Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: October 8, 2013
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00021
`Patent 5,966,440
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ARBES.
`
`Opinion Concurring filed by Administrative Patent Judge TIERNEY.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Review
`37 C.F.R. § 42.208
`
`
`571-272-7822
`
`
`
`
`Paper 13
`Entered: October 8, 2013
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00021
`Patent 5,966,440
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ARBES.
`
`Opinion Concurring filed by Administrative Patent Judge TIERNEY.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Review
`37 C.F.R. § 42.208
`
`
`
`Case CBM2013-00021
`Patent 5,966,440
`
`
`Petitioner Apple Inc. filed a Corrected Petition (Paper 6) (“Pet.”) to
`
`institute a covered business method review of claims 1, 64, and 95 of Patent
`
`5,966,440 (the “‟440 patent”) pursuant to 35 U.S.C. § 321 et seq. Patent
`
`Owner SightSound Technologies, LLC filed a preliminary response
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324. For the
`
`reasons that follow, the Board has determined not to institute a covered
`
`business method review.1
`
`
`
`I. BACKGROUND
`
`The standard for instituting a covered business method review is set
`
`forth in 35 U.S.C. § 324(a):
`
`THRESHOLD—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Petitioner challenges claims 1, 64, and 95 as unpatentable under
`
`35 U.S.C. § 101 and as unpatentable for obviousness-type double patenting.
`
`Pet. 37-79. We deny the Petition as discussed below.
`
`
`
`A. The ’440 Patent (Ex. 1201)
`
`The ‟440 patent, entitled “System and Method for Transmitting
`
`Desired Digital Video or Digital Audio Signals,” issued on October 12, 1999
`
`based on Application 08/471,964, filed June 6, 1995. The ‟440 patent is a
`
`continuation of Application 08/023,398, filed February 26, 1993 and
`
`
`1 In a decision entered concurrently, a covered business method review of
`the ‟440 patent is being instituted in Case CBM2013-00023.
`
`
`
`2
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`
`
`Case CBM2013-00021
`Patent 5,966,440
`
`abandoned subsequently, which is a continuation of Application 07/586,391,
`
`filed September 18, 1990 and issued as Patent 5,191,573 (the “‟573 patent”),
`
`which is a file wrapper continuation of Application 07/206,497, filed June
`
`13, 1988. Claims 1, 2, 4, and 5 of the ‟573 patent are the subject of Cases
`
`CBM2013-00019 (grounds based on 35 U.S.C. §§ 101 and 112) and
`
`CBM2013-00020 (grounds based on 35 U.S.C. §§ 102 and 103). The
`
`Specification of the ‟440 patent includes additional disclosure not part of the
`
`‟573 patent specification. See, e.g., Ex. 1201, col. 6, l. 20-col. 8, l. 42.
`
`The ‟440 patent was previously the subject of an ex parte
`
`reexamination (Control No. 90/007,407) requested by Napster, Inc. on
`
`January 31, 2005. Claim 1 of the ‟440 patent was amended during
`
`reexamination and determined to be patentable as amended. Ex. 1201 at
`
`13-35 (reexamination certificate issued July 27, 2010). Claims 64 and 95,
`
`which were added during the reexamination, also were determined to be
`
`patentable. Id. Claims 1, 64, and 95 of the ‟440 patent also are the subject
`
`of Case CBM2013-00023 (grounds based on 35 U.S.C. §§ 102 and 103).
`
`The ‟440 patent relates to a “system and associated method for the
`
`electronic sales and distribution of digital audio or video signals.” Ex. 1201,
`
`col. 1, ll. 16-21. The patent describes how three types of media used for
`
`storing music at the time of the invention—records, tapes, and compact
`
`discs—did not allow for music to be transferred easily and had various
`
`problems, such as low capacity and susceptibility to damage during
`
`handling. Id., col. 1, l. 24-col. 2, l. 21. The patent discloses storing “Digital
`
`Audio Music” (i.e., music encoded into binary code) on a computer hard
`
`disk and selling and distributing such music electronically. Id., col. 1, ll.
`
`58-61; col. 2, ll. 22-48.
