By: Reza Mollaaghababa, Reg. No. 43,810
`George S. Haight IV, Reg. No. 54,146
`Pepper Hamilton LLP
`125 High Street
`19th Floor High Street Tower
`Boston, MA 02110
`(617) 204-5165 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`GOOGLE INC.,
`Petitioner
`v.
`
`LOCATIONET SYSTEMS LTD
`Patent Owner
`___________________
`
`Case No. CBM2016-00062
`Patent 6,771,970
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.207(a) AND 37 C.F.R. § 42.300(a)
`
`
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`CBM2016-00062
`U.S. Patent No. 6,771,970
`
`Page(s)
`
`Table of Authorities ................................................................................................. iii
`Table of Exhibits ...................................................................................................... vi
`I.
`INTRODUCTION .......................................................................................... 1
`II. ALLEGED GROUNDS ................................................................................. 2
`A.
`Requirements for Covered Business Method Review ......................... 2
`B. Alleged Grounds of Invalidity .............................................................. 3
`III. TECHNICAL OVERVIEW OF THE ’970 PATENT ................................... 4
`IV. LITIGATION AND PTAB HISTORY OF ’970 PATENT ........................... 8
`V.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................ 9
`VI. LEGAL STANDARD .................................................................................. 10
`VII. CLAIM 4 IS NOT SUBJECT TO CONSIDERATION OF MEETING
`THE CBM REQUIREMENTS ..................................................................... 12
`VIII. THE ’970 PATENT IS NOT A COVERED BUSINESS METHOD
`PATENT ....................................................................................................... 13
`A. None Of The Alleged CBM Claims Is Directed To A Financial
`Product Or Service ............................................................................. 14
`
`Claims 14-17 and 19 are completely devoid of any terms
`1.
`having any particular relation to a financial product or
`service ...................................................................................... 15
`The Petition’s analysis of claim 4, and its reliance on that
`analysis in connection with claims 14-17 and 19, is
`similarly flawed ........................................................................ 28
`The ’970 Patent Falls Within The Technological Invention
`Exception ............................................................................................ 33
`
`The Petition fails to establish that any claim is not
`1.
`directed to a technological feature that is novel and
`unobvious ................................................................................. 34
`The Petition fails to establish that any claim does not
`provide a technological solution to a technological
`problem .................................................................................... 49
`
`B.
`
`
`2.
`
`
`2.
`
`i
`
`

`
`
`
`CBM2016-00062
`U.S. Patent No. 6,771,970
`
`
`3.
`
`The Petition fails to demonstrate that every claim of the
`’970 Patent is not directed to a technological invention .......... 56
`IX. CONCLUSION ............................................................................................. 59
`
`ii
`
`
`
`

`
`
`
`CBM2016-00062
`U.S. Patent No. 6,771,970
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Apple, Inc. v. ContentGuard Holdings, Inc., CBM2015-00046, Paper 12
`(PTAB Jun. 3, 2015) ........................................................................................... 36
`
`Page(s)
`
`AT&T Mobility LLC, v. Intellectual Ventures II LLC, CBM2015-00185,
`Paper 10 (PTAB May 4, 2016) ....................................................................passim
`
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331
`(Fed. Cir. Mar. 1, 2016) ................................................................................ 20-22
`
`CoreLogic Inc. v. Boundary Solutions, Inc., CBM2016-00016, Paper 9
`(PTAB May 24, 2016) .................................................................................passim
`
`Crandon v. United States, 494 U.S. 152 (1990) ...................................................... 57
`
`Conn. Nat’l Bank v. Germain, 503 U.S. 249 (1992) ............................................... 57
`
`Duncan v. Walker, 533 U.S. 167 (2001) .................................................................. 57
`
`E*Trade Fin. Corp. v. Droplets, Inc., CBM2014-00123, Paper 15
`(PTAB Oct. 30, 2014) ................................................................................... 12, 47
`
`Emnos USA Corp. v. Dunnhumby Ltd, CBM2015-00116, Paper 8
`(PTAB Nov. 10, 2015) ...................................................................... 37, 39, 45, 49
`
`Experian Marketing Solutions, Inc. v. Rpost Communications Ltd.,
`CBM2014-00010, Paper 20 (PTAB Apr. 22, 2014) ........................................... 48
`
`FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P., CBM2015-00053,
`Paper 9 (PTAB Jun. 29, 2015) ...................................................................... 26, 27
`
`Google Inc. v. SimpleAir, Inc., CBM2015-00019, Paper 11
`(PTAB May 19, 2015) .................................................................................. 19, 24
`
`Google Inc. v. Unwired Planet, LLC, CBM2014-00004, Paper 8
`(PTAB Apr. 8, 2014) .................................................................................... 20, 21
`
`Great West Casualty Company v. Intellectual Ventures II, CBM2015-00171,
`Paper 10 (PTAB Feb. 9, 2016) ........................................................................... 12
`
`iii
`
`

