UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMERICAN FAMILY MUTUAL INSURANCE COMPANY;
`DILLARD’S, INC.;
`DOLLAR GENERAL CORPORATION;
`FAMILY DOLLAR STORES, INC.;
`HALLMARK.COM, LLC; and
`DOLLAR THRIFTY AUTOMOTIVE GROUP, INC.,
` DOLLAR RENT-A-CAR, INC., and
`THRIFTY, INC.
`Petitioners
`
`v.
`
`
`
`EMG TECHNOLOGY, LLC
`Patent Owner
`
`_______________
`U.S. Patent No. 7,194,698
`
`Issue Date: March 20, 2007
`
`Title: METHOD TO ADVERTISE AND SEARCH ON TELEVISION FOR
`WEB CONTENT USING A SIMPLIFIED INTERFACE
`
`
`
`
`
`Covered Business Method Patent Review No. CBM2016-00001
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW UNDER 35
`U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction. ..................................................................................................... 1
`
`Formalities ....................................................................................................... 1
`A.
`Real Party in Interest ............................................................................. 1
`B.
`Related Matters and Eligibility Based on Infringement Suit ................ 1
`C.
`Eligibility Based on Lack of Estoppel and Timing of Filing ................ 2
`D.
`The ’698 Patent Is a Covered Business Method Patent ........................ 2
`E.
`Fee ......................................................................................................... 2
`F.
`Designation of Lead and Back-Up Counsel (37 C.F.R. §
`42.8(b)(3)) ............................................................................................. 2
`Power of Attorney ................................................................................. 2
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 2
`
`G.
`H.
`
`III. The ’698 Patent Is a Covered Business Method Patent ................................... 3
`A.
`The ’698 Patent Claims Methods Used in the Practice,
`Administration, or Management of Financial Products or
`Services.................................................................................................. 3
`B. At Least One Claim of the ’698 Patent Is Not Directed to a
`“Technological Invention” .................................................................... 5
`
`IV. Requirements for CBM Review Under 37 C.F.R. § 42.304 ........................... 9
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a) ............................. 9
`B.
`Identification of Challenge under 37 C.F.R. § 42.304(b) ..................... 9
`C.
`Prior Art References that Establish a Reasonable Likelihood
`that the Petitioners Will Prevail on the Challenge Against
`Patentability of at Least One Claim of the ’698 Patent ....................... 13
`D. Grounds Establishing a Reasonable Likelihood that Petitioners
`Will Prevail on the Challenge Against Patentability of at Least
`One Claim ............................................................................................ 14
`
`V.
`
`Conclusion ..................................................................................................... 80
`
`
`
`
`
`i
`
`

`
`Description
`Exhibit No.
`Exhibit 1001 U.S. Patent No. 7,194,698 (“the ’698 Patent”)
`Exhibit 1002
`File History of U.S. Patent No. 7,194,698
`EMG Technology, LLC v. American Family Mutual Insurance
`Exhibit 1003
`Company, No. 6:15-cv-498, Dkt. No. 1 (E.D. Tex. May 27,
`2015); EMG Technology, LLC v. Dillard’s, Inc., No. 6:15-cv-
`499, Dkt. No. 1 (E.D. Tex. May 27, 2015); EMG Technology,
`LLC v. Dollar General Corporation, No. 6:15-cv-500, Dkt. No.
`1 (E.D. Tex. May 27, 2015); EMG Technology, LLC v. Dollar
`Thrifty Automotive Group, Inc., et al., No. 6:15-cv-501, Dkt. No.
`1 (E.D. Tex. May 27, 2015); EMG Technology, LLC v. Family
`Dollar Stores, Inc., No. 6:15-cv-502, Dkt. No. 1 (E.D. Tex. May
`27, 2015); and EMG Technology, LLC v. Hallmark.com LLC,
`No. 6:15-cv-504, Dkt. No. 1 (E.D. Tex. May 27, 2015)
`Declaration of Mr. Ed Tittel
`Exhibit 1004
`Exhibit 1005 Curriculum Vitae of Mr. Ed Tittel
`Exhibit 1006
`Reformulating HTML
`in XML, W3C Working Draft
`(“Reformulating HTML”)
`HTML 4.0 Specification (“HTML 4.0”)
`Exhibit 1007
`Exhibit 1008 U.S. Patent No. 5,602,596 issued to Claussen et al. (“Claussen”)
`Exhibit 1009 Webster’s II New Riverside Dictionary, Revised Edition, 1996;
`cover page, copyright page and page 12.
`RESERVED
`“History of the Web” (World Wide Web Foundation, n.d.).
`http://www.webfoundation.org/vision/history-of-the-web/
`(accessed 1/25/2015).
`
`Exhibit 1010
`Exhibit 1011
`
`ii
`
`

