Motorola Mobility LLCv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Mar 21, 2016

09553395 (P.T.A.B. Mar. 21, 2016)

Trials@uspto.gov Paper 33
Tel: 571-272-7822 Entered: March 21, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MOTOROLA MOBILITY, LLC,
Petitioner,

v.

INTELLECTUAL VENTURES I, LLC,
Patent Owner.
____________

Case CBM2015-00004
Patent 6,658,464 B2
____________

Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

Case CBM2015-00004
Patent 6,658,464 B2

2
I. INTRODUCTION
A. PROCEDURAL HISTORY
Petitioner, Motorola Mobility, LLC, filed a Petition (Paper 1, “Pet.”)
requesting a review of claims 1, 8, 16, and 17 (“the challenged claims”) of
U.S. Patent No. 6,658,464 B2 (Ex. 1001, “the ’464 patent”). Patent Owner,
Intellectual Ventures I, LLC, filed a Preliminary Response (Paper 6, “Prelim.
Resp.”). We instituted review of challenged claims 1, 8, 16, and 17 as being
directed to patent-ineligible subject matter under 35 U.S.C. § 101 (Paper 9,
“Inst. Dec.”).
Subsequently, Patent Owner filed a Patent Owner Response (Paper 17,
“PO Resp.”), and Petitioner filed a Reply (Paper 22, “Pet. Reply”).
Patent Owner did not file a motion to amend.
Petitioner filed a Motion to Exclude certain evidence, which is
discussed in Section III below.
Oral hearing was held on Thursday, December 3, 2015, and a
transcript of the oral hearing is included in the record. Paper 32 (“Tr.”).
We have jurisdiction under 35 U.S.C. §§ 6(b)(4) and (c), and this
Final Written Decision is entered pursuant to 35 U.S.C. § 328(a). For the
reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1, 8, 16, and 17 of the ’464 patent
are unpatentable.

B. RELATED MATTERS
1. Other Covered Business Method Review
The ’464 patent is related to U.S. Patent No. 6,557,054 B2 which was
the subject of covered business method review CBM2015-00005, now
Case CBM2015-00004
Patent 6,658,464 B2

3
terminated. See Motorola Mobility LLC, v. Intellectual Ventures LLC,
CBM2015-00005 (PTAB Apr. 23, 2015) (Paper 15).
2. Office Proceedings
The ’464 patent is the subject of Inter Partes Reexamination
Proceeding Control No. 95/002,093 and Ex Parte Reexamination Proceeding
Control No. 90/013,205, which the Patent Office merged into a single
proceeding on September 5, 2014. Pet. 29.
3. Related Litigation
Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–
29, 125 Stat. 284 (2011) (“AIA”) provides for the creation of a transitional
program for reviewing covered business method patents, and limits review
to persons or their privies that 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. The parties indicate that Patent Owner asserted the ’464 patent
against Petitioner in Intellectual Ventures I, et al. v. Motorola Mobility, Inc.,
Civil Action No. 11-908-SLR (D. Del.). Pet. 2 (citing Ex. 1002); Paper 5, 1.
4. Patent Owner’s Jurisdictional Termination Request
Patent Owner asks that the Board
terminate this proceeding for lack of jurisdiction because
Petitioner should not be allowed to re-litigate whether the ’464
patent qualifies as a CBM patent after fully litigating that issue
in an earlier CBM petition, which resulted in the Board finding
that the Petitioner failed to prove that the ’464 patent qualified
as a CBM patent.
PO Resp. 79.
The earlier petition Patent Owner refers to is CBM2014-00084 by this
Petitioner. In that case, we determined that Petitioner had not demonstrated
adequately that the ’464 patent is a covered business method patent. See
Case CBM2015-00004
Patent 6,658,464 B2

4
Motorola Mobility, LLC v. Intellectual Ventures I, LLC, Case CBM2014-
00084, slip op. at 2 (PTAB Aug. 6, 2014) (Paper 18); Inst. Dec. 2–3.
Patent Owner does not cite any authority supporting a lack of
jurisdiction in these circumstances, nor does Patent Owner otherwise explain
persuasively why a prior petition denies the Board jurisdiction.
Consequently, we deny Patent Owner’s request to terminate the proceeding
on this basis.

II. THE CLAIMED SUBJECT MATTER
A. THE ’464 PATENT
The ’464 patent is titled “User Station Software that Controls
Transport, Storage, and Presentation of Content from a Remote Source,” and
relates to a method and corresponding software for operating a user station
for communications with a multiplicity of independently-operated data
sources via a non-proprietary network. Ex. 1001, (54); Abstract; 5:15–18,
5:25–29. We describe the patent in greater detail in the analysis that follows.

B. CHALLENGED CLAIMS
Of the challenged claims, claim 1 is the sole independent claim, and
claims 8, 16, and 17 depend from independent claim 1. Reproduced below
are the challenged claims:1

1 In claim 1, we added line breaks and annotated the steps (a)–(d) to
facilitate review.
Case CBM2015-00004
Patent 6,658,464 B2

5
1. A software product for use at a user station, the user
station including a processor and a storage device, the software
product comprising computer executable instructions that, when
executed by the processor:
(a) enable a user at the user station to select content from
each of a plurality of independent publishers;
(b) effect transport of the selected content from each of
the plurality of publishers to the user station over a
communications network and, without user intervention,
(c) effect storage of the transported content to the storage
device such that the content is retained on the storage device
upon shutting down of the user station and/or deactivation of
the software product; and
(d) effect presentation of the stored content to the user at
the user station with a user interface that is customized to the
respective publishers.

8. The software product as set forth in claim 1, wherein the
transport of the selected content to the user station is effected
without user intervention.

16. The software product as set forth in claim 1, wherein the
transport of the selected content to the user station is effected
using a non-proprietary data transfer protocol.

17. The software product as set forth in claim 1, wherein the
communications network is the Internet.

C. CLAIM CONSTRUCTION
In our Institution Decision, we determined that because the claims of
the ’464 patent have expired, the broadest reasonable construction standard
does not apply. See Inst. Dec. 5; 37 C.F.R. § 42.300(b) (requiring the claims
of an unexpired patent to be given the broadest reasonable construction in
light of the specification). Neither party challenges that determination.
Case CBM2015-00004
Patent 6,658,464 B2

6
We also determined that the language of claim 1 demonstrates that the
steps recited therein must be performed in the order written. Inst. Dec. 6–9.
In making this determination, we considered the District Court claim
construction submitted by Petitioner. See Ex. 1010, 51–54 (cited at Pet. 30–
31).2 Patent Owner agrees with our interpretation that the steps must be
performed in the order written. PO Resp. 24 (citing Ex. 2010 ¶ 51).
Petitioner contends that claim 1 does not require that the steps be performed
in the order written, but does not provide an explanation for that assertion.
See Pet. Reply 7–8. Petitioner asserts that even if claim 1 requires the steps
to be performed in the order presented in the claim, the claims remain patent
ineligible subject matter. Id.
Independent claim 1 is a method claim that does not recite an order
for the steps contained therein. Our reviewing court has adopted a two-part
test for determining if the steps of a method claim that do not otherwise
recite an order, must nonetheless be performed in the order in which they are
written. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
2003). First, “we look to the claim language to determine if, as a matter of
logic or grammar, they must be performed in the order written.” Altiris, 318
F.3d at 1369–70 (citations omitted); see also Mformation Techs., Inc. v.
Research In Motion Ltd., 764 F.3d 1392, 1398–99 (Fed. Cir. 2014) (a claim
“requires an ordering of steps when the claim language, as a matter of logic
or grammar, requires that the steps be performed in the order written, or the
specification directly or implicitly requires” an order of steps) (quoting
TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir.

