Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 10
`Entered: February 27, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`KLAUSTECH, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00096
`Patent 6,128,651
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER M. KAISER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper No. 10
`Entered: February 27, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`KLAUSTECH, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00096
`Patent 6,128,651
`____________
`
`
`
`Before MICHAEL R. ZECHER, CHRISTOPHER M. KAISER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`I.
`
`INTRODUCTION
`
`Petitioner, Google Inc. (“Google”), filed a Petition requesting a
`
`review under the transitional program for covered business method patents
`
`of claims 20, 21, 23–26, 28, and 29 (“challenged claims”) of U.S. Patent No.
`
`6,128,651 (Ex. 1001, “the ’651 patent”). Paper 1 (“Pet.”). Patent Owner,
`
`KlausTech, Inc. (“KlausTech”), filed a Preliminary Response. Paper 7
`
`(“Prelim. Resp.”).
`
`After Google filed its Petition, but before KlausTech filed its
`
`Preliminary Response, the U.S. Court of Appeals for the Federal Circuit
`
`issued a decision in Unwired Planet, LLC v. Google Inc., 841 F.3d 1376
`
`(Fed. Cir. 2016) (“Unwired Planet”),1 which provided new guidance
`
`regarding the financial prong of the covered business method patent
`
`eligibility test. Given this intervening case law, we afforded Google an
`
`opportunity to file a reply to explain how the Federal Circuit’s new guidance
`
`in Unwired Planet impacts this proceeding. Paper 8. Google filed a Reply
`
`that was tailored narrowly to address this issue. Paper 9 (“Reply”).
`
`
`
`1 Shortly before this Decision issued, the Federal Circuit issued a decision in
`Secure Axcess, LLC v. PNC Bank National Ass’n, No. 2016-1353 (Fed. Cir.
`Feb. 21, 2017) (“Secure Access”). The parties did not have the opportunity
`to address the holding in Secure Axcess or any possible impact it may have
`on this case. The Federal Circuit’s decision in Secure Axcess reached a
`similar outcome as that in Unwired Planet, and we determine that its holding
`does not alter the outcome or analysis presented in this Decision.
`
`2
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`We have jurisdiction under 35 U.S.C. § 324,2 which provides that a
`
`covered business method patent review may not be instituted unless the
`
`information presented in the Petition demonstrates “that it is more likely
`
`than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.” Taking into account the arguments presented in KlausTech’s
`
`Preliminary Response and Google’s Reply, we determine that the
`
`information presented in the Petition does not establish that the ’651 patent
`
`qualifies as a covered business method patent that is eligible for review, as
`
`defined by § 18(d)(1) of the AIA. We, therefore, deny the Petition.
`
`A. Related Matters
`
`
`
`The parties indicate that the ’651 patent has been asserted in a district
`
`court case currently captioned KlausTech, Inc. v. Google Inc., No. 4:10-cv-
`
`05899 JSW (N.D. Cal.). Pet. 2–4; Paper 3, 2.
`
`B. The ’651 Patent
`
`The ’651 patent generally relates to Internet advertising and, in
`
`particular, to a frame displayed on a website that includes ad content
`
`controlled and timed by a central controller. Ex. 1001, 1:6–9. According to
`
`the ’651 patent, one problem associated with advertising on a web page is
`
`that the advertiser who places an ad has little control over how the ad is
`
`viewed at a user’s browser. Id. at 1:32–33. For instance, some web pages
`
`are larger than the screen that displays the web pages and, therefore, allows
`
`
`
`2 See Section 18(a)(1) of the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284, 329–31 (2011) (“AIA”), which provides that the
`transitional program for covered business method patents will be regarded as
`a post-grant review under Chapter 32 of Title 35 of the United States Code,
`and will employ the standards and procedures of a post-grant review, subject
`to certain exceptions.
`
`3
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`the web pages and the ads contained therein to be scrolled. Id. at 1:34–36.
`
`Scrolling in this manner does not allow the advertiser to control when
`
`his/her ad is being viewed by the user. Id. at 1:36–40. Although one known
`
`solution is to place ad content in a non-scrolling frame, this solution has its
`
`drawbacks. Id. at 1:41–60. Designers of search engines are now equipped
`
`to scan a website for the presence of a frame and, if it finds a frame, the
`
`search engine is capable of moving on without further interrogation or
`
`indexing of the website. Id. at 1:67–2:11.
