Google Inc.v.SimpleAir, Inc.

Patent Trial and Appeal Board

Aug 19, 2015

13018420 (P.T.A.B. Aug. 19, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: August 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.,
Petitioner,

v.

SIMPLEAIR, INC.,
Patent Owner.
____________

Case CBM2015-00019
Patent 8,572,279 B2
____________

Before JAMES P. CALVE, JUSTIN T. ARBES, and TINA E. HULSE,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION
Petitioner’s Request for Rehearing
37 C.F.R. § 42.71
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Introduction
Petitioner filed a Request for Rehearing (Paper 12, “Req. Reh’g”) of
our Decision (Paper 11, “Dec.”), dated May 19, 2015, not to institute a
covered business method patent review of claims 1–4, 6–11, 13–21, 24,
27–35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63 of U.S. Patent No.
8,572,279 B2 (Ex. 1001, “the ’279 patent”). Patent Owner filed an
Opposition (Paper 13, “Opp.”), pursuant to our authorization provided to the
parties by email on June 23, 2015. For the reasons stated below, Petitioner’s
Request for Rehearing is denied.

Analysis
In determining whether to institute a covered business method patent
review, the Board may “deny some or all grounds for unpatentability for
some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When
rehearing a decision on petition, the Board will review the decision for an
abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if
a decision is based on an erroneous interpretation of law, if a factual finding
is not supported by substantial evidence, or if the decision represents an
unreasonable judgment in weighing relevant factors.” Arnold P’ship v.
Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting
rehearing bears the burden of showing an abuse of discretion, and “[t]he
request must specifically identify all matters the party believes the Board
misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
Petitioner contends that we abused our discretion in concluding that
the information presented in the Petition (Paper 2, “Pet.”) did not establish
that the ’279 patent qualifies as a “covered business method patent” under
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§ 18(d)(1) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284 (2011) (“AIA”). Req. Reh’g 1. First, Petitioner argues that we
misapprehended the effect of Patent Owner’s statutory disclaimer of
dependent claim 24 on parent independent claim 1. Id. at 4. According to
Petitioner, the disclaimer of claim 24 removes it from consideration for trial,
but does not “negate its role in a proper claim construction” of claim 1 for
purposes of determining whether the ’279 patent is a covered business
method patent. Id. at 4–8. Petitioner contends that under the doctrine of
claim differentiation, claim 24 must be taken into account as evidence of the
scope of claim 1, such that the “data blocks” recited in claim 1 should be
interpreted to cover the “information relating to at least one of news, sports,
financial markets, weather, an online chat, and/or an online forum” recited in
dependent claim 24. Id. at 7–9.
As explained in the Decision, however, the basic deficiency in the
Petition was that Petitioner provided no analysis of the language of claim 1
or explanation as to why the particular language of claim 1 meets the
standard for covered business method patent eligibility. Dec. 11. Rather,
Petitioner simply stated that the claims of the ’279 patent “overlap
significantly” with unspecified claims of a related patent that previously was
found eligible, without explaining why or how the claims allegedly overlap.
See id. at 10–11; Pet. 6–7. The test for whether a patent is a covered
business method patent is 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, except that the term does not include patents for technological
inventions.” AIA § 18(d)(1) (emphasis added); 37 C.F.R. § 42.301(a).
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Absent some analysis of the actual language of a claim, it is difficult to see
how the test can be met.
Further, Petitioner’s arguments as to how claim 1 should be
interpreted were not made in the Petition and are inappropriate on rehearing,
as we could not have misapprehended or overlooked something not
explained adequately in the Petition. For example, Petitioner proposed
interpretations for numerous claim terms in its Petition, but did not propose
an interpretation for “data blocks” or argue that the ’279 patent is a covered
business method patent based on the “data blocks” limitations in claim 1.
See Pet. 5–7, 14–18. A request for rehearing is not an opportunity to
supplement a petition by making new arguments or proposing new claim
interpretations. Similarly, in its Request for Rehearing, Petitioner cites for
the first time dependent claims 19, 27, and 34 of the ’279 patent, which
recite the display of an “advertisement,” and dependent claim 33, which
recites similar limitations to claim 24, and argues that they “specify financial
aspects” as well. Req. Reh’g 1–2, 4. None of these claims, however, were
cited in the Petition as a basis for the ’279 patent being a covered business
method patent; Petitioner solely relied on claims 1 and 24. See Pet. 5–7.
Therefore, we do not consider these new arguments as well.
Petitioner’s arguments also ignore another important aspect of the
Decision. Claim 1 recites only generic, context-neutral “data,” without
specifying the type or nature of the “data,” and the Specification of the ’279
patent supports such a broad scope. Dec. 12–13; see Ex. 1001, col. 8,
ll. 9–28 (“The data, which can include but is not limited to stock quotes,
weather, lotto, E-mail, etc. is then respectively parsed by parsers. . . . The
present invention is not limited to the information sources or parsers
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described herein. Rather, any type of information source and corresponding
parser may be used.”). Consistent with other Board decisions based on
similarly worded context-neutral claims, we determined that claim 1 does
not recite an apparatus for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service. Dec. 12–13. Thus, even if considered, Petitioner’s new arguments
regarding the scope of claim 1 are not persuasive because the claim recites
only context-neutral “data.” See Opp. 3–5.
