Paper No. 16
`Entered: February 27, 2017
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`HBAC MATCHMAKER MEDIA, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00097
`Patent 6,002,393
`_______________
`
`Before TRENTON A. WARD, GEORGIANNA W. BRADEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`
`
`Opinion for the Board filed by Administrative Patent Judge BRADEN.
`
`Dissenting opinion filed by Administrative Patent Judge PAULRAJ.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`Entered: February 27, 2017
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`HBAC MATCHMAKER MEDIA, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00097
`Patent 6,002,393
`_______________
`
`Before TRENTON A. WARD, GEORGIANNA W. BRADEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`
`
`Opinion for the Board filed by Administrative Patent Judge BRADEN.
`
`Dissenting opinion filed by Administrative Patent Judge PAULRAJ.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`CBM2016-00097
`Patent 6,002,393
`
`
`I.
`
`INTRODUCTION
`
`Google Inc., (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
`
`a covered business method patent review of claims 1–70 of U.S. Patent No.
`
`6,002,393 (Ex. 1001, “the ’393 patent”). HBAC Matchmaker Media, Inc.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`
`After filing its Petition, but before Patent Owner 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”), which provided guidance regarding the financial
`
`prong of the covered business method patent eligibility test. Id. at 1379,
`
`1382. Given this case law, we afforded Petitioner an opportunity to file a
`
`supplemental brief to explain how the Federal Circuit’s guidance in Unwired
`
`impacts this proceeding.1 Petitioner filed a Supplemental Brief that was
`
`tailored narrowly to address this issue. Paper 12 (“Pet. Suppl. Brief”).
`
`Patent Owner then filed a Reply to Petitioner’s Supplemental Brief.
`
`Paper 13 (“PO Reply”).
`
`We have statutory authority 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
`
`
`1 Shortly before this Decision issued, the Federal Circuit issued its decision
`in Secure Axcess v. PNC Bank et al., case no. 2016-01353 (Fed. Cir. Feb. 21,
`2017). The parties did not have the opportunity to address the holding in
`Secure Axcess or any possible bearing it may have had on the present case.
`The Court in Secure Axcess reached a similar outcome as that in Unwire
`Planet, and we find that its holding does not alter the outcome or analysis
`presented in this Decision.
`
`2
`
`
`
`CBM2016-00097
`Patent 6,002,393
`
`challenged in the petition is unpatentable.” See also 37 C.F.R § 42.4(a)
`
`(delegating authority to the Board).
`
`Taking into account the arguments presented in Patent Owner’s
`
`Preliminary Response and Petitioner’s Supplemental Brief, we determine
`
`that the information presented in the Petition does not establish that the
`
`ʼ393 patent qualifies as a covered business method patent, as defined by
`
`§ 18(d)(1) of the AIA.2 Accordingly, we decline to institute a covered
`
`business method patent review of claims 1–70 of the ’393 patent.
`
`II.
`
`BACKGROUND
`
`A. Related Proceedings
`
`The parties inform us that the ’393 patent is the subject of district
`
`court case HBAC Matchmaker Media, Inc. v. Google Inc. et al., Case No.
`
`1:13-cv-00429 (D. Del. Mar. 15, 2013). Pet. 3 (citing Ex. 1003); see Paper
`
`4, 2 (Patent Owner’s Mandatory Notices). The parties further inform us that
`
`the ’393 patent is the subject of several related district court cases. Pet. 4;
`
`Paper 4, 2–3.
`
`B. The ’393 Patent
`
`The ’393 patent is titled “System and Method for Delivering Targeted
`
`Advertisements to Consumers Using Direct Commands,” and discloses
`
`systems and methods for providing video delivery system operators
`
`
`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
`
`
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`CBM2016-00097
`Patent 6,002,393
`
`processes to increase the effectiveness of delivering specific video signals to
`
`specific users. Ex. 1001, Title, Abst., 2:1–4. One embodiment of the
`
`’393 patent provides a system that analyzes and categorizes customers,
`
`commercials, and televisions programs with the results stored in databases.