`
`
`
`The ’651 patent discloses that another problem associated with
`
`advertising on a web page is control over how long the ad content is viewed
`
`at the user’s browser. Ex. 1001, 2:12. Websites displaying ad content that
`
`are viewed on non-scrolling frames usually program or randomly change the
`
`ad content on a periodic basis. Id. at 2:12–16. Because the website has
`
`exclusive control over display of the ad content, the same ad content may
`
`continue to be displayed indefinitely in the non-scrolling frame for as long
`
`as the browser remains on the website. Id. at 2:16–19.
`
`
`
`The ’651 patent addresses these problems by using a webserver that
`
`delivers web pages to a user’s browser, and a central controller that tracks
`
`the extent in which a particular ad is presented at the browser. Ex. 1001,
`
`2:21–23. The web page presents the ad by displaying it in a non-scrolling
`
`frame of the browser. See id. at 2:24–26. The ad content includes a coded
`
`timer that, upon expiration, causes the browser to send a report to the central
`
`controller. Id. at 2:26–28. According to the ’651 patent, this system enables
`
`precise control of advertising viewed by the browser, as well as enables the
`
`central controller to budget accurately for advertising and adjust accordingly
`
`to meet marketing needs. Id. at 2:28–32.
`
`4
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 20 and 25 are the only independent
`
`claims at issue. Independent claims 20 and 25 are directed to a non-scrolling
`
`ad display from a website for causing a browser hitting the website to
`
`undertake centrally controlled and recorded ad display for guaranteed
`
`minimum time intervals. Claims 21, 23, and 24 directly or indirectly depend
`
`from independent claim 20; and claims 26, 28, and 29 directly or indirectly
`
`depend from independent claim 25. Independent claim 20 is illustrative of
`
`the challenged claims and is reproduced below:
`
`20. A non-scrolling ad display from a website for
`causing a browser hitting the website to undertake centrally
`controlled and recorded ad display for guaranteed minimum
`timed intervals comprising the steps of:
`
`providing a website at a webserver for transmitting at least
`one page with a non-scrolling ad frame to a browser;
`
`providing ad content for the non-scrolling ad frame, each
`ad content having ad identity and an individual timer for timing
`out commencing with display at the browser and an Internet
`address for fetching by the browser;
`
`providing a central controller interrogating for browser
`identity and maintaining records associated with the browser
`identity indicating ad identity displayed, and timer timeout;
`
`placing the ad content in the non-scrolling ad frame of the
`browser to display the ad content and start the individual timer;
`
`timing out the individual timer of the ad content at the non-
`scrolling frame at the browser;
`
`reporting from the browser to the central controller the
`timer timeout of the ad content;
`
`retaining in the central controller a record of the browser
`identity, the ad identity, and the timer timeout of the ad content
`at the browser; and
`
`5
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`transmitting to the reporting browser an Internet address
`for new ad content for placement in the non-scrolling ad frame
`in response to receipt of the timer timeout report at the central
`controller.
`
`Ex. 1001, Reexamination Certificate, 2:22–49 (italics omitted).
`
`D. Asserted Grounds of Unpatentability
`
`Google challenges claims 20, 21, 23–26, 28, and 29 of the ’651 patent
`
`based on the asserted grounds of unpatentability (“grounds”) set forth in the
`
`table below. Pet. 7–8, 36–83.
`
`Basis
`
`§ 101 for failing to claim statutory subject
`matter
`§ 101 for claiming patent ineligible subject
`matter under Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014)
`§ 112 ¶ 2 for claiming a hybrid claim
`
`§ 112 ¶ 2 for failing to claim what applicant
`regards as its invention
`§ 112 ¶ 2 for being indefinite
`
`§ 112 ¶ 1 for failing to satisfy the written
`description requirement
`§ 112 ¶ 1 for failing to satisfy the enablement
`requirement
`
`Challenged Claims
`
`20, 21, 23–26, 28, and 29
`
`20, 21, 23–26, 28, and 29
`
`20, 21, 23–26, 28, and 29
`
`20, 21, 23–26, 28, and 29
`
`20, 21, 23–26, 28, and 29
`
`20, 21, 23–26, 28, and 29
`
`20, 21, 23–26, 28, and 29
`
`II. ANALYSIS
`
`1. Overview of “Covered Business Method Patent”
`
`Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
`
`proceeding only for a covered business method patent. A “covered business
`
`method patent” is 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
`
`6
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`§ 18(d)(1); see also 37 C.F.R. § 42.301 (defining “[c]overed business
`
`method patent” and “[t]echnological invention”). For purposes of
`
`determining whether a patent is eligible for a covered business method
`
`patent review, the focus is on the claims to determine whether there is
`
`anything “explicitly or inherently financial in the construed claim language.”