`
`
`Guinn v. Kopf, 96 F.3d 1419 (Fed. Cir. 1996) ......................................................... 13
`
`CBM2016-00062
`U.S. Patent No. 6,771,970
`
`J.P. Morgan Chase v. Intellectual Ventures II LLC, CBM2014-00160,
`Paper 11 (PTAB Jan. 29, 2015) .................................................................... 11, 32
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00004,
`Paper 10 (PTAB Jan. 29, 2015) .......................................................................... 38
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002,
`Paper 66 (PTAB Jan. 23, 2014) .................................................................... 57, 58
`
`Old Republic Gen. Ins. Group, Inc. v. Intellectual Ventures II LLC,
`CBM2015-00184, Paper 7 (PTAB Apr. 7, 2016) ............................................... 37
`
`Par Pharm. Inc. et al. v. Jazz Pharm., Inc., CBM2014-00149, Paper 12
`(PTAB Jan. 13, 2015) ................................................................................... 19, 24
`
`PNC Financial Services Group, Inc. v. Intellectual Ventures I LLC,
`CBM2014-00032, Paper 13 (PTAB May 22, 2014) ......................... 19, 24, 25, 27
`
`PNC Bank, NA v. Parus Holdings, Inc., CBM2015-00110, Paper 10
`(PTAB Nov. 9, 2015) .................................................................................... 25, 26
`
`PNC Bank, NA v. Parus Holdings, Inc., CBM2015-00150, Paper 10
`(PTAB Nov. 9, 2015) .................................................................................... 25, 26
`
`Qualtrics, LLC v. OpinionLab, Inc., CBM2015-00164, Paper 8
`(PTAB Feb. 3, 2016) ..................................................................................... 15, 25
`
`Salesforce.com, Inc. v. Applications in Internet Time LLC,
`CBM2014-00162, Paper 11 (PTAB Feb. 2, 2015) ....................................... 19, 24
`
`ServiceNow, Inc. v. BMC Software, Inc., CBM2015-00107, Paper 12
`(PTAB Sep. 11, 2015) ......................................................................................... 20
`
`ServiceNow, Inc. v. Hewlett-Packard, Co., CBM2015-00108, Paper 10
`(PTAB Oct. 7, 2015) ....................................................................................passim
`
`Sorenson v. Secretary of the Treasury, 475 U. S. 851 (1986) ................................. 58
`
`iv
`
`

`
`
`STATUTES
`
`CBM2016-00062
`U.S. Patent No. 6,771,970
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`America Invents Act (“AIA”) § 18(a)(1)(E) ............................................ 1, 10, 56, 59
`
`AIA § 18(d)(1) ..................................................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 1.321 ..................................................................................................... 12
`
`37 C.F.R. § 42.207 ............................................................................................... 1, 12
`
`37 C.F.R. § 42.300 ............................................................................................... 1, 23
`
`37 C.F.R. § 42.301 ............................................................................................passim
`
`37 C.F.R. § 42.304 ............................................................................................passim
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756
`(Aug. 14, 2012) ................................................................................. 10, 12, 13, 34
`
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention, 77 Fed.
`Reg. 48374 (Aug. 14, 2012) ........................................................................passim
`
`
`
`v
`
`

`
`
`
`Exhibit No.
`
`CBM2016-00062
`U.S. Patent No. 6,771,970
`
`PATENT OWNER’S TABLE OF EXHIBITS
`
`Exhibit Description
`
`2001
`
`Statutory Disclaimer filed on August 4, 2016, in U.S. Patent No.
`6,771,970.
`
`
`
`
`
`vi
`
`