`
`Exhibit 1012
`
`Exhibit 1013
`
`Exhibit 1014
`
`Exhibit 1015
`
`Exhibit 1016
`
`Exhibit 1017
`Exhibit 1018
`
`Exhibit 1019
`
`“The Early World Wide Web at SLAC: Documentation of the
`Early Web at SLAC (1991-1994)” (SLAC Archives & History
`Office, 11/11/2014).
`http://www.slac.stanford.edu/history/earlyweb/history.shtml
`(accessed 1/25/2015).
`Berners-Lee, T., et al. “Hypertext Transfer Protocol --
`HTTP/1.0” memo, Request for Comments 1945 (Network
`Working Group, May 1986).
`https://www.ietf.org/rfc/rfc1945.txt (accessed 1/25/2015).
`HTML 2.0 Specification: http://www.w3.org/MarkUp/html-
`spec/; RFC 1866: https://tools.ietf.org/html/rfc1866.
`“ASF History Project – Timeline” (The Apache Software
`Foundation, n.d.). Quotes Mr. McCool on this project.
`http://www.apache.org/history/timeline.html (accessed
`1/25/2015).
`“Wireless Application Protocol – Wireless Markup Language
`Specification,” version 30-Apr-1998 (Wireless Application
`Protocol Forum, Ltd, 4/30/1998).
`www.wapforum.org/what/technical/wml-30-apr-98.pdf
`(accessed 1/25/2015).
`RESERVED
`Cailliau, Robert. “A Little History of the World Wide Web, 3
`(W3C, 1995). http://www.w3.org/History.html (accessed
`1/25/2015).
`XSL Tranformations (XSLT) Specification, Version 1.0, 21
`April 1999, http://www.w3.org/TR/1999/WD-xslt-19990421,
`accessed 2/3/2015.
`
`iii
`
`

`
`Exhibit 1020 W3C “Compact HTML for Small Information Appliances”
`W3C Note, 09-Feb-1998, http://www.w3.org/TR/1998/NOTE-
`compactHTML-19980209/, accessed 2/3/2015.
`RESERVED
`Exhibit 1021
`Exhibit 1022 WAP WAE Specification, Version 24-May-1999, “Wireless
`Application Protocol: Wireless Application Environment
`Specification Version 1.1”
`http://www.wapforum.org/what/technical/SPEC-WAESpec-
`19990524.pdf, (5.1.8), accessed 2/3/2015.
`RESERVED
`Aljean Harmetz, Choose Your Own Adventure and Make Your
`Own Ending, THE NEW YORK TIMES, Aug. 25, 1981
`U.S. Patent No. 5,825,856
`George Beekman, Reviews: The Oregon Trail/Wagon Train
`1848, MACWORLD, Oct. 1991
`
`Exhibit 1025
`Exhibit 1026
`
`Exhibit 1023
`Exhibit 1024
`
`
`
`iv
`
`