`
`Id. at 6:40–44. According to the ’393 patent, the information in the
`
`databases is used to construct instruction governing the display of
`
`commercials that will be transmitted to display sites. Id. at 6:44–47.
`
`Figure 1, reproduced below, illustrates an exemplary architecture for such a
`
`system.
`
`
`
`Figure 1, above, shows certain components of on embodiment of the
`
`’393 patent, including Ad Administration Facility 200, Media Origination
`
`Facilities 300, display or reception site 400, and satellite 100. Ex. 1001,
`
`6:22, Fig. 1. Ad Administration Facility 200 distributes the targeted
`
`commercial display instructions to a plurality of Media Origination Facilities
`
`300 via satellite 100 using uplink antenna 202 and downlink antennas 302.
`
`Id. at 6:48–51. Alternatively, the ’393 patent discloses that for Media
`
`Origination Facilities 300 in close proximity, antenna 204 can be used to
`
`transmit some or all of the targeted commercial display instructions to
`
`antennas 304 at Media Origination Facilities 300. Id. at 6:52–55. The
`
`4
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`CBM2016-00097
`Patent 6,002,393
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`’393 patent contemplates that electrical and/or optical link 206 could be used
`
`as well as physical conveyance of the targeted commercial display
`
`instructions by physical means 208, such as optical or magnetic tapes or
`
`disks or other suitable means. Id. at 6:55–59. According to the ’393 patent,
`
`Media Origination Facility 300 also receives programming and commercials
`
`from other sources and creates some programming and commercials in its
`
`own facilities. Id. at 6:59–62.
`
`The ’393 patent further discloses that the package of programming
`
`and processed commercials and targeted commercial display instructions is
`
`conveyed to display site 400 (reception site) via electrical and/or optical
`
`links 306, or radio transmission via antenna 304 and 404, or via satellite 100
`
`and antennas 304 and 404, or even via physical means 308 such as optical or
`
`magnetic tapes or disks or other suitable means. Id. at 6:63–7:2.
`
`Another embodiment of the ’393 patent provides for details of Ad
`
`Administration Facility 200, shown in Figure 2a, reproduced below.
`
`
`
`According to the ’393 patent, Ad Administration Facility 200, shown above
`
`in Figure 2a, is where the characteristics of those viewing or hearing the
`
`commercials are analyzed and categorized and the results stored in
`
`Consumer Database 210. Id. at 7:8–11. Data in Consumer Database 210 is
`
`conveyed by connection 212 to Addressable Instruction Formatter 226. Id.
`
`5
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`CBM2016-00097
`Patent 6,002,393
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`at 7:48–48. The ’393 patent contemplates that data stored in Preemptable
`
`Commercial Database 214 is conveyed by connection 216 to Addressable
`
`Instruction Formatter 226, while data in Targeted Commercial Database 218
`
`is conveyed by connection 220. Id. at 7:50–56. Addressable Instruction
`
`Formatter prepares detailed instructions for each subscriber so that each
`
`subscriber will view commercials determined to be of interest and utility to
`
`that subscriber. Id. at 7:57–60. Addressable Instruction Formatter 226
`
`conveys its results via connection 228 to Signal Combiner, Modulator and
`
`Transmitter 230, which relays these instructions to the Display Site 400. Id.
`
`at 7:62–65.
`
`The ’393 patent discloses in another embodiment, shown in Figure 2b
`
`below, that rather than preparing detailed instructions for each subscriber,
`
`the subscribers (or consumers) are divided into classes. Id. at 8:3–6.
`
`
`
`Figure 2b illustrates Ad Administration Facility 200 with Consumer
`
`Classifier 234. Id. at 8:3–6. Consumer Database 210 conveys subscriber
`
`details via connection 232 to Consumer Classifier 234, which assigns
`
`consumers to a limited number of classes depending on their characteristics.
