Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: September 29, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00078
`Patent 6,218,930 B1
`____________
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and GLENN J. PERRY,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`Paper 9
`Entered: September 29, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION OF AMERICA,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00078
`Patent 6,218,930 B1
`____________
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and GLENN J. PERRY,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`CBM2015-00078
`Patent 6,218,930 B1
`
`
`Introduction
`
`Petitioner filed a Request for Rehearing (Paper 8, “Req. Reh’g”) of
`
`our Decision (Paper 7, “Dec.”) not to institute a covered business method
`
`patent review of claims 6 and 8–23 of U.S. Patent No. 6,218,930 B1
`
`(Ex. 1001, “the ’930 patent”). For the reasons stated below, Petitioner’s
`
`Request for Rehearing is denied.
`
`
`
`Analysis
`
`In determining whether to institute a covered business method patent
`
`review, the Board may “deny some or all grounds for unpatentability for
`
`some or all of the challenged claims.” 37 C.F.R. § 42.208(b). When
`
`rehearing a decision on petition, the Board will review the decision for an
`
`abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if
`
`a decision is based on an erroneous interpretation of law, if a factual finding
`
`is not supported by substantial evidence, or if the decision represents an
`
`unreasonable judgment in weighing relevant factors.” Arnold P’ship v.
`
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting
`
`rehearing bears the burden of showing an abuse of discretion, and “[t]he
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`
`Petitioner contends that we abused our discretion in three ways in
`
`concluding that the information presented in the Petition (Paper 2, “Pet.”)
`
`did not establish that the ’930 patent qualifies as a “covered business method
`
`patent” under § 18(d)(1) of the Leahy-Smith America Invents Act, Pub.
`
`L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Req. Reh’g 1. First,
`
`Petitioner argues that we took an unduly narrow view of the scope of
`
`
`
`2
`
`
`
`CBM2015-00078
`Patent 6,218,930 B1
`
`covered business method patent eligibility that is inconsistent with the
`
`decision of the U.S. Court of Appeals for the Federal Circuit in Versata
`
`Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). Req.
`
`Reh’g 2–7. According to Petitioner, we improperly required that a claim
`
`have “literal recitation of financial products or services” to be eligible. Id. at
`
`5–7. Petitioner also takes issue with the statements in the Decision that
`
`Petitioner did not point to—and we did not find—any language in claim 23
`
`or the Specification of the ’930 patent “relating to” any financial product or
`
`service. See Dec. 9; Req. Reh’g 4–5.
`
`Petitioner’s arguments mischaracterize the Decision and are not
`
`persuasive of an abuse of discretion. We did not deny the Petition because
`
`claim 23 (the only claim relied upon by Petitioner) does not recite literally a
`
`financial product or service, but rather because it does not recite a method
`
`for performing data processing or other operations “used in the practice,
`
`administration, or management of a financial product or service.” See Dec.
`
`8–13 (citing and applying AIA § 18(d)(1)). As explained in the Decision,
`
`claim 23 recites a method of remotely powering access equipment in an
`
`Ethernet data network by using a “low level current” and “preselected
`
`condition” of a resulting voltage level. Id. at 9–10. Nothing in claim 23 or
`
`the Specification relates to any financial product or service; the ’930 patent
`
`is directed solely to providing remote power to a physical device. Id. Thus,
`
`we concluded that claim 23 does not recite a method for performing data
`
`processing or other operations used in the practice, administration, or
`
`management of a financial product or service. Id. at 9–11 (citing analogous
`
`cases where patent claims had general utility and no particular connection to
`
`any financial product or service).
`
`
`
`3
`
`
`
`CBM2015-00078
`Patent 6,218,930 B1
`
`
`We also are not persuaded that the Decision is inconsistent with
`
`Versata. The Court in that case held the following:
`
`We agree with the USPTO that, as a matter of statutory
`construction, the definition of “covered business method
`patent” is not limited to products and services of only the
`financial industry, or to patents owned by or directly affecting
`the activities of financial institutions such as banks and
`brokerage houses. The plain text of the statutory definition
`contained in § 18(d)(1)—“performing . . . operations used in the
`practice, administration, or management of a financial product
`or service”—on its face covers a wide range of finance-related
`activities. The statutory definition makes no reference to
`financial institutions as such, and does not limit itself only to
`those institutions.
