Motorola Mobility LLCv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Aug 6, 2014

09553395 (P.T.A.B. Aug. 6, 2014)

Trials@uspto.gov Paper No. 18
Tel: 571.272.7822 Filed: August 6, 2014

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 CBM2014-00084
Patent 6,658,464 B2
_______________

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

KAUFFMAN, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

I. INTRODUCTION
Petitioner, Motorola Mobility, LLC, filed a revised Petition (“Pet.”)
requesting a review of claims 1, 8, 16, and 17 of U.S. Patent No. 6,658,464
B2 (iss. Dec. 2, 2003) (Ex. 1001, “the ’464 patent”). Paper 7. Patent
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Owner, Intellectual Ventures I, LLC, filed a Preliminary Response (“Prelim.
Resp.”). Paper 16. We have jurisdiction under 35 U.S.C. § 324.
Upon consideration of the Petition and Preliminary Response, we
determine that Petitioner has not demonstrated that the ’464 patent is a
“covered business method patent,” and therefore deny the institution of a
covered business method patent review.

A. The ’464 Patent (Ex. 1001)
The ’464 patent, titled “User Station Software that Controls Transport,
Storage, and Presentation of Content from a Remote Source,” 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, Abstract; 5:15–18, 25–29.
The ’464 patent includes claims 1–78, and claims 1, 20, 39, and 58 are
independent. Independent claim 1 is directed to a software product for use
at a user station and is reproduced below:

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:
enable a user at the user station to select content from
each of a plurality of independent publishers;
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, 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
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effect presentation of the stored content to the user at the
user station with a user interface that is customized to the
respective publishers.

Claims 8, 16, and 17 depend from independent claim 1.

B. Related Matters
Petitioner asserts that it is being sued for infringement of the
’464 patent in Intellectual Ventures I. v. Motorola Mobility, Inc., Civil
Action No. 11-908 (SLR) (D. Del) (filed Oct. 6, 2011). Pet. 1 (citing
Ex. 1002).

II. ANALYSIS
A threshold question is whether the ’464 patent is a “covered business
method patent,” as defined by the Leahy-Smith America Invents Act, Pub.
L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Specifically, 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 patent. 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). In making this determination,
the focus is on the claims. See 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)
(Final Rule). A patent need have only one claim directed to a covered
business method to be eligible for review. Id. For the reasons explained
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below, we conclude that Petitioner fails to demonstrate that the ’464 patent
is a “covered business method patent” under AIA Section 18(d)(1).
A “covered business method patent” is a patent that “claims a method
or corresponding apparatus for performing data processing or other
operations used in the practice, administration, or management of a financial
product or service, except that the term does not include patents for
technological inventions.” AIA § 18(d)(1); 37 C.F.R. § 42.301(a).
Therefore, patents for technological inventions are not covered business
method patents. Although ordinarily the issue of whether the claimed
method or apparatus is used in the practice, administration, or management
of a financial product or service is considered first, followed by whether it is
a technological invention is considered, that sequence is neither essential nor
required. In this case, we begin with the technological invention inquiry.
Determining whether a patent is for a technological invention is a
two-pronged inquiry requiring consideration of whether the claimed subject
matter as a whole: (1) “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). The following claim drafting
techniques, for example, typically do not render a patent a “technological
invention”:
(a) Mere recitation of known technologies, such as
computer hardware, communication or computer networks,
software, memory, computer-readable storage medium,
scanners, display devices or databases, or specialized machines,
such as an ATM or point of sale device.

