`
`Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
` Filed: April 11, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM, LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case CBM2017-00006
`Patent 9,215,310 B2
`_______________
`
`
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`
`I. INTRODUCTION
`
`Petitioner, collectively Facebook, Inc. and Instagram, LLC, filed a
`
`Petition (Paper 1, “Pet.”) requesting covered business method (“CBM”)
`
`patent review of claims 1–14 of U.S. Patent No. 9,215,310 B2 (Ex. 1001, the
`
`“’310 patent”) under Section 18 of the Leahy-Smith America Invents Act,
`
`Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner,
`
`Skky, LLC, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With
`
`its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it
`
`filed with the Office a statutory disclaimer of claims 2, 4, 11, and 14 of the
`
`’310 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex.
`
`2001). After the Preliminary Response, Petitioner filed a Preliminary Reply
`
`to Patent Owner’s Preliminary Response, as authorized by the panel
`
`pursuant an e-mail request by Petitioner, to address the consequences of
`
`Patent Owner’s disclaimer of claims 2, 4, 11, and 14. Paper 7 (“Pet. Prelim.
`
`Reply”). In response to the Preliminary Reply, Patent Owner filed a
`
`Preliminary Sur-Reply, also as authorized by the panel. Paper 8 (“PO Sur-
`
`Reply”).
`
`We have jurisdiction under 35 U.S.C. § 324(a).
`
`Section 18(a)(1) of the AIA provides that a covered business method
`
`patent review “shall be regarded as, and shall employ the standards and
`
`procedures of, a post-grant review” with certain exceptions not relevant
`
`here. Under 35 U.S.C. § 324(a), a post-grant review cannot be “instituted
`
`unless the Director determines that the information presented in the petition
`
`. . . would demonstrate that it is more likely than not that at least 1 of the
`
`claims challenged in the petition is unpatentable.”
`
`2
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`
`Upon consideration of the record, we determine that the ’310 patent is
`
`not a covered business method patent and accordingly deny the Petition.
`
`A. Related Matters
`
`Petitioner states that Patent Owner asserted the ’310 patent against
`
`Petitioner in pending litigation, namely Skky, LLC v. Facebook, Inc., No.
`
`16:cv-00094 (D. Minn.) (filed Jan. 15, 2016). See Pet. 3. Petitioner lists
`
`related PTAB proceedings as follows: CBM2016-00091 (challenging U.S.
`
`Pat. No. 9,037,502, a continuation of the same application to which the ’310
`
`patent also claims priority); and IPR2014-01236 (challenging U.S. Patent
`
`No. 7,548,875, the grandparent to the ’310 patent). Id. at 1–2. In addition to
`
`CBM2016-00091, Patent Owner lists several related PTAB proceedings and
`
`other related matters. See Paper 4, 2–3. Listed PTAB proceedings involving
`
`the instant parties include the following: CBM2017-00002; CBM2017-
`
`00003; CBM2017-00007; IPR2017-00088; IPR2017-00089; and IPR2017-
`
`00092; IPR2017-00097. Id. at 2.
`
`B. The ’310 Patent
`
`The ’310 patent describes a method for delivering audio and/or visual
`
`media files, including recordings of songs, musical compositions, ringtones,
`
`video, films, television shows, and personal recordings, wirelessly or non-
`
`wirelessly to devices for playback of the content, with or without an Internet
`
`connection. Ex. 1001, Abstract, 1:19–21.
`
`3
`
`
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`
`Figure 5 of the ’801 patent follows:
`
`
`
`According to the Specification, Figure 5 depicts a flow chart for
`
`delivering data content by transmitting data over an audio channel of a
`
`wireless telephone. See Ex. 1001, 16:29–36. Data transmission method 500
`
`includes transferring data from a server by converting stored digital
`
`information to analog information (i.e., D/A conversion, step 510) wherein
`
`the server transmits the signal to a receiver using an orthogonal frequency-
`
`division multiplex scheme (OFDM). See id. at 16:29–17:46; Ex. 1002
`
`¶¶ 42–45, 93–95. Prior to the D/A conversion, the transmitter scrambles
`
`data representing a data file (502), maps that to complex frequency symbols
`
`(504), converts that to time samples using a Fast Fourier Transform (FFT)
`
`(506), and adds a cyclic prefix (508). Ex. 1001, 16:37–41. After the D/A
`
`conversion and OFDM modulation, a telephone receiver decodes the
`
`modulated symbols by a reverse conversion process (i.e., an analog to digital
`
`(A/D) conversion process) to recover the transmitted audio or video file to
`
`be stored as digital information (512–520). See id. at 16:41–46, 18:5–11.
