throbber
Patent No. 6,918,082
`Petition For Covered Business Method Patent Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Intralinks, Inc.
`Petitioner
`
`v.
`
`Lone Star Document Management, LLC
`Patent Owner
`
`Patent No. 6,918,082
`Issue Date: July 12, 2005
`Title: ELECTRONIC DOCUMENT PROOFING SYSTEM
`_______________
`
`Covered Business Method Review No. ______
`____________________________________________________________
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW
`
`UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH
`
` AMERICA INVENTS ACT
`
`
`
`dc-806459
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`

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`Docket No. 715510000006
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`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`IV.
`
`INTRODUCTION ................................................................................ 1
`NOTICES AND STATEMENTS ........................................................ 2
`SUMMARY OF THE ’082 PATENT .................................................. 6
`GROUNDS FOR STANDING AND CBM ELIGBILITY ................. 9
`
`A.
`B.
`
`Intralinks Has Standing To File This CBM Petition ............................ 9
`The ’082 Patent Is Eligible for CBM Review .................................... 12
`
`1.
`
`2.
`
`Claim 10 is incidental and complementary to a financial
`activity ...................................................................................... 13
`Claim 10 does not recite a technological invention ................. 16
`
`a.
`
`b.
`
`Claim 10 does not recite a technological invention
`that is novel and non-obvious ........................................ 17
`Claim 10 does not solve a technical problem using
`a technical solution ........................................................ 24
`
`V.
`
`IDENTIFICATION OF CHALLENGE ............................................. 26
`
`A.
`
`Claims 1-21 Are Invalid Under 35 U.S.C. § 101 ............................... 26
`
`1.
`
`2.
`
`The Supreme Court has set forth a two-step test for
`determining whether or not a patent claim is directed to
`statutory subject matter ............................................................ 26
`The claims of the ’082 patent are directed to
`non-statutory subject matter because they recite 1)
`abstract ideas, with 2) a generic computer
`implementation ......................................................................... 30
`
`a.
`b.
`c.
`
`Representative independent claim 10 is invalid ............ 31
`Independent claims 1, 17, and 21 are invalid ................ 33
`Dependent claims 2-9, 11-16 and 18-20 are invalid ..... 34
`
`VI.
`
`CONCLUSION .................................................................................. 35
`
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`Docket No. 715510000006
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`TABLE OF AUTHORITIES
`
`
`CASES
`
`Page(s)
`
`Alice Corporation Pty, Ltd. v. CLS Bank International,
`134 S. Ct. 2347 (2014) .................................................................................. 27, 29
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) ...................................................................................... 25, 26
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
`776 F.3d 1343 (Fed. Cir. 2014) .................................................................... 27, 29
`
`Fidelity Nat’l Info. Servs., Inc., v. Checkfree Corp.,
`No. CBM2013-00030, Paper 51 (P.T.A.B. Dec. 22, 2014) ................................ 24
`
`Google Inc. v. Better Food Choices LLC,
`No. CBM2015-00071, Paper 10 (P.T.A.B. Aug. 20, 2015) ............................... 13
`
`Hawaiian Telecom, Inc. v. Broadband iTV, Inc.,
`No. CBM2014-00189, Paper 11 (P.T.A.B. Apr. 1, 2015) .................................. 13
`
`Hewlett-Packard Co. v. Acceleron, LLC,
`587 F.3d 1358 (Fed. Cir. 2009) .......................................................................... 10
`
`Indeed, Inc. v. Career Destination Dev., LLC,
`No. CBM2014-00068, Paper 11 (P.T.A.B. Aug. 20, 2014) ............................... 13
`
`Intellectual Ventures I LLC v. Capital One Bank (USA),
`792 F.3d 1363 (Fed. Cir. 2015) .......................................................................... 27
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) .......................................................................... 28
`
`Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co.,
`No. CBM2012-00002, Paper 66 (P.T.A.B. Jan. 23, 2014) ................................. 11
`
`Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
`132 S. Ct. 1289 (2012) .................................................................................. 26, 27
`
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`Docket No. 715510000006
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`Medimmune, Inc., v Genentech, Inc., et al.,
`549 U.S. 118 (2007) ............................................................................................ 10
`
`Samsung Elecs. Am., Inc. v. Smartflash LLC.