`
`
`
`3
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`Case CBM2013-00021
`Patent 5,966,440
`
`
`Figure 1 of the ‟440 patent is reproduced below:
`
`
`
`As shown in Figure 1 above, an agent authorized to sell and distribute
`
`“Digital Audio Music” has a control unit 20 (control panel 20a, control
`
`integrated circuit 20b, and sales random access memory chip 20c) and hard
`
`disk 10, which stores the music to be distributed. Id., col. 3, l. 62-col. 4,
`
`l. 18. On the other side of the figure, a user has a control unit 50 (control
`
`panel 50a, control integrated circuit 50b, incoming random access memory
`
`chip 50c, and playback random access memory chip 50d), hard disk 60,
`
`video display unit 70, and speakers 80. Id., col. 4, ll. 18-28. The agent and
`
`user are connected via telephone lines 30. Id., col. 4, ll. 14-18. According
`
`to the ‟440 patent, control units 20 and 50 are “designed specifically to meet
`
`the teachings of this invention,” but all other components shown in Figure 1
`
`were “already commercially available.” Id., col. 4, ll. 34-40.
`
`The patent describes a process by which a user transfers money “via
`
`telecommunications lines” to purchase music from the agent and the music
`
`is transferred electronically “via telecommunications lines” to the user and
`
`stored on the user‟s hard disk. Id., col. 5, ll. 43-62. For example, a user may
`
`
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`4
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`Case CBM2013-00021
`Patent 5,966,440
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`provide a credit card number to charge a fee to the user‟s credit card
`
`account. Id., col. 7, ll. 34-56. Control integrated circuits 20b and 50b
`
`regulate the electronic transfer. Id., col. 4, ll. 45-63. The agent‟s sales
`
`random access memory chip 20c stores music temporarily so that it can be
`
`transferred to the user. Id. The user‟s incoming random access memory
`
`chip 50c stores music temporarily before storage in hard disk 60, and
`
`playback random access memory chip 50d stores music temporarily so that it
`
`can be played. Id. Once a song is stored in the user‟s hard disk 60, the user
`
`can select it among others in a visual display using control panel 50a and
`
`play it on speakers 80. Id., col. 5, ll. 1-18. In addition to “Digital Audio
`
`Music,” the patent contemplates “Digital Video” being sold and distributed
`
`electronically via the disclosed methods. Id., col. 6, ll. 16-19.
`
`
`
`B. Related Matters
`
`The ‟440 patent was asserted previously in two district court
`
`litigations: SightSound.com Inc. v. N2K, Inc. et al., W.D. Pa. Case No.
`
`2:98-cv-00118-DWA (filed January 16, 1998) (the “N2K litigation”), and
`
`SightSound Techs., LLC et al. v. Roxio, Inc. et al., W.D. Pa. No.
`
`2:04-cv-01549-DWA (filed October 8, 2004). Pet. 14-15. Both cases settled
`
`prior to trial. See Ex. 2201. The ‟440 patent is being asserted currently
`
`against Petitioner in SightSound Techs. LLC v. Apple Inc., W.D. Pa. Case
`
`No. 2:11-cv-01292-DWA (filed October 10, 2011) (the “Apple litigation”).
`
`Pet. 14-15. The Apple litigation has been stayed. Prelim. Resp. 8-9.
`
`
`
`
`
`5
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`Case CBM2013-00021
`Patent 5,966,440
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`
`C. Exemplary Claim
`
`Claim 1 of the ‟440 patent is exemplary of the claims at issue:
`
`1. A method for transferring desired digital video or
`digital audio signals comprising the steps of:
`
`forming a connection through telecommunications lines
`between a first memory of a first party and a second memory of
`a second party control unit of a second party, said first memory
`having said desired digital video or digital audio signals;
`
`selling electronically by the first party to the second party
`through telecommunications lines, the desired digital video or
`digital audio signals in the first memory, the second party is at a
`second party location and the step of selling electronically
`includes the step of charging a fee via telecommunications lines
`by the first party to the second party at a first party location
`remote from the second party location, the second party has an
`account and the step of charging a fee includes the step of
`charging the account of the second party; and
`
`transferring the desired digital video or digital audio
`signals from the first memory of the first party to the second
`memory of the second party control unit of the second party
`through telecommunications lines while the second party
`control unit with the second memory is in possession and
`control of the second party;
`
`storing the desired digital video or digital audio signals in
`a non-volatile storage portion the second memory; and
`
`playing through speakers of the second party control unit
`the digital video or digital audio signals stored in the second
`memory, said speakers of the second party control unit
`connected with the second memory of the second party control
`unit;
`
`wherein the non-volatile storage portion is not a tape or
`
`CD.
