Google Inc.v.Unwired Planet, LLC

Patent Trial and Appeal Board

Apr 6, 2015

11394797 (P.T.A.B. Apr. 6, 2015)

Trials@uspto.gov Paper 32
Tel: 571-272-7822 Entered: April 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE INC.,
Petitioner,
v.
UNWIRED PLANET, LLC,
Patent Owner.

Case CBM2014-00004
Patent 7,463,151 B1

Before MICHAEL W. KIM, JENNIFER S. BISK, and
BARBARA A. PARVIS, Administrative Patent Judges.
BISK, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
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Patent 7,463,151 B1
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I. INTRODUCTION
A. Background
Petitioner, Google Inc., filed a Petition pursuant to § 18 of the Leahy-
Smith America Invents Act (“AIA”).
1
Paper 1 (“Pet.”). The Petition
challenged claims 21 and 22 (“the challenged claims”) of U.S. Patent No.
7,463,151 B1 (“the ’151 patent”). On April 8, 2014, we instituted a
transitional covered business method patent review based upon Petitioner’s
assertion that the challenged claims are unpatentable under 35 U.S.C. §§ 101
and 112, second paragraph. Paper 8 (“Dec.”). A consolidated hearing for
CBM2014-00004, CBM2014-00005, CBM2014-000006, IPR2014-00027,
IPR2014-00036, IPR2013-00037, involving the same parties, was held
January 13, 2015. Paper 31 (hearing transcript).
This is a Final Written Decision under 35 U.S.C. § 328(a). Based on
the record presented, we are persuaded that Petitioner has shown by a
preponderance of the evidence that the challenged claims are unpatentable
under 35 U.S.C. § 101.
B. The ’151 Patent
The ’151 patent relates to mobile wireless networks—providing
mobile services using short-range radio communication (“SRC”)
2
devices.