2 Petitioner cited, but did not necessarily agree with, the District Court claim
construction. Pet. 30–31.
Case CBM2015-00004
Patent 6,658,464 B2

7
2008)). If this is not the case, then “we next look to the rest of the
specification to determine whether it ‘directly or implicitly requires such a
narrow construction.’” Altiris, 318 F.3d at 1370 (citations omitted).
For the reasons that follow, the language of claim 1 demonstrates that
the steps must be performed in the order written.
Claim 1 is directed to a software product comprised of computer
executable instructions for use at a user station that includes a processor and
a storage device. Step (a) recites “enable a user at the user station to select
content,” and step (b) recites “effect transport of the selected content.” Step
(b) requires effecting transport of the content that was selected (i.e., “the
selected content”) in step (a). Use of the past tense of select (i.e., “selected”)
in step (b) indicates that selection of the content occurred before transport
was effected. Consequently, the language of claim 1 indicates that step (a)
(the selecting step) must occur before step (b) (the transporting step).
Likewise, step (c) effects storage of “the transported content,” meaning the
content transported in step (b), and step (d) requires effecting presentation of
“the stored content,” meaning the content that was stored in step (c).
Accordingly, the plain language of claim 1 suggests that the steps
must be performed in the order presented. See PO Resp. 25; see also E-Pass
Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222 (Fed. Cir. 2007) (holding
that where subsequent steps to completed results of the prior step, the steps
of the claim must be performed in order). We consider this interpretation, in
light of the specification, as interpreted by a person of ordinary skill in the
art. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
banc) (“The construction that stays true to the claim language and most
Case CBM2015-00004
Patent 6,658,464 B2

8
naturally aligns with the patent’s description of the invention will be, in the
end, the correct construction.”).
Patent Owner’s annotated version of Figure 6 of the ’464 patent
follows:

Figure 6 is a schematic diagram showing some of the benefits that can flow
to a user when an information transport software component is used, with
steps A–D circled and labeled by Patent Owner. PO. Resp. 27; Ex. 1001,
5:61–65 (referring to Figure 1), 5:43–48, 14:54–59.
As shown at the left edge of Figure 6, time flows from the top down,
indicating that A–D, which correspond to steps (a)–(d) of claim 1, occur in
sequence. In step (a), the selecting step, user 100 “selects a transport
operation from a user interface screen in containing information product 12.”
Ex. 1001, 15:43–45 (see circled area labeled “A” above). Information
product 12 then calls information transport component 14 to activate
transport. Id. at 15:45–46. In step (b), the transporting step, information
transport component 14 executes transport object 62. Id. at 15:46–51 (see
Case CBM2015-00004
Patent 6,658,464 B2

9
circled area “B” above). Following transport, in step (c), the storage step,
information transport component 14 initiates store-and-process-of-fetched
object 106 and execution of the store and process operation may be passed to
containing information product 12. Id. at 16:10–13 (see circled area “C”
above). In step (d), the presenting step, the user can use the product (e.g., by
effecting presentation). Id. at 16:13–14 (see circled area “D” above).
Consequently, the specification is consistent with the interpretation that the
steps of claim 1 must be performed in order presented. See PO Resp. 27.
We interpret claim 1 to require that the claimed steps are performed in
the order presented.

III. MOTION TO EXCLUDE
A. INTRODUCTION
As mentioned above, Petitioner filed a Motion to Exclude certain
exhibits. Paper 24 (“Mot.”). Patent Owner filed an Opposition to the
Motion (Paper 26, “Opp.”), and Petitioner filed a Reply to the Opposition
(Paper 29, “Opp. Reply”). For the following reasons, Petitioner’s motion is
denied.
Petitioner seeks to exclude Exhibits 2010–2013, 2016–2018, and
2020. Mot. 1. Each of the exhibits at issue was submitted in association
with Patent Owner’s Response on July 8, 2015. Petitioner’s objections to
these exhibits were timely. Paper 19 (submitted July 15, 2015); 37 C.F.R.
§ 42.64(b)(1).

Case CBM2015-00004
Patent 6,658,464 B2

10
B. EXHIBIT 2010 – THE DECLARATION OF DR. SHORT
Petitioner presents five arguments that all or some of the Declaration
of Dr. Short (Ex. 2010) should be excluded. Before addressing those
arguments, we observe that Dr. Short’s qualifications align sufficiently with
the challenged subject matter (software for use on a user station) such that
his knowledge is helpful in understanding the evidence and determining
facts in issue. For example, as noted by Patent Owner, Dr. Short has a Ph.D.
in Electrical Engineering and more than 35 years of experience as a
practicing engineer, which includes experience in computer programming.
Opp. 2–3; Ex. 2010 ¶¶ 5–7; Ex. 2019 (Dr. Short’s personal data sheet).
1. Omitted Information
Petitioner contends that Dr. Short’s Declaration should be excluded
because it fails to identify all materials that he considered in forming his
opinion. Mot. 2–3; Opp. Reply 2.
This argument is unpersuasive for two independent reasons. First,
Petitioner’s objections do not mention an alleged failure to identify all
material relied upon, and consequently the objection did not identify the
grounds for the objection with sufficient particularity to permit Patent
Owner to correct in the form of supplemental evidence. See
37 C.F.R. § 42.64(b)(1), (c).
Second, our rules provide that the opinion of an expert witness may be
given little or no weight if the expert does not disclose the underlying facts
or data on which the opinion relies. See 37 C.F.R. § 42.65. Therefore, the
absence of such underlying facts or data is a matter relating to the weight to
be given such evidence rather than to the admissibility of that evidence.
Further, Petitioner does not identify a Federal Rule of Evidence that supports
Case CBM2015-00004
Patent 6,658,464 B2

11
exclusion as requested, and Petitioner’s citation to the Federal Rules of Civil
Procedure (FRCP) is unpersuasive because the Board has not adopted those
rules. See Mot. 2; Opp. Reply 2; 37 C.F.R. § 42.62 (applying the Federal
Rules of Evidence (“Fed. R. Evid.”) to inter partes reviews); see generally
Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., Case
IPR2013-00453, slip op. at 8 n.5 (PTAB Jan. 6, 2015) (Paper 88) (noting
that the Board has not adopted the Federal Rules of Civil Procedure).
2. Attorney Argument, Paragraph 58
Petitioner contends that Dr. Short’s statement that the claimed
software was somehow “unpredictable” should be excluded because it is
attorney argument disguised as expert opinion. Mot. 3–4 (referring to
Dr. Short’s statement at Ex. 2010 ¶ 58 and citing Salas v. Carpenter, 980
F.2d 299, 305 (5th Cir. 1992); Romanelli v. Long Island R.R. Co., 898 F.
Supp. 2d 626, 634 (S.D.N.Y. 2012)); Opp. Reply 2–3. This argument is
unpersuasive for three independent reasons.
First, Petitioner’s objections did not mention paragraph 58, and did
not allege that any portion of the Declaration is attorney argument disguised
as an expert opinion. See Paper 19, 1–2. Consequently, the objections did
not permit Patent Owner to correct in the form of supplemental evidence.
See 37 C.F.R. § 42.64(b)(1), (c).
Second, we disagree with Petitioner’s characterization that the cited
testimony is attorney argument. Rather, as explained by Patent Owner,
Dr. Short was referring to the mental leap that would be required to reach the
claimed subject matter. See Opp. 4–5.
Third, the cases cited by Petitioner do not support excluding the
paragraph at issue. Salas, the first case cited by Petitioner, deals with expert
Case CBM2015-00004
Patent 6,658,464 B2

12
testimony in jury trials. Salas, 980 F.2d at 305. The policy considerations
for excluding expert testimony, such as those implemented by the
gatekeeping framework established by the Supreme Court in Daubert v.
Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), are less compelling in
bench proceedings such as inter partes reviews than in jury trials.
In Romanelli, the second case cited by Petitioner, the court stated that
an expert may not testify regarding the existence of a duty, and thus
Mr. Romanelli, as a lay witness, also could not do so. Romanelli, 898 F.
Supp. 2d at 634 (citing In re Air Disaster at Lockerbie Scot., 37 F.3d 804,
827 (2d Cir. 1994)). Dr. Short provides his opinion regarding the
unpredictability of the claimed software instructions, not the existence of a
duty. See Ex. 2010 ¶ 58.
3. Unreliable Sources, Paragraphs 25–50
Petitioner contends that paragraphs 25–50 of Dr. Short’s Declaration
should be excluded because his testimony relies on unreliable sources, and
because these paragraphs omit Dr. Short’s personal knowledge about similar
technology. Mot. 4–5 (citing Daubert, 509 U.S. at 592).
Regarding sources, Petitioner’s Motion mentions that Exhibit 2011,
referenced by Dr. Short, was published in 2009 and explains the status of the
internet in 1989. Mot. 4. However, Petitioner objected to Dr. Short’s
Declaration because it was “not based upon data on which experts in this
field would reasonably rely.” Paper 19, 1–2. Petitioner did not specify
which of the nine sources of information Dr. Short relied upon, was
unreliable. See Ex. 2010 ¶ 9 (listing information sources). Absent such
information, Patent Owner did not have sufficient opportunity to correct in
the form of supplemental evidence. 37 C.F.R. § 42.64(b)(1), (c).
Case CBM2015-00004
Patent 6,658,464 B2