`
`
`
`
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`6
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`Case CBM2013-00021
`Patent 5,966,440
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`D. The Asserted Grounds
`
`Petitioner challenges claims 1, 64, and 95 of the ‟440 patent on the
`
`grounds that the claims do not recite patent-eligible subject matter under
`
`35 U.S.C. § 101 and that the claims are unpatentable for obviousness-type
`
`double patenting.
`
`
`
`E. Claim Interpretation
`
`Consistent with the statute and legislative history of the America
`
`Invents Act (AIA), the Board interprets claims of an unexpired patent using
`
`the “broadest reasonable construction in light of the specification of the
`
`patent in which [they] appear[].” 37 C.F.R. § 42.300(b); see also Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).
`
`There is a “heavy presumption” that a claim term carries its ordinary
`
`and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
`
`1359, 1366 (Fed. Cir. 2002). However, a “claim term will not receive its
`
`ordinary meaning if the patentee acted as his own lexicographer and clearly
`
`set forth a definition of the disputed claim term in either the specification or
`
`prosecution history.” Id. “Although an inventor is indeed free to define the
`
`specific terms used to describe his or her invention, this must be done with
`
`reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a
`
`particular embodiment appearing in the written description into the claim if
`
`the claim language is broader than the embodiment. See In re Van Geuns,
`
`988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
`
`the claims from the specification.”).
`
`
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`7
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`Case CBM2013-00021
`Patent 5,966,440
`
`
`We note that the district court interpreted various terms of the ‟440
`
`patent in both the N2K litigation and Apple litigation. See SightSound.com
`
`Inc. v. N2K, Inc., 185 F. Supp. 2d 445 (W.D. Pa. 2002) (report and
`
`recommendation in the N2K litigation); Exs. 1214-15 (Apple litigation).
`
`Petitioner‟s proposed interpretations are consistent with the district court‟s
`
`interpretations in the Apple litigation, and Patent Owner does not dispute
`
`Petitioner‟s proposed interpretations in its preliminary response. See Pet.
`
`31-37. We have reviewed the district court‟s claim interpretations and
`
`determine that the interpretations in the Apple litigation amount to the
`
`broadest reasonable interpretations of the terms based on the Specification of
`
`the ‟440 patent. Accordingly, for purposes of this decision, we adopt the
`
`following interpretations of terms in claims 1, 64, and 95 of the ‟440 patent:
`
`Claim Term
`
`Interpretation
`
`“first party”
`
`“second party”
`
`“second party control
`unit”
`
`a first entity, whether a corporation or a real
`person
`
`a second entity, whether a corporation or a
`real person
`
`a control unit of the second party
`
`“second party hard
`disk”
`
`a permanent, rigid, magnetic storage device
`of the second party
`
`“telecommunications
`line”
`
`an electronic medium for communicating
`between computers
`
`“electronically”
`
`through the flow of electrons
`
`“connecting
`electronically”
`
`“transferring
`electronically”
`
`connecting through devices or systems which
`depend on the flow of electrons
`
`transferring through devices or systems
`which depend on the flow of electrons
`
`
`
`8
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`Case CBM2013-00021
`Patent 5,966,440
`
`
`Claim Term
`
`Interpretation
`
`“charging a fee”
`
`requesting payment electronically
`
`“selling electronically” providing a product or service electronically
`in exchange for providing payment
`electronically (i.e., through devices or
`systems which depend on the flow of
`electrons)
`
`“digital audio signal”
`
`digital representation of sound waves
`
`All other terms in claims 1, 64, and 95 are given their ordinary and
`
`customary meaning and need not be further construed at this time.