1
Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
2
Within the ’151 patent, the abbreviation “SRC” is used several times, most
often to refer to “short-range radio communication.” See e.g., Ex. 1001,
5:21–23, 8:17 (claim 21). A few instances of the “SRC” abbreviation,
however, refer to “short range communication” without the word “radio.”
Id. at 7:32–33 (claim 17), 8:30–32 (claim 22). Neither party asserts that the
abbreviation “SRC” has a different meaning when referring to the phrase
“short range communication” without the word “radio.” Thus, for purposes
of this Decision, we treat “SRC” as having the same meaning everywhere it
is used in the ’151 patent.
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Ex. 1001, 1:7–10. An SRC device is described, for example, as a radio
frequency identification (“RFID”) tag, “a Bluetooth base station or
transponder, or a WiFi device such as a wireless router,” which may or may
not be fixed physically within a mobile network. Id. at 2:9–21.
The ’151 patent recognizes that, at the time of filing, it could be
difficult to locate a mobile terminal (e.g., a cellular telephone) within a
mobile network. Id. at 1:65–67. For example, using the cell servicing the
mobile terminal to determine location may not result in a clearly defined
location if the cell covered an overly large physical area. Id. at 1:67–2:4.
On the other hand, using a Global Positioning System (“GPS”) to determine
location could be excessively time consuming. Id. at 2:4–8. To address
these problems, the ’151 patent discloses using an SRC device to locate a
mobile terminal. Id. at 1:23–30. In addition to locating the mobile terminal,
the SRC device can be used to authenticate and provide services to the
mobile terminal. Id.
The ’151 patent describes an example in which the SRC device
provides identification information to a mobile terminal configured to
communicate with the SRC device (“an SRC-enabled mobile terminal”). Id.
at 1:40–47. The mobile network (or an SRC device information server
coupled to the mobile network) then allows a service to be provided to that
mobile terminal upon authentication of the identification information. Id.
Figure 1 of the ’151 patent, reproduced below, illustrates this embodiment.
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Figure 1 is a diagram of an SRC system using an RFID tag as the SRC
device. Id. at 1:51–52, 3:7–11. RFID-enabled mobile terminal 105 can read
information from RFID tag 110 and can connect to mobile network 125. Id.
at 3:11–19. Mobile network 125 is coupled to RFID tag information server
130. Id. at 3:19–24. In this embodiment, when a subscriber using mobile
terminal 105 initiates an action that requires a location determination, such
as whether mobile terminal 105 is located in home zone 120, mobile
terminal 105 may look to find a nearby RFID tag. Id. at 3:25–28. If mobile
terminal 105 finds any RFID tags within its range, such as RFID tag 110,
that RFID tag provides RFID tag identification information (SRC device
information) to mobile terminal 105. Id. at 3:28–32. Mobile terminal 105
sends the acquired RFID tag identification information to RFID tag
information server 130, which in turn verifies whether the provided RFID
tag identification information matches the subscriber’s home zone. Id. at
3:32–36. If the information matches, home zone services may be provided
to mobile terminal 105. Id. at 36–38.
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The ’151 patent also describes using an SRC device such as RFID tag
110 in public or commercial environments—as opposed to the home
environment shown in Figure 1—such as a retail store, airport, or shopping
mall. Id. at 4:4–7. Because the SRC device need not be fixed physically
within the network, it may “be mounted on an advertising vehicle.” Id. at
4:13–16. A customer with an appropriate SRC-enabled mobile terminal may
obtain an access code from any SRC device within range, which code may
then be used to obtain “a mobile service free of charge or at a promotional
rate over a mobile network.” Id. at 4:7–12. This mobile service or reduced
rate may be available temporarily while the SRC device is in range of the
mobile terminal or while an advertisement is displayed on the mobile
terminal. Id. at 4:13–18.
C. Related Matters
Petitioner states that the ’151 patent has been asserted against
Petitioner in a related district court proceeding in the District of Nevada.
Pet. 59. Additionally, Petitioner filed a petition for an inter partes review in
the following proceeding before the Board involving the ’151 patent:
IPR2014-00027. A final written decision in IPR2014-00027 is entered
concurrently with this decision.
Furthermore, U.S. Patent No. 7,203,752 (“the ’752 patent”) and U.S.
Patent No. 7,024,205 (“the ’205 patent”) are involved in the same district
court proceeding identified above, and also concern location-based, mobile
service technology. The ’752 patent and the ’205 patent are not, however, in
the same patent family as the ’151 patent. Petitioner has requested Office
review of the ’752 patent (Case Nos. CBM2014-00006 and IPR2014-00037)
and the ’205 patent (Case Nos. CBM2014-00005 and IPR2014-00036).
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D. The Challenged Claims
Petitioner challenges claims 21 and 22 of the ’151 patent. Both
claims are independent and recite the following:
21. A method for providing a promotional mobile service to
a short-range radio communication (SRC) enabled mobile
terminal over a mobile network, the method comprising:
receiving SRC device information from the SRC-enabled
mobile terminal over the mobile network, the SRC device