`
`Pursuant to 37 C.F.R. § 42.207(a) and 37 C.F.R. § 42.300(a) the Patent
`
`CBM2016-00062
`Patent 6,771,970
`
`
`Owner, LocatioNet Systems, LTD (“LocatioNet” or “Patent Owner”), hereby
`
`submits the following Preliminary Response to the Petition seeking Covered
`
`Business Method (“CBM”) review of U.S. Patent No. 6,771,970 (the “’970
`
`Patent”). This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.207, as it
`
`is being filed within three months of the mailing date of the Notice of Filing Date
`
`Accorded to the Petition (Paper 3), mailed May 4, 2016.
`
`I.
`
`INTRODUCTION
`
`Petitioner was originally served with a complaint alleging infringement of
`
`the ’970 Patent back in December 2012. More than three years later, Petitioner is
`
`now faced with the USPTO’s recent confirmation of the challenged claims in
`
`reexamination and is time-barred from filing an inter partes review. Now, in
`
`another attempt to mire the ’970 Patent in post grant review and further forestall
`
`the district court action, Petitioner filed the present Petition. Though Petitioner
`
`pays lip service to the requirements of Sections 18(a)(1)(E) and 18(d)(1) of the
`
`America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 331 (2011), the
`
`Petition fails to demonstrate that the ’970 Patent meets the threshold standing
`
`inquiry of a “covered business method.”
`
`In order to initiate a CBM review, a petitioner first bears the burden of
`
`“demonstrat[ing] that the patent for which review is sought is a covered business
`
`
`
`1
`
`

`
`method patent.” 37 C.F.R. § 42.304(a). “[T]he term ‘covered business method
`
`CBM2016-00062
`Patent 6,771,970
`
`
`
`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.” AIA § 18(d)(1) (emphasis added).
`
`The Petition must fail because the ’970 Patent is not a covered business method
`
`patent and is not eligible for CBM review because (i) no claim of the ‘970 Patent
`
`meets the “financial product or service” prong, and (ii) the ‘970 Patent claims a
`
`technological invention.
`
`Patent Owner has filed a statutory disclaimer of claim 4, leaving only claims
`
`14-17 and 19 for the Board’s review.1
`
`II. ALLEGED GROUNDS
`A. Requirements for Covered Business Method Review
`Petitioner alleges that each of claims 4, 14-17 and 19 (“Alleged CBM
`
`Claims”) subjects the ’970 Patent to a CBM review. Petitioner further alleges that
`
`each of claims 4, 14-17 and 19 is directed to a system or method for performing
`
`data processing or other operations used in the practice, administration or
`
`1 While Patent Owner has disclaimed claim 4, removing it from consideration for
`
`CBM review, Patent Owner maintains that claim 4 is not directed towards a
`
`financial service or product and claims a technological invention.
`
`2
`
`

`
`
`management of a financial product of service, and furthermore that none of claims
`
`CBM2016-00062
`Patent 6,771,970
`
`4, 14 -17 and 19 satisfy the “technological invention” exception of § 18(d)(1) AIA.
`
`As explained below, the Petition fails to establish that the Alleged CBM
`
`Claims satisfy the standing requirements as set forth in § 18(d)(1) AIA and 37
`
`C.F.R. § 42.301. Thus, the Petition should be denied.
`
`B. Alleged Grounds of Invalidity
`Petitioner alleges that each of claims 14-17 and 19 (the “Challenged
`
`Claims”) is invalid solely pursuant to 35 U.S.C. § 103 as being obvious over
`
`various combinations of references (most of which were considered in
`
`reexamination). Though Petitioner alleges that claim 4 subjects the ’970 Patent to
`
`CBM review, the Petition does not challenge the patentability of claim 4 on any
`
`grounds.
`
`In particular, Petitioner alleges that claims 14, 16 and 19 are rendered
`
`obvious according to the following combinations:
`
` Maass, H., Location-aware mobile applications based on directory
`
`services, Mobile Networks and Applications, 3:157-173 (1998) (Ex.
`
`1009, “Maass”) and PCT Pub. No. WO99/46947 of Roel-Ng (Ex. 1010,
`
`“Roel-Ng”);
`
` Maass and U.S. Patent 4,742,357 of Rackley (Ex. 1015, “Rackley”); and
`
` Maass, Roel-Ng and Rackley.
`
`3
`
`