`
`
`
`II. ANALYSIS
`
`We turn now to Petitioner‟s asserted grounds of unpatentability and
`
`Patent Owner‟s arguments in its preliminary response to determine whether
`
`Petitioner has met the threshold standard of 35 U.S.C. § 324(a).
`
`
`
`A. Standing
`
`The parties disagree as to whether Petitioner has standing to file a
`
`petition for a covered business method review of the ‟440 patent. See Pet.
`
`8-14; Prelim. Resp. 28-45.
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`reviews to persons or their privies that have been sued or charged with
`
`infringement of a “covered business method patent,” which does not include
`
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`
`37 C.F.R. § 42.302. It is undisputed that Petitioner has been sued for
`
`infringement of the ‟440 patent. The Apple litigation was filed in the U.S.
`
`
`
`9
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`Case CBM2013-00021
`Patent 5,966,440
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`District Court for the Western District of Pennsylvania on October 10, 2011,
`
`and is pending. See Pet. 14-15; Prelim. Resp. 8-9. The only dispute is
`
`whether the ‟440 patent is a “covered business method patent” as defined in
`
`the AIA. See Pet. 8-14; Prelim. Resp. 28-45. For the reasons explained
`
`below, we conclude that the ‟440 patent is a “covered business method
`
`patent” and Petitioner has standing to file a petition for a covered business
`
`method review of the ‟440 patent.
`
`
`
`1. Financial Product or Service
`
`A “covered business method patent” is 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). For
`
`purposes of determining whether a patent is eligible for a covered business
`
`method patent review, the focus is on the claims. See Transitional Program
`
`for Covered Business Method Patents—Definitions of Covered Business
`
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`
`48734, 48736 (Aug. 14, 2012) (“CBM Rules”). A patent need have only one
`
`claim directed to a covered business method to be eligible for review. Id.
`
`In promulgating rules for covered business method reviews, the Office
`
`considered the legislative intent and history behind the AIA‟s definition of
`
`“covered business method patent.” Id. at 48735-36. 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. (citing
`
`
`
`10
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`Case CBM2013-00021
`Patent 5,966,440
`
`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`
`Schumer)). The legislative history indicates that “financial product or
`
`service” should be interpreted broadly. Id.
`
`Claim 1 of the ‟440 patent is directed to activities that are financial in
`
`nature, namely the electronic sale of digital audio or video. Claim 1 recites
`
`(emphasis added):
`
`selling electronically by the first party to the second party
`through telecommunications lines, the desired digital video or
`digital audio signals in the first memory, the second party is at a
`second party location and the step of selling electronically
`includes the step of charging a fee via telecommunications lines
`by the first party to the second party at a first party location
`remote from the second party location, the second party has an
`account and the step of charging a fee includes the step of
`charging the account of the second party.
`
`The electronic sale of something, including charging a fee to a party‟s
`
`account, is a financial activity, and allowing such a sale amounts to
`
`providing a financial service. Indeed, Patent Owner acknowledges that a
`
`fundamental step of claim 1 of the ‟440 patent is “selling” a desired digital
`
`audio or video signal to a user. See Prelim. Resp. 10. The Specification of
`
`the ‟440 patent also confirms the claimed method‟s connection to financial
`
`activities. The Specification states that the invention is a method for the
`
`electronic “sale[]” of digital audio and video signals where a user may
`
`“purchase” and receive the signals. See, e.g., Ex. 1201, col. 1, ll. 16-21; col.
`
`2, ll. 22-25; col. 2, l. 62-col. 3, l. 2. The Specification further describes how
`
`a fee is charged, including, for example, charging an account using a party‟s
`
`credit card number. See, e.g., id., col. 6, ll. 20-48; col. 7, ll. 34-56; see also
`
`claim 4 (“providing a credit card number of the second party . . . so the
`
`second party is charged money”). We are persuaded that claim 1 recites a
`
`
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`11
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`Patent 5,966,440
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`method for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service, as
`
`required by Section 18(d)(1) of the AIA.
