Motorola Mobility LLCv.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Feb 9, 2016

12384736 (P.T.A.B. Feb. 9, 2016)

Trials@uspto.gov Paper 8
Tel: 571-272-7822 Entered: February 9, 2016
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 CBM2015-00174
Patent 7,810,144 B2

Before MICHAEL W. KIM, PATRICK R. SCANLON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

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I. INTRODUCTION
A. Background
Petitioner Motorola Mobility LLC filed a Petition (Paper 1, “Pet.”)
requesting a covered business method patent (“CBM patent”) review of
claims 10, 14, 15, and 41 of U.S. Patent No. 7,810,144 B2 (Ex. 1001, “the
’144 patent”) pursuant to Section 18 of the Leahy–Smith America Invents
Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Patent Owner
Intellectual Ventures I LLC filed a Preliminary Response. Paper 6 (“Prelim.
Resp.”).
A transitional proceeding under § 18 of the AIA may be instituted
only for a patent that is a covered business method patent. AIA
§ 18(a)(1)(e). Upon consideration of the Petition and Preliminary Response,
we conclude Petitioner has not met its burden of demonstrating sufficiently
that the ’144 patent is a CBM patent pursuant to the statutory definition in
§ 18(d)(1) of the AIA. Therefore, we deny the Petition.

B. Related Proceedings
The parties identify Intellectual Ventures I LLC v. Motorola Mobility
LLC, No. 1:11-cv-00908 (D. Del.), and U.S. Patent Nos. 8,406,825,
8,185,736, 8,522,313, and 8,667,460, as well as pending application nos.
13/987,534 and 14/807,475, all of which claim the benefit of the ’144 patent.
Pet. 1; Paper 5, 1.
C. The ’144 Patent
The ’144 patent relates to the “electronic transfer of computer files
directly between two or more computers or computing devices.” Ex. 1001,
2:4–7. In one embodiment, the ’144 patent describes a file transfer system
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having multiple personal computers (“PCs”) connected to one or more
communication pathways (e.g., the internet or a public switched telephone
network (PSTN)), wherein each PC runs a computer program incorporating
functional modules that enable the direct transfer of electronic files. Id. at
10:25–11:3, Fig. 1. A user selects one or more files to be transferred from
the “sending PC,” and selects a “recipient PC” from a list of candidate PC
destinations. Id. at 11:25–45. The user may also add a text message to
accompany the transferred files. Id. at 21:39–41. A “compression control
module” then copies and compresses any files selected for transfer and any
text messages into a “file packet.” Id. at 11:58–67, 21:41–47. At a
predetermined time, a control module initiates a connection with the
destination PC, identifies the sending PC by its name and destination
address, and transmits the packet containing the compressed files. Id. at
12:1–6. When the transmission from the sending PC to the receiving PC is
complete, the control module then notes the date, time, and content (e.g., file
name and file structure) of the transfer on an event log. Id. at 12:6–9. The
’144 patent additionally teaches that the control module in the receiving PC
can respond to inbound file transmissions by creating a received file list, and
may provide a visible indication that a packet has been received. Id. at
12:16–26.
According to one preferred embodiment of the ’144 patent, the
sending PC can request a confirmation of the transfer, in the form of a
returned file that includes a received file list and the identity of the recipient
and sender. Id. at 18:66–19:4. The confirmation file may be returned from
the receiving PC to the sending PC directly or through a third party
authenticator. Id. at 19:4–6.
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D. The Challenged Claims
Petitioner challenges claims 10, 14, 15, and 41. Pet. 2–3. Claims 10
and 41 are independent claims, and claims 14 and 15 depend from claim 10.
Claim 10 is illustrative and reproduced below.
10. A method for transferring files from a first device to
a second device over a communications network, comprising:
displaying, on the first device, a collection of file
identifiers, wherein each file identifier represents a
selectable file;
receiving, at the first device, a user selection of at least one
file identifier representing a file selected to be
transferred to the second device;
displaying, on the first device, a collection of destinations
identifiers, wherein each destination identifier
represents a remote device having a numbered
destination address on a circuit switched or packet
switched network;
receiving, at the first device, a user selection of at least one
destination identifier as selection of the second device:
displaying, on the first device, a data entry field in which
a text message can be entered;
receiving, at the first device, the text message;
encapsulating, at the first device, the text message with the
selected file into a single combined file;
generating, at the first device, a unique transaction
identifier that identifies a transfer of the single
combined file;
transferring, from the first device to the second device, the
single combined file, including:
sending, to the second device at its numbered
destination address, the single combined file
receiving, at the second device, the single combined
file irrespective of user action at the second device;
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generating, at the second device, a delivery
confirmation message confirming reception of the
single combined file;
transmitting, from the second device to an
authenticating device of the communications
network, the delivery confirmation message; and
generating, at the authenticating device, a delivery
report that indicates a delivery event and a time of
the delivery event;
providing, at the second device, an alert indicating
reception of the single combined file;
displaying, on the second device, an identification of the
first device in relation to at least one of the selected file
or the associated text file, wherein the identification
includes at least one of a communications address of
the first device, a name of the first device, or a
username associated with the first device; and
displaying, on the second device, at least a portion of
content of the selected file or the text message.

