`business method patent must disregard statutorily disclaimed
`claims
`
`Under 37 C.F.R. § 42.207(e), the Board may not institute a covered business
`
`method patent review “based on disclaimed claims.”
`
`-10-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`III. THE PETITION SHOULD BE DENIED BECAUSE IT DOES
`NOT ESTABLISH THAT THE ’715 PATENT IS A
`COVERED BUSINESS METHOD PATENT
`
`A. The ’715 Patent is directed to technologies now common in business
`environments that have no particular relation to the financial services
`sector
`
`As an initial matter, claims 1–19 of the ’715 Patent have been statutorily
`
`disclaimed under 35 U.S.C. § 253(a). See Ex. 2011. Accordingly, no covered
`
`business method patent review may be instituted “based on disclaimed claims” 1 to
`
`19. 37 C.F.R. § 42.207(e); Salesforce v. Applications, CBM2014-00162, Paper 11
`
`at 2, 5; Great West Casualty Co. v. Intellectual Ventures II LLC, CBM2015-00171,
`
`Paper 10 at 7-9 (P.T.A.B. Feb. 9, 2016). Therefore, the Board’s inquiry must focus
`
`solely upon claims 20–50 of the ’715 Patent.
`
`Sally Beauty has failed to show that the relevant claims (claims 20–50) of
`
`the ’715 Patent are directed to financial products or services. Indeed, claims 20–50
`
`of the ’715 Patent are directed to technologies now common in business
`
`environments that have no particular relation to the financial services sector. See
`
`AIA § 18(d)(1). The claim language itself—the central evidence of whether the
`
`’715 Patent claims a covered business method and is thus a CBM Patent—shows
`
`that the relevant claims of the ’715 Patent are not directed to a covered business
`
`method as defined by the CBM statute. Moreover, nothing in the specification or
`
`the file history of the ’715 Patent particularly ties the claims of the ’715 Patent to a
`
`-11-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`financial product or service such that the ’715 Patent can be considered to be a
`
`CBM patent. Indeed, the portions of the specification that Sally Beauty relies upon
`
`are non-limiting examples that show that disclosed embodiments can be used
`
`generally by almost anyone in almost any industry, not that the claimed invention
`
`has any particular relation to the financial services sector or even to financial
`
`operations.
`
`1.
`
`Claims 20–50 of the ’715 Patent are directed to technologies now
`common in business environments that have no particular
`relation to the financial services sector
`
`Claims 20–50 of the ’715 Patent are directed to an apparatus or method of
`
`“integrating and delivering data available over a network.” Ex. 1001, claim 20; see
`
`also claim 35 (“facilitating the integration and delivery of data available over a
`
`network”) (emphasis added). It is readily apparent from the claim language itself
`
`that the claims are directed generally to the technical field of computer
`
`networking, and, more specifically, to a particular computer networking
`
`architecture for integrating data available over a network. The Petition fails to
`
`show that claims 20–50 of the ’715 Patent are directed to activities that are even
`
`remotely financial in nature. Rather, the claimed tool for integrating and delivering
`
`public data and private data is a pure computing tool. It may be used by anyone, in
`
`any industry or for personal use, to integrate any kind of data.
`
`-12-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`a.
`
`The Petition’s entire argument fails because it focuses solely
`on disclaimed claims 1, 9, and 14
`
`Sally Beauty’s failed to carry its burden to show that CBM review is
`
`warranted because its entire argument focuses solely on claims 1, 9, and 14. Those
`
`claims were disclaimed and cannot be a legal basis for instituting a CBM review.
`
`37 C.F.R. § 42.207(e); Salesforce v. Applications, CBM2014-00162, Paper 11 at 2,
`
`5; Great West Casualty Co., CBM2015-00171, Paper 10 at 7-9. This is so because
`
`“a patent with a statutory disclaimer is to be treated as though the disclaimed
`
`claims never existed.” Great West Casualty, CBM2015-00171, Paper 10 at 7
`
`(citing 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.”)).
