Paper No. 9
`Entered: October 3, 2016
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NEXTEL OPERATIONS, INC., SPRINT SPECTRUM L.P.,
`BOOST MOBILE, LLC, and VIRGIN MOBILE USA, L.P.,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case CBM2016-00052
`Patent 5,339,352
`_______________
`
`Before GEORGIANNA W. BRADEN, FRANCES 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
`
`
`
`
`
`
`
`
`Entered: October 3, 2016
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NEXTEL OPERATIONS, INC., SPRINT SPECTRUM L.P.,
`BOOST MOBILE, LLC, and VIRGIN MOBILE USA, L.P.,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case CBM2016-00052
`Patent 5,339,352
`_______________
`
`Before GEORGIANNA W. BRADEN, FRANCES 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
`
`
`
`
`
`
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`
`I.
`
`INTRODUCTION
`
`Nextel Operations, Inc., Sprint Spectrum L.P., Boost Mobile, LLC,
`
`and Virgin Mobile USA, L.P., (“Petitioners”) filed a Petition (Paper 1,
`
`“Pet.”) to institute a covered business method patent review of claims 1, 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 6, “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, 5, and 9. See
`
`35 U.S.C. § 324(a).
`
`II.
`
`BACKGROUND
`
`A. Related Proceedings
`
`Petitioners informs us that the ’352 patent is the subject of district
`
`court case Intellectual Ventures II LLC v. Nextel Operations, Inc., et al., No.
`
`1:13-cv-01635-LPS (D. Del.). Pet. 2 (citing Ex. 1009); see Paper 5, 1
`
`(Patent Owner’s Mandatory Notices). Patent Owner also informs us that
`
`challenged claims 1, 5, and 9 of the ’352 patent were the subject of a prior
`
`petition for covered business method patent review. Prelim. Resp. 1 (citing
`
`CBM2015-00185).
`
`2
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`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
`
`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
`
`3
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`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.
`
`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 the’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
`
`4
`
`
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`CBM2016-00052
`Patent 5,339,352
`
`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
`
`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, Petitioners challenge claims 1, 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
`
`5
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`recording the identity of the wireless communication terminal in
`the operator service system.
`
`Ex. 1001, 13:41–14:2.
`
`D. The Asserted Ground of Unpatentability
`
`Petitioners asserts claims 1, 5, and 9 of the ’352 patent are
`
`unpatentable based on the grounds set forth in the table below:
`
`References
`
`Padden1 and Chadha2
`
`Padden, Chadha, and
`Suzuki3
`
`Pet. 23.
`
`Basis
`§ 101
`§ 103(a)
`
`Challenged Claim(s)
`1, 5, and 9
`1 and 5
`
`§ 103(a)
`
`9
`
`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., Petitioners
`
`represent they have been sued for infringement of the ’352 patent and are not
`
`estopped from challenging the claims on the grounds identified in the
`
`Petition. Pet. 2–3 (citing Ex. 1009).
`
`
`1 U.S. Patent No. 4,979,206; Dec. 18, 1990 (“Padden,” Ex. 1003).
`2 Chadha, K.J.S., et al., “Advanced Mobile Phone Service: Mobile
`Telephone Switching Office,” Bell Sys. Tech. J. 58(1); Jan. 1979 (“Chadha,”
`Ex. 1004).
`3 Japanese Patent Application Pub. No. H2-278952; Nov. 15, 1990
`(“Suzuki,” Ex. 1005).
`
`6
`
`
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`CBM2016-00052
`Patent 5,339,352
`
`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–
`
`14; Prelim. Resp. 12–33. It is Petitioners’ 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 Petitioners have 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
`
`7
`
`
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`CBM2016-00052
`Patent 5,339,352
`
`accepting analysis of single claim as representative of determination whether
`
`to institute a covered business method patent review).
`
`Petitioners contend 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
`
`billing for call completion services from an OSS.” Pet. 10 (citing Ex. 1001,
`
`Abst, Claim 1). Petitioners note 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). Petitioners
`
`also rely on the last limitation of claim 1 to support their 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 11. According to Petitioners, 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).
`
`Petitioners further argue 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
`
`8
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`“determin[ing] if the subscriber has subscribed” to a particular service. Id.
`
`at 11–12 (citing Ex. 1001, 14:3–8, 14:50–53).
`
`Patent Owner disputes Petitioners’ position, contending that none of
`
`the claims recite 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.
`
`Prelim. Resp. 14. To support its position, Patent Owner points to the
`
`Decision Denying Institution issued in related CBM2015-00185, where the
`
`Board declined to institute a covered business method patent review of the
`
`’352 patent for failing to qualify as a covered business method patent. See
`
`AT&T Mobility LLC v. Intellectual Ventures II LLC, CBM2015-00185, slip.
`
`op. at 10 (PTAB May 4, 2016) (Paper 10).
`
`Patent Owner argues claim 1 does not support Petitioners’ position
`
`that the ’352 patent is financial in nature. Prelim. Resp. 14–15. Patent
`
`Owner specifically argues that Petitioners misstate 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. (citing Pet. 11).
`
`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 15–16 (citing Ex. 1001, 3:57–4:16).
`
`Patent Owner further argues that claim 2 cannot be used to support
`
`Petitioners’ arguments that the ’352 patent qualifies as a covered business
`
`method. Id. at 20–21 (citing Pet. 11; 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
`
`9
`
`
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`CBM2016-00052
`Patent 5,339,352
`
`determination on whether or not to institute a trial on claim 2 or any of the
`
`other disclaimed claims. Id. at 21 (citing Ex. 2003).