Second, Petitioner argues that Patent Owner engaged in
gamesmanship by statutorily disclaiming dependent claim 24, and should
not be rewarded for “[a]fter-the-fact claim manipulation techniques.” Req.
Reh’g 10–12. Petitioner contends that in determining whether a patent is
eligible for covered business method patent review, “the Board must
consider the Petition and accompanying evidence according to the
challenged claims at the time the Petition is filed” because a petitioner
cannot anticipate what claims a patent owner might disclaim prior to
institution. Id. at 11–12. Petitioner also suggests that we could have held
Patent Owner’s statutory disclaimer in abeyance under 37 C.F.R. §§ 42.3(a)
and 42.7(b), but acknowledges that the disclaimer was “immediately
effective for enforcement purposes.” Id. at 12; see 37 C.F.R. § 1.321(a).
Petitioner’s arguments are not persuasive. Our rules permit a patent
owner to file a statutory disclaimer with its preliminary response, and “[n]o
post-grant review will be instituted based on disclaimed claims.” 37 C.F.R.
§ 42.207(e). Further, the decision whether to institute a covered business
method patent review is based on the “claims” of the patent as they exist at
the time of the decision, not as they may have existed at some previous time.
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See 35 U.S.C. § 324(a). For example, where a reexamination certificate
amending the claims of a patent issues subsequent to a petition but prior to
institution, the Board’s decision whether to institute is based on the claims of
the patent as amended in the reexamination certificate. See Eizo Corp. v.
Barco N.V., Case IPR2014-00358, slip op. at 5 (PTAB July 23, 2014) (Paper
11); GEA Process Eng’g, Inc. v. Steuben Foods, Inc., Case IPR2014-00051,
slip op. at 2–3, 10–11 (PTAB Mar. 10, 2014) (Paper 14). We also note that,
to the extent Petitioner was concerned about being unable to anticipate
Patent Owner statutorily disclaiming claim 24, or believed some action from
the Board would have been appropriate with respect to the statutory
disclaimer, Petitioner could have contacted the Board and sought
authorization to file a reply after Patent Owner filed its statutory disclaimer
and Preliminary Response, but did not do so.
Third, Petitioner argues that we misapprehended or overlooked “two
pieces of evidence” cited in the Petition. Req. Reh’g 13–14. Petitioner
points to the “Prior Related Constructions” section of the Petition where it
argues that “information source” in claim 1 should be interpreted to mean
“one or more content or online service providers that provide data to the
central broadcast server, such as an online source of news, weather, sports,
financial information, games, personal messages, or emails.” Id. (citing Pet.
14–16). The “Prior Related Constructions” section of the Petition, however,
appears in a different section seven pages after the section labeled “The ’279
patent claims methods used in financial services.” See Pet. 5–7, 14.
Petitioner does not argue in the standing section that the ’279 patent is a
covered business method patent based on Petitioner’s proposed
interpretation of “information source” or any other term. It is not for the
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Board to attempt to piece together a petitioner’s position based on other,
unrelated arguments in a petition, particularly in circumstances like this
where Petitioner includes a specific section devoted to covered business
method patent eligibility. Again, a request for rehearing may not be used to
bolster an initial petition with new arguments not explained sufficiently in a
petition.
Petitioner also points to the following sentence from the Petition,
which appears prior to Petitioner’s discussion of the Specification of the
’279 patent: “Here, the challenged claims are directed to transmitting data to
a remote device.” Req. Reh’g 13–14 (citing Pet. 6). We did not overlook
this sentence. We reviewed all of Petitioner’s contentions regarding the
Specification and found them unpersuasive, particularly in view of the
context-neutral nature of the “data” recited in claim 1. See Dec. 11–13.
Mere disagreement with a decision is not a proper basis for rehearing when a
party’s arguments were considered and addressed in the decision.
Fourth, Petitioner argues that our determination regarding the
context-neutral “data” recited in claim 1 is inconsistent with four other
decisions of the Board. Req. Reh’g 14–15. We could not have
misapprehended or overlooked any argument based on these decisions,
however, as they were not cited in the Petition. Further, we noted in the
Decision that other panels of the Board have found patents ineligible for
covered business method patent review in similar circumstances. Dec. 13.
Moreover, though, every determination of covered business method patent
eligibility necessarily will be based on the particular claims and arguments
presented in the respective proceeding. Thus, we are not persuaded that our
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determination as to the ’279 patent, based on the particular facts of this
proceeding, was an abuse of discretion.
Fifth, Petitioner states in its Request for Rehearing that “[a]s a matter
of first impression, this disclaimer of dependent claims to avoid CBM
review warrants expanded panel review.” Req. Reh’g 3. A panel does not
have authority to expand a panel; only the Chief Judge, acting on behalf of
the Director, may act to expand a panel. See Standard Operating Procedure
1, rev. 14 § III (PTAB May 8, 2015). In this case, the suggestion to expand
the panel has been considered, but is not adopted.
Petitioner has not carried its burden of demonstrating that we
misapprehended or overlooked any matters argued in the Petition. As such,
Petitioner has not shown an abuse of discretion in the Decision not to
institute a covered business method patent review.
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

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PETITIONER:

Michael V. Messinger
Joseph E. Mutschelknaus
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mikem-PTAB@skgf.com
jmutsche-PTAB@skgf.com

PATENT OWNER:

Charles F. Wieland III
Robert G. Mukai
BUCHANAN INGERSOLL & ROONEY PC
Charles.Wieland@bipc.com
robert.mukai@bipc.com