13
Further, Petitioner’s observation that Exhibit 2011 was published in
2009 and explains the state of the internet in 1989 does not demonstrate
persuasively that the source is unreliable. That is, the passage of time,
without more, does not demonstrate the exhibit is unreliable.
Regarding the allegation that Dr. Short omitted personal knowledge
about similar technology, Petitioner did not effectively object on such a
basis. See Paper 19, 1–2; 37 C.F.R. § 42.64(b)(1), (c). Further, Petitioner
does not cite, and we are not aware of, any authority for excluding expert
testimony based upon a failure to identify personal knowledge of similar
technology.
4. Subject Matter Knowledge, Paragraphs 52–56
Petitioner contends that paragraphs 52–56 of Dr. Short’s Declaration
should be excluded because Dr. Short admits he has little or no knowledge
of the subject matter presented, and therefore, his testimony amounts to
attorney argument improperly presented as expert testimony. Mot. 5–6
(citing Dr. Short’s testimony at Ex. 1012, 23:6–11, 52:23–53:3); Opp. Reply
4.
Dr. Short did not admit he has little or knowledge of the subject matter
presented; rather, Dr. Short stated that he is not a financial expert. See Ex.
1012, 23:6–11. We agree with Patent Owner that Dr. Short does not need to
be a financial expert in order to competently opine on how a person having
ordinary skill in the art would have understood the claims. Opp. 8. We
disagree with Petitioner’s characterization that Dr. Short’s testimony
demonstrates that he has “no idea” what solving a technical problem using a
technical solution means. See Mot. 6; Ex. 1012, 52:23–53:3. As explained
above, Dr. Short’s qualifications align with the challenged subject matter
Case CBM2015-00004
Patent 6,658,464 B2

14
sufficiently so that his knowledge is helpful in understanding the evidence
and determining facts in issue. See Opp. 8
5. Reliance on Articles, Paragraphs 11–12
Petitioner argues that the Board should exclude Dr. Short’s testimony
that criticizes Dr. Clark’s identification of the level of skill in the art. Mot 6–
7 (referring to the testimony at Ex. 2010 ¶¶ 11–12). In particular, Petitioner
emphasizes that Dr. Short states he was not aware of a Bachelor of Science
level software engineering program in 1994, yet, Dr. Short’s employer at the
time, the University of Utah, was developing a program. Id. at 7 (citing
Dr. Short’s testimony at Ex. 1012, 41:7–10).
Even accepting, for the sake of argument, that Dr. Short contradicted
himself, contradictory testimony would go to the weight afforded that
evidence, not its admissibility. Perhaps more importantly, we disagree with
Petitioner’s characterization of the evidence. Dr. Short’s statement that he
was unaware of any Bachelor of Science level software engineering program
in 1994 is consistent with a program being in development at that time. See
Ex. 2010 ¶ 11; Ex. 1012, 41:7–10.
6. Conclusion3
Consequently, Petitioner has not demonstrated that any portion of the
Declaration of Dr. Short should be excluded. See 37 C.F.R. §§ 42.20(c),
42.22, 42.64(c).

3 Petitioner essentially repeats these arguments and argues that Dr. Short’s
Declaration should be given little or no weight. See Pet. Reply 23–25. We
considered these arguments when weighing Dr. Short’s Declaration.
Case CBM2015-00004
Patent 6,658,464 B2

15
C. EXHIBIT 2011 - EXCERPTS FROM THE INTERNET
Petitioner contends that pages 6–9 of Exhibit 2011 should be excluded
as hearsay under Fed. R. Evid. 802 and for lack of proper authentication
under Fed. R. Evid. 901. Mot. 8. Petitioner made corresponding and timely
objections. See Paper 19, 2.
We agree with Patent Owner, that Exhibit 2011 contains excerpts from
a textbook that qualifies as a learned treatise under Fed. R. Evid. 803(18),
and, therefore, should not be excluded under Fed. R. Evid. 802. See Opp.
10.
We also agree with Patent Owner that the distinctive characteristics
found on the tile page, table of contents, and copyright page of Exhibit 2011
are sufficient to support a finding that the exhibit is what Patent Owner
claims it to be. See Fed. R. Evid. 901(a), (b)(4). See Opp. 10–11; Ex. 2011,
1–9.4
Consequently, Petitioner has not demonstrated that Exhibit 2011
should be excluded. See 37 C.F.R. §§ 42.20(c), 42.22, 42.64(c).

D. EXHIBITS 2012, 2013, 2018, AND 2020
Exhibit Title
2012 DYNASHUTTLE™ Corp., Product and Service Overview
2013 DYNASHUTTLE™ Corp., Company Backgrounder
2018 Teleshuttle, Teleshuttle™, Formerly Dynashuttle Corp,
Announces CD-ROM/Online Hybrids For Vista Intermedia and
Electronic Book Technologies (1995)
2020 Teleshuttle Corp., Teleshuttle (1996)

4 Pages 1–9 of this Exhibit are not properly numbered.
Case CBM2015-00004
Patent 6,658,464 B2

16
Petitioner contends that pages 1–4 of Exhibit 2012 should be excluded
because they are not relevant and may lead to unfair prejudice. Mot. 8–9
(citing Fed. R. Evid. 402 and 403). Specifically, Petitioner contends that the
Exhibit does not relate to whether the claims recite patent eligible subject
matter under 35 U.S.C. § 101. Id. Petitioner also contends that pages 1–4
should be excluded as hearsay under Fed. R. Evid. 802 and for lack of
proper authentication under Fed. R. Evid. 901. Id. Petitioner made
corresponding and timely objections. See Paper 19, 2–3. Petitioner further
contends that the entirety of Exhibits 2013, 2018, and 2020 should be
excluded for the same reasons. Mot. 9–10, 12–14. Petitioner made
corresponding and timely objections. See Paper 19, 3–5.
Patent Owner contends that the Exhibits at issue are relevant for two
reasons: (1) to rebut the obviousness allegations made by Petitioner, and (2)
to show that the claimed invention is directed to a concrete implementation
rather than an abstract idea. Opp. 14. Regarding what Patent Owner refers
to as “obviousness allegations,” a more accurate characterization is that
Petitioner relies upon Ogaki to demonstrate that the ’464 patent is a covered
business method patent as defined by the AIA. See Inst. Dec. 9–16.
Whether the ’464 patent is a covered business method patent remains an
issue in this case. See PO Resp. 28–61; Pet. Reply 7–13. Further, whether
the challenged claims are directed to a concrete implementation or an
abstract idea is a relevant inquiry under 35 U.S.C. § 101. Significantly,
Petitioner has the burden of persuasion regarding exclusion of these exhibits,
and Petitioner does not respond to Patent Owner’s reasons why the exhibits
are relevant. See Opp. Reply; 37 C.F.R. §§ 42.20(c), 42.22.
Case CBM2015-00004
Patent 6,658,464 B2

17
The exhibits at issue have some tendency to make a fact of
consequence in these inquiries more or less probable. Consequently,
Petitioner has not persuaded us that they are not relevant.
We are persuaded by Patent Owner’s assertion that the exhibits at
issue have distinctive characteristics that demonstrate that the exhibits are
what Patent Owner claims them to be. See Opp. 13–14. For example,
Exhibits 2012 and 2013 have virtually identical formatting and share some
descriptive text regarding the DYNASHUTTLE commercial product, and
Exhibits 2018 and 2020 have the same company contact information. Opp.
14; Exs. 2012, 2013. Petitioner responds that the fact that the exhibits have
common formatting, layout, and font type is not evidence that the documents
are reliable. Opp. Reply 5. Patent Owner did more than point out that the
exhibits have common formatting, layout, and font type. The exhibits have
other distinctive characteristics that demonstrate the exhibits are what Patent
Owner claims them to be. For example, Exhibits 2012 and 2013 each
describe the DYNASHUTTLE product as providing simple and seamless
data transport. Opp. 14; Ex. 2012, 1; Ex. 2013, 1. The Company address
and phone number are also the same. See Opp. 14; Ex. 2012, 1; Ex. 2018, 1;
Ex. 2020, 2; see also PO Resp. 16 (explaining that DYNASHUTTLE was
renamed Teleshuttle).
Regarding hearsay, Patent Owner contends that Exhibits 2012, 2013,
2018, and 2020 are more than 20 years old and thus qualify as an exception
to hearsay in this proceeding under Fed. R. Evid. 803(16). Opp. 12–13.
Indeed, each of these Exhibits appears to be at least 20 years old. Ex. 2012,
1 (1994); Ex. 2013, 1 (1994); Ex. 2018, 2 (1994); Ex. 2020, 3 (January
1996). Petitioner responds that these Exhibits do not qualify for the ancient
Case CBM2015-00004
Patent 6,658,464 B2

18
documents exception to hearsay because authenticity has not been
established. Opp. Reply 5. As explained above, Petitioner has not
persuaded us that Patent Owner made an inadequate showing regarding
authenticity.
Consequently, Petitioner has not demonstrated that any portion of
Exhibits 2012, 2013, 2018, or 2020 should be excluded. See 37 C.F.R.
§§ 42.20(c), 42.22, 42.64(c).

