Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: October 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`
`Case CBM2016-00062
`Patent 6,771,970 B1
`
`
`Before KARL D. EASTHOM, MICHAEL W. KIM, and FRANCES L.
`IPPOLITO, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: October 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`LOCATIONET SYSTEMS LTD.,
`Patent Owner.
`
`Case CBM2016-00062
`Patent 6,771,970 B1
`
`
`Before KARL D. EASTHOM, MICHAEL W. KIM, and FRANCES L.
`IPPOLITO, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`I. INTRODUCTION
`Petitioner, Google Inc., filed a Petition (Paper 1, “Pet.”) requesting a
`covered business method (CBM) patent review of claims 14−17 and 19 of
`U.S. Patent No. 6771,970 B1 (Ex. 1001, “the ’970 patent”). In response,
`Patent Owner, LocatioNet Systems Ltd., filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 6(b). Under 35 U.S.C. § 324,
`a covered business method patent review may not be instituted “unless . . . it
`is more likely than not that at least 1 of the claims challenged in the petition
`is unpatentable.” Because we determine that the ’970 patent is not a covered
`business method patent, we deny the Petition.
`
`A. Related Matters
`Petitioner and Patent Owner identify several related district court
`cases filed in the U.S. District Court for the District of Delaware. Pet. 29;
`Paper 5, 1. Additionally, Petitioner identifies IPR2014-00199 (instituting
`review, and finding unpatentable, claim 18 of the ’970 patent), IPR2014-
`00920 (instituting review of claims 1–17 and 19, and thereafter terminating
`due to a settlement), and Reexamination Control No. 90/013,370
`(confirming patentability of claims 1–17 and 19, and adding new claims 20–
`42). See id. at 4–5, 33 (citing Ex. 1004, 8; Ex. 1005, 10; Ex. 1006, 17).
`
`B. Petitioner’s Standing
`Petitioner states that it has been sued for infringement. Pet. 29.
`Petitioner also states that it is not estopped from challenging the claims on
`the grounds identified in the Petition. Id.
`
`2
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`C. The ’970 Patent (Ex. 1001)
`The ’970 patent describes a location determination system for
`providing information that locates mobile platforms, including with map and
`other types of information associated with the location. See Ex. 1001, Abs.;
`2:2–45, 3:4–24. Figure 1 of the ’970 patent follows:
`
`
`
`Figure 1 illustrates mobile platforms, including mobile telephone 21,
`car 22, laptop 23, and briefcase 24, and location tracking systems 11, 12, 13,
`14 that communicate with communication subsystem 3 of location
`determination system 1. Id. at 3:31–32; 3:44–4:11.
`Location determination system 1 links to database 2 and map server 4.
`A subscriber to location determination system 1, equipped with computer
`60, accesses website 50 and selects mobile platform 21–24 for which to
`request a location. Id. at 4:29– 39. Location determination system 1
`
`3
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`processes the request and accesses database 2 to determine the appropriate
`location tracking system (11–14) with which to locate the subscriber-
`selected mobile platform. Id. at 4:39–42; see id. at 4:12–15. Location
`determination system 1 passes the request and details of the appropriate
`location tracking system (11–14) to communication subsystem 3. Id. at
`4:42–45. The respective location tracking system 11–14 receives the request
`from communication subsystem 3, determines the location of the requested
`mobile platform, and transmits the location information back to
`communication subsystem 3. Id. at 4:46–52; 5:51–6:11.
`Communication subsystem 3 associates the location information with
`the request and passes it to location determination system 1, which passes
`the location of the requested mobile platform 21–24 to map server 4. Id. at
`4:52–56. Map server 4, using a map engine, obtains a map of the area
`surrounding the located mobile platform, marks the position of the mobile
`platform on the map, and passes that information to location determination
`system 1. Id. at 4:56– 59. Subscriber computer 60, running a web browser,
`then receives the location and map information. Id. 4:60–61; see id. at 5:19–
`24.