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E. Asserted Grounds of Unpatentability
Petitioner identifies the following as asserted grounds of
unpatentability:
Reference(s) Basis Claim(s)
Challenged
Overend (Ex. 1004)1 § 102 10, 14, 41
Overend and Kara (Ex. 1005)2 § 103 10, 14, 41
Overend, Kara, and Rasmussen
(Ex. 1006)3
§ 103 15
Pet. 12.
II. ANALYSIS
Whether the ’144 Patent Is a Covered Business Method Patent
1. The Parties’ Positions
A threshold question is whether the ’144 patent is a “covered business
method patent,” as defined by the AIA.
Petitioner states that the ’144 patent “generally recite[s] a method for
transferring files from a ‘first device’ to a ‘second device’” that includes
generic operations such as displaying, transferring, and receiving steps.
Pet. 3–4. Petitioner argues that “[t]he claimed file transfer method supports
financial service-related business models such as that of the ‘International
Postal Service business model’” wherein service users pay for the direct
transfer of files from a sender (e.g., the claimed “first device”) to a recipient
(e.g., the claimed “second device”) using a credit system. Id. at 4 (citing

1 U.S. Patent No. 5,379,340, issued Jan. 3, 1995.
2 WO 98/11716, published Mar. 19, 1998.
3 U.S. Patent No. 5,373,149, issued Dec. 13, 1994.
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Ex. 1001, 34:60–64, 35:4–10). Petitioner contends that, according to the
Specification of the ’144 patent, a sending device has a number of purchased
credits, and the credit system charges a credit for each successful file
transfer. When the sending device runs out of credits, no files may be
transferred until additional credits are purchased, which can be done using
the file transfer method disclosed in the ’144 patent by transmitting a credit
card number or bank account information to an authorizing computer
system. Id. at 4–5 (citing Ex. 1001, 30:27–29, 30:35–41, 30:66–31:11,
31:67–32:2). Thus, Petitioner argues that the claims of the ’144 patent
concern transmitting files in support of a financial credit system,
including (1) transmitting credit card numbers or business
account numbers using the claimed file transfer method and (2)
charging credits purchased using such credit card numbers or
business account numbers for transmitting files and preventing
file transfers if a user runs out of purchased credits. Each of these
activities is financial in nature, incidental to a financial activity
or complementary to a financial activity.
Id. at 7–8.
Petitioner also contends that statements made during the prosecution
of U.S. Patent Application No. 10/167,697 (“the ’697 application”), a related
family member of the ’144 patent, are consistent with the characterization of
the ’144 patent as a system directed to managing data delivery in a financial
product or service related to purchased credits. Id. at 5–6 (referring to
statements regarding a fee being charged for delivery of requested files and
sending credit requests).
Patent Owner argues that the claims of the ’144 patent are directed to
“technologies common in business environments that have no particular
relation to the financial services sector,” which can be used by anyone, in
any industry, to communicate data from one device to another. Prelim.
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Resp. 10–11. Patent Owner further argues that Petitioner has not
“explain[ed] how any claim limitation recites a financial operation or is even
remotely related to any financial operation,” and, therefore, has failed to
show that the ’144 patent claims a method for performing data processing
used in the practice, administration, or management of a financial product or
service. Id. at 13.
Patent Owner also contends that the one example in the Specification
of the ’144 patent wherein the operator of the file transfer system charges
credits for use of the system, and account information used to purchase
credits can be transferred by the file transfer system itself, does not convert
the ’144 patent into a covered business method patent. Id. at 17. According
to Patent Owner, Petitioner’s interpretation “would cover almost every data
communications invention ever made, because the usage of virtually every