`
`The Petition further alleges that claims 15 and 17 of the ’970 Patent are
`
`CBM2016-00062
`Patent 6,771,970
`
`
`
`rendered obvious according to the following combinations:
`
` Maass, Roel-Ng and U.S. Patent 5,636,122 to Shah (Ex. 1011, “Shah”);
`
` Maass, Rackley and Shah; and
`
` Maass, Roel-Ng, Rackley and Shah.2
`
`The Petition fails to establish, and Patent Owner disputes, that the
`
`Challenged Claims are rendered obvious by any of the six alleged grounds and
`
`reserves all rights to present arguments refuting such allegations should the Board
`
`institute this proceeding. However, as none of the Alleged CBM Claims satisfies
`
`the requirements for instituting CBM review, the Board cannot consider the
`
`alleged obviousness grounds alleged by the Petition.
`
`III. TECHNICAL OVERVIEW OF THE ’970 PATENT
`The ’970 Patent is directed to a system and method for location tracking of
`
`mobile platforms. See Ex. 1001 at Abstract; 2:2-28; 3:4-24. The system
`
`architecture of the location tracking system described in the ’970 Patent requires a
`
`number of system elements associated with one another to achieve the specific
`
`
`2 Three of the four references (Maass, Roel-Ng and Shah) relied upon in the
`
`present petition were before the examiner during the reexamination in which all
`
`claims were confirmed.
`
`4
`
`

`
`
`operation and functionality disclosed therein. FIG. 1 illustrates an exemplary
`
`CBM2016-00062
`Patent 6,771,970
`
`schematic diagram of a system for tracking the locations of mobile platforms
`
`described by the ’970 Patent:
`
`
`
`More specifically, FIG. 1 is a diagram that shows location tracking systems
`
`11, 12, 13 and 14, each of which may be capable of tracking one or more mobile
`
`platforms (e.g., mobile telephone 21, car 22, laptop computer 23 and briefcase 24)
`
`according to a property that is predetermined for each mobile platform. Id. at 3:44-
`
`4:5. The location tracking systems 11-14 communicate with a communication
`
`subsystem 3 of a location determination system 1. Id. at 4:6-11. The location
`
`determination system 1 is linked to a map server 4 operating a map engine for
`
`accessing a map database 5. Id. at 4:15-17; FIGS. 1 and 3.
`
`5
`
`

`
`A subscriber to the location determination system 1 equipped with a
`
`CBM2016-00062
`Patent 6,771,970
`
`
`
`computer 60 running an Internet browser can request the location of a specific
`
`mobile platform by selecting the mobile platform on the website 50. Id. at 4:29-39.
`
`The request is passed from the website 50 to the location determination system 1,
`
`which accesses a database 2 to determine the appropriate location tracking system
`
`11-14 for locating the subscriber-selected mobile platform. Id. at 4:39-42. Thus,
`
`the subscriber need not know which tracking system can track the mobile platform,
`
`because the invention determines which remote tracking system is capable of
`
`locating the mobile platform according to a property that is predetermined for each
`
`mobile platform. See e.g., id. 1:38-67; 4:12-15; 4:39-42; 5:59-6:11. Also, the
`
`subscriber need not know how to format the request because the communication
`
`subsystem 3 formats the request and transmits it to the respective location tracking
`
`system 11-14 via the Internet 30. Id. at 4:46-48.
`
`The respective location tracking system 11-14 receives the request,
`
`determines the location of the subscriber-selected mobile platform, and transmits
`
`the location information back to the communication subsystem 3. Id. at 4:48-52.
`
`The communication subsystem 3 associates the location information with the
`
`request and passes it to the location determination system 1. Id. at 4:52-55. The
`
`location determination system 1 then passes the location of the subscriber-selected
`
`mobile platform to the map server 4. Id. at 4:55-56.
`
`6
`
`