`
`Id. at 8:6–9. The ’393 patent explains that the criteria for making these
`
`classifications is expected to differ from advertising agency to agency, but
`
`6
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`CBM2016-00097
`Patent 6,002,393
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`the more correct the classification, the more successful will be the
`
`commercial targeting. Id. at 8:9–13. The classes of consumers are then
`
`conveyed via connection 236 to Addressable Instruction Formatter 226. Id.
`
`at 8:13–15. The ’393 patent contemplates that the method of using
`
`Consumer Classifier 234 would significantly reduce the data transmission
`
`requirements, because rather than requiring detailed commercial targeting
`
`information for each subscriber, only information about which commercial
`
`is targeted to which class of subscriber need be conveyed to Display Site
`
`400. Id. at 8:15–20. According to the ’393 patent, at some convenient time,
`
`each subscriber receives data making an assignment to one or more classes.
`
`Id. at 8:20–21. The ’393 patent discloses that “[u]nder some circumstances,
`
`all of the signals that would have normally been delivered via satellite or
`
`conveyed by electrical and/or optical connection are recorded on some
`
`suitable media 208 and physically delivered to Media Origination Facility
`
`300.” Id. at 8:21–26.
`
`C. Illustrative Claims
`
`As noted above, Petitioner challenges claims 1–70 of the ’393 patent,
`
`of which claims 1, 10, 19, 28, 37, 46, 55, 56, 69, and 70 are independent.
`
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`
`1. A system for delivery of targeted advertisements from a head
`end system to individual consumers at at [sic] least one
`consumer display site comprising:
`(a) a control device at the at least one consumer display site;
`and
`(b) a controller at the head end system for sending a signal to
`the control device at the at least one display site for
`causing an advertisement to be displayed at said at least
`one display site intended for a particular consumer;
`
`7
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`CBM2016-00097
`Patent 6,002,393
`
`
`(c) the controller at the head end system including a program
`database supplying program materials and a commercial
`database supplying advertisements for display at the at
`least one display site, the commercial database further
`storing
`information concerning
`the
`type of each
`advertisement; the head end system further including a
`consumer database having information about a consumer
`at the at least one display site, and an instruction formatter
`having inputs from the consumer database, the program
`database and the commercial database for generating an
`instruction for the control device at the at least one display
`site, the instruction being generated based on the type
`information stored in the commercial database and the
`information about the consumer at the at least one display
`site and optionally a characteristic of the program
`materials; the controller at the head end system further
`downloading the instruction to the control device at the at
`least one display site to command the control device to
`select an advertisement from the head end system intended
`for display at the at least one display site.
`
`Ex. 1001, 13:28–57.
`
`D. The Asserted Ground of Unpatentability
`
`Petitioner asserts claims 1–70 of the ’393 patent are unpatentable
`
`under 35 U.S.C. § 101 and pre-AIA 35 U.S.C. § 112, first paragraph.
`
`Pet. 34.
`
`III. COVERED BUSINESS METHOD (CBM) PATENT REVIEW
`
`A. Standing to File a Petition for CBM Review
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`reviews to persons or their privies who have been sued or charged with
`
`infringement of a “covered business method patent.” AIA § 18(a)(1)(B); see
`
`37 C.F.R. § 42.302. As discussed above in Section II.A., Petitioner
`
`8
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`CBM2016-00097
`Patent 6,002,393
`
`represents it has been sued for infringement of the ’393 patent and is not
`
`estopped from challenging the claims on the grounds identified in the
`
`Petition. Pet. 17 (citing Ex. 1003).
`
`B. Qualifying as a CBM Patent for CBM Review
`
`The parties dispute whether the ’393 patent is a “covered business
`
`method patent,” as defined in the AIA and 37 C.F.R. § 42.301. See Pet. 17–
`
`33; Prelim. Resp. 7–24. It is Petitioner’s burden to demonstrate that the
`
`’393 patent is a covered business method patent. See 37 C.F.R. § 42.304(a).
