Motorola Mobility LLCv.Intellectual Ventures I LLCDownload PDFPatent Trials and Appeals BoardAug 6, 201409553395 - (D) (P.T.A.B. Aug. 6, 2014) Copy Citation 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 CBM2014-00084 Patent 6,658,464 B2 2 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 CBM2014-00084 Patent 6,658,464 B2 3 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 CBM2014-00084 Patent 6,658,464 B2 4 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. CBM2014-00084 Patent 6,658,464 B2 5 (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. CBM2014-00084 Patent 6,658,464 B2 6 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 CBM2014-00084 Patent 6,658,464 B2 7 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. CBM2014-00084 Patent 6,658,464 B2 8 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. CBM2014-00084 Patent 6,658,464 B2 9 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 Copy with citationCopy as parenthetical citation