`
`The map server 4 incorporates data related to the determined location on the
`
`CBM2016-00062
`Patent 6,771,970
`
`
`
`output map. Id. at 5:13-18. The map server 4 obtains a map of the area in which
`
`the subscriber-selected mobile platform is located from the map database using the
`
`map engine, marks the position of the mobile platform on the map and passes it to
`
`the location determination system 1. Id. at 4:56-59; see also 2:28-35. The map,
`
`including subscriber selected or all related map and location data, showing the
`
`location of the mobile platform is then passed to the subscriber’s computer 60. Id.
`
`at 4:60-61, 5:13-18; 5:45-50.
`
`The location tracking systems and methods described in the ’970 Patent are
`
`generally applicable to a variety of applications. See Ex. 1001 at Col. 1, ll. 11-67.
`
`In fact, the ’970 specification describes a variety of exemplary sources from which
`
`location data may be obtained. Those sources include: traffic information systems,
`
`electronic Yellow Page databases, video databases, L-commerce systems and free
`
`advertising systems. Ex. 1001 at Col 2, ll. 42-45. Further, nothing in the
`
`specification or the claims of the ’970 Patent require payment or any financial
`
`transaction in connection with the location determination system. Further yet,
`
`nothing in the specification limits the use of the claimed invention to any specific
`
`implementation, whether it be commercial or non-commercial.
`
`7
`
`

`
`
`IV. LITIGATION AND PTAB HISTORY OF ’970 PATENT
`The present CBM Petition is merely another attempt to further delay and
`
`CBM2016-00062
`Patent 6,771,970
`
`disrupt ongoing litigation. As the Petition briefly points out, Petitioner was sued
`
`more than three and a half years ago for infringement of the ’970 Patent. Ex. 1036.
`
`During those three and a half years, the ’970 Patent has been actively litigated,
`
`including but not limited to claim construction briefing, a Markman hearing and a
`
`claim construction order, and a lengthy stay as a result of the IPR filings. In the
`
`litigation, Petitioner also twice filed a motion to dismiss the complaint on the
`
`alleged grounds that the ’970 Patent is invalid for failing to claim patentable
`
`subject matter under 35 U.S.C. § 101.
`
`Further, the litigation has already been disrupted and delayed as a result of
`
`two inter partes review proceedings and an ex parte reexamination. Tellingly, it
`
`was after resolution of the two IPRs that all of the Challenged Claims were
`
`confirmed during the reexamination over the Maass, Roel-Ng and Shah references
`
`cited in the Petition, and an additional 22 claims were allowed and issued over
`
`those and other references. Now, more than three years later, Petitioner filed this
`
`Petition in a desperate attempt to delay and avoid the litigation and have another
`
`bite at the apple in this forum. However, since Petitioner is estopped from seeking
`
`inter partes review, it necessarily must attempt to argue that the ’970 Patent is a
`
`8
`
`

`
`
`CBM patent. The problem for Petitioner, however, is that the ‘970 Patent is not a
`
`CBM2016-00062
`Patent 6,771,970
`
`CBM patent.
`
`The Petition is replete with misleading and improper characterizations of the
`
`’970 Patent, its claims, and the positions of Patent Owner’s exclusive licensee,
`
`Callwave Communications, LLC (“Callwave”). In a strained effort to bring the
`
`Alleged CBM Claims of the ’970 Patent (which claim technological systems and
`
`methods of location tracking) into the realm of a covered business method patent,
`
`Petitioner argues that the Alleged CBM Claims, which expressly claim a system
`
`and method for determining the location of mobile platforms, are somehow really
`
`claims directed to a paid, commercial, advertising system. The Petition’s blatant
`
`mischaracterization of the plain language of the ’970 Patent’s claims can only be
`
`seen as yet another delay tactic perpetrated on Patent Owner and its licensee, at
`
`great expense to both.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that the definition of a person of ordinary skill in the art
`
`of the ’970 Patent, whether it be derived from Patent Owner, its exclusive licensee
`
`Callwave, or Petitioner, would not change Petitioner’s challenges or the
`
`determination thereof. For the purposes of this preliminary response, and only this
`
`response, Patent Owner submits the Board need not reach such a determination as
`
`9
`
`

`
`
`none of the Alleged CBM Claims falls within the purview of a proper CBM
`
`CBM2016-00062
`Patent 6,771,970
`
`review.
`
`Patent Owner reserves the right to submit its own definition as to the level of
`
`ordinary skill in the art, and support therefor, at a later time should the Board
`
`decide to institute this proceeding.
`
`VI. LEGAL STANDARD
`Petitioner bears the burden of showing that CBM review of the ’970 Patent
`
`is proper. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763; 37
`
`C.F.R § 42.304(a). According to AIA § 18(a)(1)(E), CBM review may be
`
`instituted “only for a patent that is a covered business method patent.” “[T]he term
`
`‘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.” AIA §
`
`18(d)(1); see also 37 C.F.R. § 42.301(a).
`
`CBM review was created “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. 48374, 48735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157 Cong.
`
`10
`
`

