After Multiple CBM Petitions, Motorola Invalidates Software Patent
By Joseph Herndon --
On March 21, 2016, the USPTO Patent Trial and Appeal Board (PTAB) issued a final written decision in the Covered Business Method (CBM) patent review between Motorola Mobility, LLC and Intellectual Ventures I, LLC, in which challenged claims were found to be unpatentable under 35 U.S.C. § 101 as being directed to non-statutory subject matter. This is another CBM decision in which the claims do not recite anything even remotely close to some kind of financial product or service, but since the specification has examples focused on Tax Filings and Financial Planning, the patent was doomed.
Jurisdictional Termination Request
Intellectual Ventures asserted U.S. Patent No. 6,658,464 against Motorola, and Motorola responded by requesting CBM review of claims 1, 8, 16, and 17 of the '464 patent. As an initial matter, Motorola previously filed a request for CBM review of the '464 patent, and the PTAB determined that Motorola had not demonstrated adequately that the '464 patent is a CBM patent. Intellectual Ventures asked the Board to terminate this second proceeding for lack of jurisdiction because Motorola should not be allowed to re-litigate whether the '464 patent qualifies as a CBM patent after fully litigating that issue in the earlier CBM petition and losing.
The Board, however, noted that there is no authority supporting a lack of jurisdiction in these circumstances, nor does Intellectual Ventures explain persuasively why a prior petition denies the Board jurisdiction. Consequently, the Board allowed Motorola a second chance.
Covered Business Method (CBM) Patent?
Whether a patent is a CBM patent is a two-part inquiry: (1) 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," and (2) whether the patent is a technological invention (technological inventions are not covered business methods patents).
The '464 patent is entitled "User Station Software that Controls Transport, Storage, and Presentation of Content from a Remote Source," and 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. Of the challenged claims, claim 1 is the sole independent claim, and claims 8, 16, and 17 depend from independent claim 1. Claim 1 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:
(a) enable a user at the user station to select content from each of a plurality of independent publishers;
(b) 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,
(c) 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
(d) effect presentation of the stored content to the user at the user station with a user interface that is customized to the respective publishers.
1. Financial Product or Service
Intellectual Ventures argued that the challenged claims recite electronic content distribution operations and have no direct or indirect relationship to financial products or services. But the Board noted that while the focus is on the claims, a financial product or service need not be explicitly recited in the claims, and thus, the Specification must not be ignored.
Here, while the claims do not expressly refer to financial activity, the Specification discloses an application to financial activities. The Specification notes that the claimed invention is useful "for providing financial planning and portfolio management systems, enabling electronic tax and government filings, or to obtain current statistics, place stock orders, and the like." Thus, the Board found that Motorola demonstrated that at least one claim of the '464 patent covers data processing or other operations used in the practice, administration, or management of a financial service (e.g., tax filing and financial planning).
2. Technological Invention
To determine whether a patent is directed to a technological invention, and therefore ineligible for CBM patent review, the Board considers: (1) whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and (2) solves a technical problem using a technical solution.
Here, claim 1 recites the use of known prior art technology (a user station that includes a processor and a storage device, a communications network, and a user interface). Intellectual Ventures attempted to show that the claimed subject matter recites more than known technology in that it recites "a sequence of four detailed steps, implemented by a computer processor and using computer storage, unknown in the prior art." But the Board noted that even if this is true that the sequence of four steps was unknown in the prior art, claim 1 does not avoid classification as a CBM patent. The Board noted that the Federal Circuit in Versata clarified that whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art for purposes of CBM patent eligibility is not the same inquiry as determining if the claimed subject matter is anticipated or obvious under 35 U.S.C. § 102 or § 103.
Because the steps of claim 1 provide a very general description of how components carry out instructions there was no technological invention exception found. Thus, the '464 patent was considered a CBM patent.
Challenge under 35 U.S.C. § 101
Motorola challenged the claims as being directed to ineligible patent subject matter under 35 U.S.C. § 101. The Board followed the Supreme Court's Alice Corp. and Mayo framework to (i) first determine whether the claims at issue are directed to a patent-ineligible concept, and then (ii) consider whether the elements of each claim both individually and as an ordered combination transform the nature of the claim into a patent-eligible application.
1. Abstract Idea
Motorola contended that the '464 patent claims the abstract concept of selecting, transporting, storing, and displaying content, and these steps were well-known in the art, and are analogous to the processes of purchasing a book from a bookstore, purchasing a record by mail order, or renting a VHS tape from a video rental store. Motorola argued that the mere presence of a computer (user station) to carry out these steps is inconsequential. In fact, the '464 patent describes that electronic publications were commonly replicated in computer-readable form on magnetic or optical storage diskettes and distributed to retail stores or by direct mail sales. Thus, the concept of distributing electronic information products (content) was known prior to the '464 patent.
The Board noted that the '464 patent does not describe solving a problem necessarily rooted in computer technology, and that the claims are directed to the idea of distributing content, which was a longstanding commercial practice. Thus, the finding of the claims being directed to an abstract concept of distributing electronic content was easily found.
2. Inventive Concept
The Board also easily found that the challenged claims utilize conventional components to carry out conventional instructions, thus, lacking any inventive concept.
The claims provide a very general description of how the components carry out the instructions. For example, the instructions: are "executed by" the processor, "effect transport" of the selected content over a communications network, "effect storage", etc. The challenged claims do nothing more than automate the process of selecting content and presenting it in a format with some similarity to the original format.
The Board admitted that to some extent, the claims limit the abstract idea to a particular technological environment. But, this alone, is not sufficient to demonstrate an inventive concept. The claimed subject matter does not "improve the functioning of the computer itself," or "effect an improvement in any other technology or technical field," as there is no recitation in the claims of improved computer technology or advanced programming techniques.
The Board confirmed this determination by reference to the machine or transformation test. The steps of the challenged claims are well-known, conventional, and routine and do not transform a general purpose computer (user station comprised of a processor and storage device) into a specific machine. Rather, the claimed instructions are the normal basic functions of a computer.
Thus, the Board found that claims 1, 8, 16, and 17 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.
This decision follows a trend by the PTAB of instituting CBM review of challenged claims, despite no recitation of anything remotely financial in the claims, when the Specification describes that the invention has use in some financial sector. And, once the CBM is instituted, section 101 challenges are allowed and easily invalidate generic software claims.
Motorola Mobility, LLC, v. Intellectual Ventures I, LLC (PTAB 2016)
Before Jameson Lee, Phillip J. Kauffman, and Jo-Anne M. Kokoski, Administrative Patent Judges.
Final Written Decision by Phillip J. Kauffman