`
`
`
`
`
`4
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`
`C. Challenged Claim 1
`
`Claim 1, the sole independent challenged claim of the ’310 patent,
`
`follows:
`
`1. A method for wirelessly transmitting over a cellular
`
`network a data file between a cellular phone and a server, the
`server comprising a non-transitory virtual storage locker, the
`method comprising:
`
`creating the virtual storage locker associated with the
`cellular phone;
`receiving a data file from the cellular phone, said cellular
`phone including a receiver and a digital signal processor
`configured for receiving and processing data files transmitted by
`orthogonal frequency-division multiplex modulation;
`storing, in the virtual storage locker, the data file received
`from the cellular phone;
`
`receiving a request for the data file; and providing for the
`transmission of the data file to the cellular phone using
`orthogonal frequency-division multiplex (OFDM) modulation in
`response to the received request from the cellular phone.
`
`Ex. 1001, 32:62–33:13.
`
` D. The Alleged Grounds of Unpatentability
`
`The Petition asserts the unpatentability of claims 1–14 for failure to
`
`recite patent-eligible subject matter under 35 U.S.C. § 101, for failure to
`
`correspond in scope with that which the inventor regards as the invention
`
`under 35 U.S.C. § 112(b) (pre-AIA 35 U.S.C. § 112 ¶ 2), and for lack of
`
`written description under 35 U.S.C. § 112(a) (pre-AIA 35 U.S.C. § 112 ¶ 1).
`
`Pet. 35. Based on Patent Owner’s disclaimer of claims 2, 4, 11, and 14, only
`
`challenges to claims 1, 3, 5–8, 12 and 13 remain. To support its challenges,
`
`Petitioner relies on the Declaration of William H. Beckmann, Ph.D. Ex.
`
`1002.
`
`
`
`5
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`
`II. ANALYSIS
`
`A. Grounds for Standing
`
`Section 18 of the AIA created a transitional program for persons who
`
`have been sued or charged with infringement of a “covered business method
`
`patent.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. As noted
`
`above, Petitioner represents that it has been sued for infringement of the
`
`’502 patent in Skky, LLC v. Facebook, Inc., No. 16:cv-00094 (D. Minn.)
`
`(filed Jan. 15, 2016). Pet. 3. We determine that the infringement suit
`
`confers standing on Petitioner. See AIA §§ 18(a)(1)(B), 18(d)(1); 37 C.F.R.
`
`§ 42.302. Patent Owner does not dispute that Petitioner has standing. See
`
`Paper 4, 2–3.
`
`B. Covered Business Method Patent
`
`A “covered business method (CBM) 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 § 18(d)(1); 37 C.F.R. § 42.301(a). Under
`
`AIA § 18(a)(1)(E), “[t]he Director may institute a transitional proceeding
`
`only for a patent that is a covered business method patent.” (Emphasis
`
`added). A patent is eligible for CBM review if it has at least one claim
`
`directed to a covered business method. 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
`
`(Response to Comment 8).
`
`6
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`
`Addressing the scope of CBM patents, Versata Dev. Grp., Inc. v. SAP
`
`Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir. 2015) (emphasis added), cert.
`
`denied, 136 S. Ct. 2510 (2016), explains that
`
`as a matter of statutory construction, the definition of “covered
`business method patent” is not limited to products and services
`of only the financial industry, or to patents owned by or directly
`affecting the activities of financial institutions such as banks and
`brokerage houses. The plain text of the statutory definition
`contained in § 18(d)(1)—“performing . . . operations used in the
`practice, administration, or management of a financial product or
`service”—on its face covers a wide range of finance-related
`activities. The statutory definition makes no reference to
`financial institutions as such, and does not limit itself only to
`those institutions.
`
`Stated differently, the scope of what constitutes a covered business method
`
`patent includes a broad array of “monetary matters.” See SAP Am., Inc. v.
