Filed on behalf of Netsirv and Local Motion MN
`
`By:
`
`Brett Klein
`
`Winthrop & Weinstine, P.A.
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`Tel. (612) 604-6400
`e-mail:
`patent@winthrop.com
`bklein@winthrop.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETSIRV and LOCAL MOTION MN,
`
`Petitioner,
`
`V.
`
`BOXBEE, INC.,
`Patent Owner.
`
`Case PGR2015-00009
`
`Patent 8,756,166 B2
`
`PETITIONER REPLY
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................................... .. l
`
`I.
`
`II.
`
`III.
`
`IV.
`
`The patent owner fails to establish that the claims of the ‘ 166 patent
`are not directed to an abstract idea. ............................................................... ..l
`
`The patent owner fails to point to anything in the claims that amounts
`to significantly more than the abstract idea. .................................................. ..2
`
`A.
`
`B.
`
`C.
`
`The patent owner struggles to come up with scenarios where a
`human analog could not perform the claimed method steps ............... ..2
`
`to show why any of the steps,
`fails
`The patent owner
`individually or as an ordered combination, of the claims are
`unconventional and confine the abstract idea to a particular
`useful application................................................................................. ..3
`
`The patent owner’s attempt to analogize the present claims to
`those of Diamond v. Diehr ignores the technological nature of
`the latter. .............................................................................................. ..4
`
`1.
`
`2.
`
`3.
`
`Storage Management is Not a Technical Field ......................... ..5
`
`What the Variables Are, How they are Used, and How
`they are Gathered is not Sufficient to be Analogous to
`Diehr.......................................................................................... ..5
`
`Facilitating Container Delivery is not Analogous to
`Controlled Operation of a Mold ................................................ ..6
`
`The patent owner fails to rebut petitioner’s argument that the claims
`of the ‘166 patent are patent ineligible. ......................................................... ..7
`
`The patent owner offers no response to the arguments relating to
`claims 2-21 and, as such, these claims follow with claim 1. ...................... .. 10
`
`CONCLUSION ..................................................................................................... .. 10
`
`CERTIFICATE OF SERVICE ............................................................................. .. ll
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Alice Corp. Pty. Ltd. V. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ................................................................................... ..8
`
`Bancorp Servs., LLC v. Sun Life Assurance Co. of Can,
`687 F.3d 1266 (Fed. Cir. 2012) ..................................................................... ..3
`
`Bilski v. Kappos,
`561 U.S. 592 (2010) ....................................................................................... ..8
`
`CLS Bank Int 7 v. Alice Corp. Pty. Ltd.,
`717 F.3d 1269 (Fed. Cir. 2013) ..................................................................... ..3
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ..................................................................... ..3
`
`Fort Props, Inc. v. Am. Master Lease LLC,
`671 F.3d 1317 (Fed. Cir. 2012) ..................................................................... ..3
`
`Statutes
`
`35 U.S.C. § 101 ................................................................................................. .. 1,10
`
`Other
`
`July 2015 Update: Subject Matter Eligibility
`(“July 2015 Update”), Appendix 1 ................................................................ .. passim
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`EXHIBIT LIST
`
`Exhibit 1001
`
`U.S. Patent No. 8,756,166 (the ‘166 Patent)
`
`Exhibit 1002
`
`U.S. Patent No. 7,778,880 to Seeley (the ‘880 Patent)
`
`Exhibit 1003
`
`U.S. Pub. No. 2011/0218933 to Hunsaker et a1.
`
`Exhibit 1004
`
`Declaration of David Seeley
`
`Exhibit 1005
`
`Power of Attorney
`
`Exhibit 1006
`
`Office Action mailed 11/20/2013
`
`Exhibit 1007
`
`Applicant-Initiated Interview Summary
`
`Exhibit 1008
`
`Office Action Response Filed 2/3/2014
`
`Exhibit 1009
`
`Examiner—Initiated Interview Summary
`
`Exhibit 1010
`
`Notice of Allowance
`
`NOTE:
`
`NO NEW EXHIBITS ARE BEING FILED WITH THIS REPLY
`
`iii
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`INTRODUCTION
`
`The patent owner’s response fails to show that the claims of the ‘ 166 patent
`
`are not directed to an abstract idea and further fails to show that the claims add
`
`significantly more than the abstract idea.