data communications device, just like virtually every service, can be paid for
using money and virtually every such device can be used to transmit
financial information.” Id. at 18. Patent Owner offers the telephone,
telegraph, and a cable modem as specific examples, arguing that these are all
data communications devices, and that patents describing how these devices
work would not become CBM patents simply because the specification says
that a customer can be charged money for using them or could add money to
an account for using the devices by placing a telephone call, sending a
telegram, or sending a message through the cable modem to a bank. Id. at
18–19.
Patent Owner further argues that the file history of the ’697
application fails to establish that the ’144 patent is a covered business
method patent. Id. at 21–23. Patent Owner notes that the applicant in the
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’697 application was attempting to obtain claims that were distinct from
those in the ’144 patent, and, therefore, the arguments during prosecution of
the ’697 application are not pertinent to the question of what the ’144 patent
claims. Id. at 21. Specifically, Patent Owner points out that the claims in
the ’697 application included a limitation that expressly recites “debiting a
credit account,” whereas the claims in the ’144 patent do not. Id. at 22.
For the reasons explained below, we conclude that the ’144 patent is
not a “covered business method patent.”
2. Analysis
Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional
proceeding only for a patent that is a CBM patent. Section 18(d)(1) of the
AIA defines the term “covered business method patent” to mean “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.”
For purposes of determining whether a patent is eligible for a covered
business method patent review, the focus is on what the patent claims. See
37 C.F.R. § 42.301(a), definition of CBM patent; see also 77 Fed. Reg.
48,734, 48,736 (Aug. 14, 2012), Response to Comments on Notice of
Proposed Rulemaking, response to comment 8. A patent need have only one
claim directed to a covered business method to be eligible for review. See
Transitional Program for Covered Business Method Patents—Definitions of
Covered Business Method Patent and Technological Invention; Final Rule,
77 Fed. Reg. at 48,736.
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In promulgating rules for CBM patent review, the Office considered
the legislative intent and history behind the AIA’s definition of “covered
business method patent.” See 37 C.F.R. § 42.301(a), definition of CBM
patent; see also 77 Fed. Reg. at 48,736, Response to Comments on Notice of
Proposed Rulemaking, responses to comments 3 and 5. The “legislative
history explains that that 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.”
See 157 Cong. Reg. S5432 (daily ed. Sept 8, 2011) (statement of Sen.
Schumer) and 77 Fed. Reg. at 48,735 (quoting 157 Cong. Rec. S5432).
To that end, Petitioner does not explain adequately, and we are unable
to discern, how any of the independent or dependent claims of the ’144
patent recite a method or apparatus “for performing data processing or other
operations used in the practice, administration, or management of a
financial product or service.” On their face, the claims of the ’144 patent
are directed to a general method or corresponding apparatus for transferring
files from a first device to a second device, and we are unable to identify
specifically any claim terms that could be considered “financial in nature.”
In view of this, we agree with Patent Owner that the claims, at least facially,
relate to “technologies common in business environments that have no
particular relation to the financial services sector.” Prelim. Resp. 10.
Petitioner relies on the description in the Specification of the ’144
patent, as well as the prosecution history of the ’697 application, regarding
the International Postal Service business model and the associated crediting
system to support its argument that the ’144 patent is a CBM patent.
Petitioner, however, fails to address how this disclosure is related to, or
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meaningfully informs our analysis of, the language of the claims.