`No. CBM2014-00197, Paper 7 (P.T.A.B. Mar. 31, 2015) ................................. 17
`
`Sandisk Corp. v. STMicroelectronics, Inc.
`480 F.3d 1372 (Fed. Cir. 2007) .......................................................................... 10
`
`SAP Am., Inc. v. Versata Software Inc.,
`No. CBM 2012-00001, Paper 70 (P.T.A.B. June 11, 2013) ............................... 30
`
`SAP Am., Inc. v. VersataDev. Grp., Inc.,
`No. CBM2012-00001, Paper 36 (P.T.A.B. Jan. 9, 2013) ............................. 11, 12
`
`Ultramercial, LLC v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014), cert. denied,
`sub nom, WildTangent, Inc. v. Ultramercial, LLC,
`135 S. Ct. 2907 (2015) ........................................................................................ 28
`
`Versata Dev. Grp., Inc. v. SAP Am., Inc.,
`793 F.3d 1306 (Fed. Cir. 2015) .................................................................... 28, 29
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.301 ................................................................................................... 11
`
`37 C.F.R. § 42.301(b) .............................................................................................. 16
`
`37 C.F.R. § 42.302(a) ....................................................................................... 8, 9, 11
`
`AIA § 18(d)(2) ......................................................................................................... 15
`
`Inter Partes, Post Grant, and Covered Business Method Review Final Rules,
`77 Fed. Reg. 48,680 (Aug. 14, 2012) ................................................................. 11
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ................................................................. 16
`
`
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`Docket No. 715510000006
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`Transitional Program for Covered Business Method
`Patents—Definitions of Covered Business Method
`Patent and Technological Invention,
`77 Fed. Reg. 48,734 (Aug. 14, 2012) .............................................................................12
`
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`dc-806459
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`Docket No. 715510000006
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`Exhibit List for Covered Business Method Review of
`U.S. Patent No. 6,918,082
`
`Exhibit Description
`
`U.S. Patent No. 6,918,082
`
`Declaration of Stephen Winslow and Appendices
`
`Exhibit #
`
`1001
`
`1002
`
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`Docket No. 715510000006
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`I.
`
`INTRODUCTION
`
`35 U.S.C. § 101 forbids the patenting of abstract ideas that are implemented
`
`by generic computers. Here, the claims of U.S. Patent No. 6,918,082 (“the ’082
`
`patent”, Exhibit 1001) are directed merely to providing a document for proofing
`
`and collecting comments about the document, to be implemented on “a computer.”
`
`The claims, thus, recite abstract ideas implemented on a generic computer and do
`
`not satisfy the requirements for patentability under §101.
`
`The abstract claims of the ’082 patent seek to preempt the basic human
`
`activity of circulating a document and collecting comments. The Patent Owner has
`
`wielded the ’082 patent aggressively, by filing over a dozen suits for patent
`
`infringement against various parties, and also accusing the Petitioner of
`
`infringement. But the ’082 patent, which issued before the Supreme Court’s § 101
`
`jurisprudence of recent years, is facially invalid, and should not be used to extract a
`
`toll from any business.
`
`Petitioner respectfully petitions for Covered Business Method (“CBM”)
`
`Patent Review of claims 1-21 of the ’082 patent in accordance with 35 U.S.C.