information acquired by the SRC-enabled mobile terminal from
an SRC device;
authenticating the SRC device information; and
in response to authenticating the SRC device information
providing the promotional mobile service to the SRC-enabled
mobile terminal over the mobile network on a time-limited
basis.
Ex. 1001, 8:16–27.
22. A method for receiving an advertisement over a mobile
network, the method comprising:
acquiring short range communication (SRC) device
information from a SRC device using an SRC-enabled mobile
terminal;
providing the SRC device information to a mobile
service provider over the mobile network; and
receiving the advertisement over the mobile network.
Ex. 1001, 8:28–35.
II. ANALYSIS
A. Claim Construction
In the Decision to Institute, we concluded that the term “SRC,” as
used in both claims 21 and 22, “encompasses, at least, RFID, Bluetooth, and
WiFi communications.” Dec. 7–8. In its Response (Paper 19, “PO Resp.”),
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Patent Owner asserts that the term properly should be interpreted as “radio
communications of a nominal range of 100 meters or less, such as used by
practical systems performing typical applications of RFID, Bluetooth, and
Wi-Fi communications.” PO Resp. 8 (emphasis omitted). Petitioner does
not agree, arguing that 100 meters is an arbitrary cutoff. Paper 21 (“Reply”)
6–10.
1. Intrinsic Evidence
The parties agree that the ’151 patent does not define expressly the
term “SRC.” The ’151 patent does, however, give some context from which
to discern the meaning of the term. For example, the ’151 patent states that
“[t]he term ‘SRC technology,’ as used herein, may include any short-range
radio communications technology now existing or yet to be developed,
including, for example, radio frequency identification (‘RFID’), IEEE
802.15 (‘Bluetooth’), and IEEE 802.11 (‘WiFi’), among others.” Id. at
2:60–65; see also id. at 2:9–18 (describing “SRC device[s]” and “SRC-
enabled mobile terminals” as including RFID, Bluetooth, and WiFi related
devices). Moreover, the ’151 patent describes several embodiments of the
invention. The first embodiment involves an RFID system. Id. at 3:7–8.
The second embodiment is described as a “hybrid system” using “Bluetooth,
WiFi, WiMAX, or any other wireless protocol” to connect with an RFID
reader. Id. at 4:19–34.
Based on this disclosure, it is clear that “SRC,” as used in the ’151
patent, encompasses communications at a range used by the technologies
named in the specification—RFID, Bluetooth, and WiFi—and other short-
range radio communication technologies. The question is whether the
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broadest reasonable interpretation also includes, as Patent Owner proposes,
the additional limitation that this nominal range is 100 meters or less.
Within the specification, Patent Owner points to only one passage
expressly supporting a range limitation of 100 meters—Figure 1—which
includes the following label: “RFID ‘home zone’ 100 meter range.” PO
Resp. 7–8. As Petitioner, however, correctly points out, Figure 1 is simply
one embodiment using an RFID tag as an SRC device. See Ex. 1001, 3:7–8.
Elsewhere in the specification, another embodiment includes an “integrated
RFID reader [that] may emit radio waves in ranges between one inch to 100
feet or more, depending upon its power output and the radio frequency
used.” Reply 6 (quoting Ex. 1001, 3:46–49). We agree with Petitioner that
the specification does not suggest that the 100 meter label in Figure 1 is
intended to represent the upper limit of the communication range of RFID
technology, much less the upper bound of SRC technology in general.
Moreover, we are not persuaded that the intrinsic evidence limits the range
of “SRC” in the ’151 patent to any particular numeric value. Instead, the
’151 patent consistently refers to various technologies as exemplary of SRC
without any particular numeric restriction on range.
2. Extrinsic Evidence
Faced with this paucity of intrinsic evidence, Patent Owner turns to
extrinsic evidence, including testimony from Dr. Georgios B. Giannakis.
Ex. 2001 ¶¶ 21–25. Dr. Giannakis testifies that SRC has a well-understood
meaning in the art of “a nominal range of 100 meters or less, such as used by
practical systems performing typical applications of RFID, Bluetooth, and
Wi-Fi communications.” Id. ¶ 22. Moreover, Dr. Giannakis testifies that all
three examples of SRC technologies listed by the ’151 patent have “a
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practical upper range in a typical deployment that is nominally 100 meters
or less.” Id. ¶ 24. An expert’s opinion, however, is only as good as the facts
upon which it is based. Dr. Giannakis points to no factual support for his
specific numeric conclusions on this issue. See id. ¶¶ 22–24. We, therefore,
give very little weight to Dr. Giannakis’s testimony concluding that the term
SRC, as used in the ’151 patent, includes a specific upper bound of 100
meters. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going
to factual determinations . . . may render the testimony of little probative
value in a validity determination.”).
Patent Owner also relies on several publications to support its
proposed construction, including the following excerpts (PO Resp. 8–13):
1. “Short Range Devices (SRD) are essentially low power radio
communications systems . . . . Typically, the range of an SRD is
a few cm up to 100 metres. Car key fobs and wireless alarms
are examples of SRDs, as are Bluetooth and WiFi devices.
RFID systems are also SRDs” (emphasis added). Ex. 2009, 2.
3