`
`In particular, the patent owner merely
`
`refers to a dynamic reallocation process that could be performed by a human
`
`analog with a checklist and facilitating steps that involve mere communicating or
`
`updating for coordination of steps rather than performance of those steps.
`
`The claims of the ‘ 166 patent do not qualify as statutory subject matter under
`
`35 U.S.C. § 101 and should be cancelled.
`
`I.
`
`The patent owner fails to establish that the claims of the ‘166 patent are
`not directed to an abstract idea.
`
`The only reason the patent owner provides for why the claims are not
`
`abstract is that the claims do not “merely recite the performance of some business
`
`practice known from the pre-Internet world along with the requirement to perform
`
`it on the Internet.” Paper 17, Patent Owner’s Response (“Response”) at ll-12.
`
`In
`
`particular,
`
`the patent owner points to the method of dynamically reallocating
`
`storage containers to different users while in the field. That is, the patent owner
`
`points to the “receiving a removal request” and “removing the storage identifiers”
`
`steps of claim 1.
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`These particular aspects of the claim are worse than a pre-Internet practice
`
`being performed by the Internet; they are pre—computer practices being performed
`
`by a computer. That
`
`is,
`
`these steps amount to nothing more than receiving
`
`information that a container is not being used and crossing it off of the list of
`
`containers associated with a particular customer. This amounts to nothing more
`
`than practices that could be performed without a computer and are now performed
`
`with a computer. Claims 1-21 are directed toward an abstract idea.
`
`II.
`
`The patent owner fails to point to anything in the claims that amounts
`to significantly more than the abstract idea.
`
`A.
`
`The patent owner struggles to come up with scenarios where a
`human analog could not perform the claimed method steps.
`
`The patent owner provides speculative and unsubstantiated statements that
`
`the claimed process cannot be performed by a human analog.
`
`In particular, the
`
`patent owner states that a human cannot perform the dynamic associations and
`
`disassociations and provides an unsubstantiated and speculative slippery-slope
`
`discussion of the “disaster” that would result. Response at l4. The patent owner
`
`provides no explanation of why performance by a human analog would necessarily
`
`require delay.
`
`To be clear,
`
`the claim language characterized by the patent owner as
`
`“dynamic allocation and reallocation” includes “receiving a removal request” and
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`“removing the storage identifiers” as called for by claim 1. That is, the steps
`
`involve merely receiving a request to remove an ID from a customer and then
`
`doing so. A human analog can cross ID’s off of a customer list about as fast as
`
`they hear them. This is hardly outside the purview of a human analog.
`
`Nonetheless, “simply appending generic computer functionality to lend
`
`speed or efficiency to the performance of an otherwise abstract concept does not
`
`meaningfully limit claim scope for purposes of patent eligibility.” CLS Bank Int ’l
`
`v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (citing, Bancorp
`
`Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir.
`
`2012); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); Fort
`
`Props, Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323-24 (Fed. Cir. 2012)).
`
`These steps are performable by a human analog, but even if they are not
`
`because of delay, such is not sufficient to add significantly more than the abstract
`
`idea.
`
`B.
`
`The patent owner fails to show why any of the steps, individually
`or as an ordered combination, of the claims are unconventional
`and confine the abstract idea to a particular useful application.
`
`Here again, the patent owner focuses on “dynamic disassociation,” which
`
`merely involves “receiving a removal
`
`request” and “removing the storage
`
`identifiers.” Response at 15-16. These steps, in and of themselves, are far from
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`unconventional. That is, they merely involve receiving a removal request from a
`
`remote device, which could be as simple as receiving a phone call, a text, an e-
`
`mail, or some other remote communication, and then removing the ID’s.‘
`
`These steps are wholly unlike the steps in Example 21 cited by the patent
`
`owner.
`
`Response at 15.
`
`That
`
`is,
`
`the step in Example 21 relates to the
`
`unconventional step of forcing an alert even when a subscriber’s computer is
`
`offline. See July 2015 Update: Subject Matter Eligibility (“July 2015 Update”),
`
`Appendix 1: Examples at 4. This is unconventional because offline computers
`
`were not thought to be available for communication. There simply is nothing
`
`about receiving a removal request from a remote device and removing ID’s that is
`
`unconventional.