`
`In addition to providing platform location and map data, “data related
`to the determined location could also be incorporated in the output. A
`location data server (120) may be linked to a number of location databases,
`examples of which include traffic information data bases (121), Yellow
`Pages databases (122) and databases of video of the location (123).” Id. at
`5:5–10. Application servers 130 also may provide optional information,
`including “navigation information (131), managing movement of resources
`(132), such as for route planning between multiple destinations, billing
`
`4
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`and/or advertising (133) and emergency service management (134).” Id. at
`5:37–42, see Fig. 6 (showing servers 120 and 130).
`
`D. Illustrative Claim
`Independent claims 14, 16, and 19 are similar, and challenged claims
`15 and 17 respectively depend from claims 14 and 16.
`Independent claim 14 follows:
`14. A method of determining the location of mobile
`platforms, said mobile platforms between them being locatable
`by a plurality of remote tracking systems, each which is adapted
`to determine the location of a respective mobile platform
`according to a property that is predetermined for each mobile
`platform, the method comprising:
`
`(a) accepting inputs from a subscriber identifying one or
`more mobile platforms to be located;
`
`(b) determining for each mobile platform one of the
`remote tracking systems that is capable of locating said mobile
`platform;
`
`(c) communicating the identity of the one or more mobile
`platforms to be located to the determined remote tracking
`system(s);
`
`(d) receiving the location of each mobile platform from the
`respective remote tracking system; and
`
`(e) transmitting the location of each mobile platform to
`said subscriber.
`
`II. CBM REVIEW
`
`A 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.”
`
`5
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`Leahy-Smith America Invents Act § 18(d)(1), Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”). A CBM patent, therefore, contemplates two distinct
`aspects: (1) the financial product or service inquiry; and (2) the
`technological invention exception. Patent Owner disputes both aspects
`asserted by Petitioner. Prelim. Resp. 14−59. Petitioner bears the burden of
`demonstrating that the ’970 patent is a CBM patent. See 37 C.F.R.
`§ 42.304(a). For the reasons below, Petitioner has not met its burden of
`establishing the dispositive financial product or service aspect necessary to
`its demonstration.
`
`A. Disclaimed Claim 4
`Petitioner challenges claim 4. Patent Owner, however, disclaimed
`claim 4 subsequent to the filing of the Petition. See Prelim. Resp. 12 (citing
`Ex. 2001). Claim 4 ultimately depends from claim 1 (which recites elements
`that are similar to elements that claim 14 recites). Claim 4 recites the
`following: “A system according to claim 3, wherein said location
`information system obtains location information from selected ones of traffic
`information systems, electronic Yellow Page databases, video databases, L-
`commerce systems and free advertising systems.” Ex. 1001, 7:25–29.
`Petitioner contends that claim 4 confers CBM status on the ’970
`patent as follows: “Claim 4 explicitly claims advertising systems because
`advertising information is received as the location information from
`electronic Yellow Page databases, L-commerce systems, and free
`advertising systems.” Pet. 12. Petitioner explains that advertising is
`“incidental or complementary to a financial activity.” Id. (citations omitted).
`Petitioner also contends that “the ’970 Patent discloses that financial and
`advertising information is incorporated with the claimed transmission of
`
`6
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`location information, confirming that claim 4 of the ’970 Patent is incidental
`or complementary to the financial activity of product or service sales.” Pet.
`15 (citing Ex. 1001, 5:3–42).
`Patent Owner disagrees and contends that “as a consequence of the
`disclaimer, the Board cannot base its determination on whether or not to
`institute a trial on claim 4.” Prelim. Resp. 12–13 (citing C.F.R. § 42.207(e)
`(“[n]o post-grant review will be instituted based on disclaimed claims”) and
`Great West Casualty Company v. Intellectual Ventures II, CBM2015-00171,
`slip op. at 7 (PTAB Feb. 9, 2016) (disclaimed claims 1–10 not subject to
`consideration of CBM eligibility).