`
`I.
`
`Introduction.
`
`Petitioners American Family Mutual Insurance Company, Dillard’s, Inc.,
`
`Dollar General Corporation, Family Dollar Stores, Inc., Hallmark.com, LLC, Dollar
`
`Thrifty Automotive Group, Inc., Dollar Rent A Car, Inc., and Thrifty, Inc.
`
`(collectively, “Petitioners”) seek Covered Business Method Review and cancellation
`
`of Claims 1-45 of U.S. Patent No. 7,194,698 to Gottfurcht et al. (“the ’698 Patent,”
`
`Ex. 1001), owned by EMG Technology, LLC (“EMG”).
`
`II.
`
`Formalities
`A. Real Party in Interest
`Petitioners are the real parties-in-interest, in addition to Hallmark Cards,
`
`Incorporated, The Hertz Corporation, and Family Dollar, Inc.
`
`B. Related Matters and Eligibility Based on Infringement Suit
`The ’698 Patent is asserted against Petitioners in EMG Technology, LLC v.
`
`American Family Mutual Insurance Company, No. 6:15-cv-498 (E.D. Tex.); EMG
`
`Technology, LLC v. Dillard’s, Inc., No. 6:15-cv-499 (E.D. Tex.); EMG Technology,
`
`LLC v. Dollar General Corporation, No. 6:15-cv-500 (E.D. Tex.); EMG
`
`Technology, LLC v. Dollar Thrifty Automotive Group, Inc., et al., No. 6:15-cv-501
`
`(E.D. Tex.); EMG Technology, LLC v. Family Dollar Stores, Inc., No. 6:15-cv-502
`
`(E.D. Tex.); and EMG Technology, LLC v. Hallmark.com, LLC, No. 6:15-cv-504
`
`(E.D. Tex.). (See Ex. 1003.)
`
`1
`
`

`
`C. Eligibility Based on Lack of Estoppel and Timing of Filing
`Petitioners certify that estoppel does not prohibit review on the grounds
`
`identified in this Petition, which is not filed in a period for which a petition for post-
`
`grant review of the ’698 Patent would satisfy the requirement of 35 U.S.C. § 321(c).
`
`D. The ’698 Patent Is a Covered Business Method Patent
`The ’698 Patent is a covered business method patent, as explained in § III.
`
`Fee
`
`E.
`Petitioner authorizes the PTO to charge Deposit Account No. 06-1050 for the
`
`fee set forth in 37 C.F.R. § 42.15(b) for this Petition and any additional fees.
`
`F. Designation of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`LEAD COUNSEL
`P. Weston Musselman, Jr. (Reg. No.
`31,644)
`(CBM00012-0036CP1@fr.com)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-292-4030; F: 214-747-2091
`
`BACK-UP COUNSEL
`Ricardo J. Bonilla (Reg. No. 65,190)
`(PTABInbound@fr.com)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-292-4012; F: 214-747-2091
`
`
`Power of Attorney
`
`G.
`A power of attorney is being filed with the designation of counsel in
`
`
`
`accordance with 37 C.F.R. § 42.10(b).
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`H.
`Please address all correspondence to the lead counsel at the address provided
`
`in Section II(F) of this Petition. Petitioners also consent to electronic service by
`
`2
`
`

`
`email at: CBM00012-0036CP1@fr.com and PTABInbound@fr.com.
`
`III. The ’698 Patent Is a Covered Business Method Patent
`A “covered business method (‘CBM’) 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). To institute a CBM post-grant review, the patent at issue need only have
`
`one claim directed to a CBM that is not a technological invention. See 77 Fed. Reg.
`
`157, p. 48736-37. At least one claim of the ’698 Patent is directed to a CBM that is
`
`not a technological invention and, thus, the ’698 Patent is eligible for CBM review.
`
`A. The ’698 Patent Claims Methods Used
`in the Practice,
`Administration, or Management of Financial Products or Services
`
`The ’698 Patent squarely meets the AIA definition of a CBM patent: “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 . . . .” AIA § 18(d)(1); see also 37 C.F.R. § 42.301.
`
`The Office noted that the AIA’s legislative history demonstrates that
`
`“financial product or service” should be “interpreted broadly,” encompassing patents
`
`“claiming activities that are financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.” 77 Fed. Reg. 157, 48734-35 (Aug. 14, 2012).
`
`This includes “any ancillary activities related to a financial product or service,
`
`3
`
`