`
`These limitations fail to add significantly more than the abstract idea.
`
`C.
`
`The patent owner’s attempt to analogize the present claims to
`those of Diamond v. Diehr ignores the technological nature of the
`latter.2
`
`The patent owner attempts to analogize the present claims to Diamond v.
`
`Diehr (Diehr), and particularly the similar claims of Example 25 of the July 2015
`
`1 While the Examiner considered these limitations necessary for novelty and non-
`obviousness during prosecution,
`the steps involve mere communication and
`reaction, and do not add significantly more to the abstract idea of the claim.
`2 Patent Owner’s response, parts C.3 and C.4 are addressed collectively here in this
`part II.C.
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`Update, Appendix 1. Response at 16-18. The claims of Diehr and Example 25
`
`were said to be patentable for “improv[ing] another technical field, specifically the
`
`field of precision rubber molding.” July 2015 Update, Appendix 1: Examples at
`
`18.
`
`1.
`
`Storage Management is Not a Technical Field
`
`The patent owner’s analogy of the present claims to Diehr ignores that the
`
`field of storage management is not a technical field, but a business. The patent
`
`owner provides no basis for suggesting that the field of storage management is a
`
`technical field. Moreover, while the storage management industry may rely on
`
`technology such as computers and mobile devices to operate, the present claims do
`
`nothing to improve those technologies; they merely rely on them.
`
`2.
`
`What the Variables Are, How they are Used, and How they
`are Gathered is not Sufficient to be Analogous to Diehr.
`
`Further, the patent owner suggests that its claims relate to those of Diehr and
`
`Example 25 because they relate to the particular variables used, how the variables
`
`are gathered, and how the variables are used. Response at 17. This suggests that a
`
`claim that merely identifies variables, receives inputs for those variables, and does
`
`something with the input is sufficient to add significantly more than an abstract
`
`idea. This is clearly not in keeping with the law.
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`Rather, it is clear from a review of Example 25 that the additional concept of
`
`how the resulting calculation performed with the variables employed is also
`
`important. See July 2015 Update, Appendix 1: Examples at 18-19. “[T]he totality
`
`of the steps governed by the claimed instructions provides software that improves
`
`another technical field, specifically the field of precision rubber molding, through
`
`controlling the operation of the mold by initiating a signal to control the press
`
`to open when the comparison indicates equivalence and the molded product is
`
`cured.”
`
`Id. at 19. (emphasis added).
`
`“This software enhances the ability of a
`
`specific rubber molding device to open the press at the optimal time for curing the
`
`rubber therein.” Ia’. Steps of merely gathering and using particular variables do
`
`not, alone, amount to significantly more than an abstract idea.
`
`3.
`
`Facilitating Container Delivery
`Controlled Operation ofa Mold
`
`is not Analogous
`
`to
`
`The claimed process does not provide controlled operation like the claims of
`
`Diehr and Example 25. That is, the claims in Diehr and Example 25 actually
`
`control the press: “initiating a signal that controls the press to open when the
`
`comparison indicates equivalence.” July 2015 Update, Appendix 1: Examples at
`
`16. That is, Diehr actually automates and directly causes the physical activity of a
`
`machine. In contrast, the claims of the present patent call for “facilitating delivery
`
`of .
`
`.
`
`. containers.” Response at 18 (quoting ‘166 patent). Consistent with claim
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`construction
`
`of
`
`the
`
`present
`
`proceeding,
`
`“facilitating”
`
`simply means
`
`“communicating or updating for coordination of.” Facilitating does not include a
`
`direct electronic signal that controls machine operation. There are no actuators or
`
`other technological components that operate as a result of the claimed software.
`
`Rather, a communication is merely sent that a particular set of containers are set
`
`for delivery. A user must then physically collect and deliver the containers
`
`The present claims of the ‘ 166 are a far cry from the technological claims of
`
`Diehr. The claims do not amount to significantly more than the abstract idea.
`
`III. The patent owner fails to rebut petitioner’s argument that the claims of
`the ‘166 patent are patent ineligible.