E. EXHIBITS 2016 AND 2017
Exhibit Title
2016 Crafting a Baccalaureate Program in Software Engineering
2017 The Road We’ve Traveled: 12 Years of Undergraduate
Software Engineering at the Rochester Institute of Technology
Petitioner contends that these Exhibits should be excluded based on
relevance and hearsay, and Petitioner made corresponding, timely
objections. See Mot. 10–12; Paper 19, 3–4. Specifically, according to
Petitioner, the Exhibits have “no relevance to the matter at issue in this
proceeding, whether the claims recite patent eligible subject matter,” and the
exhibits are not relevant to Dr. Clark’s definition of a person of ordinary skill
in the art because Dr. Clark identified a software engineering degree as an
alternative degree. Mot. 11–12 (referencing Dr. Clark’s testimony regarding
the level of skill in the art at Ex. 1006 ¶ 8).
As an initial matter, we note that contrary to what Petitioner’s
assertion suggests, whether the claims recite patent eligible subject matter is
not the sole issue in this proceeding. For example, we must determine
whether the ’464 patent is a covered business method patent as defined by
the AIA, and the level of skill in the art relates to that inquiry. Patent
Case CBM2015-00004
Patent 6,658,464 B2

19
Owner’s expert, Dr. Short, testifies that Dr. Clark’s definition of a person of
ordinary skill in the art is unrealistic in that there were not any Bachelor of
Science software engineering degree programs offered in the United States
at that time. Ex. 2010 ¶ 11 (citing Exs. 2016, 2017). Exhibits 2016 and
2017 tend to make a fact related to the level of skill in the art more or less
probable, and, therefore, are relevant. See Opp. 12.
Regarding hearsay, we agree that because Dr. Short relies on the
exhibits at issue, exclusion of the exhibits as hearsay is improper. Opp. 11
(citing Fed. R. Evid. 703).
Consequently, Petitioner has not demonstrated that any portion of
Exhibits 2016 and 2017 should be excluded. See 37 C.F.R. §§ 42.20(c),
42.22, 42.64(c).

IV. COVERED BUSINESS METHOD (CBM) PATENT
Section 18(a)(1)(E) of the AIA directs that the Board may institute a
transitional proceeding only for a patent that is a covered business method
(CBM) patent. Whether a patent is a CBM patent is a two-part inquiry: (1)
whether the patent “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,” and (2)
whether the patent is a technological invention (technological inventions are
not covered business methods patents). AIA § 18(d)(1); 37 C.F.R.
§ 42.301(a). It is Petitioner’s burden to demonstrate that the ’464 patent is a
covered business method patent. See 37 C.F.R. § 42.304(a); see also PO
Resp. 28–29 (emphasizing this point).
Case CBM2015-00004
Patent 6,658,464 B2

20
In our Institution Decision we determined that the ’464 patent is a
covered business method (CBM) patent. Inst. Dec. 9–16. Patent Owner
disagrees with this determination. PO Resp. 28–61. Petitioner agrees with
this determination. Pet. Reply 7–14. We determine whether the ’464 patent
is a CBM patent in light of the full record.

A. FINANCIAL PRODUCT OR SERVICE
1. Claims
Patent Owner argues that the challenged claims recite electronic
content distribution operations and have no direct or indirect relationship to
financial products or services. PO Resp. 29–30 (providing three supporting
citations). For the reasons that follow, we are not persuaded by this
argument.
First, the portion of the Federal Register quoted by Patent Owner,
when viewed in context, undermines rather than supports Patent Owner’s
argument. See PO Resp. 29–30 (citing Transitional Program for Covered
Business Method Patents—Definitions of Covered Business Method Patent
and Technological Invention, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012)
(response to comment 4)). Comment 4 suggested that the definition of a
covered business method patent, under 37 C.F.R. § 42.301(a), should be
revised to clarify that the “determination of a ‘covered business method
patent’ would not be satisfied by merely reciting an operating environment
related to data processing or management of a financial product or service,
but that eligibility should be determined by what the patent claims.” In other
words, the comment sought to modify the definition of a covered business
method patent to expressly exclude patents that merely recite an operating
Case CBM2015-00004
Patent 6,658,464 B2

21
environment related to data processing or management of a financial product
or service. The Office expressly declined to adopt this suggestion, implying
that patents that recite an operating environment related to data processing or
management of a financial product or service, such as the ’464 patent, may
be covered business method patents. See id. (response to Comment 4).
Second, Patent Owner is correct that the Board previously stated in a
routine (nonprecedential) opinion that, “[f]or purposes of determining
whether a patent is eligible for a covered business method patent review, the
focus is on the claims.” See PO Resp. 29–30 (quoting Int’l Sec. Exch. v.
Chicago Bd. Options Exch., Case CBM2013-00050, slip op. at 9 (PTAB
Mar. 4, 2014) (Paper 16). However, the Board’s statement that the focus is
on the claims does not mean that the specification is ignored, or that the
financial product or service must be explicit in a claim. Indeed, the Federal
Circuit has held that a financial product or service need not be explicitly
recited in the claims. Versata Dev. Grp., Inc., v. SAP Am., Inc., 793 F.3d
1306, 1324–25 (Fed. Cir. 2015); see also Inst. Dec. 11–12; Pet. Reply 9–10
(citing analogous Board determinations).
Third, Patent Owner’s citation to Dr. Short’s Declaration is not
persuasive because Dr. Short only addresses what the claims recite and does
not address the claims in light of the specification. See PO Resp. 29–30
(citing Ex. 2010 ¶ 52).
2. Particular Application
Patent Owner argues that the proper inquiry is whether the claims
have “particular application” to financial activities, and according to Patent
Owner, the portion of the specification cited by Petitioner does not establish
Case CBM2015-00004
Patent 6,658,464 B2

22
a particular application. PO Resp. 30–35.5
To the extent that Patent Owner suggests that Salesforce established
that the test to be applied is whether the claimed method has “particular
application” to a financial activities, we disagree. As a routine
(nonprecedential) opinion, Salesforce could not establish the appropriate
standard. The holding in Salesforce is better understood in context.
Salesforce did not set forth a “particular application” test as urged by Patent
Owner.
In the Institution Decision in Salesforce, the Board determined that the
patent at issue was a covered business method patent. Salesforce, slip op. 9–
18 (Paper 16). There, the patent was directed generally to a method and
apparatus for managing collaborative activity (e.g., strategic planning and
project management). Id. at 3. When determining if the patent was a CBM
patent, the Board focused on claim 8, and stated:
[a]lthough claim 8 does not expressly refer to financial activity,
such as those described in the Specification, the claimed method
has particular application involving financial activities. The
Specification discloses that the method can be used to evaluate:
(i) budgeting issues, (ii) the cost of or investment in each
particular goal or initiative, (iii) the economic return anticipated
for achievement of the particular goal or initiative, (iv) the ratio
of return on investment, or (v) the potential profit or loss of a
scalable process. Ex. 1001, col. 5, ll. 5-8; col. 14, ll. 21-29.
When applied to the activities listed above, and based on the

5 Patent Owner refers to Petitioner’s citation to Exhibit 1001, 20:12–24 on
page 6 of the Petition. Patent Owner quotes Salesforce.com, Inc. v.
VirtualAgility Inc., Case CBM2013-00024, slip op. at 11 (PTAB Nov. 19,
2013) (Paper 16). Patent Owner also cites Par Pharmaceutical v. Jazz
Pharmaceuticals, Case CBM2014-00153, slip op. at 12 (PTAB Jan. 13,
2015) (Paper 11) and portions of the legislative history of the AIA found at
Exhibits 2001–2003.
Case CBM2015-00004
Patent 6,658,464 B2