`
`including . . . marketing, customer interfaces, [and] Web site management and
`
`functionality . . . .” 157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Schumer).
`
`The ’698 Patent is directed to displaying marketing content to make it easier
`
`for customers to purchase products or services online See § III. Indeed, various
`
`embodiments describe exploring a website and allowing a user to select
`
`advertisements and purchase advertised products. Ex. 1001, 7:50-8:49. The same
`
`methods are equally applicable to the marketing of financial goods and services.
`
`The intrinsic evidence further establishes the purported invention as a finance-
`
`related business method. The patentee specified that the “field of the invention” is
`
`“electronic commerce services.” Id., 1:18-19. Further, the patentee’s stated goal was
`
`to “provid[e] easy navigation to facilitate access to [electronic commerce]
`
`services.” Id., 1:12-15 (emphasis added). In short, the ’698 Patent is directed to using
`
`a simplified navigation interface to access goods and services through marketing.
`
`Thus, the patent’s technology is at least incidental or complementary to a financial
`
`product or service, as required by the AIA.
`
`The claims themselves support this conclusion. Independent Claims 1, 23, and
`
`45 are respectively directed to a method, a machine readable medium, and a system
`
`for displaying advertisements Ex. 1001, Claims 1, 23, 45. Because the methods are
`
`designed to “supply[] product options [so as to] encourage users to be more willing
`
`4
`
`

`
`to conduct e-commerce” and involve marketing and purchasing, the ’698 Patent is
`
`related to the practice, administration, or management of a financial product or
`
`service. Id., 8:18-20.
`
`The patent owner’s actions also support this conclusion. EMG has filed
`
`infringement lawsuits against numerous financial services companies, including
`
`Petitioner American Family Mutual Insurance Company, which provides financial
`
`services for its customers. On the day that § 18 was added to the AIA, Sen. Schumer
`
`confirmed that “if a patent holder alleges that a financial product or service infringes
`
`its patent, the patent shall be deemed to cover a ‘financial product or service’ for
`
`purposes of this amendment regardless of whether the asserted claims specifically
`
`reference the type of product of [sic] service accused of infringing.” 157 Cong. Rec.
`
`S1365 (daily ed. Mar. 8, 2011). EMG thus concedes that the patented technology is
`
`being used by financial services companies as part of their core business.
`
`B. At Least One Claim of the ’698 Patent Is Not Directed to a
`“Technological Invention”
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of covered business method patents. AIA § 18(d)(2). The ’698 Patent does not claim
`
`a technological invention under the AIA because its chief elements are displaying
`
`content through a simplified navigation interface. Whether a patent claim is for a
`
`technological invention depends on “whether the claimed subject matter as a whole
`
`recites a technological feature that is novel and unobvious over the prior art; and
`
`5
`
`

`
`solves a technical problem using a technical solution.” 37 C.F.R. § 42.301(b). A
`
`technological invention must meet both tests to avoid classification as a CBM
`
`patent.77 Fed. Reg. 157 at 48736-37.
`
`As noted above, to qualify as a technological invention (and, therefore, escape
`
`transitional post-grant review) the claimed subject matter of a patent must have: (1)
`
`a technological feature that is novel and unobvious; and (2) must solve a technical
`
`problem using a technical solution. To qualify for the institution of post-grant
`
`review, a patent need only have one claim directed to a CBM even if the patent
`
`includes additional claims directed to technological inventions. Id. at 48736. To
`
`assist in the determination of whether a patent is for a technological invention, the
`
`Office Trial Practice Guide provides that the following would not typically 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 ATM or
`point of sale device.
`(b) Reciting the use of known prior art technology to accomplish a
`process or method, even if the process or method is novel and
`non-obvious.
`(c) Combining prior art structures to achieve the normal, expected,
`or predictable result of that combination.
`77 Fed. Reg. 157, pp. 48763-64.
`
`6
`
`