`
`Versata Dev. Grp., Inc., Case CBM2012-00001, slip op. at 23 (PTAB Jan. 9,
`
`2013) (Paper 36) (“The term financial is an adjective that simply means
`
`relating to monetary matters.”).
`
`In two recent cases, PTAB’s reviewing court clarified the scope of
`
`CBM review, and held that the Board’s reliance on phrases in the legislative
`
`history, i.e., whether the patent claims activities “incidental to” or
`
`“complementary to,” a financial activity as the legal standard to determine
`
`whether a patent is a CBM patent, was not in accordance with AIA
`
`§ 18(d)(1). Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1379–82
`
`(Fed. Cir. 2016); Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, No. 2016-
`
`1353, -- F.3d --, 2017 WL 676601, at *8 (Fed. Cir. Feb. 21, 2017)
`
`(“Consistent with Unwired Planet, we hold that the emphasized phrase [i.e.,
`
`‘incidental to’ or ‘complementary to’ a financial activity (as set forth in the
`
`7
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`legislative history)] is not a part of the statutory definition of what is a CBM
`
`patent, and, as we did in Unwired Planet, we conclude that such a definition
`
`of a CBM patent is beyond the scope of the statutory standard and thus ‘not
`
`in accordance with law.’”) (quoting Unwired Planet, 841 F.3d at 1382).
`
`C. Analysis
`
`As noted above, Patent Owner disclaimed claims 2, 4, 11, and 14.
`
`Prelim. Resp. 6 (citing Ex. 2001); Pet. Prelim. Reply (addressing the
`
`disclaimer); PO Sur-Reply (replying to Pet. Prelim. Reply). Patent Owner
`
`argues that for the purpose of determining whether or not to institute a CBM
`
`proceeding, the Board must treat disclaimed claims “as never having
`
`existed.” Prelim. Resp. 7 (citing Great West Cas. Co. v. Intellectual
`
`Ventures II LLC, Case CBM2015-00171, slip op. at 7 (PTAB Feb. 9, 2016)
`
`(Paper 10)).
`
`Relying on 37 C.F.R. § 42.207 and non-precedential Board cases,
`
`Patent Owner contends that “[w]hen a patent owner files a statutory
`
`disclaimer with its preliminary response, ‘no post-grant review will be
`
`instituted based on disclaimed claims.’” Id. at 6 (quoting 37 C.F.R.
`
`§ 42.207; citing, e.g., Google Inc. v. SimpleAir, Inc., Case CBM2015-00019,
`
`slip. op. at 5, (PTAB Aug. 19, 2015) (“Our rules permit a patent owner to
`
`file a statutory disclaimer with its preliminary response and no post-grant
`
`review will be instituted based on the disclaimed claims.”) (Paper 15, 5)).
`
`Patent Owner also contends that pursuant to the disclaimer, “only
`
`Petitioners’ arguments relating to claims 1 and 10 remain,” and claims 1 and
`
`10 do not confer CBM status on the ’310 patent. Id. at 7, 7–10. The parties
`
`agree that claims 1 and 10 recite similar subject matter. See Pet. 7 (“Claims
`
`1 and 10 recite similar subject matter. Independent claim 10 is similar to
`
`8
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`independent claim 1, but written as a system claim.”); Prelim. Resp. 10
`
`(similar characterization of claims 1 and 10).
`
`Although previous non-precedential PTAB decisions do not bind this
`
`panel, several panels confronted with the issue of alleged CBM eligibility on
`
`the basis of disclaimed claims have reached the conclusion that the
`
`disclaimed claims should be disregarded, as Patent Owner argues. See, e.g.,
`
`CoreLogic, Inc. v. Boundary Solutions, Inc., Case CBM2016-00016, slip op.
`
`at 6−7 (PTAB May 24, 2016) (Paper 9) (“[T]he disclaimed claims should
`
`not be consulted when determining whether the patent is a covered business
`
`method patent.”); AT&T Mobility LLC v. Intellectual Ventures II LLC, Case
`
`CBM2015-00185, slip op. at 10 (PTAB May 4, 2016) (Paper 10) (“[W]e will
`
`not consider the now-statutorily disclaimed claims in our determination.”);
`
`Great West Casualty Co. v. Intellectual Ventures II LLC, Case CBM2015-
`
`00171, slip op. at 7 (PTAB Feb. 9, 2016) (Paper 10) (“[F]or the purposes of
`
`whether or not to institute a covered business method patent review, we treat
`
`[the disclaimed claims] as never having existed.”); Google Inc. v. SimpleAir,
`
`Inc., Case CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper
`
`11) (“[W]e treat the [challenged] patent as though [the disclaimed claim]
`
`never existed.”).