`We agree with Patent Owner. Although previous non-precedential
`decisions of the Board do not bind this panel, several Board panels
`confronted with the issue of CBM eligibility on the basis of disclaimed
`claims reached the same conclusion. See, e.g., CoreLogic, Inc. v. Boundary
`Solutions, Inc., Case CBM2016-00016, slip op. at 6–7 (PTAB May 24,
`2016) (Paper 9) (“[T]he disclaimed claims should not be consulted when
`determining whether the patent is a covered business method patent.”);
`AT&T Mobility LLC v. Intellectual Ventures II LLC, Case CBM2015-00185,
`slip op. at 10 (PTAB May 4, 2016) (Paper 10) (“[W]e will not consider the
`now-statutorily disclaimed claims in our determination.”); Great West
`Casualty Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip
`op. at 7 (PTAB Feb. 9, 2016) (Paper 10) (“[F]or the purposes of whether or
`not to institute a covered business method patent review, we treat [the
`disclaimed claims] as never having existed.”); Google Inc. v. SimpleAir,
`Inc., Case CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2014) (Paper
`
`7
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`11) (“[W]e treat the [challenged] patent as though [the disclaimed claims]
`never existed.”).
`On the other hand, other non-binding decisions have held that a
`disclaimed dependent claim that includes finance-related subject matter may
`be considered for purposes of CBM eligibility. See, e.g., J.P. Morgan Chase
`& Co. v. Intellectual Ventures II LLC, Case CBM2014-00157, slip op. at 2–
`3 (PTAB Feb. 18, 2015) (Paper 11) (“[S]tanding for covered business
`method patent review remains at least because disclaimer of claim 12 does
`not change the scope of independent claim 1, from which it depends.”).
`In conferring CBM status based on a disclaimed clam, J.P. Morgan
`Chase reasons that the surviving independent claim necessarily is broad
`enough to encompass the finance-related subject matter of a disclaimed
`dependent claim. See id. That rationale does not apply here, because
`disclaimed claim 4 does not depend from any of challenged claims 14–17
`and 19, and Petitioner has not articulated adequately any relevant
`relationship between disclaimed claim 4 and the other challenged claims.
`Based on the foregoing discussion, we do not consider disclaimed
`claim 4 in determining whether the ’970 patent is a CBM patent.
`B. Claims 14–17 and 19
`Petitioner contends that claims 14–17 and 19 also are
`directed to activities that are financial in nature, or at least
`incidental or complementary to the financial activity of product
`or service sales for two reasons: (1) because they are directed to
`advertising systems and methods since they are configured to
`transmit location information obtained from free advertising
`databases and financial systems, e.g., L-commerce systems and
`Yellow page databases, to subscribers, and (2) because the
`claims explicitly require transmitting location and/or a map to
`“subscribers” whereby a subscriber includes an advertiser under
`
`8
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`(“Callwave”)
`
`plaintiff Callwave Communications, LLC’s
`construction of the term.
`Pet. 16–17 (Ex. 1001, 5:3–42; Ex. 1026 ¶ 81).
`Petitioner points to extrinsic evidence that tends to show yellow pages
`databases and L-commerce systems provide advertising. See Pet. 13 (citing
`Ex. 1008; Ex. 1022; Ex 1026 ¶ 77). Patent Owner also cites to a disclosure
`in the ’970 patent that describes supplying advertising data (in addition to
`other data) in some embodiments:
`In addition to supplying map-based location data to requesting
`Web browsers, the location determination system (1) may also
`be configured to communicate with external application
`servers (130) via the Internet, PSTN or other communication
`medium. The application server may run a proprietary or
`commercial software system for, for example, supplying
`navigation information (131), managing movement of resources
`(132), such as for route planning between multiple destinations,
`billing and/or advertising (133) and emergency service
`management (134).
`Pet. 13–14 (quoting Ex. 1001, 5:33–42) (emphasis by Petitioner).
`Patent Owner responds that claims 14–17 and 19 are not directed
`towards “advertising systems and methods.” Prelim. Resp. 17. Patent
`Owner summarizes as follows:
`1) Claims 14–17 and 19 do not mention, let alone claim,
`L-commerce systems, free advertising systems or Yellow Pages
`databases; and
`2) Nothing in the claims recites or even suggests that
`obtaining and/or transmitting advertising materials is an element
`of the claimed system or methods.
`Prelim. Resp. 17.
`
`9
`
`
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`Patent Owner explains that
`the claims are expressly directed to a method of determining the
`location of a mobile platform (claim[s] 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.
`Prelim. Resp. 16.
`With respect to the ’970 patent disclosure, Patent Owner explains that
`[e]ven if the mere mention of the words “free advertising
`systems”, “Lcommerce systems” and “Yellow Pages databases”
`in the specification as a source for location information
`somehow matters (which it does not because it does not implicate
`a financial product or service) such language is simply not recited
`in claims 14–17 and 19.
