Bitco Corp.v.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Feb 9, 2016

10879640 (P.T.A.B. Feb. 9, 2016)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: February 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
GREAT WEST CASUALTY COMPANY,
BITCO GENERAL INSURANCE CORPORATION, and
BITCO NATIONAL INSURANCE COMPANY,
Petitioner,
v.
INTELLECTUAL VENTURES II LLC,
Patent Owner.
_______________

Case CBM2015-00171
Patent 7,516,177 B2
_______________

Before MICHAEL W. KIM, PETER P. CHEN and
ROBERT A. POLLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Great West Casualty Company, BITCO General Insurance
Corporation, and BITCO National Insurance Company (collectively
“Petitioner”) filed a Petition to institute a covered business method patent
review of claims 1–20 of U.S. Patent No. 7,516,177 B2 (Ex. 1001, “the
’177 patent”). Paper 1 (“Pet.”). Intellectual Ventures II LLC (“Patent
Owner”) filed a Preliminary Response (Paper 7; “Prelim. Resp.”), in which
Patent Owner indicated that it had filed a statutory disclaimer under
37 C.F.R. § 1.321(a) of claims 1–10 of the ’177 patent. Prelim. Resp. 13
(citing Ex. 2002). For the reasons given below, we determine that
Petitioner, on this record, has not shown sufficiently that the ’177 patent is a
covered business method patent under § 18(d)(1) of the Leahy-Smith
America Invents Act (“AIA”)1, and thus we do not institute a covered
business method patent review in this proceeding.
B. Related Proceedings
Petitioner and Patent Owner identify the following district court
proceedings concerning the ’177 patent: Intellectual Ventures II LLC v.
BITCO General Insurance Corporation f/k/a Bituminous Casualty
Corporation , Civ. No. 6-15-cv-00059 (E.D. Tex.); Intellectual Ventures II
LLC v. Great West Casualty Company, Civ. No. 6-15-cv-00060 (E.D. Tex.);
and Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc., Civ. No.
6-15-cv-00660 (E.D. Tex.). Pet. 2; Paper 5, 1. Petitioner and Patent Owner
identify also the following requests for inter partes review of the ’177 patent

1 Pub. Law 112–29, 125 Stat. 284, 331 (Sept. 16, 2011).
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involving the same parties: IPR2015-01706; IPR2015-01707. Pet. 2; Paper
5, 1.
C. The ’177 patent
The ’177 patent, titled, “Apparatus for Distributing Content Object to
a Personalized Access Point of a User Over a Network-Based Environment
and Method,” discloses the following under the heading “Technical Field:
This invention pertains to electronic commerce and
business. More particularly, the present invention relates to
aggregating, enhancing, and distributing content objects with
customers over a network-based environment such as via the
Internet or some other form of interactive network.
Ex. 1001, 1:22–26. The ’177 patent asserts that the storage and retrieval of
information has evolved from storing and retrieving information in
textbooks and libraries, to storing and retrieving information from online
networks such as the Internet. Ex. 1001, 1:30–33. According to the ’177
patent, while such advances have led to a significant increase in information
available to users, the users now have the problem of being overwhelmed by
the amount of information, resulting in a failure to find specific information
or losing track of the information that had already been found. Ex. 1001,
1:33–46. Thus, the ’177 patent asserts that there is a need to provide
improvements in the way demand for information is identified, content is
generated in response to a defined demand, and the way in which users
access desired information. Ex. 1001, 2:23–26.
D. Illustrative Claim
Petitioner challenges claims 1–20 of the ’177 patent, of which claims
1–10 have been disclaimed. Prelim. Resp. 13 (citing Ex. 2002). Claims 11
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and 16 are the only remaining independent claims. Independent claim 11 is
illustrative of the challenged claims and is reproduced below:
11. An apparatus for distributing content through one
or more distributed information access points to a centralized
access point of a user, comprising:
at least one server operative to store one or more of: a)
content, b) links to content, c) information about content, and d)
information about users including information about which
content a user has chosen;
a centralized access point of a user accessible via a
communications link and operative to provide the user with
access to content chosen by or for the user;
at least one distributed information access point
accessible via a communications link and operative to
implement one or more of: a) list one or more content objects,
b) allow a user to choose content for addition to their
centralized access point, and c) provide the user with logon
access to their centralized access point; and
an administrative interface in communication with the
server and operative to create groupings of content into one or
more distributed information access points;
wherein a user is enabled with the capability to log on to
their centralized access point from one or more distributed
information access point( s) and access content chosen from
one or more distributed information access point(s).
E. Asserted Ground of Unpatentability
Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C.
§ 101, of which claims 1–10 have been disclaimed. Prelim. Resp. 13 (citing
Ex. 2002).