`
`Versata, 793 F.3d at 1325. In the Decision, we did not limit covered
`
`business method patent eligibility to products and services of the financial
`
`industry or to activities of financial institutions. See Dec. 8–13. Also, our
`
`determination, as part of the overall analysis, that claim 23 and the
`
`Specification include no language “relating to” any financial product or
`
`service, id. at 9–10, is consistent with the statement above from Versata that
`
`the statutory definition “covers a wide range of finance-related activities,”
`
`793 F.3d at 1325 (emphasis added).
`
`Second, Petitioner argues that we (1) “overlooked that claim 23 is a
`
`method claim, which supports that the ’930 patent is a [covered business
`
`method] patent, because the scope of claim 23 covers activities incidental
`
`and complementary to financial activities,” and (2) overlooked examples of
`
`products that allegedly practice the method, such as point-of-sale terminals,
`
`radio frequency identification readers, and trading turrets. Req. Reh’g
`
`7–12. We did not overlook the fact that claim 23 is a method claim, or the
`
`specific examples cited by Petitioner. We specifically noted, for example,
`
`
`
`4
`
`
`
`CBM2015-00078
`Patent 6,218,930 B1
`
`that claim 23 “recites a method of remotely powering access equipment in
`
`an Ethernet data network” comprising five steps. Dec. 4–5, 8–13. We also
`
`reviewed all of Petitioner’s contentions regarding the cited examples and
`
`found them unpersuasive, given the language of claim 23 and the focus of
`
`the covered business method patent inquiry on what a patent claims. Id. at
`
`10–12. Mere disagreement with a decision is not a proper basis for
`
`rehearing when a party’s arguments were considered and addressed in the
`
`decision.
`
`Third, Petitioner argues that we “overlooked the fact that Patent
`
`Owner has accused Petitioner’s products,” which are “used for transaction
`
`data analysis—an activity incidental or complementary to financial
`
`activities.” Req. Reh’g 12–14. Again, we reviewed all of Petitioner’s
`
`contentions regarding accused products in the Petition, and explained in the
`
`Decision why we found them unpersuasive. See Dec. 11–12. In particular,
`
`we noted that, contrary to Petitioner’s position, “the fact that [Power-over-
`
`Ethernet] equipped devices may have uses other than receiving remote
`
`power, such as uses pertaining to banking, does not mean that claim 23
`
`‘covers’ such activities.” Id.; see also Req. Reh’g 8 (acknowledging that the
`
`covered business method patent inquiry “should include what the claim
`
`scope actually covers”).
`
`Petitioner further disputes the statement in the Decision that Patent
`
`Owner accused only “Ethernet data nodes (such as switches and hubs) and
`
`Ethernet powered devices (such as IP telephones and wireless access
`
`points)” of infringing claims of the ’930 patent. See Req. Reh’g 12–13;
`
`Dec. 12–13 (citing Prelim. Resp. 39, Ex. 2009). According to Petitioner,
`
`Patent Owner also has accused Petitioner’s “surveillance systems.” Req.
`
`
`
`5
`
`
`
`CBM2015-00078
`Patent 6,218,930 B1
`
`Reh’g 12–13 (citing Pet. 15). We did not overlook this argument. See
`
`Dec. 10–11 (citing Pet. 14–17, pertaining to “video surveillance systems”).
`
`Moreover, we do not see why such systems, if accused of infringing claim
`
`23, would not be considered “Ethernet powered devices,” as stated in the
`
`Decision. See id. at 12–13.
`
`Petitioner has not carried its burden of demonstrating that we
`
`misapprehended or overlooked any matters argued in the Petition. As such,
`
`Petitioner has not shown an abuse of discretion in the Decision not to
`
`institute a covered business method patent review.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`6
`
`
`
`CBM2015-00078
`Patent 6,218,930 B1
`
`PETITIONER:
`
`Lionel M. Lavenue
`Theresa Weisenberger
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`theresa.weisenberger@finnegan.com
`
`
`
`PATENT OWNER:
`
`Charles F. Wieland III
`Robert G. Mukai
`BUCHANAN INGERSOLL & ROONEY PC
`Charles.Wieland@bipc.com
`robert.mukai@bipc.com
`
`7
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