Specifically, Petitioner does not direct us to any claims or claim limitations
that require users to pay for the transfer of files from a sender to a recipient,
or any claims that require the use of the crediting system disclosed in the
Specification.
We recognize that some panels of this Board have imparted
“financial” status to otherwise “generic” claims where the Specification has
unequivocally shown that the invention is directed to something “financial in
nature.” See, e.g., Motorola Mobility LLC v. Intellectual Ventures I LLC,
CBM2015-00005, Paper No. 10 at 7 (PTAB March 27, 2015) (noting that
the Specification expressly refers to “financial planning and portfolio
management” and filing tax returns); Informatica Corp. v. Protegrity Corp.,
CBM2015-00010, Paper No. 13 at 11 (PTAB May 11, 2015) (noting that the
Specification expressly refers to “the field of banking”). Other panels of this
Board, however, have not imparted “financial” status to claims that have a
general utility when neither the claims nor Specification establish that the
claimed invention is directed to something “financial in nature.” See, e.g.,
Google Inc. v. SimpleAir, Inc., CBM2015-00019, Paper No. 11 at 11–13
(PTAB May 19, 2014) (“Petitioner . . . does not explain any relationship
between the cited portions of the Specification [referring to “stock quotes”
or “lotto”] and the specific language of claim 1.”); J.P. Morgan Chase &
Co. v. Intellectual Ventures II LLC, CBM2014-00160, Paper No. 11 at 11
(PTAB January 29, 2015) (stating that claims pertaining to secure electronic
communications had “general utility not limited or specific to any
application” and “cover various types of transactions separate from financial
transactions”).
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Here, we observe that the International Postal Service business model
and the associated crediting system appear to be described in only one
discrete portion of the Specification, again, with no clear ties to specific
claim language, and that the ’144 patent as a whole is directed to an area of
general utility. Additionally, the Specification’s description of transmission
of credit card information or an account number according to the file transfer
method recited in the claims of the ’144 patent is not itself a financial
transaction, but rather constitutes only a minor portion of the non-limiting
examples of the type of information that can be transferred according to the
claimed method and apparatus. Again, none of the claims recite expressly
credit card information or an account number. This exemplary type of file
transfer described in the Specification does not change the fact that the
relevant claims and claim limitations have general utility, and are not
expressly limited to any specific application, financial or otherwise.
In view of this, Petitioner’s contentions based on the Specification do
not show how the ’144 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” or claims
“activities that are financial in nature, incidental to a financial activity or
complementary to a financial activity.”
Additionally, we are not persuaded by Petitioner’s arguments
regarding statements made during the prosecution of the ’697 application, as
these arguments fail to address the claims of the ’144 patent, which is the
focus of our inquiry.
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III. CONCLUSION
For the foregoing reasons, based on the present record and particular
facts of this case, we determine that the information presented in the Petition
does not establish that the ’144 patent qualifies as a covered business
method patent under § 18 of the AIA. Petitioner, therefore, has failed to
satisfy the eligibility requirements for a covered business method patent
review under § 18.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.

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PETITIONER:
Naveen Modi
Daniel Zeilberger
Joseph Palys
MotorolaMobility-IV-CBM@paulhastings.com

PATENT OWNER:

Brenton R. Babcock
2brb@knobbe.com

Ted M. Cannon
2tmc@knobbe.com

Bridget A. Smith
2bzs@knobbe.com

Tim R. Seeley
tim@intven.com

James R. Hietala
jhietala@intven.com

BoxPGL30@knobbe.com