23
legislative history that a covered business method patent is to
cover activities that are financial in nature, the method of claim
8 represents a financial product or service used by an
organization, which allegedly improves the financial health of
the organization.
Id. at 11 (emphasis added).
Taken in proper context, the inquiry in Salesforce was whether the
claimed method used a financial product or service. This inquiry should be
considered in the context that: “financial” means “relating to monetary
matters,” and the statute covers a wide range of finance related activities,
and application is not limited to activity by a financial institution. See
Versata, 793 F.3d at 1325 (cited at Pet. Reply 10). Here, as in Salesforce,
the claims do not expressly refer to financial activity, but the Specification
discloses an application to financial activities. See Pet. 6 (citing Ex. 1001,
1:35, 20:12–24.); Pet. Reply 8 (citing Ex. 1001, 1:33–37, 20:12–24); see
also Salesforce, Paper 47, 7–11 (upholding, in the final written decision, the
determination that the patent was a CBM patent).
Par Pharmaceutical was also a routine (nonprecedential) decision,
and could not have established a new standard for determining CBM patent
review eligibility. In Par Pharmaceutical, the Board determined that the
patent at issue was not a covered business method patent and did not
institute a trial. Par Pharmaceutical, slip op. at 10–22 (Paper 11). There,
the Board observed that the claimed method does not recite a financial
product or service, and characterized the claimed method as a whole as
reciting a method for controlling access to a prescription drug to guard
against potential abuse and unauthorized diversion that is not particular to or
characteristic of financial institutions (e.g., banks, insurance companies, and
investment houses). Id. at 10–12. The Board determined that the claim
Case CBM2015-00004
Patent 6,658,464 B2

24
limitations identified by the petitioner did not recite or require an activity
involving the movement of money. Id. at 12. Further, the petitioner did “not
explain, in detail with specific analysis of the claim language, why the
claimed method steps recite or require verifying insurance coverage or a
patient’s ability to pay.” Id. at 13. In light of this, the Board concluded that
the petitioner had not met its burden of demonstrating that the challenged
patent claims a method “used in the practice, administration, or management
of a financial product or service.” Id. at 9 (citing AIA § 18(d)(1); 37 C.F.R.
§ 42.304(a)). Thus, the Board’s determination was based on a failure of
proof by the petitioner.
Here, in contrast to Par Pharmaceutical, Petitioner explains why the
claimed software product for distributing content to a user station was used
in the practice, administration or management of a financial product or
service. Specifically, “for providing financial planning and portfolio
management systems, enabling electronic tax and government filings, or to
obtain current statistics, place stock orders, and the like.” Pet. 6–8 (citing
Ex. 1001, 1:35, 20:12–24). Indeed, Example 5 of the Specification describes
that the claimed method may be used for:
Tax or other governmental filings and exchanges: An example
of the generality of the inventive information transport system
for sending and fetching well-defined information objects of
many kinds is in the filing of tax returns. A send information
object can be created and manifested to submit electronic tax
filings to the IRS, as described above, for electronic product
order forms. A fetch object can be created to obtain updated tax
forms and the program logic relating to them, and to get
information on new regulations. Analogous uses will be
apparent to those skilled in the relevant arts of, for example,
financial planning and portfolio management systems, to obtain
current statistics, place orders, and the like.
Case CBM2015-00004
Patent 6,658,464 B2

25
Ex. 1001, 20:13–25.
Regarding Patent Owner’s reliance on the legislative history in
support of the contention that a particular application to a financial activity
is required, that is the standard we have applied. See Pet. Reply 9.
Consequently, we are persuaded that Petitioner has demonstrated that
at least one claim of the ’464 patent covers data processing or other
operations used in the practice, administration, or management of a financial
service (e.g., tax filing and financial planning).

B. TECHNOLOGICAL INVENTION
In our Institution Decision, we determined that the ’464 patent is not
directed to a technological invention. Inst. Dec. 12–16. Patent Owner
disagrees with that determination. PO Resp. 36–61.
To determine whether a patent is directed to a technological invention,
and therefore ineligible for covered business method patent review, we
consider: (1) whether the claimed subject matter as a whole recites a
technological feature that is novel and unobvious over the prior art; and
(2) solves a technical problem using a technical solution. 37 C.F.R.
§ 42.301(b). Before addressing these inquiries we consider the Federal
Circuit’s guidance in Versata.
In Versata, the patent at issue related to a method and apparatus for
pricing products in multi-level product and organizational groups and sought
to reduce the need for large data tables. 793 F.3d at 1311–12. Claim 17 was
directed to a method for determining a price of a product. Id. at 1312. The
steps included arranging a hierarchy of organizational groups, arranging a
hierarchy of product groups, storing pricing information in association with
Case CBM2015-00004
Patent 6,658,464 B2

26
those groups, retrieving applicable pricing information, sorting that
information, and determining the product price using the sorted pricing
information. Id. at 1312–13. Versata, the patent owner, argued that claim
17 recited a new and nonobvious technological feature, namely, a
hierarchical data structure used in combination with a software-implemented
pricing procedure on a computer using “denormalized” numbers that are
determined in “run time.” Id. at 1326–27. Petitioner SAP responded that
claim 17 was merely directed to a business process of determining product
prices that lacked even minimal computer-related recitations. Id. at 1327.
The Federal Circuit upheld the Board’s determination that claim 17 was
subject to CBM review, noting that the use of a general purpose computer to
facilitate uninventive steps did not change the fundamental character of the
invention. Id.
In sum, claim 17 in Versata was directed to a business process of
determining product prices that included minimal computer-related
limitations, and the fact that the steps were accomplished with a general
purpose computer did not change the character of the invention. See id.
1. Claim 1 Does Not Recite A Technological Feature That Is Novel
and Unobvious Over the Prior Art
As noted in our Institution Decision, claim 1 recites the use of known
prior art technology (a user station that includes a processor and a storage
device, a communications network, and a user interface). See Inst. Dec. 14;
Pet. 12, 14. Patent Owner does not contest that these components were
known technology; rather, Patent Owner asserts that the claimed subject
matter recites more than known technology in that it recites “a sequence of
four detailed steps, implemented by a computer processor and using
computer storage, unknown in the prior art.” PO Resp. 58–59 (citing Ex.
Case CBM2015-00004
Patent 6,658,464 B2

27
2010 ¶ 48). Therefore, Patent Owner concedes that claim 1 utilized known
prior art technology components to accomplish a method. See 37 C.F.R.
§ 42.23(a) (in an opposition, any material fact not specifically denied may be
considered admitted), § 42.120(a) (the patent owner response is an
opposition).
Consequently, even if we accept as true that the sequence of four steps
was unknown in the prior art, claim 1 does not avoid classification as a
covered business method patent. See Office Patent Trial Practice Guide, 77
Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (providing examples of claim
drafting techniques that do not avoid classification as a CBM patent,
including “[r]eciting the use of known prior art technology to accomplish a
process or method, even if that process or method is novel and non-
obvious”); see also Versata, 793 F.3d at 1326 (approving of the Board’s
reliance on this criteria in the Office Patent Trial Practice Guide).
For the reasons that follow, we need not determine if Ogaki
anticipates or renders claim 1 obvious as Patent Owner requests that we do.
See PO Resp. 40–58. The Federal Circuit clarified that whether the claimed
subject matter as a whole recites a technological feature that is novel and
unobvious over the prior art is not the same inquiry as determining if the
claimed subject matter is anticipated or obvious under 35 U.S.C. § 102 or
§ 103. Versata, 793 F.3d at 1326. To a large degree, Patent Owner
acknowledged this distinction by contending that the Petition performed a
novelty and nonobviousness analysis rather than the required inquiry. See
Prelim. Resp. 39–44. As well-stated in another Board case,
turning the CBM patent inquiry into an anticipation or
obviousness inquiry would lead to the illogical result that the
combination of purely technological features in a novel and
Case CBM2015-00004
Patent 6,658,464 B2