2. “Short-range wireless systems have a range of 100 meters or
less. They often combine with systems wired to the Internet to
provide communication over long distances.” Ex. 2008, 40.
4

3. “802.11b and 802.11g advertise usable distances up to about
300 feet [91.44 meters].” Ex. 2004, 38.
5

4. “[T]wo factors—frequency and antenna height . . . reduces the
WiFi range estimate to less than 100 m.” Ex. 2003, 363.
6

3
ETSI World Classic Standards, Short Range Devices, www.etsi.org.
4
A Long-Term View of Short-Range Wireless, David G. Leeper, IEEE
Computer Magazine, 34–44 (June 2001).
5
IEEE 802.11 Experiments in Virginia’s Shenandoah Valley, David R.
Fordham, QST Magazine, 35–41 (July 2005).
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5. “Table 1 summarizes typical parameters for cellular mobile
systems and WLARNs (WiFi).” PO Resp. 11.

Table 1 lists the link rate, range, and frequency band for
different wireless systems. Ex. 2005, 16–17 (stating the link
range of “Cellular” as “A few km,” “WI-FI” as “< 100 m,” and
“WIMax” as “?”).
7

According to Patent Owner, several of these publications are evidence that
Petitioner’s expert, Dr. Donald Cox, has acknowledged that SRC typically
refers to an upper range of 100 meters. PO Resp. 10–12 (citing Exs. 2003,
2005). Petitioner disagrees, noting that although the references indicate that
under certain conditions, WiFi could have a range of 100 meters, the overall
theme of these publications is that SRC technology does not have a
particular numeric upper bound on range, but varies depending on multiple
factors. Reply 7–8. We agree with Petitioner and are not persuaded that the
excerpts provided by Patent Owner show that “SRC” is, in general, limited
to an upper range of 100 meters.
Moreover, Patent Owner concedes that the excerpts above are “only a
small fraction of the body of literature referencing the use of [SRC].” PO

6
Chapter 19, Fundamental Limitations on Increasing Data Rate in Wireless
Systems, Donald C. Cox, The Mobile Communications Handbook, Third
Ed., 355–68 (2013).
7
Fundamental Limitations on Increasing Data Rate in Wireless Systems,
Donald C. Cox, IEEE Communications Magazine, 16–17 (Dec. 2008).
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Resp. 13. Patent Owner, however, does not even assert that the other
“thousands of patents and patent publications” referring to SRC consistently
use the term to mean communications with an upper range of 100 meters.
See PO Resp. 6–13. We are, therefore, not persuaded that Patent Owner’s
extrinsic evidence adds anything to our understanding of the term “SRC” as
it is used in the ’151 patent.
3. Conclusion
Thus, we conclude that the broadest reasonable construction of “SRC”
is not necessarily limited, as Patent Owner proposes, to 100 meters. Instead,
we interpret “SRC” to be communications at a range used by technologies
such as RFID, Bluetooth, and Wi-Fi.
B. Indefiniteness
Petitioner contends claims 21 and 22 of the ’151 patent are
unpatentable under 35 U.S.C. § 112, ¶ 2,
8
because the claim term “SRC” is
indefinite. Pet. 32–34. In particular, Petitioner contends “short” is vague
and relative, and the ’151 patent specification provides no standard for
evaluating shortness. Id. at 33. According to Petitioner, the three example
technologies—RFID, Bluetooth, and Wi-Fi—each have varying ranges and
together provide no upper bound, such that a skilled artisan would have
difficulty evaluating whether a signal outside of these three examples has a
range that is short. Id. at 33–34 (citing Ex. 1002 ¶¶ 34–38).

8
Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶¶ 1, 2, and 6 as
35 U.S.C. §§ 112(a), (b), and (f). Because the ’151 patent has a filing date
before September 16, 2012 (effective date of § 4(c)), we will refer to the pre-
AIA version of 35 U.S.C. § 112.
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Patent Owner responds that a person of ordinary skill in the art would
understand that the upper bound of communication ranges for the example
technologies, in “typical” deployments is 100 meters. PO Resp. 14–18.
Although, as discussed above, we do not agree that the broadest reasonable
interpretation of “SRC” necessarily includes the upper bound of 100 meters,
we agree with Patent Owner that a person of ordinary skill in the art would
understand sufficiently what subject matter claims 21 and 22 of the ’151
patent cover.
Although a term may be relative, it is not necessarily indefinite.
Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984) (“That some claim language may not be precise, however,
does not automatically render a claim invalid.”). We are persuaded a person
of ordinary skill in the art would understand that short-range communication
covers a communication range “shorter” than the range covered by mobile
networks. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372
(Fed. Cir. 2013) (affirming the district court’s finding not indefinite the term
“short-range communication protocol,” which was construed to mean “a set
of procedures required to initiate and maintain short-range communication
between two or more devices” where short-range communications similarly
included Bluetooth and WiFi technologies, but did not include a numeric
upper bound on range), cert. granted in-part on other grounds, 135 S.Ct.
752 (U.S. Dec. 5, 2014) (No. 13-896).
The ’151 patent expressly describes mobile networks as including
“cellular networks such as Global System for Mobile Communications
(‘GSM’), Time Division Multiple Access (‘TDMA’), Code Division
Multiple Access (‘CDMA’), and Personal Communications Service (‘PCS’)
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networks.” Ex. 1001, 2:53–58; see PO Resp. 19. It also describes
interoperability between the various systems, contrasting them by size. For
example, in describing the problems encountered when locating mobile
terminals, the Specification describes “cell sizes [that] have grown to cover
up to 20 km in diameter or even wider.” Ex. 1001, 1:67–2:4. A solution to
this problem is employing “at least one SRC device.” Id. at 2:9–11. The
’151 patent also describes employing the “at least one SRC device . . . within
a mobile network.” Id. at 2:11–17 (emphasis added). Thus, the
specification makes reasonably clear to the person of ordinary skill the range
of SRC in comparison to the range of mobile networks—and in turn the
scope of SRC as used in claims 21 and 22. See Young v. Lumenis, Inc., 492
F.3d 1336, 1346 (Fed. Cir. 2007) (holding the term “near” not indefinite
where the specification makes reasonably clear that the term means “very
close to or at the edge of”).
The extrinsic evidence is consistent with this understanding of the
term. Dr. Giannakis stated that “[o]ne of ordinary skill in the art would
understand that the practical upper range of an SRC is substantially less than
the practical upper range of a typical mobile cellular network.” Ex. 2001
¶ 25.
9
Petitioner relies on Dr. Cox’s testimony as evidence that a person of
ordinary skill in the art would be unable to identify whether a certain
technology is sufficiently short to be within the range of “SRC.” Pet. 33–34