`
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016).
`
`2. The Unwired Planet Decision
`
`As we explained in our Introduction section above, after the filing of
`
`the Petition, but before the filing of the Preliminary Response, the Federal
`
`Circuit issued its decision in Unwired Planet. In that case, the Federal
`
`Circuit addressed the scope of the “financial product or service” requirement
`
`of the definition of “covered business method patent” found in § 18(d)(1) of
`
`the AIA. Unwired Planet, 841 F.3d at 1379. As part of its determination of
`
`whether the patent at issue in Unwired Planet qualified as a covered
`
`business method patent eligible for review, the Federal Circuit held that the
`
`Board improperly relied on language from the legislative history concerning
`
`the scope of covered business method patent review (i.e., the “incidental to”
`
`and “complementary to” language), instead of the statutory definition for a
`
`covered business method patent. Id. at 1380–82.
`
`The Federal Circuit further explained its understanding of the scope of
`
`what qualified as a patent claiming a “financial product or service” through
`
`its discussion of the specific claims at issue in Unwired Planet. Those
`
`claims recited a “client application” that, upon reviewing the specification of
`
`the patent at issue, the Board determined was broad enough in scope to
`
`cover potential sales resulting from advertising. Unwired Planet, 841 F.3d
`
`at 1378, 1380. The Federal Circuit disagreed with the Board’s
`
`7
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`determination—and the argument advanced by the petitioner, Google, on
`
`appeal—that the patent at issue qualified as a covered business method
`
`patent eligible for review because it included claims that could be used to
`
`facilitate advertising. Id. at 1379. The Federal Circuit explained that “it
`
`cannot be the case that a patent covering a method and corresponding
`
`apparatuses becomes a [covered business method] patent because its practice
`
`could involve a potential sale of a good or service.” Id. at 1382. The
`
`Federal Circuit further explained that “[i]t is not enough that a sale has
`
`occurred or may occur, or even that the specification speculates such a
`
`potential sale might occur.” Id.
`
`With this new guidance from the Federal Circuit in mind, we turn to
`
`the parties’ arguments as to whether Google has demonstrated that at least
`
`one challenged claim of the ’651 patent is directed to a method or apparatus
`
`for performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service.
`
`3. The Parties’ Contentions
`
`Google contends the independent claims 20 and 25 each recite
`
`features relating to the presentation and monetization of advertisements.
`
`Pet. 9. Google asserts that, because advertising is a “fundamental business
`
`practice,” these independent claims are at least incidental or complementary
`
`to a financial product or service and, therefore, satisfy the financial prong of
`
`covered business method patent eligibility. Id. at 10. Google further argues
`
`that, as evidenced by a claim construction brief and deposition testimony in
`
`the co-pending district court case, KlausTech and the named inventor of the
`
`’651 patent characterize this patent as being directed to a business method
`
`8
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`incidental or complementary to a financial product or service. Id. at 11, 13–
`
`15, 17 (citing Ex. 1007, 2;3 Ex. 1018, 30:19–21, 31:25–32:7).
`
`Google also argues that the specification of the ’651 patent provides
`
`additional discussion of the financial context of the particular embodiment
`
`covered by independent claims 20 and 25. Pet. 11–13 (citing Ex. 1001, 2:5–
`
`9, 2:28–33, 2:46–48, 3:49–61, 5:10–16, 9:10–12, Fig. 1). In particular,
`
`Google asserts that the sole reason for retaining “records” of the displayed
`
`advertisements, as required by independent claims 20 and 25, is to provide a
`
`mechanism for compensation and billing. Id. at 14–15 (citing Ex. 1001,
`
`2:28–33, 3:32–35, 3:40–43, 4:32–37, Fig. 1). Lastly, Google directs us to
`
`Federal Circuit precedent, as well as previous Board decisions, that
`
`purportedly support its assertion that the financial prong of covered business
`
`method patent eligibility should be construed broadly. Id. at 15–17.