28
nonobvious way would result in a nontechnological invention.
This is contrary to our Trial Practice Guide’s guidance. See 77
Fed. Reg. at 48,764. “The following claim drafting techniques,
for example, typically do not render a patent a ‘technological
invention’: . . . (c) Combining prior art structures to achieve the
normal, expected, or predictable result of that combination.
FFF Enterprises, Inc. v. Amerisourcebergen Speciality Group, Inc., Case
CBM2014-00154, slip op. at 7 (PTAB Jan. 29, 2015) (Paper 14).
Patent Owner characterizes the Petition as asserting that computer-
implemented steps can never constitute technology for purposes of assessing
CBM patent eligibility. PO Resp. 59 (referring to Salesforce and Par
Pharmaceutical as Board cases that denied CBM review).
The Petition does not contain an explicit statement that computer-
implemented steps can never constitute a technological invention with
regard to determining CBM eligibility. Nor has Patent Owner persuaded us
that such a contention is reasonably suggested. More importantly, we are
not making a determination regarding such a broad proposition. Our much
narrower task is to determine if the ’464 patent is directed to a technological
invention for purposes of CBM patent eligibility.
Further, Patent Owner’s reliance on Salesforce and Par
Pharmaceutical is misplaced. As explained above, in Salesforce the Board
determined that the patent at issue was a CBM patent. See Salesforce, Paper
16, 9–18; Paper 47, 7–11. In Par Pharmaceutical, the Board determined
that the patent at issue was not a CBM patent based on the financial product
or service prong of the CBM patent eligibility test and did not reach the
technological invention prong. See Par Pharmaceutical, Paper 11, 10–22.
For that reason, Par Pharmaceutical says nothing about application of the
technological invention test.
Case CBM2015-00004
Patent 6,658,464 B2

29
In light of the foregoing, the claimed subject matter as a whole does
not recite a technological feature.
2. Claim 1 Does Not Solve a Technical Problem Using a Technical
Solution.
The ’464 patent describes that electronic publications were commonly
replicated in computer-readable form on magnetic or optical storage
diskettes and distributed to retail stores or by direct mail sales. Ex. 1001,
1:32–40. The ’464 patent describes the problem with this method was that it
was not simple, economical, or prompt. Id. at 1:32–5:8 (describing other
methods of distributing electronic publications). The ’464 patent expressly
identifies the problem it solves: “[t]his invention solves . . . the problem of
enabling simple, economical and prompt mass distribution of electronic
information products.” Ex. 1001, 5:12–14; see Inst. Dec. 13. In the context
of the ’464 patent, this is not a technical problem.
Patent Owner acknowledges that the ’464 patent solves the problem of
simple, economical, and prompt mass distribution of electronic information
products. PO Resp. 38. Patent Owner adds that “the ’464 patent solved the
technical problems of OSPs and M2M file transfer, allowing for mass-scale
distribution of electronic content from multiple independent publishers to a
user over a computer network, with minimal user intervention, while
maintaining each publisher’s signature look and feel by allowing for
customized user interfaces.”6 PO Resp. 38 (citing Ex. 2010 ¶ 56).
Patent Owner’s contention is, to a large degree, not commensurate in
scope with the solution offered by the ’464 patent, namely, claim 1. Claim 1

6 “OSP” refers to on-line service provider; “M2M” refers to machine-to-
machine. See Ex. 2010 ¶¶ 27, 34.
Case CBM2015-00004
Patent 6,658,464 B2

30
does not address on-line service providers or machine-to-machine transfer.
Nor does claim 1 require a “signature look and feel”; rather, claim 1 more
broadly requires a user interface customized to the respective publisher. A
closer look at claim 1 demonstrates that it does not solve a technical problem
with a technical solution.
Claim 1 is directed to a software product that comprises instructions
that select, transport, store, and display content.7 As is discussed in greater
detail in the next section, the steps of claim 1 provide a very general
description of how components carry out instructions. For example, the
instructions are “executed” by the processor.
The method of claim 1 is analogous to claim 17 of Versata in
that claim 1 is directed to a business process of distribution of
electronic information products that includes minimal computer-
related limitations. Likewise, the fact that the steps are accomplished
via a general purpose computer (a user station, communication
network, and user interface) does not change the character of the
invention. Just as the patent at issue in Versata sought to reduce the
need for large data tables, so too the patent at issue here sought to
solve problems related to OSPs and M2M transfers. This did not
transform claim 17 in Versata Development into a technological
invention, nor does it do so for claim 1 here.
Accordingly, the ’464 patent does not solve a technical problem using
a technical solution.

7 Storage is effected without user intervention, and content is presented in a
user interface customized to the respective publisher.
Case CBM2015-00004
Patent 6,658,464 B2

31
C. CONCLUSION
Having considered Patent Owner’s contentions to the contrary,
we determine that Petitioner has demonstrated sufficiently that the ’464
patent is a covered business method patent.

V. 35 U.S.C. § 101
In Alice Corp., the Supreme Court emphasized the importance of the
“Mayo framework,” which provides “a framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–97
(2012)). Under the Mayo framework, “[w]e must first determine whether
the claims at issue are directed to a patent-ineligible concept.” Id. Next,
“we consider the elements of each claim both individually and ‘as an
ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1297).
Under Mayo, to be patentable, a claim must do more than simply state
the law of nature or abstract idea and add the words “apply it.” Mayo, 132
S. Ct. at 1294; Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Furthermore,
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice Corp., 134 S.
Ct. at 2358. “Thus, if a patent’s recitation of a computer amounts to a mere
instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that
addition cannot impart patent eligibility.” Id. (internal citation omitted).
Case CBM2015-00004
Patent 6,658,464 B2

32
Thus, we first analyze the claims of the ʼ464 patent to determine whether the
claims embody an abstract idea. If they do, then we proceed to determine
whether the claims are meaningfully limited to a patent-eligible application
of an abstract idea, or cover nothing more than the abstract idea itself.

A. ABSTRACT IDEA8
As the first step of our analysis, we must determine whether the
claims at issue are directed to a patent-ineligible concept, such as an abstract
idea. See Alice, 134 S. Ct. at 2355.
Petitioner contends that the ʼ464 patent claims the abstract concept of
selecting, transporting, storing, and displaying content. Pet. 39. According
to Petitioner, these steps were well-known in the art, and are analogous to
the processes of purchasing a book from a bookstore, purchasing a record by
mail order, or renting a VHS tape from a video rental store. Id. at 39–42.
According to Petitioner, the presence of a computer (user station) to carry
out these steps is inconsequential. Id. at 41 (citing Bancorp Servs., LLC v.
Sun Life Assurance Co., 687 F.3d 1266, 1278–79 (Fed. Cir. 2012)).
Patent Owner contends that the concept of the ’464 patent is not an
abstract idea; rather, the concept is like the concept of the patent at issue in
DDR, where the claimed solution was necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm

8 In the Institution Decision we determined that 35 U.S.C. § 101 is a proper
ground to present in a CBM proceeding. Inst. Dec. 17. Patent Owner did
not repeat its argument that Section 101 is an improper ground in the Patent
Owner Response. See Tr. 48 (in response to statement that such argument
was not in Patent Owner’s Response, Patent Owner relied on the “briefs”).
Case CBM2015-00004
Patent 6,658,464 B2

33
of computer networks. PO Resp. 65 (analogizing to DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
For the reasons that follow, we are persuaded by Petitioner’s
characterization.
The ’464 patent is titled, “User Station Software that Controls
Transport, Storage, and Presentation of Content from a Remote Source.”
Ex. 1001, 1. The invention relates to the computer-implemented transport of
electronic information objects, and, more specifically to a method and
corresponding software for automatically pre-fetching additional data
objects referenced by a first data object. Id. at 1:27–31. As background, the
’464 patent describes a variety of methods of distributing electronic
information products and concludes that these methods are not simple,
economical, or prompt. Id. at 1:32–5:8.
The ’464 patent describes that electronic publications were commonly
replicated in computer-readable form on magnetic or optical storage
diskettes and distributed to retails stores or by direct mail sales. Ex. 1001,
1:32–40. Thus, the concept of distributing electronic information products
(content) was known prior to the ’464 patent. Further, we agree with
Petitioner that distribution of publications (versus electronic publications),
has long been known. Pet. 39–42 (including a chart explaining how each
claimed step has a long known analogous step). Further, as explained above,
the ’464 patent expressly identifies the problem it solves: “This invention
solves . . . the problem of enabling simple, economical and prompt mass
distribution of electronic information products.” See Ex. 1001, 5:12–14; PO
Resp. 64 (acknowledging this disclosure); Pet. Reply 15.
Case CBM2015-00004
Patent 6,658,464 B2