`
`On the other hand, other non-binding PTAB decisions have held that a
`
`disclaimed dependent claim that includes finance-related subject matter may
`
`be considered for purposes of CBM eligibility when assessing the scope of
`
`the claimed subject matter in the parent (non-disclaimed) independent claim.
`
`See, e.g., J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, Case
`
`CBM2014-00157, slip op. at 2–3 (PTAB Feb. 18, 2015) (Paper 11)
`
`9
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`(“[S]tanding for covered business method patent review remains at least
`
`because disclaimer of claim 12 does not change the scope of independent
`
`claim 1, from which it depends.”).
`
`The majority of PTAB cases cited above track Federal Circuit case
`
`law, which treat disclaimed claims in non-CBM contexts as if they never
`
`existed. See Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed.
`
`Cir. 1998) (“This court has interpreted the term ‘considered as part of the
`
`original patent’ in section 253 to mean that the patent is treated as though the
`
`disclaimed claims never existed.”); 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.”); Genetics Inst., LLC v.
`
`Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir.
`
`2011) (holding that the Board’s interference jurisdiction under 35 U.S.C.
`
`§ 291 requires “the existence of an interference, and a claim that ‘never
`
`existed[ ]’ [due to a statutory disclaimer,] Vectra, 162 F.3d at 1383, cannot
`
`form the basis for an interference”).
`
`Nevertheless, Petitioner contends that because Patent Owner
`
`disclaimed claims after Petitioner filed its Petition, the disclaimed claims
`
`must be considered in determining if the ’310 patent qualifies for CBM
`
`review. See Pet. Prelim. Reply 2 (arguing that “the disclaimed claims, if
`
`considered, will amply qualify the ’310 patent for CBM patent review”).
`
`According to Petitioner, not considering the disclaimed claims would violate
`
`“the time-of-filing rule,” a rule in federal court litigation that “serves the
`
`important policy of preventing a responding party from depriving a forum of
`
`10
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`its authority through post-filing manipulation of the facts under the
`
`responding party’s control.” Id. at 3. Petitioner also argues that 37 C.F.R.
`
`§ 42.207 (upon which Patent Owner relies as noted above and further
`
`below), upon which Patent Owner relies, “only prevents the institution of
`
`CBM patent review against claims that have been disclaimed.” Id. at 5
`
`(emphasis deleted).
`
`Further addressing 37 C.F.R. § 42.207 in the context of the “time-of-
`
`filing” rule, Petitioner explains that
`
`is simply one of convenience and
`[regulation]
`[t]he
`administrative economy that obviates the Board from having to
`pass on the merits of claims that a patent owner itself has
`abandoned. Nothing in that [regulation] prohibits the Board from
`relying on a disclaimed claim to determine whether the patent as
`a whole qualifies as a “covered business method patent” under
`the AIA at the time the CBM petition is filed. Nor does that
`[regulation] require that the Board treat disclaimed claims “as if
`they never existed,” as Patent Owner urges. (Paper 6 at 5–6.)
`After all, a disclaimer does not erase the existence of the claim
`from the intrinsic record. See, e.g., Bd. of Regents of Univ. of Tex.
`v. BENQ Am. Corp., 533 F.3d 1362, 1370 (Fed. Cir. 2008)
`(reviewing a cancelled dependent claim during claim
`construction analysis); Great West Cas. Co. v. Intellectual
`Ventures II LLC, CBM2015-00171 (Paper 10), at p. 8 (PTAB
`Feb. 9, 2016) (“We acknowledge that other panels of the Board
`have taken the caveat that an otherwise statutorily disclaimed
`dependent claim, which includes finance-related subject matter,
`may still be considered . . . [.]”) (internal citations omitted); J.P.
`Morgan Chase & Co. v. Intellectual Ventures II LLC, Case
`CBM2014-00157, slip op. at 2–3 (PTAB Feb. 18, 2015) (Paper
`11) (holding post-institution disclaimer did not alter scope of
`claims being challenged or justify termination of trial).