`
`With respect to claim 9, Patent Owner argues that Petitioners’ analysis
`
`is conclusory, and, in any event, claim 9 is not directed to a financial product
`
`or service. Id. at 21–23. 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 22–23.
`
`We agree with Patent Owner for the same reasons as articulated in the
`
`Decision Denying Institution issued in related CBM2015-00185. See AT&T
`
`Mobility, CBM2015-00185, slip. op. at 10. 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. 20–21 (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
`
`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
`
`10
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`Co., v. Intellectual Ventures II LLC, CBM2015-00171, slip op. at 7 (PTAB
`
`Feb. 9, 2016) (Paper 10).
`
`Second, other prior decisions by PTAB panels have considered the
`
`impact of disclaimed, financially explicit dependent claims on a retained
`
`antecedent independent claim, and we find those decisions to be consistent
`
`with our analysis in the present case. For example, in American Express Co.
`
`v. Maxim Integrated Products, Inc., the patent owner disclaimed claim 2,
`
`arguing that the patent must be treated as though the disclaim claim never
`
`existed, and that the petition failed because it only analyzed claim 2. Am.
`
`Express Co. v. Maxim Integrated Prods., Inc., CBM2015-00098, slip op. at
`
`8 (PTAB Sept. 22, 2015) (Paper 17). The panel disagreed because the
`
`petition explicitly argued “the claims” of the patent and did not limit the
`
`arguments to the disclaimed claim. Id. at 8–9. Thus, applying the
`
`arguments in the petition to the remaining claims, the panel found that at
`
`least one claim was directed to a financial product or service. Id. A similar
`
`situation occurred in Compass Bank v. Maxim Integrated Products, Inc.,
`
`CBM2015-00102, slip op. at 11–12 (PTAB Oct. 7, 2015) (Paper 16), where
`
`the Patent Owner disclaimed claim 7, but the panel in that case only
`
`considered challenged claims 1–6 and 8 to determine CBM review
`
`eligibility. In J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC,
`
`CBM2014-00157, slip op. at 3 (PTAB Feb. 18, 2015) (Paper 11), the patent
`
`owner disclaimed dependent claim 12 after institution of a CBM review.
`
`The Patent Owner requested that the proceeding be terminated based on its
`
`disclaimer. Id. at 2. The panel, however, denied patent owner’s request
`
`explaining that standing for CBM review is determined at the time of
`
`11
`
`
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`CBM2016-00052
`Patent 5,339,352
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`institution, and thus, the disclaimer had no effect on determining CBM
`
`review eligibility. Id. at 2–3.
`
`Third, 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 Blue Calypso, LLC
`
`v. Groupon, Inc. 815 F.3d 1331, 1340 (Fed. Cir. 2016) (approving of Board
`
`decisions that declined institution of covered business method reviews where
`
`the Board found there was “nothing explicitly or inherently financial in the
`
`construed claim language”).
`
`Fourth, 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
`
`12
`
`
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`CBM2016-00052
`Patent 5,339,352
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`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
`
`specific to any application.”); ServiceNow, Inc. Hewlett-Packard, Co.,
`
`CBM2015-00108, slip. op. at 15 (PTAB Oct. 7, 2015) (Paper 10) (“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, before turning to the illustrative ATM network
`
`embodiment”), 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
`
`13
`
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`CBM2016-00052
`Patent 5,339,352
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`involving the movement of money, extension of credit, or other financial
`
`product or service).
`
`Lastly, finding that anything with a possible use with respect to any
`
`activities involving financial products and services would capture claimed
`
`inventions only tangentially relates to activities involving financial products
`
`and services “would mean that any patent claiming something that can be
`
`used in connection with a financial service (e.g., an Ethernet cable, a generic
`
`computer monitor, or even a ballpoint pen) would be eligible for covered
`
`business method patent review, regardless of what the patent claims.” 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 Petitioners is that the illustrative
`
`embodiments in the specification of the ’352 patent merely show that the
`
`invention may be used for billing. Pet. 10–11. 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
`
`14
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`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). Petitioners’ 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 Petitioners have 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,
`
`slip. op. at 17. Accordingly, Petitioners have not met their burden of
`
`15
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`demonstrating that the ’352 patent is eligible for covered business method
`
`patent review.
`
`C. Analysis Under 35 U.S.C. § 325(d)
`
`In the Preliminary Response, Patent Owner argues the Board should
`
`exercise its discretion to deny the Petition under 35 U.S.C. §325(d). Prelim.
`
`Resp. 3–4. We note the discretionary nature of 35 U.S.C. § 325(d), which
`
`states that the Director “may take into account” arguments presented
`
`previously; the statute does not impose a requirement to institute or not
`
`institute a proceeding under Chapter 30, 31 or 32. Based on the foregoing,
`
`and in consideration that we are denying institution of the requested covered
`
`business method patent review, we decline to exercise our discretion under
`
`35 U.S.C. §325(d).
`
`
`
`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, 5, and 9 of the
`
`’352 patent.
`
`
`
`
`
`16
`
`
`
`CBM2016-00052
`Patent 5,339,352
`
`FOR PETITIONERS:
`
`Robert C. Hilton
`Rachelle H. Thompson
`McGuireWoods LLP
`rhilton@mcguirewoods.com
`rthompson@mcguirewoods.com
`
`FOR PATENT OWNER:
`
`Lori A. Gordon
`Robert E. Sokohl
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`lgordon-PTAB@skgf.com
`rsokohl-PTAB@skgf.com
`
`James R. Hietala
`Tim R. Seeley
`Intellectual Ventures
`jhietala@intven.com
`tim@intven.com
`
`17
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