`
`§ 321 and § 18 of the Leahy-Smith America Invents Act (“AIA”). As discussed in
`
`detail in the sections that follow, Petitioner has standing to bring this petition
`
`because the Patent Owner has sent Petitioner a detailed demand letter alleging
`
`infringement of claim 10. Moreover, the ’082 patent qualifies for CBM review
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`Docket No. 715510000006
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`because at least claim 10 is incidental or complementary to a financial transaction
`
`and is not drawn to a technological invention. And because the claims of the ’082
`
`patent recite an abstract idea implemented on generic computer components, there
`
`exists, at a minimum, a reasonable likelihood of success that claims 1-21 will be
`
`found invalid under § 101. Petitioner therefore requests that the Board institute
`
`review on claims 1-21 of the ’082 patent and render a final decision cancelling
`
`these claims.
`
`II. NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Intralinks, Inc. (“Intralinks” or
`
`“Petitioner”) is the real party-in-interest. Intralinks, Inc. is a wholly owned
`
`subsidiary of Intralinks Holdings, Inc.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Intralinks identifies the following related
`
`suits involving the ’082 patent:
`
`Case Name
`
`Number
`
`District Filing Date
`
`Lone Star Document Management,
`
`1:13-cv-00904 COD
`
`Apr. 8, 2013
`
`LLC v. Catalyst Repository Systems,
`
`Inc.
`
`Lone Star Document Management,
`
`6:12-cv-00196 TXED Mar. 23, 2012
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`LLC v. CAP Digisoft Solutions, Inc.
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`Docket No. 715510000006
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`Lone Star Document Management,
`
`6:12-cv-00164 TXED Mar. 19, 2012
`
`LLC v. Catalyst Repository Systems,
`
`Inc.
`
`Lone Star Document Management,
`
`6:12-cv-00163 TXED Mar. 19, 2012
`
`LLC v. Trial Solutions of Texas, LLC
`
`Lone Star Document Management,
`
`6:12-cv-00160 TXED Mar. 19, 2012
`
`LLC v. Case Central, Inc.
`
`Lone Star Document Management,
`
`6:12-cv-00139 TXED Mar. 13, 2012
`
`LLC v. Digital Reef, Inc.
`
`Lone Star Document Management,
`
`6:12-cv-00137 TXED Mar. 13, 2012
`
`LLC v. Gallivan, Gallivan & O'Melia
`
`LLC
`
`Lone Star Document Management,
`
`6:12-cv-00138 TXED Mar. 13, 2012
`
`LLC v. Business Intelligence
`
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`Associates, Inc.
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`Docket No. 715510000006
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`Lone Star Document Management,
`
`6:12-cv-00131 TXED Mar. 12, 2012
`
`LLC v. Lexbe, LC
`
`Lone Star Document Management,
`
`2:12-cv-00103 TXED Mar. 9, 2012
`
`LLC v. Lexbe, LC
`
`Lone Star Document Management,
`
`2:12-cv-00111 TXED Mar. 9, 2012
`
`LLC v. Breeze, LLC
`
`Lone Star Document Management,
`
`2:11-cv-00319 TXED
`
`July 13, 2011
`
`LLC v. Atalasoft, Inc.
`
`Lone Star Document Management,
`
`2:11-cv-00169 TXED Mar. 14, 2011
`
`LLC v. Motive Systems, Inc.
`
`Ipex, LLC v. Adobe Systems
`
`2:08-cv-00325 TXED Aug. 25, 2008
`
`Incorporated
`
`
`
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`dc-806459
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Intralinks identifies the following
`
`counsel. A power of attorney accompanies this Petition.
`
`Docket No. 715510000006
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`Lead Counsel for Petitioner
`
`Backup Counsel for Petitioner
`
`Jonathan Bockman
`
`Fahd Hussein Patel
`
`jbockman@mofo.com
`
`fpatel@mofo.com
`
`Registration No.: 45,640
`
`Registration No.: 61,780
`
`MORRISON & FOERSTER LLP
`
`MORRISON & FOERSTER LLP
`
`1650 Tysons Boulevard, Suite 400
`
`2000 Pennsylvania Ave, NW Suite 6000
`
`McLean, Virginia 22102-4220
`
`Washington, DC 20006-1888
`
`Tel: (703) 760-7769
`
`Tel: (202) 778-1658
`
`Fax: (703) 760-7777
`
`Fax: (202) 330-5268
`
`
`Petitioner will request authorization from the Board to file motions for
`
`Michael A. Jacobs and Daniel P. Muino to appear pro hac vice before the Patent
`
`Office in this proceeding. Both are experienced patent litigation attorneys who are
`
`involved with this matter and who are in good standing in their respective
`
`jurisdictions.