`
`In its preliminary response, Patent Owner makes a number of
`
`arguments that the ‟440 patent does not qualify as a “covered business
`
`method patent.” Patent Owner contends that Congress intended covered
`
`business method reviews to apply only to a “narrow class of patents,”
`
`relying on various statements in the legislative history of the AIA. Prelim.
`
`Resp. 31-36. In particular, Patent Owner asserts that only patents with a
`
`“clear nexus to the financial business” are eligible for a covered business
`
`method review. Id. at 28-30, 33, 36. As such, “a petitioner must show more
`
`than just the existence of a payment step or a monetary element in a patent
`
`claim to establish the necessary nexus between the patent and a financial
`
`product or service.” Id. at 33.
`
`It is the statutory language, however, that controls whether a patent is
`
`eligible for a covered business method review. The AIA does not require a
`
`“nexus” to a “financial business,” but rather 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.”
`
`AIA § 18(d)(1). Further, contrary to Patent Owner‟s view of the legislative
`
`history, the legislative history indicates that the phrase “financial product or
`
`service” is not limited to the products or services of the “financial services
`
`industry” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
`
`48735-36. Senator Schumer, for example, stated:
`
`Nothing in the America Invents Act limits use of section
`18 to banks, insurance companies or other members of the
`financial services industry. Section 18 does not restrict itself to
`
`
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`12
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`Case CBM2013-00021
`Patent 5,966,440
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`
`being used by petitioners whose primary business is financial
`products or services. Rather, it applies to patents that can apply
`to financial products or services. Accordingly, the fact that a
`patent is being used by a company that is not a financial
`services company does not disqualify the patent from section 18
`review. . . .
`
`The plain meaning of “financial product or service”
`demonstrates that section 18 is not limited to the financial
`services industry. At its most basic, a financial product is an
`agreement between two parties stipulating movements of money
`or other consideration now or in the future. . . .
`
`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)
`
`(emphasis added). Although claim 1 of the ‟440 patent does not relate to a
`
`financial services business, it does recite the electronic movement of money
`
`between entities, which is an activity that is financial in nature.
`
`Patent Owner further argues that SightSound Technologies, LLC was
`
`formed as a media company, not a financial services company, and the
`
`entities sued by Patent Owner for infringement of the ‟440 patent (including
`
`Petitioner) sell digital content, not financial products. Prelim. Resp. 36-37.
`
`Again, however, as the legislative history cited above demonstrates, a patent
`
`need not be used by a financial services company or involve a traditional
`
`financial services business to qualify as a covered business method patent.
`
`The cited entities may not provide typical financial services, but, according
`
`to Petitioner, they do sell digital content, which is the financial activity
`
`recited in claim 1.
`
`Finally, Patent Owner argues that a determination that the ‟440 patent
`
`is a covered business method patent would be a “radical expansion of the
`
`scope of patents subject to CBM review” where “[v]irtually any patent that
`
`mentions a sale would be subject to CBM review, even when the patent
`
`
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`13
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`Patent 5,966,440
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`itself has nothing to do with finance.” Id. at 37-38. Patent Owner‟s
`
`argument is not persuasive. The Board reviews petitions on their own facts
`
`to determine whether the challenged patent is a “covered business method
`
`patent” under the AIA definition. Petitioner‟s argument that every patent
`
`mentioning a sale would be subject to covered business method review
`
`ignores the specific language of claim 1 (“selling electronically” from one
`
`party to another, including “charging a fee” and “charging [an] account”)
`
`and the claim‟s expressly stated connection to financial activity.2 Further,
`
`we do not agree with Patent Owner that the ‟440 patent has nothing to do
`
`with finance. The Specification of the ‟440 patent states repeatedly that the
`
`disclosed method involves the electronic “sale” of digital audio and video
`
`and the electronic “transfer” of “money.” See, e.g., Ex. 1201, col. 1, ll.
`
`16-21; col. 2, ll. 22-25; col. 2, l. 62-col. 3, l. 2; col. 6, ll. 20-48; col. 7, ll.
`
`34-56. For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that claim 1 of the ‟440 patent meets the “financial
`
`product or service” component of the definition in Section 18(d)(1) of the
`
`AIA.