9
Although Dr. Giannakis does not provide factual support for this statement,
we find more credible, and give more weight to, this conclusory statement
referring to how a person of ordinary skill generally would understand
various terms, than Dr. Giannakis’s conclusory statements referring to a
particular numeric value (such as the 100 meter upper bound discussion of
¶¶ 22–24).
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(citing Ex. 1002 ¶¶ 34–38). Dr. Cox notes that one reason he concludes the
term “short” is indefinite is that the ’151 patent does not provide examples
that are not short-range. Ex. 1002 ¶ 37 (“Had the specification also listed
examples that are not short-range, perhaps they would have more
meaning.”). As discussed above, however, the ’151 patent expressly points
out that using SRC devices within mobile networks can solve the problem of
“cell sizes [that] have grown to cover up to 20 km in diameter or even
wider,” indicating that “SRC” refers to a range substantially smaller than
that of cellular networks. Ex. 1001, 2:1–2. Thus, we are persuaded that the
language of claims 21 and 22, viewed in light of the intrinsic evidence, is
sufficiently definite to have informed those skilled in the art about the scope
of the invention with reasonable certainty such that they would have
understood what was being claimed. See Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S.Ct. 2120, 2129 (2014); Ex Parte Miyazaki, 89
USPQ2d 1207, 1213 (BPAI 2008) (precedential). The proffered extrinsic
evidence does not persuade us otherwise.
Accordingly, we are not persuaded that Petitioner has shown by a
preponderance of the evidence that the challenged claims are unpatentable
under 35 U.S.C. § 112, ¶ 2.
C. Non-Statutory Subject Matter
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Supreme Court precedent
provides three specific exceptions to the broad categories of § 101: laws of
nature, physical phenomena, and abstract ideas. Bilski v. Kappos, 561 U.S.
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593, 601 (2010). “The ‘abstract ideas’ category embodies the longstanding
rule that ‘[a]n idea of itself is not patentable.’” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S.Ct. 2347, 2355 (2014) (citing Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (quotations omitted)).
In Alice, the Supreme Court referred to the framework set forth in
Mayo Collaboration Services v. Prometheus Laboratories, Inc., 132 S.Ct.
1289 (2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S.Ct. at 2355. In the first step,
“we determine whether the claims at issue are directed to one of those
patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat else is there in
the claims before us?’” Id. (quoting Mayo, 132 S Ct. at 1297). In the
second step, 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. Step
two of the 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).
1. Abstract Idea
Petitioner submits that the claimed invention is directed to the abstract
idea of providing information and receiving an advertisement. Pet. 30.
Patent Owner responds that the Petitioner fails to consider the claims as a
whole, which are not abstract, but instead recite “a specific inventive
implementation of providing a service to a mobile terminal over a mobile
network in response to authentication of information acquired electronically
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by the mobile terminal from an SRC device.” PO. Resp. 20. According to
Patent Owner, “[a]n underlying idea” of the claims “is providing a service
over a mobile network,” which is not abstract because it “includes specific
recitations regarding the type of information (SRC device information) and
how the information is acquired (SRC device information acquired by the
SRC-enabled mobile terminal from an SRC device) as well as use of the
acquired information for authentication.” Id. at 27–29.
We agree with Petitioner that the claimed invention is directed to an
abstract idea, specifically, the abstract idea of receiving information and
providing services or advertisements based on that information. The
preambles and all claim limitations of both claims support this abstract idea,
and the ’151 patent repeatedly discloses that the invention is directed to
providing services or advertisements. See, e.g., Ex. 1001, 1:7–15, 25–27.
Patent Owner has not identified any portion of the ’151 patent inconsistent
with this abstract idea, and we are persuaded that the identified abstract idea
is a fundamental building block of economics, similar in nature to the
abstract idea of hedging claimed in Bilski and intermediated settlement