`
`For the reasons discussed below, we determine Petitioner has made an
`
`insufficient showing that the ’393 patent is a covered business method
`
`patent.
`
`1. Overview of “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 also 37 C.F.R. § 42.301
`
`(defining “[c]overed business method patent” and “[t]echnological
`
`invention”). To determine whether a patent is eligible for a covered business
`
`method patent review, the focus is on the claims and 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);
`
`see also 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
`
`9
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`CBM2016-00097
`Patent 6,002,393
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`claims.”). A patent need have only one claim directed to a covered business
`
`method to be eligible for review. See Versata Dev. Grp., Inc. v. SAP Am.
`
`Inc., 793 F.3d 1306, 1326–27 (affirming Board and accepting analysis of
`
`single claim as representative of determination whether to institute a covered
`
`business method patent review).
`
`2. The Unwired Planet Decision and Its Impact on CBM Eligibility Analysis
`
`As we noted 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. Unwired Planet, 841 F.3d
`
`1376. In that case, the Federal Circuit extensively evaluated with 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 of § 18(a)(1) of the AIA 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 1380–81 (citing Transitional
`
`Program (response to comment 1) (quoting 157 Cong. Rec. S5432 (daily ed.
`
`Sept. 8, 2011) (statement of Sen. Schumer) (appearing in the permanent
`
`edition of the Congressional Record at 157 Cong. Rec.13,190 (2011)).
`
`The Federal Circuit explained that general policy statements
`
`expressed during the legislative process are not legally binding and, without
`
`adopting a policy as a rule through rulemaking, an “agency cannot apply or
`
`rely upon a general statement of policy as law.” Id. at 1381 (citing Chrysler
`
`10
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`
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`CBM2016-00097
`Patent 6,002,393
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`Corp. v. Brown, 441 U.S. 281, 302 n.31 (1979) (suggesting that general
`
`statements of policy “do not have the force and effect of law”); Ratzlaf v.
`
`United States, 510 U.S. 135, 147–48 (1994) (“[W]e do not resort to
`
`legislative history to cloud a statutory text that is clear.”)). The Federal
`
`Circuit concluded that the “application of the ‘incidental to’ and
`
`‘complementary to’ language from the PTO policy statement instead of the
`
`statutory definition renders superfluous the limits Congress placed on the
`
`definition of a CBM patent” and was “not in accordance with the law.” Id.
`
`at 1382–83.
`
`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
`
`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 expounded 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, therefore, concluded 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.
`
`11
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`CBM2016-00097
`Patent 6,002,393
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`With this guidance from the Federal Circuit in mind, we turn to the
`
`parties’ argument as to whether Petitioner has demonstrated that at least one
`
`challenged claim of the ’393 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
`
`Petitioner contend the ’393 patent is a covered business method patent
`
`because claims 1 and 56 of the ’393 patent “are explicitly directed to a
`
`method for providing advertisements.” Pet. 18 (citing 1005 ¶ 110; Ex. 1001,
`
`Abst, Claim 1). As Petitioner notes, claim 1 recites “a system for delivery of
`
`targeted advertisements” while claim 56 recites “a method for targeting TV
`
`advertisements” and the advertisements are “targeted” to consumers. Id.
`
`(citing Ex. 1001, 13:28–36; 19:58–67). In addition, Petitioner argues that
`
`the specification explains “[i]t would be desirable to have a system for
`
`targeting commercials to those particular consumers who represent only the
`
`best prospects for an advertiser.” Id. (citing Ex. 1001, 1:50–52). To that
`
`end, Petitioner cites to one object of the invention “to provide such a system
`
`and process which will provide advertisers with less waste and greater cost
`
`effectiveness in delivering their messages only to those consumers who are
`
`desirable prospects.” Id. (citing Ex. 1001, 1:63–67). Petitioner then argues
`
`that the specification’s disclosure of “advertiser dollars” and “advertising
`
`revenue” indicates that the patentee “clearly contemplat[es] that advertising
`
`is a financial activity.” Pet. Suppl. Brief 5 (citing Ex. 1001, 1:18–28).