`
`Under this framework, the ’698 Patent’s claims do not meet the requirements
`
`of a “technological invention.” Turning to the first prong, the claims do not recite a
`
`technological feature that is novel and unobvious. The prosecution history is
`
`illustrative. Initially, the Examiner finally rejected the claims as unpatentable over
`
`the prior art. The patentee appealed the Examiner’s decision, arguing that the prior
`
`art did not teach the limitation of “formatting content accessed via the Internet.” Ex.
`
`1002 at 34. When the BPAI reversed the Examiner’s final rejection, the Examiner
`
`issued a notice of allowance, explicitly stating that the reason for the allowance was
`
`the inclusion of the limitation for formatting Internet content. Ex. 1002 at 17.
`
`Accordingly, the only “feature” arguably distinguishable over the prior art is
`
`the “content accessed via the internet is formatted for navigation” limitation.
`
`Regardless of whether the prior art then before the Office taught this feature,
`
`“formatting Internet content” to increase the navigability of websites and provide
`
`simplified navigation options was not novel in 1999. See infra § IV(D)(2). The prior
`
`art cited in this Petition demonstrates that formatting Internet content was disclosed
`
`or taught on several websites before the ’698 Patent was filed. See id. Because this
`
`“feature” is not novel or unobvious over the prior art, the claims fail at least the
`
`“technological feature is novel and non-obvious” prong of the technological
`
`invention exception.
`
`7
`
`

`
`The analysis could stop there—as explained above, the “technological
`
`invention” exception does not apply when even one prong of the definition is not
`
`met. Nevertheless, the ’698 Patent does not satisfy the second prong either, as the
`
`claimed subject matter does not solve a technical problem using a technical solution.
`
`Simply being related to technology or using technology does not qualify a patent for
`
`the technological invention exception.
`
`First, there is no technical problem described by the ’698 Patent. The patent
`
`purports to provide a “method and system to facilitate navigation.” Ex. 1001,
`
`Abstract. But in the specification, the patentee admits that users already used the
`
`Internet regularly and that the only “problem” at that time was that access to the
`
`Internet was allegedly not user friendly or readily available to certain users who were
`
`“being disenfranchised due to technical capabilities, age, and/or socioeconomic
`
`status.” Id., 1:18-48. As noted above, the sole new element that EMG relied on to
`
`overcome the rejection during examination is the simple idea of formatting Internet
`
`content. See Ex. 1002 at 17. Thus, the lack of methods for reformatting content is
`
`the apparent problem solved by the ’698 Patent. The “technological invention”
`
`exception to CBM eligibility was not designed to exclude from review patents that
`
`solve such problems, even if they recite technological components.
`
`Second, there is no technical solution. The claimed approach, with its focus
`
`on broad concepts of displaying information, receiving information, manipulating a
`
`8
`
`

`
`display, etc., is overbroad and not directed to technology, much less a technical
`
`solution. The ’698 Patent’s claims do not even reference technical terms or
`
`components. As such, the claims do not provide a solution grounded in technology.
`
`The ’698 Patent’s claims are not directed to a “technological invention.” The
`
`claims neither recite a technological feature that is novel and unobvious nor solve a
`
`technical problem using a technical solution. Accordingly, the ’698 Patent is a CBM
`
`patent eligible for review under § 18.
`
`IV. Requirements for CBM Review Under 37 C.F.R. § 42.304
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Petitioners hereby certify that Petitioners meet the eligibility requirements of
`
`§ 42.302. Petitioners, the Petitioners’ real-party-in-interest, or a privy of Petitioners
`
`have been sued for infringement of the ’698 Patent and are not estopped from
`
`challenging the claims on the grounds identified in the Petition.
`
`Identification of Challenge under 37 C.F.R. § 42.304(b)
`
`B.
`Claims 1-45 are challenged in this Petition on the grounds set forth in the table
`
`below. An explanation of how these claims are unpatentable, including an
`
`identification of where each element is found in the prior art patents or publications
`
`and the relevance of the prior art reference, is provided in the form of detailed claim
`
`charts. Additional explanation and support for each ground of rejection is set forth
`
`in the Declaration of Expert Ed Tittel (Ex.1004).
`
`9
`
`