34
The claims thus are directed to the idea of distributing content, an idea
that was a longstanding commercial practice as Petitioner has illustrated.
Even the somewhat narrow characterization of the idea as distribution of
electronic content (versus content), was, as the ’464 patent acknowledges, a
standing commercial practice (such as via retail stores and direct mail sales).
In contrast, the claims at issue in DDR were not directed to an idea
that was a longstanding commercial practice. The patent at issue in DDR
describes a solution to the problem that prior art systems allowed third-party
merchants to “lure the [host website’s] visitor traffic away” from the host
website, because visitors would be taken to the third-party merchant’s
website when they clicked on the merchant’s advertisement on the host site.
DDR, 773 F.3d at 1248. The patent in DDR goes on to describe the solution
as a system that creates a new web page that permits a website visitor, in a
sense, to be in two places at the same time. Id. The Federal Circuit
observed that the “claims address the problem of retaining website visitors
that, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be instantly transported away from a host’s
website after ‘clicking’ on an advertisement and activating a hyperlink.” Id.
at 1257. Based on this, the court stated that the
claims stand apart because they 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. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id.
We acknowledge Patent Owner’s point that some aspects of the
solution described in the ’464 patent address difficulties of computer
Case CBM2015-00004
Patent 6,658,464 B2

35
network transport technology. See PO Resp. 64–67. However, the ’464
patent does not describe solving a problem necessarily rooted in computer
technology. Rather, as detailed above, the ’464 patent explicitly describes
the broader problem of simple, economical, and prompt mass distribution of
electronic information products. Consequently, the problem in the ’464
patent is not one specifically arising in the realm of computer networks. See
DDR, 773 F.3d at 1259 (a claim that “appl[ies] a known business process to
the particular technological environment of the Internet” would not be
patentable).
Accordingly, we determine that the claims are directed to the abstract
concept of distributing electronic content, or more specifically, to selecting,
transporting, storing, and displaying electronic content.

B. INVENTIVE CONCEPT
The second step of the Supreme Court’s “Mayo framework” requires
that we consider the elements of the claim and determine whether there is an
“element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1294); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014).
A challenged patent claim, properly construed, must incorporate
enough meaningful limitations to ensure that it claims more than an abstract
idea and not just a mere “‘drafting effort designed to monopolize the
[abstract idea].’” Alice Corp., 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct.
at 1297). “Simply appending conventional steps, specified at a high level of
Case CBM2015-00004
Patent 6,658,464 B2

36
generality,” is not “enough” for patent eligibility. Id. (quoting Mayo, 132 S.
Ct. at 1297, 1300). Step two of the “Mayo framework” analysis may be
described as a search for an “inventive concept”—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the ineligible concept
itself. Id. (citing Mayo, 132 S. Ct. at 1294).
Claim 1 is directed to a software product comprised of computer
executable instructions for use on a user station comprised of a processor
and a storage device. The instructions, when executed by the processor:
select, transport, store, and display content. Specifically, content is:
(a) selected by a user from a plurality of independent publishers,
(b) transported over a communications network,
(c) stored without user intervention so that it is retained on the
storage device upon shutting down or deactivation of the
software product (“persistent storage”), and
(d) presented to the user with a user interface customized to the
respective publishers.
Claim 8 depends from claim 1 and adds that the transport is effected
without user intervention.9 Claim 16 depends from claim 1 and adds that
transport is effected using a non-proprietary data transfer protocol. Claim 17
depends from claim 1 and adds that the communications network is the
internet.

9 The Petition states that the additional limitation of dependent claim 8 that
the content is transported without user intervention is already found in claim
1. Pet. 49, 46. This is incorrect. Claim 1 calls for storing the content
without user intervention and claim 8 calls for transporting the content
without user intervention. Elsewhere in the Petition, Petitioner properly
acknowledges each limitation. See, e.g., Pet. 15, 22, 43, 46.
Case CBM2015-00004
Patent 6,658,464 B2

37
For the reasons that follow, the challenged claims utilize conventional
components to carry out conventional instructions.
Regarding components, the executable instructions of the software
product are carried out by, or on, various components (i.e., processor,
storage device, communications network/Internet, and user interface) that
were generic and well-known to a person of skill in the art.10 Pet. 44–45;
Ex. 1006 ¶¶ 12, 15. Consequently, the steps of the claims are not tied to any
particular novel machine or apparatus. See Ultramercial, 772 F.3d at 716;
see also Alice Corp., 134 S. Ct. at 2358 (“the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention”).
Regarding instructions (steps), the challenged claims provide a very
general description of how the components carry out the instructions. For
example, the instructions: are “executed by” the processor, “effect
transport” of the selected content over a communications network, “effect
storage” of the transported content without user intervention such that the
content is persistently stored, and “effect presentation” of the stored content
with a user interface customized to the respective publisher. The same is
true of dependent claims 8, 16, and 17.
In contrast, claim 19 at issue in DDR, was far more specific. For
example, rather than content, claim 19 recites “a computer store containing
data, for each of a plurality of first web pages, defining a plurality of

10 As explained above, Patent Owner concedes that the components utilized
to accomplish the claimed method were known. Patent Owner does not
identify, nor do we discern, any disclosure in the ’464 patent that describes
any of these components as new.
Case CBM2015-00004
Patent 6,658,464 B2

38
visually perceptible elements, which visually perceptible elements
correspond to the plurality of first web pages.” DDR, 773 F.3d at 1249.
Patent Owner argues that the challenged claims solve a problem that
did not exist until development of networked computers, and thus, like the
patent in DDR, the ’464 patent claims a solution integrally tied to the realm
of networked computers. PO Resp. 67. Patent Owner also argues that the
brick-and-mortar analogies in the Petition are spurious. PO Resp. 69–70
(referring to Pet. 40). In particular, Patent Owner argues that Petitioner
ignores that storing content without user intervention does not have an
analog in the brick and mortar precursors. Id. at 70. These contentions
relate to the first step of our inquiry, and shed little light on the inventive
concept inquiry. For the reasons given above, the abstract idea here is unlike
that at issue in DDR. Further, even if storing without user intervention does
not have an analog in the brick and mortar illustrations provided by
Petitioner that does not alter our determination that the claims are directed to
the concept of distributing electronic content.
Patent Owner contends the Petition is flawed because it characterizes
each claim element as a single verb, ignoring the language of the claim. PO
Resp. 73, 75. Although at times the Petition describes a claimed step with a
single word, such reference is shorthand, and the Petition is supported by
Dr. Clark’s explanation that addresses the full language of each claimed step.
For example, Petitioner contends “the steps of selecting, transporting,
storing, and displaying content are fundamental and routine in computer
applications.” Pet. 45 (citing Ex. 1006 ¶¶ 15, 19, 35–44).
Patent Owner makes a variety of contentions in support of the
argument that the claims amount to significantly more than a patent on an
Case CBM2015-00004
Patent 6,658,464 B2

39
abstract idea. PO Resp. 67–72. Patent Owner also contends that Petitioner
failed to show that the individual claim elements were conventional as of the
critical date of the ’464 patent. Id. at 72–74. Patent Owner argues that the
only evidence in the Petition regarding what was conventional is Ogaki, and
Petitioner has provided no evidence that Ogaki was conventional. Id. at 72–
74. In these contentions, Patent Owner focuses on steps (c) and (d)
(persistently storing the content without user intervention, and presenting the
content with a user interface customized to the respective publisher).11 In
other words, Patent Owner argues that Petitioner has not shown that the
instructions of steps (c) and (d) were conventional.
As an initial matter, we provide some context. The ’464 patent
describes as background that online information services permitting access
to information products on line and sharing electronic content over computer
networks were routine. Ex. 1001; 1:56–58, 2:6–9, 2:20–24. According to
the ’464 patent, the problem with known services was that those services
provided their own user interface rather than one customized to the
respective publisher. Id. at 2:29–33. In light of this, selecting content,
transferring that content over a communications network, and presenting that
content with a user interface was conventional.
Further, Patent Owner’s expert, Dr. Short, acknowledged that the
individual aspects of each claim limitation were known prior to the critical
date of the ’464 patent. See Pet. Reply 2, 18; Ex. 1012, 53:17–55:21.