claimed in Alice.
Patent Owner does not direct us to any authority for its assertion that
an idea is not abstract if it includes specific recitation regarding the type of
information transmitted, how that information is acquired, and whether it is
used for authentication. Here, the claims are generally directed to a method
of (i) receiving information over a network, (ii) authenticating that
information, and (iii) providing a service to a mobile terminal or receiving
an advertisement over the network, all of which inform the aforementioned
abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo
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Bank, Nat’l Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (characterizing the
claimed abstract idea as “1) collecting data, 2) recognizing certain data
within the collected data set, and 3) storing that recognized data in a
memory” despite claim’s recitation of specific limitations, like scanner).
This combination of steps recites an abstraction because it has “no
particular concrete or tangible form” and is “devoid of a concrete or tangible
application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014). The details emphasized by Patent Owner do not remove the claimed
methods from the realm of the abstract. These details are characteristic of
the invention’s implementation, rather than its general idea. See buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (describing
the claim’s abstract idea without including the claim’s “computer network”
limitation); see also Ultramercial 772 F.3d at 715 (stating that more detailed
limitations may “add a degree of particularity,” but do not convert the
concept embodied by the majority of the limitations into something
concrete).
Patent Owner also asserts that the claims at issue here are not abstract,
because they do “not invoke a token use in a ‘particular technological
environment’ as found in Bilski,” but instead “indicate the technical
environment that the method operates in, overcoming challenges previously
identified in the technical environment, and providing benefits not readily
available prior” to the ’151 patent. PO Resp. 25 (citing Bilski v. Kappos,
130 S.Ct. 3218 (2010)). This particular argument is misplaced in this step of
the analysis because “novelty in implementation of the idea is a factor to be
considered only in the second step of the Alice analysis.” Ultramercial, 772
F.3d at 715.
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Finally, Patent Owner asserts that the claimed invention is not abstract
because it does not fall within Alice’s articulated examples of abstract idea.
PO Resp. 25–26. According to Patent Owner, the claimed subject matter
“only exists within operation of a combination of man-made mobile and
short-range communications systems, which precludes categorizing these
claims as covering a preexisting fundamental truth” and cover “significantly
more than simply providing information and receiving a service.” Id. at 26.
Abstract ideas, however, are not limited to the examples set forth in
Alice. While the Supreme Court has not precisely defined “abstract idea,”
the Federal Circuit since Alice has invalidated patents encompassing a broad
range of abstract ideas. We conclude that claims 21 and 22 of the ’151
patent are comparable to other communication-based patents involving the
gathering and transmission of data and services that have been invalidated
after Alice. See, e.g., Content Extraction, 776 F.3d at 1345 (holding claims
drawn to the “basic concept of data recognition and storage” abstract);
Ultramercial, 772 F.3d at 715 (holding the “process of receiving
copyrighted media, selecting an ad, offering the media in exchange for
watching the selected ad, displaying the ad, allowing the consumer access to
the media, and receiving payment from the sponsor of the ad all describe an
abstract idea”).
2. Inventive Concept
Turning to the second step of the analysis, we look for additional
elements that can “transform the nature of the claim” into a patent-eligible
application of an abstract idea. Mayo, 132 S.Ct. at 1297.
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Patent Owner asserts that even if the challenged claims recite an
abstract idea, they include limitations that amount to significantly more than
an abstract idea. PO Resp. 29. According to Patent Owner,
Starting with the preamble of claim 21, the claimed subject
matter is focused on a unique combination of operations
performed within a mobile network and using SRC
technologies to provide a service to a mobile terminal over a