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`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above. Petitioner accepts electronic service at:
`
`Docket No. 715510000006
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`71551-082-CBM@mofo.com.
`
`III. SUMMARY OF THE ’082 PATENT
`
`The ’082 patent, entitled “Electronic Document Proofing System,” is
`
`directed to distributing electronic documents for proofreading. (Ex. 1001, the ’082
`
`patent, Abstract.) The subject matter involves the use of “universally adopted”
`
`computer networks to “allow multiple users to collaboratively proof, annotate, and
`
`edit multiple versions of documents.” (Id. at 1:6-8, see also id. at 1:11-22.) The
`
`’082 patent describes its invention as follows:
`
`The primary purpose of the invention is to facilitate
`
`electronic document distribution, proofing and
`
`communication between a document creator and a person
`
`or people responsible for approving the document or
`
`those who require final receipt of finished documents.
`
`(Id. at 6:60-64.)
`
`Features of the ’082 patent are illustrated in Fig. 1, an annotated version of
`
`which is reproduced below:
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`Docket No. 715510000006
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`Fig. 1 illustrates a system 50 including a creator 56 and a proofer 52, which
`
`are both connected to a central computer 60 via a computer network. (Id. at 3:53-
`
`58.) Creator 56 sends a version of a particular document 54 to central computer 60
`
`(as shown in the annotated red path). (Id.) Central computer 60 stores the
`
`document version in a database 64, together with other versions of the same
`
`document, and also stores the identification of proofers who are authorized to proof
`
`the document version. (Id. at 3:59-65.)
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`Docket No. 715510000006
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`Proofer 52 retrieves the document version 54 as shown in the annotated blue
`
`path. Central computer 60 checks an identifier of proofer 52 with the identification
`
`stored in database 64. (Id. at 3:66-4:2.) If the identifiers match and proofer 52 is
`
`authorized, central computer 60 may format the document version at block 66, and
`
`provide the formatted document to proofer 52. (Id. at 4:2-5.) The example of
`
`formatting discussed in the specification occurs when proofer 52 seeks to review
`
`multiple document versions; the formatting includes simultaneous display of
`
`multiple versions of the document, including prior comments from each version,
`
`for review by the proofer. (Id. at 4:12-20, Fig. 1, item 66.)
`
`The specification provides an example of how the invention of the ’082
`
`patent would be implemented. The example describes a financial transaction in
`
`which XYZ Music Corporation hires ABC Graphics to design a CD cover. (Id. at
`
`7:40-48.) ABC Graphics creates a draft of the CD cover and sends it to XYZ
`
`Music to proof and accept before printing. (Id. at 7:49-57.) Instead of physically
`
`mailing the draft, ABC Graphics uses the system described in the ’082 patent to
`
`upload the cover for XYZ Music to proof. (Id. at 7:58-67.) XYZ Music then
`
`electronically provides comments on the draft, which can be reviewed by ABC
`
`Graphics. (Id. at 8:11-21.) ABC Graphics can then send a revised CD cover to
`
`XYZ Music, and upon approval, can send the revised CD cover to a printer for
`
`final delivery of the CD covers to XYZ Graphics. (Id. at 8:22-31, 55-63.)