`Pet. Prelim. Reply 6.
`
`Petitioner makes additional related arguments urging that the adoption
`
`of the “time-of-filing” rule. See id. at 1–7. Petitioner’s arguments are not
`
`11
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`persuasive. Claims 1 and 10 do not recite any financial activity. If anything,
`
`considering disclaimed claims 4 and 14, as Petitioner urges, further shows
`
`that claims 1 and 10 do not require a financial activity, as explained further
`
`below. Moreover, as Patent Owner persuasively argues, “[w]hen a patent
`
`owner files a statutory disclaimer with its preliminary response, ‘no post-
`
`grant review will be instituted based on disclaimed claims.’” Prelim. Resp.
`
`6 (quoting 37 C.F.R. § 42.207). Supporting Patent Owner, AIA § 18
`
`(a)(1)(E) states that “[t]he Director may institute a transitional proceeding
`
`only for a patent that is a covered business method patent.” (Emphasis
`
`added).
`
`Adopting the “time-of-filing” rule, as advanced by Petitioner, would
`
`require determining if the ’310 patent was a CBM at the time of filing of the
`
`Petition, instead of what “is a covered business method patent,” AIA § 18
`
`(a)(1)(E), i.e., what is a CBM patent at the time of institution. Adopting the
`
`“time-of-filing” rule also appears to violate 37 C.F.R. § 42.207, which
`
`prohibits instituting a CBM “based on disclaimed claims.” Id. (emphasis
`
`added). Consistent with the view that a CBM institution determination must
`
`focus on the challenged claims existing at least as of the time of institution,
`
`Secure Axcess, 2017 WL 676601, at *8, requires a challenged patent to
`
`“have a claim that contains . . . a financial activity element,” and Vectra
`
`Fitness, Inc., 162 F.3d at 1383, Guinn, 96 F.3d at 1422, and Genetics Inst.,
`
`655 F.3d at 1299, require treating disclaimed claims as though they never
`
`existed. See PO Sur-Reply 2 (“relevant case law directly contradicts
`
`Petitioners’ arguments”) (citing Secure Axcess and Unwired Planet); see
`
`also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir.
`
`2016) (approving of prior Board decisions that “properly focuse[d] on the
`
`12
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`claim language at issue and, finding nothing explicitly or inherently financial
`
`in the construed claim language, decline[d] to institute CBM review,” and
`
`finding that the challenged patent was eligible for review because the claims
`
`recited “an express financial component in the form of a subsidy” that was
`
`“central to the operation of the claimed invention”).
`
`Notwithstanding that the focus must be on the challenged claims,
`
`Petitioner also contends that the Specification shows that the claimed
`
`transmitting step has a financial purpose. For example, Petitioner argues
`
`that “the delivery method of the ’310 patent comprises ‘[c]onducting an
`
`online purchasing transaction and charging the consumer for the
`
`download.’” Pet. 6 (quoting Ex. 1001, 31:54–56). Petitioner quotes the
`
`’310 patent Specification as follows:
`
`[T]he unique delivery method provides a seller or service
`provider with a convenient and more efficient way of promoting
`and selling entire sound and image files which include
`downloadable music, movies, films, shows, and items such as
`records, cassette tapes, CDs, videos, and DVDs.
`
`Pet. 6 (quoting Ex. 1001, 2:13–17) (emphasis by Petitioner). According to
`
`Petitioner, “[t]he claims specifically cover this allegedly unique delivery
`
`method.” Id.
`
`Despite Petitioner’s citations to the Specification, claims 1 and 10 do
`
`not require any financial activity as part of the data delivery method.
`
`Rather, claims 1 and 10 respectively recite a method and system for
`
`delivering a data file to a user’s device from a server using a specific type of
`
`modulation, OFDM. The discussion of Figure 5 above shows that important
`
`aspects of the disclosed and claimed transmission method highlight the
`
`OFDM scheme, without focusing on, let alone requiring, any financial
`
`13
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`activity. See supra Section 1.B. Although the Specification describes
`
`providing a method of purchasing as part of downloading digital content as
`
`Petitioner argues, it also implies that any such purchasing constitutes merely
`
`an optional part of the invention:
`
`The accessing of sound and/or image files by other
`electronic devices, such as home phones, computers, pagers,
`doorbells, alarms, palm pilots, watches, clocks, PDAs etc., for
`either allowing the consumer to browse, download, hear, view,
`and/or purchase sound recordings, image files, or associated
`items, or to use sound and/or image clips as alerts is also part of
`the invention and not limited to solely telephones. New
`electronic devices, whose independent purpose is to allow the
`user to browse, receive, store and play sound and image files,
`including clips, according to the present invention are also
`described.