`
`Sally Beauty also provides no argument that claims 20–50 merit CBM
`
`review, nor has Sally Beauty demonstrated any overlap between alleged overt
`
`financial language in the disclaimed claims and remaining claims 20–50. See id. at
`
`8-9 (“Petitioner has identified little relevant overlap between [disclaimed] claims
`
`1–10 and claims 11–20, in that the more overt finance-related subject matter of
`
`claims 1–10 identified by Petitioner . . . are not recited in claims 11–20.”). Thus,
`
`Sally Beauty failed its Petitioner’s burden to “demonstrate that the patent for which
`
`-13-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`review is sought is a covered business method patent,” and the Petition should be
`
`denied. 77 Fed. Reg. at 48,763.
`
`Sally Beauty’s heavy reliance upon dependent claim 14 as allegedly
`
`including express financial limitations highlights that the wholly-independent
`
`claim families (claims 20–50) that remain in the ’715 Patent do not include the
`
`allegedly express financial limitations.1
`
`b.
`
`None of the language of claims 20–50 is tied to financial
`services
`
`In contrast, Sally Beauty argues that disclaimed independent claim 1 only
`
`“generally relates to financial products and services.” Paper 1 at 6 (emphasis
`
`added). To the extent that remaining claims 20–50 share any language with
`
`disclaimed claim 1, none of this language is tied to financial services. Sally Beauty
`
`relies on the terms “public data” and “private data” in claim 1, which also appear
`
`in claims 20, 35, and 41, but neither of these terms is financial. Indeed, Sally
`
`Beauty’s own definition of these claim terms undermines Sally Beauty’s
`
`contention that the claims are particularly related to financial transactions. Sally
`
`Beauty defines “public data” to mean “data accessible to all or substantially all
`
`
`1 Claim 14 depends indirectly from claim 1. Claims 1–19 have been disclaimed.
`
`None of the remaining claims 20–50 have any dependency relationship with any of
`
`the disclaimed claims.
`
`-14-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`users.” Paper 1 at 16. Even under Sally Beauty’s definition, “public data” is a
`
`general term covering any type of information accessible to all or substantially all
`
`users. The scope of this claim term spans data on millions of topics of human
`
`interest, including data on weather, sport scores, scientific articles, cooking recipes,
`
`legal treatises, patents, recreation, travel, restaurant reviews, movie reviews, and
`
`history. That the universe of data on millions of topics of human interest may
`
`include a number of financial topics, including, for example, stock quotes and
`
`stock market analysis, does not transform the claimed invention—which is a tool
`
`that integrates any public and private data—into a financial product or service.
`
`Sally Beauty defines “private data” to mean “data accessible to one or more
`
`authorized parties.” Id. Like its definition for public data, Sally Beauty’s definition
`
`for private data encompasses data on millions of topics, so long as that data is
`
`“accessible to one or more authorized parties.” For example, the scope of private
`
`data can encompass any of a number of types of data for an authorized user to
`
`access, such as social networking messages, emails, or calendar data, and more
`
`generally any data accessible with an account, such as news, weather, and many
`
`other kinds of data. Thus, private data it is not specifically designed to distribute
`
`financial information in particular. Under the broadest reasonable interpretation,
`
`private data’s incidental encompassing of some financial topics does not transform
`
`the claimed invention into a financial product or service.
`
`-15-
`
`

`
`CBM2016-00030
`Sally Beauty v. Intellectual Ventures
`
`Although claims 20-50 do not contain the terms “company transactional
`
`data” and “business partner transactional data” of disclaimed claim 14, claim 33
`
`recites a generic form of “private transactional data” that is not particularly
`
`directed to financial services. Sally Beauty does not provide an explicit
`
`construction for “private transactional data” in claim 33 but argues that
`
`“transactional data” itself subjects claim 14 to CBM review. Paper 1 at 7-8. Yet
`
`claim 33’s recitation of “private transactional data” is different and broader than
`
`the “company” transactional data or “business partner” transactional data of
`
`disclaimed claim 14. Under the broadest reasonable interpretation, “private
`
`transactional data,” or private data associated with a transaction, is

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