`
`In response, KlausTech contends that the challenged claims do not
`
`satisfy the statutory definition for a covered business method patent. Prelim.
`
`Resp. 10. KlausTech directs us to the Federal Circuit’s recent decision in
`
`Unwired Planet, and argues that Google improperly relies upon the
`
`“incidental to” or “complementary to” language from the legislative debate
`
`concerning the scope of covered business method patent review. Id. at 10–
`
`12. KlausTech argues that Google fails to point to language in the
`
`challenged claims that is financial in nature, such as the subsidy program
`
`explicitly recited in the claims at issue in Blue Calypso. Id. at 12 (citing
`
`Blue Calypso, 815 F.3d at 1339–40). KlausTech also argues that, unlike the
`
`
`
`3 All page numbers in Exhibit 1007 refer to the original pages in the middle
`portion of each page––not the page numbers inserted by Google in
`essentially the same location.
`
`9
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`subsidy program in Blue Calypso, the “ad content” recited in independent
`
`claim 20 and 25 is not the central or core concept of the claimed invention.
`
`Id. Rather, KlausTech argues that the central or core concept of the claimed
`
`invention is delivery and display of ad content at the browser apart from the
`
`website actually being displayed by the browser. Id.
`
`In its Reply, Google counters that, because independent claims 20 and
`
`25 each recite “providing ad content,” “placing the ad content” and
`
`“retaining . . . a record,” these claims expressly recite financial-related
`
`activities. Reply 1 (citing Ex. 1001, Reexamination Certificate, 2:22–49,
`
`3:19–48). Google argues that transmitting and displaying “ad content” in a
`
`browser (i.e., online advertising) constitutes operations used in the practice,
`
`administration, or management of a financial product or service. Id. at 2.
`
`As further support for its argument, Google directs us to the Federal
`
`Circuit’s decision in Blue Calypso, as well as previous Board decisions
`
`addressing whether advertising, by itself, is sufficient to meet the financial
`
`prong of covered business method eligibility. Id. Google also argues that,
`
`even after the Federal Circuit’s decision in Unwired Planet, claims that
`
`recite online advertising still qualify as a financial product or service. Id. at
`
`2–3. Lastly, Google argues that “retaining . . . a record,” as recited in
`
`independent claims 20 and 25, is financial in nature because, upon
`
`examining the specification of the ’651 patent, the sole function of retaining
`
`a record of the displayed advertisement is for compensation and billing. Id.
`
`at 3–4 (citing Ex. 1001, Abstract, 2:28–33, 3:32–35, 3:40–43, 4:32–37, Fig.
`
`1).
`
`10
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`4. The ’651 Patent Does Not Satisfy the Financial Prong of Covered
`Business Method Patent Eligibility
`
`We agree with KlausTech that, based on the Federal Circuit’s new
`
`guidance in Unwired Planet, Google has not demonstrated that at least one
`
`challenged claim of the ’651 patent is directed to a method or apparatus for
`
`performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service. We begin
`
`our analysis by focusing on the language of independent claims 20 and 25,
`
`each of which recite “providing ad content for the non-scrolling ad frame,”
`
`“placing the ad content, in the non-scrolling ad frame . . . to display the ad
`
`content,” and “retaining in the central controller a record of the browser
`
`identity, the ad identity, and the timer timeout of the ad content at the
`
`browser.” Ex. 1001, Reexamination Certificate, 2:22–49, 3:19–48 (italics
`
`omitted). We agree with Google that these claims generally apply to
`
`Internet advertising. See Pet. 9–10; Reply 1–2. The Federal Circuit,
`
`however, explained in Unwired Planet that claims broad enough in scope to
`
`cover the facilitation of advertisement, without more, are not enough to
`
`justify concluding that a patent is a covered business method patent eligible
`
`for review. See Unwired Planet, 841 F.3d at 1379, 1382.
`
`Likewise, independent claims 20 and 25 do not recite explicitly or
`
`inherently any additional financial terminology or limitations that would
`
`justify concluding that the ’651 patent is a covered business method patent
`
`eligible for review. Although we recognize that Internet advertising
`
`generally involves the sale of ad space, the fact that a sale has occurred or
`
`may occur is not enough when the challenged claims neither recite a sale nor
`
`are otherwise directed to the practice, administration, or management of a
`
`financial product or service. See Unwired Planet, 841 F.3d at 1382.