`
`According to Petitioner, the systems and methods for delivering
`
`targeted advertisements are financial in nature because someone receives
`
`money to deliver advertisements about a product or service. Id. at 3 (citing
`
`12
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`CBM2016-00097
`Patent 6,002,393
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`Ex. 1001, 1:18–28 (discussing broadcasters receiving “advertising dollars”
`
`to deliver advertisements)). Petitioner argues that “[t]he plain meaning of
`
`advertising is to describe or draw attention to a product or service in order to
`
`promote sales” and that “[b]y definition such activity is financial.” Id. at 3,
`
`5. Petitioner supports its position with excerpts from the prosecution history
`
`of the ’393 patent, which states advertisements “partially subsidize[]” certain
`
`programs that are “purchased by the consumer.” Id. at 4–5 (citing Ex. 1002,
`
`142).
`
`Petitioner then addresses Unwired Planet, arguing that “the Federal
`
`Circuit has broadly interpreted what ‘financial’ activities are covered by this
`
`statute in earlier CBM-related appeals, and Unwired Planet does not purport
`
`to overturn these previous decisions.” Id. at 1–2 (citing Versata Dev. Grp. v.
`
`SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir. 2015) (“the plain text of the
`
`statutory definition . . . on its face covers a wide range of finance-related
`
`activities” and that the definition of CBM patents is not limited to “patents
`
`directly affecting the activities of financial institutions”); Sightsound Techs.,
`
`LLC, v. Apple Inc., 809 F.3d 1307, 1315 (Fed. Cir. 2015) (Versata “directly
`
`supports the conclusion” that financial activity “not directed to money
`
`management or banking can constitute a ‘financial product or service’ within
`
`the meaning of the statute”). According to Petitioner, Unwired Planet
`
`endorses the Federal Circuit’s statement in Blue Calypso that the inquiry for
`
`CBM eligibility is into “whether the patent claims activities that are financial
`
`in nature.” Id. at 2 (citing Blue Calypso, 815 F.3d at 1338; Unwired Planet,
`
`841 F.3d at 1380 n.5). Petitioner, therefore, argues that we need not apply
`
`the “incidental to” or “complementary to” language from the legislative
`
`history to determine that the challenged claims satisfy the requirements of
`
`13
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`CBM2016-00097
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`AIA § 18(d)(1). Rather, Petitioner concludes that because the claims
`
`explicitly recite delivering advertisements, and such activity is financial, the
`
`claims qualify for CBM review. Id. at 5.
`
`Patent Owner disputes Petitioner’ position, contending that none of
`
`the claims recite a method or system used in the practice, administration, or
`
`management of a financial product or service. Prelim. Resp. 14. Patent
`
`Owner contends (1) that “delivery of targeted advertising” is not a financial
`
`product or service and (2) there is no financial transaction or component
`
`recited in the challenged claims, therefore, the claims are ineligible for CBM
`
`review. Prelim. Resp. 1–2; PO Reply. 1–2. Patent Owner cites to Unwired
`
`Planet and Blue Calypso to support its position while distinguishing other
`
`cases relied on by Petitioner. Prelim. Resp. 1–2; PO Reply. 1–3.
`
`Patent Owner first contends the holding in Unwire Planet rejects the
`
`notion that a claimed method for facilitating advertising is sufficient to
`
`support CBM jurisdiction. PO Reply. 1 (citing Unwired Planet, 841 F.3d at
`
`1381). Patent Owner argues that, as the Federal Circuit instructed, it “is not
`
`enough that a sale has occurred or may occur, or even that the specification
`
`speculates such a potential sale might occur.” Id. at 1–2 (citing Unwired
`
`Planet, 841 F.3d at 1382). Therefore, according to Patent Owner, it also is
`
`not enough that advertisements delivered using the ’393 patent’s claimed
`
`methods may stem from an unclaimed distribution agreement or may result
`
`in an unclaimed sale of an advertised good or service. Id. at 2.