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II. ANALYSIS
A. Claim Construction
In a covered business method patent review, claim terms in an
unexpired patent are interpreted according to their broadest reasonable
construction in light of the specification of the patent in which they appear.
37 C.F.R. § 42.300(b); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1328 (2015) (affirming use of the broadest reasonable construction
standard in a covered business method patent review). Under that standard,
and absent any special definitions, we give claim terms their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
For the purposes of this Opinion, only the following terms require
construction.
1. “content object”
Independent claim 11 recites “content object.” Petitioner asserts that
“content object” should be construed as “a discrete unit of information that
can be selected by the user such as: a tutorial, article, advertisement, or link
to a web page.” Pet. 7–8 (citing Ex. 1001, Fig. 53, 2:35–40, 23:20–26,
25:3–28, 32:22–25; Ex. 1003 ¶¶ 46–50). On this record, we agree with
Petitioner’s proposed construction of “content object.”
2. “distributed information access point”
Independent claims 11 and 16 each recite “distributed information
access point.” Petitioner asserts that “distributed information access point”
should be construed as “an access point that makes information visually
perceptible to multiple users, such as a web page or a login page.” Pet. 9–10
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(citing Ex. 1001, 6:60–7:10, 14:43–52, 17:22–29; Ex. 1003 ¶¶ 67–71). On
this record, we agree with Petitioner’s proposed construction of “distributed
information access point.”
B. Whether the ʼ177 Patent Is a Covered
Business Method Patent
1. Applicable Law
37 C.F.R. § 42.304(a) requires that “[t]he petitioner must demonstrate
that the patent for which review is sought is a covered business method
patent.” The AIA defines “covered business method patent” as “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); see 37 C.F.R.
§ 42.301(a).
In promulgating rules for covered business method patent review, the
Office considered the legislative intent and history behind the AIA’s
definition of “covered business method patent.” See Transitional Program
for Covered Business Method Patents—Definitions of Covered Business
Method Patent and Technological Invention, 77 Fed. Reg. 48,734, 48,735–
36 (responses to comments 1, 3, 4, and 8). The “legislative history explains
that the definition of covered business method patent was drafted to
encompass patents ‘claiming activities that are financial in nature, incidental
to a financial activity or complementary to a financial activity.’” Id. at
48,735 (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement
of Sen. Schumer) (hereinafter “finance-related”)).
In determining whether a patent qualifies as a covered business
method patent, we focus on the claims. Id. at 48,736 (stating that the
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definition of a covered business method patent “is based on what the patent
claims”). A patent needs only one claim directed to a covered business
method to be eligible for review. Id.
2. Claims 1–10
As noted above, Patent Owner has indicated that it filed a statutory
disclaimer under 37 C.F.R. § 1.321(a) of claims 1–10. Prelim. Resp. 13
(citing Ex. 2002). Thus, the question is whether we should consider now-
statutorily disclaimed claims 1–10 in determining whether or not the ’177
patent is a covered business method patent for the purposes of instituting a
covered business method patent review. We determine that we should not.
37 C.F.R. § 1.321(a) is the rule promulgated by the Office for creating
a procedure for a patentee to avail itself of the provisions of 35 U.S.C. § 253.
See Manual of Patent Examining Procedure § 1490. Our reviewing court
has held that a patent with a statutory disclaimer is to be treated as though
the disclaimed claims never existed. See Guinn v. Kopf, 96 F.3d 1419, 1422
(Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the
effect of canceling the claims from the patent and the patent is viewed as
though the disclaimed claims had never existed in the patent.”).