`
`
`
`2. Technological Invention
`
`The definition of “covered business method patent” in Section
`
`18(d)(1) of the AIA does not include patents for “technological inventions.”
`
`To determine whether a patent is for a technological invention, we consider
`
`“whether the claimed subject matter as a whole recites a technological
`
`
`2 Petitioner‟s argument also ignores the fact that a patent mentioning a sale,
`but directed to a “technological invention[],” would not be a covered
`business method patent. See AIA § 18(d)(1); infra Section II.A.2.
`
`
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`14
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`feature that is novel and unobvious over the prior art; and solves a technical
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). The following
`
`claim drafting techniques, for example, typically do not render a patent a
`
`“technological invention”:
`
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763-64 (Aug. 14,
`
`2012).
`
`We are persuaded that claim 1 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. See Pet.
`
`8-14. The method of claim 1 utilizes various technical components: a “first
`
`memory,” “second memory,” “telecommunications lines,” and “speakers.”
`
`All of these components, however, were generic hardware devices known in
`
`the prior art. The Specification of the ‟440 patent discloses, for instance,
`
`that “agent‟s Hard Disk 10,” “user‟s Hard Disk 60,” “Telephone Lines 30,”
`
`and “Stereo Speakers 80” were “already commercially available.” See Ex.
`
`1201, col. 4, ll. 34-38; Pet. 11-13. Claim 1 is merely the recitation of known
`
`technologies to perform a method, which indicates that it is not a patent for a
`
`technological invention. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. at 48764 (examples a and b).
`
`
`
`15
`
`
`
`Case CBM2013-00021
`Patent 5,966,440
`
`
`Patent Owner does not dispute that the individual technical
`
`components of claim 1 were known in the art, but argues that Petitioner fails
`
`to address whether the particular combination of steps in claim 1 was novel
`
`and non-obvious. Prelim. Resp. 39-43. Petitioner, however, discusses
`
`claim 1 as a whole in its Petition and explains sufficiently why the
`
`combination of steps does not recite a technological feature that is novel and
`
`non-obvious over the prior art. See, e.g., Pet. 8-14 (addressing Patent
`
`Owner‟s admissions regarding the claim).
`
`Patent Owner also argues that claim 1 of the ‟440 patent is not merely
`
`an abstract idea and is not a business process capable of being performed
`
`using a pen and paper. Prelim. Resp. 41-43. According to Patent Owner,
`
`the hardware components recited in the claim are necessary to perform the
`
`claimed method. Id. Patent Owner‟s argument appears to relate to whether
`
`claim 1 recites patent-eligible subject matter under 35 U.S.C. § 101 rather
`
`than whether the patent is for a “technological invention” under the AIA.
`
`The tests are not the same. As explained above, none of the technical
`
`components of claim 1 were novel or non-obvious at the time of the ‟440
`
`patent, and we are not persuaded that the particular combination of
`
`components in the claim amounts to a technological feature that is novel and
`
`unobvious over the prior art. Further, while we agree with Patent Owner
`
`that the steps in claim 1 must be implemented using the recited hardware
`
`(i.e., a “first memory,” “second memory,” “telecommunications lines,” and
`
`“speakers”), that does not mean necessarily that the patent is for a
`
`technological invention because the components themselves were known in
`
`the art.
`
`
`
`16
`
`
`
`Case CBM2013-00021
`Patent 5,966,440
`
`
`We also have considered whether the method of claim 1 solves a
`
`technical problem using a technical solution, but, because we conclude that
`
`claim 1 does not recite a technological feature that is novel and unobvious
`
`over the prior art, the ‟440 patent is a “covered business method patent” and
`
`is eligible for a covered business method patent review.
`
`
`
`B. Asserted Ground Based on 35 U.S.C. § 101
`
`Petitioner challenges claims 1, 64, and 95 of the ‟440 patent as
`
`claiming patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 37-52.
