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Paper: 13
`Date: October 11, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC and APPLE INC.,
`Petitioners,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-000401
`(Patent 7,774,280 B2)
`____________
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Granting the Parties’ Joint Motion to Limit Petition
`37 C.F.R. § 42.71
`
`
`
`
`
`1 Case CBM2015-00160 has been joined with this proceeding.
`
`

`

`CBM2015-00040
`Patent 7,774,280 B2
`
`
`
`
`
`INTRODUCTION
`I.
`On October 9, 2018, the parties filed a Joint Motion to Limit Petition under
`
`35 U.S.C. § 42.71. Paper 42 (“Mot.”). The parties jointly request to limit the
`Petitions filed in Cases CBM2015-00040 and CBM2015-00160 only to claims 1, 5,
`and 11 of the U.S. Patent No. 7,774,280 B2 (Ex. 1001, “the ’280 patent”). Mot. 1.
`The parties jointly request that the panel remove the following claims and grounds
`of unpatentability (“grounds”) from the trial:
`Reference(s)
`
`Basis
`§ 101
`
`Challenged Claims
`1, 5, 11, 12, and 22
`
`§ 102(b)
`
`12 and 22
`
`
`
`Stefik2 (U.S. Patent No. 5,634,012, issued
`May 27, 1997 (Ex. 1002))
`
`Stefik and the knowledge of one of ordinary
`skill in the art
`
`§ 103(a)
`
`12 and 22
`
`
`
`Mot. 1. For the reasons discussed below, we grant the parties’ Joint Motion to
`Limit Petition.
`
`
`
`PROCEDRUAL HISTORY
`II.
`On June 21, 2016, we issued a Final Written Decision in accordance with 35
`U.S.C. § 328(a) and 37 C.F.R. § 42.73, in which we determined that the ’280
`patent is a covered business method patent eligible for review, we determined that
`claims 1, 5, and 11 of the ’280 patent are unpatentable under 35 U.S.C. §§ 102(b)
`and 103(a), and we granted Patent Owner’s Motion to Amend. Paper 34.
`Petitioners appealed our grant of Patent Owner’s Motion to Amend to the U.S.
`Court of Appeals for the Federal Circuit. Papers 35, 36. Patent Owner cross-
`
`2 For clarity and ease of reference, we only list the first named inventor.
`2
`
`
`

`

`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`
`appealed our determination that the ’280 patent is a covered business method
`patent eligible for review. Paper 37. On July 11, 2018, the Federal Circuit
`remanded this case for us to determine whether the ’280 patent qualifies as a
`covered business method patent eligible for review, without relying on the
`“incidental to” or “complementary to” standard. Paper 39. The Federal Circuit’s
`mandate issued on September 4, 2018. Paper 40. On October 1, 2018, we issued
`an Order that modifies our Decisions on Institution to include the previously non-
`instituted claims and grounds identified above, and authorizes the parties to file a
`Joint Motion to Limit the Petitions. Paper 41, 6.
`
`
`III. ANALYSIS
`In the Motion, the parties contend that we should limit the Petitions filed in
`Cases CBM2015-00040 and CBM2015-00160 for the following three reasons: (1)
`we previously authorized “the parties to file a Joint Motion to Limit the Petitions
`by removing the previously non-instituted claims and grounds from the trial”
`(Mot. 2 (quoting Paper 41, 6)); (2) the parties have reached an agreement to limit
`the Petitions (id.); and (3) because the panel already issued a Final Written
`Decision and the Federal Circuit appeal was limited to a subset of the challenged
`claims and grounds set forth in the Petitions, reducing the number of claims and
`grounds at issue promotes the efficient use of Board resources and saves the parties
`additional expenses (id. at 2–3).
`For all the reasons identified by the parties, we agree that limiting the
`Petitions would allow the focus of the trial going forward to remain on the explicit
`instructions provided in the Federal Circuit’s remand decision—namely, whether
`the ’280 patent qualifies as a covered business method patent eligible for review,
`without relying on the “incidental to” or “complementary to” standard. See Paper
`
`3
`
`
`

`

`CBM2015-00040
`Patent 7,774,280 B2
`
`
`39, 7 (“On remand, the Board must determine whether the ’280 patent qualifies as
`a [covered business method] patent in the first instance without relying on the
`‘incidental to’ or ‘complementary to’ standard.”). Limiting the trial in this way
`also facilitates our mandate “to secure the just, speedy, and inexpensive resolution
`of every proceeding.” 37 C.F.R. § 42.1(b).
`
`
`
`
`IV. ORDER
`It consideration of the foregoing, it is
`ORDERED that the parties Joint Motion to Limit Petition is granted; and
`FURTHER ORDERED that the following claims and grounds are removed
`from trial:
`A. Claims 1, 5, 11, 12, and 22 as being directed to patent-ineligible subject
`matter under 35 U.S.C. § 101;
`B. Claims 12 and 22 as being anticipated under 35 U.S.C. § 102(b) by
`Stefik; and
`C. Claims 12 and 22 as being unpatentable under 35 U.S.C. § 103(a) over
`the combination of Stefik and the knowledge of one of ordinary skill in
`the art; and
`FURTHER ORDERED that the focus of the trial going forward remains
`whether the ’280 patent qualifies as a covered business method patent eligible for
`review, without relying on the “incidental to” or “complementary to” standard.
`
`4
`
`
`

`

`
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`For PETITIONERS:
`
`Robert R. Laurenzi
`Kaye Scholer LLP
`robert.laurenzi@kayescholer.com
`
`Jeffrey P. Kushan
`Sidley Austin LLP
`jkushan@sidley.com
`
`
`For PATENT OWNER:
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
`
`
`5
`
`
`

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