`
`Second, Patent Owner contends that, although the claims in Blue
`
`Calypso referred to “advertiser” and “advertisement,” the Court determined
`
`eligibility based on the claimed “financial component in the form of a
`
`subsidy, or financial inducement that encourages consumers to participate in
`
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`the distribution of advertisements.” Id. at 2–3 (citing Blue Calypso, 815
`
`F.3d at 1340 (emphasis added); Unwired Planet, 841 F.3d at 1381; Global
`
`Tel*Link Corp. v. Securus Tech., Inc., CBM2015-00145, slip op. at 14
`
`(PTAB Nov. 15, 2016) (Paper 49)). Patent Owner argues that the claims of
`
`the ’393 patent lack such an expressly recited financial component because
`
`the claims recite technical structures and processes for delivering targeted
`
`video advertisements to display sites. Id. at 3. According to Patent Owner,
`
`advertisements without some additional financial component is insufficient
`
`to confer CBM eligibility to the challenged claims. Id.
`
`Third, Patent Owner contends that Petitioner’s only post-Unwired
`
`Planet citation also fails to support an argument CBM eligibility. Id. at 3.
`
`Patent Owner explains that Kayak Software v. IBM Corp. (as cited by
`
`Petitioner) denied CBM eligibility, and confirmed that Blue Calypso
`
`requires the Board to answer whether the claims “must be financial,” not
`
`simply may be financial. Id. (citing CBM2016-00077 (PTAB Dec. 15,
`
`2016) (Paper 15) at 12). Patent Owner argues the ’393 patent cannot meet
`
`such a test because advertising by itself, at most, entails a potential future
`
`sale. Id.
`
`Patent Owner then distinguishes the other cases cited by Petitioner,
`
`arguing that, contrary to Petitioner’s position, the Federal Circuit has only
`
`ruled a patent to be within the scope of AIA § 18 based on expressly-recited
`
`financial components. Id. at 2–3 (citing Versata, 793 F.3d at 1312–13, 1325
`
`(the financial component of price determinations falls within the “finance-
`
`related activities” covered by AIA § 18); SightSound, 809 F.3d at 1315 (the
`
`“electronic sale of digital audio” is a financial activity); Blue Calypso, 815
`
`F.3d at 1336–37 (recited “subsidy” program financially induced
`
`15
`
`
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`CBM2016-00097
`Patent 6,002,393
`
`“subscribers” to assist their advertising efforts)). Patent Owner, therefore,
`
`concludes that any analysis beyond the claims to the specification or
`
`prosecution history is in error. Id. at 5.
`
`Lastly, with respect to claim 56, Patent Owner contends it filed a
`
`statutory disclaimer disclaiming claim 56. Prelim. Resp. 9 n 3. As a
`
`consequence of the disclaimer, Patent Owner argues the Board should not
`
`base its determination on whether or not to institute a trial on claim 56 as it
`
`is no longer part of the ’393 patent. Id.
`
`4. The ’393 Patent Does Not Satisfy the Financial Prong of
`Covered Business Method Patent Eligibility
`
`We agree with Patent Owner that, based on the Federal Circuit’s new
`
`guidance in Unwired, Petitioner has not demonstrated that the challenged
`
`claims of the ’393 patent are 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 claim 1, which
`
`explicitly recites “causing an advertisement to be displayed . . . .for a
`
`particular consumer,” “a commercial database supplying advertisements for
`
`display,” “storing information concerning the type of each advertisement,”
`
`and “the control device to select an advertisement from the head end
`
`system.”3 Ex. 1001, 13:28–57. Claim 1, as a whole, recites a system for
`
`analyzing advertisements as information signals, determining into which
`
`stream of television signals to place the advertisement signals, and then
`
`
`3 Petitioner bases its arguments for CBM eligibility on the language of
`claims 1 and 56. Although we focus our analysis on claim 1, we have
`applied the same analysis and reached the same conclusion with regards to
`all challenged claims.