`
`Ground
`Ground 1
`
`Ground 2
`
`’698 Patent Claims
`1-45
`
`1-45
`
`Basis for Rejection
`Not patent-eligible under § 101
`because directed to abstract ideas
`Obvious under § 103(a) in view of
`The HTML Prior Art in view of
`Claussen
`
`Claim Construction
`
`1.
`Pursuant to 37 C.F.R. § 42.300(b), the scope of the terms in the challenged
`
`
`
`claims are to be given their broadest reasonable construction in light of the
`
`specification of the patent.
`
`Additionally, claim terms, unless given different meaning by the patent
`
`specification, should be given their ordinary and accustomed meaning as would be
`
`understood by one of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d
`
`1303, 1320 (Fed. Cir. 2005) (en banc).
`
`Petitioners submit that, for this CBMR only, the broadest reasonable
`
`construction of the term “advertisements” is “information that is presented to call
`
`public attention to a product or service, typically presented to increase sales.” See,
`
`e.g., Ex.1009 at 12 (defining “advertisement” as “[a] notice designed to advertise
`
`something” and “advertise” as “[t]o call public attention to, esp. to increase sales”).
`
`This definition is consistent with the ’698 Patent at 8:58-9:12, the only reference to
`
`an “advertisement” in the patent specification.
`
`Petitioners submit that, for this CBMR only, the broadest reasonable
`
`construction of the phrase “secondary navigation option” is “a navigation option
`
`10
`
`

`
`presented in addition to a primary navigation option.” This construction is consistent
`
`with the only reference to “secondary navigation options” in the ’698 Patent
`
`specification, which is “[t]he cells can further be subdivided between the digit keys
`
`1–9 keys which, in this embodiment, represent the primary set of navigation options
`
`and the keys designated by letters A–C which represent secondary navigation
`
`options.” Ex. 1001, 7:20-21.
`
`Background and Prosecution History of the ’698 Patent
`
`2.
`The ’698 Patent purports to relate to a method to advertise and search on
`
`televisions for Internet content using a simplified interface. Ex. 1001, p. 1. The
`
`application for the ’698 Patent was filed on March 25, 2002, claiming priority as a
`
`division of application serial no. 09/440,214, filed November 15, 1999, now U.S.
`
`Patent No. 6,600,497. Id. Claim 1 as originally filed focused on a user interface
`
`displaying a set of navigation options, each member of the set being selected by
`
`pressing a single unique key. Ex. 1002, Claim 1, p. 531. A preliminary amendment
`
`was filed on Sept. 12, 2003, cancelling the originally filed claims in favor of a new
`
`set of claims. Id. p. 489. The first independent claim (18) in the new set focused on
`
`generating a simplified navigation interface for Internet use and providing a search
`
`function through the simplified interface. Id., p. 491. A supplemental preliminary
`
`amendment was filed on October 5, 2004, adding numerous additional claims. Id.,
`
`p. 452. In an amendment filed on May 27, 2005, the earlier-filed claims were
`
`11
`
`