11 At times Patent Owner refers to step (d) as a “look and feel” limitation.
See, e.g., PO Resp. 1, 68. The phrase “look and feel” is used in the ’464
patent, but it is not used in the challenged claims. We treat each of Patent
Owner’s references to “look and feel” to mean a user interface customized to
the respective publisher as claimed.
Case CBM2015-00004
Patent 6,658,464 B2

40
Dr. Short expressed the reservation that Petitioner took things out of context
by addressing only a portion of the claim at a time:
Q. Could a file be stored on a computer in 1994?
A. Okay, you’re starting to take things out of context. But the
very simple answer to that is yes.
Q. Could a file be viewed on a computer in 1994?
A. Again, you’re trying to extract little pieces out of claim
language, but the answer is yes.
Ex. 1012, 53:17–23. However, in addressing statutory subject matter
eligibility, evidence that the claimed steps, taken individually, were
conventional is pertinent to the inquiry.
Regarding step (c), we are persuaded by Petitioner’s explanation that
Ogaki stores transported content, without user intervention, in persistent
storage (a non-volatile storage device) such as a hard disk or cassette that is
provided to the user. Pet. 12–13, 15–16; Ex. 1006 ¶¶ 38–40. Ogaki
discloses that hard disk 33 of vending system 1 stores software programs
transferred from host system 2. See Ex. 1011, 3:18–25, 7:64–68, Fig. 1.
Further, Patent Owner does not identify, nor do we discern, any disclosure in
the ’464 patent describing or suggesting that persistent storage of content
without user intervention was unknown prior to the ’464 patent.
We are mindful that what Ogaki discloses differs from what is
required by claim 1. Specifically, Ogaki’s host system 2 transfers content to
vending system 1, and when a user selects content, it is content that was
already transferred to vending system 1. In contrast, claim 1 requires the
steps to be performed in order with the content selected prior to transfer.
This distinction, while meaningful in an anticipation or obviousness
analysis, is not determinative here. The question we face is whether the
Case CBM2015-00004
Patent 6,658,464 B2

41
limitations of the challenged claims transform the nature of the claim. In
light of Ogaki, step (c) of claim 1 was conventional.
Regarding step (d), we are persuaded by Petitioner’s explanation that
Ogaki’s software vending system includes software unloaded from a variety
of independent publishers, and this software is presented with a user
interface that is customized to the respective publisher. See Pet. 12–24; Ex.
1006 ¶ 37. As with the prior step, we are not performing an anticipation or
obviousness analysis. Petitioner has shown that Ogaki discloses that
presenting content with a user interface customized to the respective
publisher was conventional.
Petitioner has shown that the claimed steps individually were
conventional. When considered as an ordered combination, the components
add nothing that is not already present when the steps are considered
separately. The challenged claims do nothing more than automate the
process of selecting content and presenting it in a format with some
similarity to the original format. In other words, the generic computer
components make this process “simple, economical and prompt.” See Ex.
1001, 5:12–14.
Patent Owner’s contention that proof that steps were disclosed in
Ogaki is not proof that those steps are conventional is unpersuasive. See PO
Resp. 72. Ogaki is a patent that issued in 1987. Accordingly, it was publicly
known, and we presume that it was part of the knowledge of ordinary skill in
the art. See generally In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(“The person of ordinary skill in the art is a hypothetical person who is
presumed to know the relevant prior art.”) (citing Custom Accessories, Inc.
v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). Further,
Case CBM2015-00004
Patent 6,658,464 B2

42
Ogaki discloses that prior to Ogaki, which is well before the effective filing
date of the ’464 patent, it was known to distribute software from local
vending machines that had been transferred to that local machine from a
central host system. Ex. 1011, 1:13–23. What Ogaki added was the ability
for a user to load their software into a local software vending machine and
transmit that software to a central host system. Id. at 1:46–56. Ogaki does
not describe that persistent storage without user intervention was new, nor
that presenting content with a user interface customized to a publisher was
new, suggesting that these aspects were known in the art even prior to Ogaki.
According to Patent Owner, several District Courts have applied the
principles of DDR and found the claims of the patents challenged therein to
be eligible for patenting under § 101. PO Resp. 71–72. Without addressing
the cited cases in particular, we accept as correct that some courts have
applied the guidance of DDR and held that patents were eligible for
patenting under § 101. The converse is also true, namely, that courts have
distinguished DDR and determined that the claims of a challenged patent
were not eligible for patenting under § 101. See, e.g., Versata, 793 F.3d at
1333. Patent Owner’s argument is not persuasive because it does not
explain cogently how the claims at issue in the cited cases are analogous to
the challenged claims at hand.
Patent Owner argues that the challenged claims do not preempt
application of the concept; “[r]ather, they recite a specific way of fetching
electronic content to a user over a computer network, with minimal user
intervention, and maintaining signature look and feel by allowing for user
interfaces customized to independent publishers, to solve problems faced by
these publishers mass distributing their content over a network.” PO Resp.
Case CBM2015-00004
Patent 6,658,464 B2

43
74. Patent Owner adds that the challenged claims provide a specific way of
transferring files that is different from and an improvement over the prior
art. Id. at 75. In particular, Patent Owner emphasizes the following features
as significant: the persistent storage without user intervention of claim 1, the
transfer using a non-proprietary data transfer protocol limitation of claim 16,
and the effecting transport over the Internet as required by claim 17. Id. at
75–76. According to Patent Owner, “because these challenged claims are
narrow and specific, people remain free to select, transport, store, and
display content in many ways after the issuance of the ’464 patent.” Id. at
76.
To some extent, the claims limit the abstract idea to a particular
technological environment. For example, the instructions are executed on a
processor, the content is transmitted over a communications network,
without user intervention (claim 8), using a non-proprietary data transfer
protocol (claim 16), or the communications network may be the Internet
(claim 17). However, “[a]n abstract idea does not become nonabstract by
limiting the invention to a particular field of use or technological
environment such as the Internet.” Intellectual Ventures I LLC v. Capital
One Bank (US), 792 F.3d 1363, 1366 (Fed. Cir. 2015) (citations omitted);
see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (“While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.”).
On this record, the challenged claims add nothing more to the abstract
concept than well-understood, routine, conventional activity. Mayo, 132 S.
Ct. at 1298. The claimed subject matter does not “improve the functioning
Case CBM2015-00004
Patent 6,658,464 B2

44
of the computer itself,” or “effect an improvement in any other technology
or technical field,” as there is no recitation in the claims of improved
computer technology or advanced programming techniques. See Alice
Corp., 134 S. Ct. at 2359. As is the case in Alice, the claims are directed to
“nothing significantly more” than applying an abstract idea on a generic
computer system, which is not enough to transform an abstract idea into a
patent-eligible invention. Id. at 2360; see also Bancorp Servs., 687 F.3d at
1279 (finding a claim not patent-eligible when “the computer simply
performs more efficiently what could otherwise be accomplished
manually”). Stated another way, we determine that the claims do not do
“significantly more than simply describe that abstract method” of
distributing content. See Ultramercial, 772 F.3d at 715. Instead, “the claims
simply instruct the practitioner to implement the abstract idea with routine,
conventional activity.” Id.

C. MACHINE OR TRANSFORMATION
The machine or transformation test, while not dispositive, remains a
useful cue. See, e.g., Versata, 793 F.3d at 1335.
Patent Owner contends that the challenged claims pass the machine or
transformation test. PO Resp. 77–78. Petitioner disagrees. Specifically,
Petitioner contends that the method of the challenged claims is not tied to a
specific machine. Pet. 48˗50 (citing Ex. 1006 ¶¶ 12, 15). We agree with
Petitioner. As discussed above, the steps of the challenged claims are well-
known, conventional, and routine and do not transform a general purpose
computer (user station comprised of a processor and storage device) into a
Case CBM2015-00004
Patent 6,658,464 B2

45
specific machine. Rather, the claimed instructions are the normal basic
functions of a computer.
Petitioner also contends, and we agree, that “content” as claimed is
electronic information that is not a physical object or limited to data
representing a physical object, and the manipulation of data does not satisfy
the transformation prong of the test. Pet. 51; see also Ultramercial, 772 F.3d
at 722 (“Any transformation from the use of computers or the transfer of
content between computers is merely what computers do and does not
change the analysis.”).

D. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1, 8, 16, and 17 are directed to patent-ineligible subject matter under
35 U.S.C. § 101.

VI. ORDER
For the reasons given, it is:
ORDERED that claims 1, 8, 16, and 17 of U.S. Patent No. 6,658,464
B2 have been shown by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Case CBM2015-00004
Patent 6,658,464 B2

46

Case CBM2015-00004
Patent 6,658,464 B2

47
PETITIONER:

John Alemanni
Michael Morlock
KILPATRICK TOWNSEND & STOCKTON LLP
JAlemanni@kilpatricktownsend.com
MMorlock@kilpatricktownsend.com

PATENT OWNER:

Brenton R. Babcock
Michael Morlock
Ted M. Cannon
John R. King
David Jankowski
Bridget Smith
KNOBBE, MARTENS, OLSON & BEAR, LLP
BoxPGL24@knobbe.com
2brb@knobbe.com
2tmc@knobbe.com
2JRK@knobbe.com
2DGJ@knobbe.com
2BZS@knobbe.com

Tim R. Seeley
Donald Coulman
INTELLECTUAL VENTURES, LLC,
dcoulman@intven.com
tims@intven.com