`
`16
`
`
`
`CBM2016-00097
`Patent 6,002,393
`
`delivering the advertisements as signals to a display site. See Ex. 1001,
`
`2:39–50. We recognize, as argued by Petitioner and the Dissent, that this
`
`claim applies to delivering targeted advertising to a consumer in certain
`
`instances to facilitate and promote the sale of products or services (see Pet.
`
`18; Pet. Suppl. Brief 2–3; Dissent 3), and we agree that advertising is a
`
`business method. We do not agree, however, that advertising by itself is a
`
`financial service that qualifies for covered business method review.
`
`An advertisement is not considered an “offer for sale” under
`
`traditional contract law and it does not require or guarantee a sale or any
`
`financial transaction will occur. See Samuel Williston, A TREATISE ON THE
`
`LAW OF CONTRACTS § 4:7, at 285–90 (Richard A. Lord ed., 4th ed. 1990)
`
`(citing numerous authority for the proposition that an advertisement is not an
`
`offer); Arthur Linton Corbin, CORBIN ON CONTRACTS § 2.4, at 116–17
`
`(Joseph M. Perillo ed., rev. ed. 1993) (1963). Rather, an advertisement is a
`
`“publication of an announcement in a public medium” and is considered
`
`merely an “invitation” to negotiate a sale. See Oxford English Dictionary,
`
`Oxford University Press, 2017 (Ex. 3001); Group One, Ltd. v. Hallmark
`
`Card, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001) (“[C]ontract law
`
`traditionally recognizes that mere advertising and promoting of a product
`
`may be nothing more than an invitation for offers, while responding to such
`
`an invitation may itself be an offer.”); RESTATEMENT (SECOND) OF
`
`CONTRACTS § 26 cmt. b (1981) (“A, a clothing merchant, advertises
`
`overcoats of a certain kind for sale at $50. This is not an offer, but an
`
`invitation to the public to come and purchase.”). Although targeted
`
`advertising might lead to a sale of a good or service, mere probabilities or
`
`possibilities fall short of demonstrating operations necessarily used in the
`
`17
`
`
`
`CBM2016-00097
`Patent 6,002,393
`
`practice, administration, or management of a financial product or service.
`
`See Unwired, 841 F.3d at 1382.
`
`As the Federal Circuit explained in Unwired Planet, 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 id. Although we recognize that advertising
`
`generally involves the sale of advertisement time, the claims do not recite
`
`the sale of the targeted advertisement. Nor do the claims recite a distribution
`
`agreement or the actual sale of an advertised good or service. And we do
`
`not consider a potential “invitation” to negotiate a sale at some time in the
`
`future to be sufficient under Unwire Planet. Therefore, the fact that a sale
`
`has occurred previously (such as when the advertising time was purchased
`
`by the advertiser) or may occur in the future (if a consumer purchases an
`
`item based on prompting by an advertisement) is not enough when the
`
`challenged claims neither recite the sale of the targeted advertisement nor
`
`are otherwise directed to “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” as required
`
`under AIA § 18(d)(1).
`
`Petitioner’s position that “the Federal Circuit rejected the argument
`
`that advertising is not financial” in Blue Calypso is unavailing. See Pet.
`
`Suppl. Brief 3. In Blue Calypso, the claims were directed to “[a] method of
`
`providing access to an advertisement from an advertiser” that required 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
`
`18
`
`
`
`CBM2016-00097
`Patent 6,002,393
`
`method patents eligible for review. Id. at 1339–40. The Federal Circuit
`
`agreed with the Board, because the patents at issue recite “an express
`
`financial component in form of a subsidy, or financial inducement, that
`
`encourages consumers to participate in the distribution of advertisements.”
`
`Id. at 1342. In other words, the Blue Calypso claims were “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 claim 1 generally
`
`applies to targeted delivery of advertising and does not recite any
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