`
`
`Ex. 1001, 3:11–21 (emphases added). The Specification also generally touts
`
`the invention’s ability to download content “without the need for hand wired
`
`plug-in devices or a computer connection to the Internet” as follows:
`
`Furthermore, the delivery of files including clips is not limited to
`web based applications. Unlike conventional methods which
`require computer plug-in devices for delivering and transferring
`digital music, the current invention may use a delivery method
`which allows the user to browse, download, and listen to or
`watch sound or image files without the need for hand wired plug-
`in devices or a computer connection to the Internet.
`
` Id. at 3:54–61.
`
`Nevertheless, Petitioner contends that “the claimed method and
`
`system of content delivery in independent claims 1 and 10 is financial in
`
`nature because, as confirmed by dependent claims 4 and 14, the claimed
`
`method and system contemplates financial activity in the form of charging
`
`and debiting accounts.” Pet. 8. Petitioner’s arguments show that
`
`contemplating charging a fee and requiring charging or debiting accounts
`
`14
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`represent distinct attributes of claims 1 and 10 as compared respectively to
`
`disclaimed claims 4 and 14. In other words, Petitioner’s characterization of
`
`claims 1 and 10 as contemplating charging or debiting accounts shows that
`
`that claims 1 and 10 do not require charging or debiting accounts. Similar
`
`reasoning applies to disclaimed dependent claim 11, which recites providing
`
`“an audio advertisement” as “at least one of” a myriad of options. The
`
`Specification, as described above, supports this understanding, because it
`
`shows that purchasing or any financial activity at most constitutes an
`
`optional part of the method and system of content delivery as respectively
`
`set forth in claims 1 and 10.
`
`In summary, claims 1 and 10 do not require any financial activity, let
`
`alone such activity that would confer CBM patent status to the ’310 patent
`
`As discussed above, Petitioner’s arguments based on the Specification and
`
`disclaimed claims do not account for the thrust and holdings of Secure
`
`Axcess and Unwired Planet and other precedent that collectively indicates a
`
`general requirement for treating disclaimed claims as never having existed
`
`for purposes related to jurisdiction, and the language of AIA § 18 and 37
`
`C.F.R. § 42.207. Otherwise including the disclaimed claims as additional
`
`aids for determining the scope of challenged claims 1 and 10, as Petitioner
`
`urges (see Pet. Prelim. Reply 6), does not help Petitioner, because the
`
`disclaimed claims support the determination that claims 1 and 10 do not
`
`require a financial activity, as discussed above.
`
`Petitioner, at best, establishes that the existing challenged claims
`
`encompass methods or systems that may include potential financial activity
`
`such as a sale. Petitioner’s showing is not sufficient, because “[a]ll patents,
`
`at some level, relate to potential sale of a good or service.” See Unwired
`
`15
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`Planet, 2016 WL 6832978, at *5. As Patent Owner argues, “[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.” Prelim. Resp. 11 (quoting
`
`Unwired Planet, 2016 WL 6832978, at *8).
`
`Based on the foregoing discussion, Petitioner fails to meet its burden
`
`of showing that the ’310 patent is eligible for the transitional covered
`
`business method patent review program.
`
`
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business
`
`method patent review is not instituted as to any claim of the ’310 patent.
`
`
`
`
`
`
`
`
`
`16
`
`

`

`CBM2017-00006
`Patent 9,215,310 B2
`
`PETITIONER:
`
`Heidi Keefe
`hkeefe@cooley.com
`
`Andrew Mace
`amace@cooley.com
`
`
`
`PATENT OWNER:
`
`Ryan Schultz
`rschultz@robinskaplan.com
`
`Andrew Kabat
`akabat@robinskaplan.com
`
`
`
`
`
`
`17
`
`