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(b) Reciting the use of known prior art technology to
accomplish a process or method, even if that process or method
is novel and non-obvious.
(c) Combining prior art structures to achieve the normal,
expected, or predictable result of that combination.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
14, 2012).
Petitioner states:
[E]ach claim of the ’464 patent is an apparatus for sending,
receiving, and viewing content. The technologies recited in the
patent claims - a computer and a network - were well-known in
the prior art and thus do not render the claims drawn to
technological inventions, even if the recited apparatus was
presumed to be novel and non-obvious.
Pet. 9. Further, according to Petitioner, the combination of a computer and
network leads to a “normal, expected, or predictable result, which is nothing
more than the transmission over a network of content from a remote
computer system to a user station, i.e., another computer, and viewing that
content.” Id. at 10.
Regarding the first prong, for several reasons, Petitioner has not
shown that the claimed subject matter, as a whole, does not recite a
technological feature that is novel and unobvious over the prior art. See 37
C.F.R. § 42.301(b). First, Petitioner’s characterization that each of the
claims is an apparatus claim reciting the combination of a computer and a
network is inaccurate. See Pet. 9. Rather, each of independent claims 1, 20,
39, and 58 of the ’464 patent is directed to a “software product” for use at a
user station. See Ex. 1001, col. 60, ll. 40–55; col. 61, l. 64–col.62, l. 12; col.
63, ll. 21–42; col. 64, l. 53–col. 65, l. 8.
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Second, Petitioner’s contention that the claims of the ’464 patent call
for “transmission” and “viewing” of content, is both inaccurate and
incomplete. See Pet. 10. Petitioner’s contention is inaccurate in that the
independent claims do not simply call for viewing content. Rather, the
claims require effecting presentation of the content with a user interface that
is either customized to the respective publisher (claims 1 and 20) or has a
look and feel specific to the respective publisher (claims 39 and 58).
Petitioner’s contention is incomplete in that it does not fully address the
claim limitations. For example, independent claims 1 and 20

require that the
software enable a user at the user station to select content from a plurality of
independent publishers/service (“the selecting step”). Independent claims 39
and 58 include a similar selecting step. Independent claims 1 and 20 require
that the software effect storage of the content without user intervention such
that it is retained on the storage device upon shutting down and/or
deactivation of the software product (“the storage step”). Independent
claims 39 and 58 include a similar storage step. Petitioner’s contention that
the ’464 patent simply calls for “transmitting” and “viewing” of content does
not cogently address the selecting and storage steps of the claims.
Third, Petitioner’s contention that the claimed subject matter
combines well-known, prior art structures—a computer and a network—to
achieve the normal, expected, or predictable result of that combination is
incorrect. See Pet. 9–10 (implying that the claims of the ’464 patent are like
example (c) from the Trial Guide discussed above). The claims of the ’464
patent are directed to a software product for use on a user station.
Consequently, the claimed subject matter is not characterized accurately as
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the combining of prior art structures (i.e., a computer and a network).
Further, Petitioner’s analysis focuses on the hardware elements and does not
demonstrate cogently that the steps of the claimed subject matter were novel
and unobvious. See Prelim. Resp. 37–39.
In view of the foregoing, we agree with Patent Owner that Petitioner
does not “identify any particular claim or quote the specific language of any
claim” in making “conclusory, unsubstantiated allegations,” and does not
consider the claimed subject matter as a whole, including software elements.
See Prelim. Resp. 32, 37–39.
Regarding the second prong, Petitioner acknowledges that to be a
technological invention, the ’464 patent also must solve a technical problem
using a technical solution. Pet. 8–9 (quoting 37 C.F.R. § 42.301(b), citing
Volusion, Inc. v. Versata Software, Inc. and Versata Development Group,
Inc., CBM2013-00017 (PTAB Oct. 24, 2013) (paper 8))
1
. Petitioner,
however, provides no specific or persuasive reasoning to support the
contention that the claimed invention of the ’464 patent does not solve a
technical problem using a technical solution. Id. Petitioner also identifies
no expert testimony in that regard.
In summary, Petitioner’s analysis regarding whether the claimed
subject matter, as a whole, recites a technological feature that is novel and
unobvious over the prior art is conclusory, and Petitioner fails to address
cogently whether the ’464 patent solves a technical problem using a
technical solution. Thus, Petitioner has not demonstrated sufficiently that
the claimed subject matter is not a technological invention. We need not

1
This decision is included as Ex. 1003.
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reach the issue of whether any challenged claim is drawn to a method or
corresponding apparatus for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service.
Consequently, we conclude that Petitioner has not carried its burden
of establishing that the ’464 patent is a covered business method patent.

III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not
demonstrated that the ’464 patent is eligible for review as a covered business
method patent under AIA § 18(d)(1).

IV. ORDER
Accordingly, it is
ORDERED that the petition is denied; and
FURTHER ORDERED that no covered business method patent
review is instituted.

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FOR PETITIONER:

John Alemanni
KILPATRICK TOWNSEND & STOCKTON LLC
JAlemanni@kilpatricktownsend.com

For Patent Owner:

John R. King
Brenton R. Babcock
KNOBBE, MARTENS, OLSON & BEAR
2jrk@knobbe.com
2brb@knobbe.com

Matthew C. Phillips
RENAISSANCE IP LAW GROUP LLP
matthew.phillips@renaissanceiplaw.com