Accordingly, for the purposes of whether or not to institute a covered
business method patent review, we treat claims 1–10 as never having
existed. See Google Inc. v. SimpleAir, Inc., CBM2015-00019 slip op. at 14–
15 (PTAB May 19, 2014) (Paper 11); but see J.P. Morgan Chase v.
Intellectual Ventures, Case CBM2014-00157 slip op. at 12–15 (PTAB Jan.
12, 2016) (Paper 40) (although the panel states that “petitioner’s standing to
file a petition for covered business method patent review is evaluated based
on the time the petition was filed,” in this proceeding, Patent Owner
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disclaimed dependent claim 12 after institution of trial, and so the panel’s
actions are consistent with § 18(a)(1)(E), which only requires that a patent
be a covered business method patent at institution).
We acknowledge that other panels of the Board have taken the caveat
that an otherwise statutorily disclaimed dependent claim, which includes
finance-related subject matter, may still be considered, to the extent that the
still pending independent claim from which it depends may include claim
limitations that encompass the finance-related subject matter of that
dependent claim. See American Express Co.. v. Maxim Integrated Prods.,
Inc., CBM2015-00098 slip op. at 8–13 (PTAB Sept. 22, 2015) (“we
understand the Petition to use claim 2 as an example, and the Petition’s
arguments regarding the financial product or service requirement to apply
more broadly to the subject matter of all claims of the ’510 patent.
Accordingly, we consider whether Petitioner has shown that the remaining
claims of the ’510 patent––claims 1 and 3–6––demonstrate that the patent
meets the financial product or service requirement”); J.P. Morgan Chase v.
Intellectual Ventures, Case CBM2014-00157 slip op. at 2–3 (PTAB Feb. 18,
2015) (Paper 11) (“[e]ven assuming that Patent Owner disclaims dependent
claim 12, which recites ‘payment requirements,’ standing for covered
business method patent review remains at least because disclaimer of claim
12 does not change the scope of independent claim 1, from which it
depends”). We observe that it may even be reasonable to extend that logic
one step further, and impute any finance-related subject matter from a
statutorily disclaimed dependent claim to any other still pending claim
which recites limitations that clearly encompass the finance-related subject
matter of that dependent claim. Here, however, Petitioner has identified
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little relevant overlap between claims 1–10 and claims 11–20, in that the
more overt finance-related subject matter of claims 1–10 identified by
Petitioner – “selection client” of claims 2 and 6, and “retrieval client” of
claim 7 – are not recited in claims 11–20.2 Accordingly, we determine that
in this proceeding, a proper analysis as to whether the ’177 patent is a
covered business method patent should focus exclusively on claims 11–20.
3. Claims 11–20
Independent claim 11 recites an apparatus for implementing the
method of independent claim 16. Claims 12–15 each depend from
independent claim 11, and recite further limitations in the apparatus.
Independent claim 16 recites a method for “distributing content through
distributed access points.” Claims 17–20 each depend ultimately from
independent claim 16, and recite further limitations on how the content is
accessed. Petitioner asserts claims 11–20 are finance-related, because
various structures and steps recited in claims 11–20 are incidental to or
complementary to a financial activity, namely, structure and steps taken to
accomplish the sale of access to content objects. Pet. 21–25. We disagree
that Petitioner has shown sufficiently that claims 11–20 are finance-related.
Most of the claim recitations cited by Petitioner as providing the basis
for showing that claims 11–20 are finance-related, are general in nature, in
that we are unable to ascertain, by the claim limitation alone, how the claim
recitation is finance-related. For example, Petitioner asserts that the
recitation of a “server” in each of independent claims 11 and 16 is incidental
to or complementary to a financial activity. Independent claim 11 recites “at