`
`cancelled or withdrawn and replaced with new claims, the first independent claim of
`
`which was focused on displaying one or more advertisements, receiving a user
`
`selection of a displayed advertisement, and displaying Internet content associated
`
`with the selected advertisement, the content being formatted for navigation with
`
`unique inputs. Id., pp. 369-84. The Examiner rejected all pending claims in a final
`
`Office Action mailed on September 8, 2005. Id., pp. 182-95. The Examiner mailed
`
`another final Office Action on November 7, 2005. Id., p. 110. The applicants
`
`appealed and the BPAI issued a decision reversing the Examiner in a decision mailed
`
`September 21, 2006. Id., pp. 32-37. In its decision, the Board stated:
`
`The focus of Appellants’ argument is that the combination of the
`references fails to disclose the limitation of “formatting Internet
`retrieved content for navigation” (brief, page 3). Appellants argue that
`although Fujita matches menu items uniquely to keys on a remote, it
`uses preset menu items that are locally generated and cannot be
`acquired from any remote content source (brief, pages 4-6; oral hearing)
`. . . . We [] find that . . . Fujita has nothing to do with formatting content
`accessed via Internet for navigation. As such, the Examiner has failed
`to provide sufficient evidence to show that Fujita would have taught
`formatting Ward’s accessed advertisements to one of ordinary skill in
`the art.
`Id., pp. 34-35. A Notice of Allowance and Notice of Allowability issued on January
`
`3, 2007. Id., p. 16. The Examiner’s stated reason for allowance was as follows: “The
`
`prior art . . . fails to teach . . . a method/system comprising receiving a user input of
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`a displayed advertisement and formatting content accessed via the Internet with
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`unique inputs as recited in [the] claims . . . .” Id., p. 20 (emphasis in original). The
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`’698 Patent issued on March 20, 2007. Ex. 1001.
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`C.
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`Prior Art References that Establish a Reasonable Likelihood that
`the Petitioners Will Prevail on the Challenge Against Patentability
`of at Least One Claim of the ’698 Patent
`
`As detailed in the claim charts below, through the identified prior art
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`references and/or arguments that were not before the Examiner during prosecution
`
`of the ’698 Patent, all limitations of the challenged claims of the ’698 Patent were
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`well known in the prior art. Regarding various combinations of prior art, the ’698
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`Patent claims recite merely the combination of “prior art elements according to
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`known methods to yield predictable results” and/or the “[u]se of known technique[s]
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`to improve similar devices (methods, or products) in the same way.” MPEP §
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`2143(A, C).
`
`The ’698 Patent application was filed on March 25, 2002, claiming priority as
`
`a division of an application filed on November 15, 1999. As indicated on its face,
`
`Reformulating HTML was published as early as December 5, 1998, and it was
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`publicly available no later than September 11, 1999 (Ex. 1004, ¶ 38); as indicated
`
`on its face, HTML 4.0 was published as early as April 24, 1998, and it was publicly
`
`available no later than April 23, 1999 (Ex. 1004, ¶ 37); and U.S. Patent No.
`
`5,602,596 (“Claussen”) was published at least as early as February 11, 1997. Thus,
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`Reformulating HTML is prior art under § 102(a), Claussen is prior art under §102(b),
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`and HTML 4.0 is prior art under §§ 102(a) and 102(b). None of these references
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`were cited during prosecution.
`
`D. Grounds Establishing a Reasonable Likelihood that Petitioners
`Will Prevail on the Challenge Against Patentability of at Least One
`Claim
`1. Ground 1: All Claims of the ’698 Patent Are Patent-Ineligible
`Under 35 U.S.C. § 101
`
`Under 35 U.S.C. § 101, “[l]aws of nature, natural phenomena, and abstract
`
`ideas are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
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`133 S. Ct. 2107, 2116 (2013). As detailed below, the claims of the ’698 Patent are
`
`invalid under §101 for claiming patent-ineligible abstract ideas.
`
`a.
`The Supreme Court has articulated a two-part “framework for distinguishing
`
`The Test for Patent Eligibility
`
`patents that claim laws of nature, natural phenomena, and abstract ideas from those
`
`that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v.
`
`CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). First, the Board must “determine
`
`whether the claims at issue are directed to one of those patent-ineligible concepts”
`