mobile network. . . . Claim 21 continues by reciting multiple
communication elements, one occurring over the mobile
network (receiving SRC device information from the SRC-
enabled mobile terminal) and a second over SRC technologies,
such as Bluetooth or Wi-Fi, (SRC device information acquired
by the SRC-enabled mobile terminal from an SRC device).”
Id. at 30. Patent Owner argues that the “involvement of the mobile network
and SRC technologies . . . add meaningful and concrete limitations to the
claimed subject matter” providing “specific benefits to the technological
environment by allowing information gathered over communications
between an SRC device and SRC-enabled mobile terminal to be distributed
and authenticated within the mobile network.” Id. at 30–31.
On this record, we are not persuaded that the challenged claims of the
’151 patent add an inventive concept sufficient to ensure that the patent in
practice amounts to significantly more than a patent on the abstract idea
itself. Alice, 134 S.Ct. at 2355; see also Ultramercial., 772 F.3d at 715
(“Those ‘additional features’ must be more than ‘well-understood, routine,
conventional activity.’”). The mobile network, mobile terminal, SRC
communications technology are all defined in the Specification as including
commonly known technical solutions. Ex. 1001, 2:53–65. Thus, the
hardware itself certainly is not an inventive concept sufficient to transform
the abstract idea into a patentable claim. See Alice, 134 S.Ct. at 2357.
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Moreover, we are persuaded that the claimed subject matter does not
do anything more than simply instruct the practitioner to implement the
abstract idea of gathering, authenticating, and transmitting data and services
on generic technology. See Alice, 134 S.Ct. at 2359. Despite its arguments
that the communication elements of the claims add enough to make the
claims patentable, Patent Owner fails to identify any language in the claims
or the Specification demonstrating that the generic communication systems
function in an unconventional manner. Instead, through the bare recitation
of the steps of “receiving,” “acquiring,” “authenticating,” and “providing,”
the claims are “specified at a high level of generality,” which the Federal
Circuit has found to be “insufficient to supply an ‘inventive concept.’”
Ultramercial, 772 F.3d at 716.
In DDR Holdings, the Federal Circuit found that the challenged patent
was valid because it “specif[ied] how interactions with the Internet are
manipulated to yield a desired result—a result that overrides the routine and
conventional” aspects of the technology. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014). Here, instead of
overriding a routine sequence of events, the claims apply conventional
computer processes to automate the delivery of software services or
advertising. This conclusion is unaltered by the fact that the delivery of such
services may have had advantages over prior art delivery methods. Parker
v. Flook, 437 U.S. 584, 590 (1978) (reasoning that “the Pythagorean
theorem would not have been patentable, or partially patentable, because a
patent application contained a final step indicating that the formula, when
solved, could be usefully applied to existing surveying techniques.”). The
linkage of existing hardware systems and devices to existing processes of
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gathering and authenticating information and providing services, as claimed
here, appear to be “‘well-understood, routine, conventional activit[ies]’
previously known to the industry.” Content Extraction, 776 F.3d at 1347–48
(quoting Mayo, 132 S.Ct. at 1294). None of the technical limitations,
viewed “both individually and as an ordered combination,” transform the
nature of the claims into patent-eligible subject matter. See Alice, 134 S.Ct.
at 2355 (quoting Mayo, 132 S.Ct. at 1297, 1298).
3. Conclusion
We are persuaded that Petitioner has shown by a preponderance of the
evidence that claims 21 and 22 of the ’151 patent are unpatentable under 35
U.S.C. § 101.
III. ORDER
Accordingly, it is:
ORDERED that claims 21 and 22 of the ’151 patent are determined to
be unpatentable; 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.

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PETITIONER:
Michael V. Messinger
Joseph E. Mutschelknaus
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
mikem-PTAB@skgf.com
jmutsche-PTAB@skgf.com
PATENT OWNER:
Timothy E. Bianchi
Thomas C. Reynolds
SCHWEGMAN, LUNDBERG & WOESSNER, PA
tbianchi@slwip.com
treynolds@slwip.com
SLW-PTAB@slwip.com