`
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`The ’082 patent includes 21 claims total, with claims 1, 10, 17, and 21 in
`
`independent form. Representative claim 10 is reproduced below:
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`Docket No. 715510000006
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`10. A system for proofing electronic documents delivered
`
`over a network, comprising:
`
`a database of portable format electronic documents stored
`
`together with at least one proofer identifier;
`
`a computer connectable to the network for receiving a
`
`plurality of comments, each concerning a particular one
`
`of the portable format documents; and
`
`a program executing on said computer for associating
`
`and storing the received plurality of comments together
`
`with the particular portable format electronic documents;
`
`said computer for receiving a request, from a proofer
`
`presenting the proofer identifier, to review a particular
`
`portable format electronic document;
`
`said program for retrieving and formatting the requested
`
`document together with the associated plurality of
`
`comments for simultaneous display to permit review.
`
`IV. GROUNDS FOR STANDING AND CBM ELIGBILITY
`
`A.
`
`Intralinks Has Standing To File This CBM Petition
`
`A petitioner may seek CBM review of a patent if the petitioner has either
`
`been 1) sued for infringement of the patent or 2) charged with infringement of the
`
`patent. 37 C.F.R. § 42.302(a). “Charged with infringement means a real and
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`Docket No. 715510000006
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`substantial controversy regarding infringement…such that the petitioner would
`
`have standing to bring a declaratory judgment action in Federal court.” Id. Here,
`
`Intralinks has received a detailed demand letter from Lone Star charging
`
`infringement of claim 10 of the ’082 patent, and therefore, has standing to bring
`
`this petition.
`
`On June 24, 2015, Lone Star sent a demand letter to Intralinks charging
`
`Intralinks of infringing the ’082 patent. The demand letter reads like a complaint,
`
`stating that:
`
`Lone Star has learned that [Intralinks is] infringing one or
`
`more claims of the ’082 patent through the use,
`
`manufacture, sale, and offers for sale of its enterprise
`
`collaboration system (the “Infringing Products”).
`
`(Decl. of Stephen Winslow (“Winslow Decl.”) at App. A, p. 1.)
`
`The letter specifically refers to claim 10 of the ’082 patent, stating that “[t]he
`
`Infringing Products provide comprehensive capabilities for managing and
`
`processing documents in a way that directly infringes claim 10.” (Id.) The letter
`
`further alleges induced and contributory infringement, and represents that “Lone
`
`Star has suffered damages.” (Id. at 2.) Appended to the letter is a 10 page claim
`
`chart with detailed allegations of infringement of the ’082 patent by Intralinks. (Id.
`
`at 3-13.) The parties exchanged additional communications related to Lone Star’s
`
`allegations of infringement. (Id. at Apps. B, C.)
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`Docket No. 715510000006
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`Based on these communications, Intralinks has the right to file a declaratory
`
`judgment action in Federal Court. In Medimmune, Inc., v Genentech, Inc., 549
`
`U.S. 118, 127 (2007), the Supreme Court held that a party may seek declaratory
`
`judgment when, as here, “there is a substantial controversy, between parties having
`
`adverse legal interests, of sufficient immediacy and reality to warrant the issuance
`
`of a declaratory judgment.” After Medimmune, the Federal Circuit further clarified
`
`that a party may seek declaratory judgment “where a patentee asserts rights under a
`
`patent based on certain identified ongoing or planned activity of another party.”
`
`Sandisk Corp. v. STMicroelectronics, Inc. 480 F.3d 1372, 1381 (Fed. Cir. 2007).
`
`Here, Lone Star’s complaint-like demand letter does more than “assert[]
`
`rights under a patent” and is beyond the threshold set forth by the Federal Circuit
`
`for filing a declaratory judgment action. Id. at 1381. The letter accuses Intralinks
`
`of directly and indirectly infringing claim 10 of the ’082 patent, provides a claim
`
`chart of the alleged infringement, and claims that Lone Star has suffered damages
`
`as a result. Indeed, by setting forth these allegations and using the word
`
`“infringement,” Lone Star has created a controversy adequate to support a
`
`declaratory judgment. Hewlett-Packard Co. v. Acceleron, LLC, 587 F.3d 1358,
`
`1362 (Fed. Cir. 2009) (finding jurisdiction for declaratory judgment even with “a
`
`correspondence that avoids the magic words such as ‘litigation’ or ‘infringement,’”
`
`and noting that “it is implausible…to expect that a competent lawyer drafting such
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`Docket No. 715510000006
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`correspondence for a patent owner would identify specific claims, present claim
`
`charts, and explicitly allege infringement”) (emphasis added). Because Intralinks
`
`has standing to seek declaratory judgment, it likewise has standing under 37 C.F.R.