`
`11
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`Moreover, although Internet advertising might lead to a sale of a good or
`
`service, mere probabilities or possibilities fall short of demonstrating
`
`operations necessarily used in the practice, administration, or management
`
`of a financial product or service. See id. Here, there is nothing explicit or
`
`inherent in the challenged claims that is financial in nature, and Google does
`
`not propose any claim constructions that are financial in nature that would
`
`warrant a different conclusion. See Pet. 34–35 (setting forth Google’s
`
`proposed construction of “non-scrolling ad display,” which does not include
`
`a specific tie to a financial product or service).
`
`To support its argument that independent claims 20 and 25 are
`
`directed to a covered business method, Google identifies certain examples in
`
`the specification of the ’651 patent. See Pet. 11–13; Reply 3–4. Google,
`
`however, does not explain how these examples disclosed in the specification
`
`limit the scope of the challenged claims. For example, the ’651 patent states
`
`“[t]he data base [sic] provides an audit trail from which websites can be
`
`compensated for ad display and advertisers billed for the ad display.”
`
`Ex. 1001, Abstract (emphasis added); see also id. at 2:46–48 (stating the
`
`same). Independent claims 20 and 25, however, do not require such a
`
`database. In any event, the language “can be” is permissive language that
`
`renders this particular aspect disclosed in the abstract and specification
`
`optional.
`
`As another example, the specification discloses that “[a] record may
`
`be used to compensate each of the advertiser webservers C for the total time
`
`of ad display to particular browsers B,” and “[u]tilizing this record,
`
`advertisers can be billed for the services that the system renders.” Ex. 1001,
`
`4:34–36, 4:44–45 (emphases added). The particular “record” recited in
`
`12
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`independent claims 20 and 25, however, is only limited to include the
`
`“browser identity,” “ad identity,” and “timer timeout of the ad content.” Id.
`
`at Reexamination Certificate, 2:43–45, 3:40–42. Once again, the language
`
`“may be” and “can be” used in the specification is permissive language that
`
`renders the additional compensation and billing aspects disclosed therein
`
`optional.
`
`Putting aside that certain examples in the specification of the ’651
`
`patent are optional features that do not limit the scope of the challenged
`
`claims, the Federal Circuit in Unwired Planet cautioned that, even if “the
`
`specification speculates . . . a potential sale might occur,” that is not enough
`
`to render a patent a covered business method patent eligible for review.
`
`Unwired Planet, 841 F.3d at 1382. As we explained above, the specification
`
`indicates that retaining a record of a displayed advertisement may be used
`
`for compensation and billing purposes. We, however, decline Google’s
`
`invitation to speculate or assume that the sole purpose of the record retention
`
`required by the challenged claims is for compensation and billing.
`
`To the extent Google argues that the challenged claims in this
`
`proceeding are similar to the claims at issue in Blue Calypso and, therefore,
`
`satisfy the financial prong of covered business method patent eligibility, we
`
`do not agree. See Reply 2–3. In Blue Calypso, the claims were directed to
`
`“[a] method for providing access to an advertisement from an advertiser”
`
`that recited, among other things, a “subsidy program.” Blue Calypso, 815
`
`F.3d at 1336–37. The Board focused on the subsidy program, particularly
`
`the unchallenged construction of the claim term “subsidy,” to qualify the
`
`patents at issue as covered business method patents eligible for review. Id.
`
`at 1339–40. The Federal Circuit agreed with the Board, noting that the
`
`13
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`patents at issue “are directed to methods in which advertisers financially
`
`induce ‘subscribers’ to assist their advertising efforts.” Id. at 1340. The
`
`challenged claims at issue in this proceeding are distinguishable from the
`
`claims at issue in Blue Calypso in at least one respect. As we explained
`
`above, independent claims 20 and 25 generally apply to Internet advertising.
`
`These claims do not recite explicitly or inherently any additional financial
`
`terminology or limitation, such as the subsidy program explicitly recited in
`
`the claims at issue in Blue Calypso.
`
`We do not agree with Google’s argument that there are a number of
`
`Board decisions, particularly those addressing advertisements, that support
`
`its argument that at least one of the challenged claims of the ’651 patent
`
`satisfies the financial prong of covered business method patent eligibility.