`
`First,
`
`the statement by the patent owner that somehow a lack of data
`
`transformation or calculation supports the patent owner’s assertion that the claims
`
`are not directed toward an abstract idea is conclusory and nonsensical. Response
`
`at 19. That is, one way to support an argument that a claim is not directed toward
`
`an abstract idea is to suggest that it involves some sort of transformation. See July
`
`2015 Update, Appendix 1: Examples at l8 (“In addition, the claimed steps taken as
`
`a combination effect a transformation of the raw, uncured synthetic rubber into a
`
`different state or thing”) The patent owner seems to be suggesting that a lack of
`
`transformation supports its assertions. This is simply not a logical statement.
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`Second, the patent owner argues that the claims are not directed toward a
`
`fundamental economic practice. Response at 19. However, economic practice or
`
`not, the claims are directed toward an abstract idea of facilitating containerized
`
`storage or, as characterized by the Board, bailment. Even if bailment is not an
`
`example of a fundamental economic practice, it is analogous to the fundamental
`
`economic practices described and found ineligible in,
`
`for example, Bilski v.
`
`Kappos, 561 U.S. 593 (2010) and Alice Corp. Ply. Ltd. v. CLS Bank Int 7, 134 S.
`
`Ct. 2347 (2014).
`
`Third, the patent owner misses petitioner’s point regarding physical activity.
`
`Response at 20. That is, methods of manufacture rarely find themselves being
`
`questioned as being directed toward abstract ideas. This is because involvement
`
`with or acting on the physical world commonly results in some sort of physical
`
`transformation. While physical activity is not required, it can cause a claim to be
`
`considered less abstract. Patent owner’s claims effect no such physical activity.
`
`Fourth, the patent owner overstates the claimed process’s interaction with
`
`the physical world. Response at 21. That is, the claim facilitates, but it does not
`
`actually do anything other than communicate. While the result may be that
`
`containers are delivered, such delivery is performed by a human user that receives
`
`the communication, not the system performing the claimed process.
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`Fifth, and with reference to part II.C. above, the claimed system is not akin
`
`to the operation in Diehr involving “initiating a signal that controls the press to
`
`open.” See Response at 21. The claimed process calls for “facilitating delivery of
`
`a first container.” Under a broadest reasonable interpretation and consistent with
`
`claim construction of
`
`the present proceeding,
`
`facilitating simply means
`
`“communicating or updating for coordination of.” Facilitating does not include a
`
`direct electronic signal
`
`that controls machine operation. That
`
`is, facilitating
`
`includes a communication for purposes of coordinating the activity, not actually
`
`performing it.
`
`Sixth, the patent owner attempts to spin petitioner’s statement about general
`
`purpose computers to suggest that the present claims somehow involve more than a
`
`general purpose computer because of petitioner’s reference to “other devices.”
`
`Response at 22. A careful review of the claims will make clear that the references
`
`to other devices in the claims are simply for purposes of characterizing the types of
`
`communications received by the operating computer. However, no other device or
`
`system or operations performed by other devices or systems is positively claimed.
`
`The present method is performed solely by a general purpose computer, which is
`
`simply not enough to meet the machine or transformation test.
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`IV. The patent owner offers no response to the arguments relating to claims
`2-21 and, as such, these claims follow with claim 1.
`
`The patent owner’s response fails to address the claims of the ‘I66 patent
`
`individually. In particular, the only claim limitation that the patent owner seems to
`
`highlight is the alleged “dynamic reallocation” step of claim l. However, nothing
`
`is said as to any additional bases for why claims 2-21 would add anything above
`
`and beyond what claim 1 calls for. Accordingly, claims 2-21 survive or fall with
`
`claim 1.
`
`CONCLUSION
`
`For the reasons set forth above, Petitioner submits that Claims 1-21 of the
`
`‘I66 Patent are ineligible for patent based on 35 U.S.C. § 101. Accordingly,
`
`Petitioner requests cancellation of claims 1-21.
`
`Dated: February 4, 2016
`
`Reg. No. 64,448
`Counsel for Petitioner
`
`l0
`
`

`
`Petitioner Reply
`U.S. Patent 8,756,166 B2
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing Petition was served on Boxbee, Inc., by
`
`filing these documents through the Patent Review Processing System as well as
`
`e-mailing a copy to docketing@schox.com,
`
`Dated: February 4, 2016
`
`Respectfully Submitted,
`
`
`
`Bett lein
`Reg. No. 64,448
`Counsel for Petitioner
`
`l0O98328v2
`
`ll