`
`§ 42.302(a) to file this CBM petition.
`
`Intralinks is also not prohibited under 37 C.F.R. § 42.302(b) from
`
`challenging the claims on the grounds identified in this Petition.
`
`B.
`
`The ’082 Patent Is Eligible for CBM Review
`
`A patent is eligible for CBM review when it relates to a financial product or
`
`service, but is not a technological invention.
`
`Covered business method patent means 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.
`
`37 C.F.R. § 42.301.
`
`Although all claims of the ’082 patent qualify for CBM review, only one
`
`CBM-eligible claim is needed to deem an entire patent eligible for CBM review.
`
`See SAP Am., Inc. v. VersataDev. Grp., Inc., No. CBM2012-00001, Paper 36 at 26
`
`(P.T.A.B. Jan. 9, 2013) (“SAP Am.”); Liberty Mut. Ins. Co. v. Progressive Casualty
`
`Ins. Co., No. CBM2012-00002, Paper 66 at 4-7 (P.T.A.B. Jan. 23, 2014); Inter
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`Docket No. 715510000006
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`Partes, Post Grant, and Covered Business Method Review Final Rules, 77 Fed.
`
`Reg. 48,680, 48,709 (Aug. 14, 2012).
`
`As discussed below, the ’082 patent qualifies for CBM review because at
`
`least claim 10 is financial in nature and is not for a technological invention.
`
`1.
`
`Claim 10 is incidental and complementary to a financial
`activity.
`
`The term “financial,” as used in the context of CBM proceedings, is broad.
`
`“[T]he 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.’” Transitional Program for
`
`Covered Business Method Patents—Definitions of Covered Business Method
`
`Patent and Technological Invention, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012)
`
`(citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`
`Schumer)) (emphasis added). “[F]inancial product or service” is to be interpreted
`
`broadly, id., and “financial . . . simply means relating to monetary matters”; it does
`
`not require any link to traditional financial industries such as banking. See, e.g.,
`
`SAP Am., Paper 36 at 23 (emphasis added).
`
`The ’082 patent is incidental and complementary to financial matters. For
`
`example, representative claim 10 describes a system involving a “proofer”
`
`presenting a “proofer identifier” to a computer “to review a particular portable
`
`format electronic document.” The specification describes the “proofer” as a party
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`Docket No. 715510000006
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`to a financial transaction. For example, the specification describes XYZ Music
`
`hiring ABC Graphics to design a CD cover that XYZ Music then proofs and
`
`approves. (Ex. 1001, ’082 patent, 7:40-48, 8:11-31.) By hiring ABC Graphics,
`
`XYZ Music (a “proofer”) is entering a financial transaction, in which XYZ Music
`
`pays ABC Graphics money to perform a service. Part of the transaction involves
`
`XYZ Music acting as a proofer to review and approve the CD cover that XYZ
`
`Music paid ABC Graphics to prepare. Thus, claim 10 is incidental and
`
`complementary to financial activities.
`
`The Board has taken similar views of financial transactions in prior cases,
`
`such that claims relating to monetary exchange are sufficiently complementary or
`
`incidental to a financial activity to qualify for CBM review. Google Inc. v. Better
`
`Food Choices LLC, No. CBM2015-00071, Paper 10 at 10-11 (P.T.A.B. Aug. 20,
`
`2015) (claims related to the “purchase of food by a shopper” qualify for CBM
`
`review); Indeed, Inc. v. Career Destination Dev., LLC, No. CBM2014-00068,
`
`Paper 11 at 8 (P.T.A.B. Aug. 20, 2014) (“[t]he payment of a fee in exchange for
`
`assistance in matching an employer and a candidate is a financial activity” and
`
`qualifies for CBM review); Hawaiian Telecom, Inc. v. Broadband iTV, Inc., No.