`by “consider[ing] the elements of each claim both individually and as an ordered
`
`combination to determine whether the additional elements transform the nature of
`
`the claim into a patent–eligible application.” Id. (quotations omitted).
`
`Second, if the subject claims are drawn to a patent–ineligible concept, the
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`Board must determine if those claims contain an “inventive concept—i.e., “an
`
`element or combination of elements that is sufficient to ensure that the patent in
`
`practice amounts to significantly more than a patent upon the ineligible concept
`
`itself.” Id. (alteration in original omitted). “A claim that recites an abstract idea must
`
`include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
`
`designed to monopolize the [abstract idea].’” Id. at 2357 (quoting Mayo
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`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012))
`
`(alterations in original). Those “additional features” must be more than “well-
`
`understood, routine, conventional activity.” Mayo, 132 S. Ct. at 1298. Indeed, it is
`
`not enough for the inventors to state an abstract idea and tell the reader to “apply it”
`
`in some context; an abstract idea cannot be made patent-eligible merely by
`
`restricting its field of use. Alice, 134 S. Ct. at 2357-58.
`
`Further, if a claim could be performed in the human mind, or by a human
`
`using pen and paper, it is not patent-eligible. Cybersource Corp. v. Retail Decisions,
`
`Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). In addition, a claim is not meaningfully
`
`limited if it includes only token or insignificant pre- or post-solution activity, such
`
`as identifying a relevant audience, category of use, field of use, or technological
`
`environment. Mayo, 132 S. Ct. at 1297–98, 1300-01; Bilski v. Kappos, 561 U.S. 593,
`
`611-12 (2010); Diamond v. Diehr, 450 U.S. 175, 191–92 & n.14 (1981); Parker v.
`
`Flook, 437 U.S. 584, 595 n.18 (1978). Finally, “simply appending conventional
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`steps, specified at a high level of generality, to laws of nature, natural phenomena,
`
`and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo,
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`132 S. Ct. at 1300.
`
`b.
`The ’698 Patent recites three independent claims: one method claim, one
`
`The Claims at Issue
`
`machine-readable medium claim, and one system claim. Ex. 1001, 9:31-39, 10:64-
`
`11:7, 12:53-61. The claims of the ’698 Patent are all directed toward the abstract
`
`idea of systems and apparatuses “for navigation of the Internet or other content
`
`source [that] allows a broader user base access to the content and services available
`
`thereon.” Id., 2:37-39. In other words, the claims purportedly cover the abstract idea
`
`of simplifying how content is accessed. Additionally, the claims of the ’698 Patent
`
`are limited to the field of advertising and the display of Internet content associated
`
`with advertisements, (see generally id., 9:30-12:61), although the inventors’
`
`attempted field-of-use restriction does not save the claims from patent ineligibility.
`
`Alice, 134 S. Ct. at 2358.
`
`(i)
`
`The Method Claims (Claims 1-22)
`1)
`The text of Claim 1, the independent method claim, is set forth below:
`
`Independent Method Claim 1
`
`A method for interactive navigation comprising:
`[Step 1] displaying one or more advertisements on a display;
`
`[Step 2] receiving a user selection of a displayed advertisement; and
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`[Step 3] displaying content accessed via the internet, wherein the
`displayed content is associated with the selected advertisement, and
`
`wherein the content accessed via the internet is formatted for navigation
`with unique inputs.
`
`Ex. 1001, Claim 1.
`
`Regarding Step 1 of method Claim 1, as described in the specification, the
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`display on which “one or more advertisements” is presented can be a telephone
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`keypad, with the letters “F” and “J” replacing the “*” and “#” symbols:
`
`
`Ex. 1001, Fig. 8, 2:15-16 (“Fig. 8 is a diagram of the display of a graphical user
`
`interface of one embodiment of the invention.”). Other than the requirements added
`
`by certain dependent method claims that the display be flat (“two–dimensional”) and
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`have a plurality of cells, no limitation is placed on the form or manner of the display,
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`which is not depicted or otherwise described in the ’698 Patent. Id., 9:66-67, 10:32-
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`33. For example, the specification states only that the display may be “an integrated
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`LCD display” or “an external display, such as a television or external monitor.” Id.,
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`5:16-20.
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`Regarding Step 2, the specification similarly makes clear that there is no
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`limitation on the device