`
`Petitioner relies on the declaration of Dr. John P. J. Kelly (Exhibit 1244) in
`
`support of its position. Id. Patent Owner, in its preliminary response, does
`
`not argue the merits of Petitioner‟s asserted ground of unpatentability based
`
`on Section 101. In connection with its standing argument, however, Patent
`
`Owner asserts that the challenged claims are not directed to an “abstract
`
`idea” and instead claim a specific combination of “critical hardware
`
`components.” Prelim. Resp. 41-43. Upon review of Petitioner‟s analysis
`
`and supporting evidence, we determine that Petitioner has not established
`
`that claims 1, 64, and 95 are more likely than not unpatentable under Section
`
`101 for the reasons explained below.
`
`The Supreme Court has made it clear that the test for patent eligibility
`
`under Section 101 is not amenable to bright-line categorical rules. Bilski v.
`
`Kappos, 130 S. Ct. 3218, 3229-30 (2010). Further, the Federal Circuit has
`
`recognized that it has been especially difficult to apply Section 101 properly
`
`in the context of computer-implemented inventions. CLS Bank Int’l v. Alice
`
`Corp. Pty. Ltd., 717 F.3d 1269, 1277 (Fed. Cir. 2013).
`
`
`
`17
`
`
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`Case CBM2013-00021
`Patent 5,966,440
`
`
`Our analysis begins with the statute. Section 101 provides that
`
`“[w]hoever 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.” “„In choosing such expansive terms . . . modified
`
`by the comprehensive „any,‟ Congress plainly contemplated that the patent
`
`laws would be given wide scope.‟” Bilski, 130 S. Ct. at 3225 (quoting
`
`Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). There are, however,
`
`three limited, judicially created exceptions to the broad categories of
`
`patent-eligible subject matter in Section 101: laws of nature, natural
`
`phenomena, and abstract ideas. Mayo Collaborative Services v. Prometheus
`
`Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
`
`While an abstract idea by itself is not patentable, a practical
`
`application of an abstract idea may be deserving of patent protection. Id. at
`
`1293-94; Bilski, 130 S. Ct. at 3230; Diamond v. Diehr, 450 U.S. 175, 187
`
`(1981). To be patent-eligible, a claim cannot simply state the abstract idea
`
`and add the words “apply it.” See Mayo, 132 S. Ct. at 1294. The claim must
`
`incorporate enough meaningful limitations to ensure that it claims more than
`
`just an abstract idea and is not merely a “drafting effort designed to
`
`monopolize the [abstract idea] itself.” See id. at 1297. Limiting the claim to
`
`a particular technological environment or field of use, or adding insignificant
`
`pre- or post-solution activity, do not constitute meaningful limitations. See
`
`Bilski, 130 S. Ct. at 3230; Diehr, 450 U.S. at 191-92; Parker v. Flook, 437
`
`U.S. 584, 595 n.18 (1978).
`
`It is undisputed that the challenged claims of the ‟440 patent each
`
`recite a “method,” or process, that is by definition statutory subject matter
`
`
`
`18
`
`
`
`Case CBM2013-00021
`Patent 5,966,440
`
`under Section 101. The question is whether the claims recite just an abstract
`
`idea and, therefore, fall under the abstract idea exception. Petitioner has not
`
`persuaded us that it is more likely than not that they do.
`
`We address primarily independent claim 1 of the ‟440 patent, as
`
`Petitioner‟s arguments are directed to that claim. See Pet. 37-39. Petitioner
`
`contends that claim 1 recites the abstract idea of “selling digital music
`
`electronically in a series of rudimentary steps between a buyer and seller”
`
`and preempts the entire field of “selling downloadable digital music.” Id. at
`
`37-44; Ex. 1244 ¶¶ 78-97.
`
`We do not view claim 1 as reciting merely a seller selling digital
`
`music electronically to a buyer. The claim recites a specific combination of
`
`computer components, at specific locations, that interact in a specific way to
`
`accomplish the steps of the method. A connection is formed “through
`
`telecommunications lines” between a “first memory” of a first party and a
`
`“second memory” of a “second party control unit” of a second party, at a
`
`different location, that controls the unit. Desired digital video or audio
`
`signals are stored in the first memory. The desired signals are sold
`
`electronically “through telecommunications lines” from the first party to the
`
`second party, which includes charging a fee to the second party “via
`
`telecommunications lines.” The desired signals are transferred from the first
`
`memory to the second memory “through telecommunications lines
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