`
`CBM2014-00189, Paper 11 at 8-9 (P.T.A.B. Apr. 1, 2015) (claims relating to a
`
`“TV service subscriber” qualify for CBM review because “television subscription
`
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`Docket No. 715510000006
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`services are a financial activity in that fees are generated based on the use of the
`
`system provided under the subscription.”).
`
`Lone Star also interprets the claims of the ’082 patent as covering financial
`
`activities. As shown in the screenshot below, Lone Star accuses Intralinks’s
`
`products of infringing the ’082 patent. The example provided by Lone Star relates
`
`to sharing comments for a sales plan, which is a financial activity. Even the
`
`comments on the sales plan relate to financial information such as projected
`
`revenue.
`
`
`
`(Winslow Decl. at App. A, p. 12.)
`
`Both Intralinks and Lone Star interpret the claims of the ’082 patent as
`
`covering a financial activity, and therefore, the Board should as well. Lone Star
`
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`Docket No. 715510000006
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`should not be permitted to accuse Intralinks’s products tied to financial activity of
`
`patent infringement without risking CBM review.
`
`Moreover, Intralinks’s software and services are used by more than 75% of
`
`the 25 largest U.S. and European banks and securities firms. (Winslow Decl. ¶ 6,
`
`App. D.) Intralinks’s software and services include the Intralinks VIA platform,
`
`accused by Lone Star of infringement, with software capabilities such as file
`
`synchronization, file sharing and content collaboration. (Id. ¶ 6, App. A, p. 4.)
`
`Thus, at least claim 10 of the ’082 patent is incidental or complementary to
`
`financial activity. To summarize: First, the exemplary document and comment-
`
`sharing set forth in the ’082 patent specification is practiced as part of a financial
`
`transaction between XYZ Music and ABC Graphics. Second, the exemplary
`
`accused Intralinks functionality highlighted by Lone Start itself relates to financial
`
`information, including a sales plan and comments related to projected revenue.
`
`And third, Intralinks’s software and services are sold by Intralinks to many
`
`financial institutions. Therefore, claim 10 is incidental or complementary to
`
`financial activity, and it qualifies for CBM review.
`
`2.
`
`Claim 10 does not recite a technological invention.
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To exclude a patent from CBM review as a
`
`technological invention, the patent must meet two criteria: “whether the claimed
`
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`Docket No. 715510000006
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`subject matter as a whole [(1)] recites a technological feature that is novel and
`
`unobvious over the prior art; and [(2)] solves a technical problem using a technical
`
`solution.” 37 C.F.R. § 42.301(b). As discussed below, not only do the claims of
`
`the ’082 patent fail to recite a novel and non-obvious technological feature, they
`
`also do not solve a technical problem using a technical solution.
`
`a.
`
`Claim 10 does not recite a technological
`invention that is novel and non-obvious.
`
`Claim 10 is not a technological invention. Instead, it uses generic computer
`
`components to store a document with its associated comments and provide the
`
`document to a proofer “together with the associated plurality of comments for
`
`simultaneous display to permit review.” The recited computer components – “a
`
`network,” “a database,” “a computer connectable to the network,” and “a program
`
`executing on said computer” – are generic and do not make claim 10 a
`
`technological invention. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,764 (Aug. 14, 2012) (“Mere recitation of known technologies, such as computer
`
`hardware, communication or computer networks” “would not typically render a
`
`patent a technological invention.”)