`
`
`Rec. S5432 (daily ed. Sep. 8, 2011)). To determine whether a patent is eligible for
`
`CBM2016-00062
`Patent 6,771,970
`
`a covered business method patent review, the focus is on the claims. AIA §
`
`18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R. § 42.301(a);
`
`CBM Final Rules, 77 Fed. Reg. at 48736 (comment 8) (“Determination . . . will be
`
`made based on the claims.” (emphasis added)).
`
`CBM review is not permitted for patents that claim generally useful
`
`technologies that also happen to have use in a commercial or business applications.
`
`J.P. Morgan Chase v. Intellectual Ventures II LLC, CBM2014-00160, Paper 11 at
`
`6-12 (PTAB Jan. 29, 2015) (denying CBM review of a patent claiming the use of
`
`encryption technology to “certify secure communications,” even though such
`
`technology is used in “nearly all electronic financial transactions,” because the
`
`claims “have general utility not limited or specific to any application”); see also
`
`AT&T Mobility LLC, , v. Intellectual Ventures II LLC, CBM2015-00185, Paper 10
`
`at 13 (PTAB May 4, 2016) (denying CBM review because “the challenged claims
`
`recite a method of general utility for providing a directory assistance call
`
`completion service to a wireless communication service subscriber, and the cited
`
`example from the ’352 patent makes clear that any financial aspect of the invention
`
`as discussed in the specification is, at most, a non-limiting example.”);
`
`ServiceNow, Inc. v. Hewlett-Packard, Co., CBM2015-00108, Paper 10 at 15
`
`(PTAB Oct. 7, 2015) (denying CBM review of patent claims that “are of general
`
`11
`
`

`
`
`utility, even though “at least one illustrative embodiment [was] directed to
`
`CBM2016-00062
`Patent 6,771,970
`
`applications of the claimed system in financial systems.”).
`
`Patents for “technological inventions” are exempt from CBM review, even if
`
`the patent meets the “financial product or service” prong. AIA § 18(d)(1). To
`
`determine whether a patent covers a technological invention, the Board must
`
`consider “whether the claimed subject matter as a whole recites a technological
`
`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). It is a petitioner’s
`
`“burden to show that [a patent] is not for a technological invention.” E*Trade Fin.
`
`Corp. v. Droplets, Inc., CBM2014-00123, Paper 15 at 10 (PTAB Oct. 30, 2014)
`
`“(denying CBM review because petitioner failed to show that the patent was not
`
`for a technological invention); see also 37 C.F.R. § 42.304(a) and Office Trial
`
`Practice Guide, 77 Fed. Reg. at 48763-64.
`
`VII. CLAIM 4 IS NOT SUBJECT TO CONSIDERATION OF MEETING
`THE CBM REQUIREMENTS
`
`Patent Owner has filed a statutory disclaimer of claim 4 pursuant to 37
`
`C.F.R. § 1.321(a). Ex. 2001. As a consequence of the disclaimer, the Board
`
`cannot base its determination on whether or not to institute a trial on claim 4. See
`
`37 C.F.R. § 42.207(e) (“[n]o post-grant review will be instituted based on
`
`disclaimed claims.”); Great West Casualty Company v. Intellectual Ventures II,
`
`12
`
`

`
`
`CBM2015-00171, Paper 10 at 7 (PTAB Feb. 9, 2016) (determining that disclaimed
`
`CBM2016-00062
`Patent 6,771,970
`
`claims are not subject to consideration of meeting CBM requirements); see also,
`
`Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under
`
`35 U.S.C. § 253 has the effect of canceling the claims from the patent and the
`
`patent is viewed as though the disclaimed claims had never existed in the patent.”).
`
`Therefore, the Board may only consider claims 14-17 and 19 for the
`
`purposes of determining that the ’970 Patent is not a CBM Patent.
`
`VIII. THE ’970 PATENT IS NOT A COVERED BUSINESS METHOD
`PATENT
`
`Petitioner bears the burden of showing that CBM review of the ’970 Patent
`
`is proper. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48763. Petitioner
`
`has failed to meet its burden because the Petition fails to demonstrate that the ’970
`
`Patent “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). Moreover, the Petition fails to
`
`demonstrate that the subject matter claimed in the ’970 Patent, viewed as a whole,
`
`does not recite a technological invention that is not novel and unobvious over the
`
`prior art, and that does not solve a technical problem using a technical solution.
`
`Thus, because the ’970 Patent does not satisfy either of the two, threshold
`
`13
`
`