2 For the claim limitations that are recited expressly in both sets of claims,
those claim limitations are considered in our analysis of claims 11–20.
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least one server operative to store one or more of: a) content, b) links to
content, c) information about content, and d) information about users
including information about which content a user has chosen.” This claim
limitation appears to be related to storing any and all types of content, and
we are unclear as to how storing content is finance-related. More
specifically, “finance” is “the way in which money is used and handled; . . .
2: the system that includes the circulation of money, the granting of credit,
the making of investments, and the provision of banking facilities.” Finance
Definition, MERRIAM-WEBSTER, available at http://www.merriam-
webster.com/dictionary/finance (last visited Feb. 6, 2016). We are
unpersuaded that storing content relates to how money is used or handled.
In another example, Petitioner asserts that the recitation of
“distributed information access points” in each of independent claims 11 and
16 is incidental to or complementary to a financial activity. As set forth
above, we construe “distributed information access point” as “an access
point that makes information visually perceptible to multiple users, such as a
web page or a login page.” Again, we are unpersuaded that making
information visually perceptible to users is finance-related, i.e., related to
how money is used or handled.
Because Petitioner makes similar assertions concerning specific
limitations of dependent claims 12–15 and 17–20, we also are unpersuaded
those claims are finance-related.
The only plausible claim limitation of independent claims 11 and 16
identified by Petitioner that could possibly be characterized as finance-
related, is “content objects,” which we construed above as “a discrete unit of
information that can be selected by the user such as: a tutorial, article,
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advertisement, or link to a web page.” Even that connection is tenuous at
best, however, because “content objects” by itself includes all types of
information, and even the only potential commerce related example of
“advertisements” requires several leaps of logic in order to relate it to how
money is used or handled. Accordingly, we determine that the claims are
not finance-related on their face, and thus we turn to see if any claim
limitation of otherwise general applicability should be construed as finance-
related in light of the Specification.
To that end, Petitioner identifies several portions of the Specification
as showing the finance-related nature of the claimed invention. Pet. 14–21.
We find, however, that the Specification as a whole is directed to technology
of general applicability, and that the finance-related portions identified by
Petitioner are insufficient to convert the otherwise general terminology of
claims 11–20 into finance-related subject matter. For example, the
Technical Field of the ’177 patent discloses the following:
This invention pertains to electronic commerce and
business. More particularly, the present invention relates to
aggregating, enhancing, and distributing content objects with
customers over a network-based environment such as via the
Internet or some other form of interactive network.
Ex. 1001, 1:20–26 (emphasis added). The commerce and business centric
disclosure of the first sentence, however, is tempered by the fact that (1) its
relationship as to how money is used or handled is not immediately
apparent, (2) Petitioner does not identify a clear tie between
commerce/business and a limitation of claims 11–20, and (3) the balance of
the paragraph involves a generic application.
Petitioner then identifies various webpages disclosed in the
Specification as being finance-related, because the webpages include content
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such as advertisements, links to a merchant’s webpage, prices charged for
access to content, and “Buy Now” hyperlinks. Nominally, these webpages
are related to the claim limitation “distributed information access points,”
and at least the prices charged for access to content and the “Buy Now”
hyperlink are related to how money is used or handled. When this
disclosure is considered in context, however, we discern that the prices
charged for access to content in access field 184 of the Specification is part
of the discussion of otherwise general “content objects link” listing box 158,
and is not elaborated on further, and the “Buy Now” hyperlink is part of the
discussion of otherwise general “other embedded content” box 160, and also
is not elaborated on further. This leads us to the determination that the
prices charged for access to content and “Buy Now” hyperlinks are merely
non-limiting examples of otherwise general content to be displayed on the
recited “distributed information access points.” We are unpersuaded that
such general, non-limiting examples are sufficient to convert the claim
limitation “distributed information access points” of otherwise general
applicability into something specifically finance-related.
Petitioner identifies further portions of the Specification that disclose
that access to content via content objects requires payment of a fee.
Presumably then, the relevant claim limitation is “content objects.” We are
unpersuaded, however, that the disclosure of access to content, via content
objects requiring payment of a fee, changes the nature of the claim limitation
“content objects,” of otherwise general applicability, to one that
encompasses how money is used or handled. In other words, we are
unpersuaded that “a discrete unit of information that can be selected by the
user such as: a tutorial, article, advertisement, or link to a web page”
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becomes about how money is used or handled, just because a fee is charged.
For example, we are unpersuaded that a newspaper article becomes
something other than a newspaper article because a fee is charged to access
it.
Petitioner also identifies portions of the Specification that are more
clearly finance-related, such as Fig. 32C and columns 38 to 40, in that
hosting and accessing content may involve payment of fees. These
disclosures, however, are but a small portion of the Specification, and in any
case, Petitioner has not shown how they inform our analysis of a specific
claim limitation of claims 11–20, as is required to make a determination that
the ’177 patent is a covered business method patent. See 77 Fed. Reg. at
48,736 (stating that the definition of a covered business method patent “is
based on what the patent claims”). At best, these portions of the
Specification may be related to the claim limitation “content,” however, we
are unpersuaded that charging a fee for “content” changes the nature of that
“content” to one that encompasses how money is used or handled.
C. Conclusion
For the reasons given above, based on the present record and
particular facts of these cases, we are not persuaded that the information
presented in the Petition establishes that any existing claim in the ’177
patents qualifies as a covered business method patent under § 18(d)(1) of the
AIA. Petitioner, therefore, has failed to satisfy the jurisdictional
requirements of Section 18.
III. ORDER
For the reasons given, it is ORDERED that no trial is instituted.
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For PETITIONER:

Joseph Micallef
jmicallef@sidley.com

Russell Cass
rcass@sidley.com

Erik Carlson
ecarlson@sidley.com

For PATENT OWNER:

Brenton Babcock
2BRB@knobbe.com

James Hietala
jhietala@intven.com

Tim Seeley
tim@intven.com

Ted Cannon
2tmc@knobbe.com

Bridget Smith
2bzs@knobbe.com