`
`The specification makes clear that the computer components used to
`
`implement the invention of the ’082 patent are well-known and interchangeable:
`
`[T]he invention may be applied to any of a wide variety
`
`of networks, including internets, intranets, LANs and
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`Docket No. 715510000006
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`WANs, or any combination thereof, as desired. As well,
`
`the invention may be applied to a wide variety of
`
`computer platforms, communication protocols, portable
`
`document formats, page description languages, markup
`
`languages or any combination thereof, as desired.
`
`(Ex. 1001, ’082 patent, 9:18-24 (emphasis added).) Since virtually “any” known
`
`computer component can be used to implement the invention in the ’082 patent,
`
`“the asserted novelty of the invention is not in any specific improvement of
`
`hardware or software.” Samsung Elecs. Am., Inc. v. Smartflash LLC. No.
`
`CBM2014-00197, Paper 7 at 10 (P.T.A.B. Mar. 31, 2015).
`
`Moreover, as set forth in the element-by-element analysis of claim 10 below,
`
`the admitted prior art in the background of the ’082 patent demonstrates that each
`
`element of claim 10 is nothing more than the use of generic computing to
`
`implement a well-known idea. Thus, claim 10 cannot recite a technical invention
`
`that is novel and non-obvious over the prior art.
`
`(i) A system for proofing electronic
`documents delivered over a network,
`comprising:
`
`The background of the ’082 patent describes prior art techniques for
`
`delivering electronic documents over a network:
`
`J. Smith, et. al. Electronic Document Delivery System in
`
`Which Notification of Said Electronic Document is Sent
`
`to a Recipient Thereof, U.S. Pat. No. 5,790,790, (4 Aug.
`
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`dc-806459
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`Docket No. 715510000006
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`1998) discloses a network-based electronic document
`
`delivery system, which has a network server that stores
`
`electronic files to be accessed by email and file
`
`recipients….Systems of this kind solve some problems
`
`with delivery of documents over a network, but do not
`
`provide features for collaborative production and review
`
`of documents.
`
`(Ex. 1001, ’082 patent, 2:35-48 (emphasis added).) The background of the ’082
`
`patent also describes prior art techniques for exchanging portable electronic
`
`documents, such as Adobe PDF files, for proofing:
`
`Software solutions have been invented to allow document
`
`creators and document approvers (or proofreaders) to
`
`exchange computer files without regard to the original
`
`authoring software or computer platform. These solutions
`
`are often termed “portable document formats” and
`
`include, but are not limited to, Adobe System's Acrobat
`
`Portable Document Format, Envoy's portable document
`
`format, and FlashPix, a graphical file format created by
`
`the Digital Imaging Group, a consortium of nine leading
`
`imaging companies.
`
`(Id. at 1:55-64.) Thus, the background of the ’082 patent discloses or renders
`
`obvious the preamble of claim 10: “[a] system for proofing electronic documents
`
`delivered over a network.”
`
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`Docket No. 715510000006
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`(ii)
`
`a database of portable format electronic
`documents stored together with at least
`one proofer identifier;
`
`The background of the ’082 patent discloses a network server (“database”)
`
`for storing electronic documents.
`
`J. Smith, et. al. Electronic Document Delivery System in
`
`Which Notification of Said Electronic Document is Sent
`
`to a Recipient Thereof, U.S. Pat. No. 5,790,790, (4 Aug.
`
`1998) discloses a network-based electronic document
`
`delivery system, which has a network server that stores
`
`electronic files to be accessed by email and file
`
`recipients….This disclosed prior art system may be
`
`characterized as a “push publishing” system of delivering
`
`documents using a server as a storage facility to hold
`
`documents.
`
`(Id. at 2:35-43 (emphasis added).)
`
`This claim element further recites storing a “proofer identifier” in the
`
`database, but this is simply the known technique of maintaining a list of parties that
`
`may proofread a document. Merely storing this list in a database is a simple
`
`application of generic computing to a known technique, and is not a novel or non-
`
`obvious technical invention.
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`(iii) a computer connectable to the network
`for receiving a plurality of comments,
`each concerning a particular

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