`
`
`requirements for a CBM, and is therefore not eligible for CBM review, the Board
`
`CBM2016-00062
`Patent 6,771,970
`
`must deny the Petition.
`
`A. None Of The Alleged CBM Claims Is Directed To A Financial
`Product Or Service
`
`The express language of Claims 14-17 and 19 clearly demonstrate that these
`
`claims are not directed to a financial product or service. There is not even a
`
`financial-related term in any of the claims. Rather, the Petition attempts to cloak
`
`the claims, and particularly the term “subscriber,” in a shroud of financial activity
`
`that simply is not recited in the claims.
`
`The Petition also goes to great lengths to mischaracterize the ’970 patent and
`
`the Alleged CBM Claims as “advertising” systems or methods. See Paper 1 at 12,
`
`13, 15, 16. The Petition goes so far as to attempt to limit the term “subscriber,”
`
`used in the Alleged CBM Claims, to “advertisers.” Paper 1 at 34. Thus, not only
`
`does the Petition mischaracterize the unambiguous language of the claims, it also
`
`seeks to improperly limit the analysis of a claim term and the claims themselves.
`
`Put simply, the Alleged CBM Claims are devoid of any elements that
`
`reasonably could be argued as rooted in the financial sector or directed to a
`
`financial transaction. AT&T Mobility LLC, CBM2015-00185, Paper 10 at 10
`
`(denying CBM review of claims directed to methods of providing directory
`
`assistance call completion services to a wireless “subscriber” even though there
`
`14
`
`

`
`
`were numerous references in the claims and specification to “subscriber,”
`
`CBM2016-00062
`Patent 6,771,970
`
`“customer,” and “billing.”); CoreLogic Inc. v. Boundary Solutions, Inc.,
`
`CBM2016-00016, Paper 9 at 11 (PTAB May 24, 2016) (denying CBM review of
`
`patent for online delivery of map data acquired from public and private entities
`
`even though the patent “describes a business revenue model” and “contemplates
`
`generating revenue through various subscription agreements.”); ServiceNow, Inc.
`
`v. Hewlett-Packard, Co., CBM2015-00108, Paper 10 at 15 (denying CBM review
`
`of patent claims that “are of general utility, even though “at least one illustrative
`
`embodiment [was] directed to applications of the claimed system in financial
`
`systems.”); Qualtrics, LLC v. OpinionLab, Inc., CBM2015-00164, Paper 8 at 5
`
`(PTAB Feb. 3, 2016) (denying CBM review because claims were “devoid of any
`
`terms that reasonably could be argued as having any particular relation to a
`
`financial product or service,” even though the specification discussed using a
`
`claimed survey “for marketing and valuation of a website.”).
`
`
`1.
`
`Claims 14-17 and 19 are completely devoid of any terms
`having any particular relation to a financial product or
`service
`
`The Petition’s allegation that claims 14-17 and 19 are directed to a financial
`
`product or service are strained and unsupported by the specification. The Petition
`
`relies on its disingenuous allegation that claims 14-17 and 19 are directed towards
`
`“advertising systems and methods since they are configured to transmit location
`
`15
`
`

`
`
`information obtained from free advertising databases and financial systems…”
`
`CBM2016-00062
`Patent 6,771,970
`
`Petition at 16.
`
`The Alleged CBM Claims do not claim a system or method for advertising.
`
`The claims are expressly directed to a method of determining the location of a
`
`mobile platform (claim 14-15), a computer program product for determining a
`
`location of a mobile platform systems (claims 16-17), and a program storage device
`
`with instructions executable to perform a method of determining the location of
`
`mobile platforms (claim 19). Nothing in these claims expressly recites any
`
`financial product or service, let alone claim any activity incidental to a financial
`
`product or service.
`
`
`a.
`
`The Petition improperly limits the scope of claims 14-
`17 and 19.
`
`The Petition, relying on the ’970 Patent specification (and the subject matter
`
`of claim 43), alleges that the claimed systems and methods for determining t