`
`See Pet. 10–11, 15–17; Reply 2–3. The Board decisions cited by Google are
`
`not precedential and not binding on this panel. Nonetheless, we have
`
`reviewed these decisions. Our review of these decisions, however, reveals
`
`that the determination of whether a patent is a covered business method
`
`patent eligible for review rests upon the specific facts of each case.
`
`We also take this opportunity to note that the Board decisions cited by
`
`Google are distinguishable from the circumstances presented here in at least
`
`one additional respect. With the exception of Kayak Software Corp. v. IBM
`
`Corp., Case CBM2016-00077 (PTAB Dec. 15, 2016) (Paper 15) (“Kayak”),
`
`each of the Board decisions cited by Google were issued before the new
`
`guidance provided by the Federal Circuit in Unwired Planet. Google relies
`
`on Kayak to support its assertion that an application “presenting advertising
`
`to the user” is financial in nature. See Reply 3 (citing Kayak, slip op. at 11).
`
`Although the Board’s decision in Kayak did, indeed, make such a statement,
`
`14
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`Google does not capture the full context of the Board’s analysis. The Board
`
`was discussing an argument presented by the petitioner regarding an
`
`application depicted in a figure that gave “the user the option to purchase
`
`apples” and was “described as presenting advertising to the user.” Kayak,
`
`slip op. at 11. The Board went on to explain that “the presence of a financial
`
`application in the specification . . . does not limit the claims [at issue] to
`
`financial applications.” Id. at 12. In fact, the Board eventually concluded
`
`that the patent at issue in Kayak did not satisfy the financial prong of
`
`covered business method patent eligibility, as set forth in § 18(d)(1) of the
`
`AIA. Id. at 15. Similar to Kayak, even though the specification of the ’651
`
`patent indicates that retaining a record of a displayed advertisement may be
`
`used for compensation and billing purposes, Google does not direct us to,
`
`nor can we find, any language in these claims that would limit them in this
`
`way.
`
`Lastly, we do not agree with Google’s argument that the ’651 patent
`
`qualifies as a covered business method patent eligible for review merely
`
`because, in the co-pending district court case, KlausTech and the named
`
`inventor characterize this patent as being financial in nature. See Pet. 11,
`
`13–15, 17; see also Reply 4 (arguing the same). As we explained above, the
`
`focus is on the claims to determine whether they recite explicit or inherent
`
`terminology or limitations that are financial in nature. Blue Calypso, 815
`
`F.3d at 1340. Apart from being generally applicable to Internet advertising,
`
`independent claims 20 and 25 do not recite explicitly or inherently any
`
`additional financial terminology or limitations that would justify concluding
`
`that the ’651 patent is a covered business method patent eligible for review.
`
`In our view, it cannot be the case that the ’651 patent somehow transforms
`
`15
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`into a patent that satisfies the financial prong of covered business method
`
`patent eligibility simply because KlausTech and the named inventor
`
`characterize this patent as financial in nature in the co-pending district court
`
`case.
`
`5. Summary
`
`In summary, based on this record, we are not persuaded that Google
`
`has demonstrated that at least one of the challenged claims satisfies the
`
`financial prong of covered business method patent eligibility, as set forth in
`
`§ 18(d)(1) of the AIA.
`
`
`
`III. CONCLUSION
`
`Taking into account the arguments presented in KlausTech’s
`
`Preliminary Response and Google’s Reply, we determine that the
`
`information presented in the Petition does not establish that the ’651 patent
`
`qualifies as a covered business method patent that is eligible for review, as
`
`defined by § 18(d)(1) of the AIA. We, therefore, do not institute a covered
`
`business method patent review based on any of the asserted grounds as to
`
`any of the challenged claims.
`
`IV. ORDER
`
`In consideration of the foregoing, it is ORDERED that the Petition is
`
`DENIED and no trial is instituted.
`
`
`
`16
`
`
`
`17
`
`CBM2016-00096
`Patent 6,128,651
`
`For PETITIONER:
`
`Michael T. Hawkins
`Christopher C. Hoff
`John Phillips
`Fish & Richardson P.C.
`hawkins@fr.com
`hoff@fr.com
`phillips@fr.com
`
`
`
`For PATENT OWNER:
`
`Amedeo F. Ferraro
`Thomas H. Martin
`Wesley C. Meinderding
`Alfred Y. Chu
`Martin & Ferraro, LLP
`aferraro@martinferraro.com
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
`alfred.chu@martinferraro.com
`
`
`
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