`Id. at 17–18.
`Patent Owner’s arguments are persuasive. Claims 14–17 and 19 do
`not recite any elements that require any financial information, including
`advertising. Even though, as Petitioner alleges and as discussed in the
`Introduction (supra Section I.C), the Specification describes providing some
`optional information that may be described as financial (billing and/or
`advertising), the Specification describes using these, at most, as possible
`sources of information in some embodiments that may be supplied in
`addition to myriad types of other information. By way of example, the cited
`passages also show that the disclosed invention may include supplying non-
`advertising information such as route planning and navigation information,
`as optional additional data that may be supplied with the subject of claims
`
`10
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`14–17 and 19––location and map data for a moving platform. See Ex. 1001,
`Abstract, 3:1–41, 4:4–22, 5:33–42.
`It is not enough that a claim of general applicability, such as claims
`14–17 and 19, may read on prior art systems that happen to include finance-
`related elements. Rather, finding CBM eligibility requires a “focus[ ] on the
`claim language at issue” to determine whether there is anything “explicitly
`or inherently financial in the construed claim language.” Blue Calypso, LLC
`v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016).
`Similar logic applies to Petitioner’s argument that a plaintiff in the
`related District Court litigation alleged infringement scenarios wherein claim
`14 reads on an advertiser acting as the claimed “subscriber” who may send
`an advertisement containing location information. See Pet. 18–20 (citing Ex.
`1025, 13; Ex. 1026 ¶¶ 84–85). Petitioner does not provide a citation to the
`’970 patent Specification that specifically describes an advertiser as a
`subscriber who seeks a location of a mobile platform. Petitioner also fails to
`explain how challenged claim 14 requires or implies that a subscriber must
`be an advertiser who supplies advertisements. See id. Reading the
`challenged claims onto advertisers within the broad category of subscribers,
`who in turn optionally may provide financial activity and location data in the
`form of advertisements, is not sufficient to convert the generic claims into a
`finance-related claim eligible for CBM review. As indicated above, the
`disclosed system may provide optional advertisement information as one of
`a myriad of options to a typical subscriber (a non-advertiser) who primarily
`seeks to locate a vehicle platform by determining a tracking system capable
`of locating that platform (with possible map information). See Ex. 1001,
`Abstract, 2:42–45, 4:31–33, 4:55–61, 5:37–42; supra Section I.C.
`
`11
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`Several non-binding Board decisions have determined, under a similar
`analysis, that patents reciting generic claims that read on what may be
`described as financial activity disclosed in the patent as part of a general
`utility system, are not CBM eligible. See, e.g., Qualtrics, LLC v.
`OpinionLab, Inc., Case CBM2015-00164, slip op. at 5–6 (PTAB Feb. 3,
`2016) (Paper 8) (disclosed feedback employed to enhance “marketing” does
`not convert a patent generically claiming “soliciting feedback” into a CBM
`patent); ServiceNow, Inc. v. Hewlett-Packard Co., Case CBM2015-00077,
`slip op. at 5–12 (PTAB Sept. 17, 2015) (Paper 12) (disclosed “online
`ordering system” and Web services for “currency conversion” does not
`convert a patent with a generic claim reciting “a system for managing a Web
`service” into a CBM patent) (citing similar CBM cases); ServiceNow, Inc. v.
`BMC Software, Inc., Case CBM2015-00107, slip op. at 10–15 (PTAB Sept.
`11, 2015) (Paper 12) (in a specification describing a general utility system,
`reading patent claims reciting “fault analysis” onto a disclosed automatic
`teller machine does not convert the patent into a CBM patent).
`For similar reasons, contrary to Petitioner’s related arguments, merely
`reciting a “subscriber” in the challenged claims at issue here does not invoke
`CBM status as a financially related activity. See Pet. 20 & n.2 (stating that
`“[a] ‘subscriber’ includes one who agrees ‘to receive and pay for a
`periodical, service, etc.’”). Petitioner describes a subscriber as including a
`payment requirement and “an advertiser who pays for advertising services,”
`and also “identifies” a related District Court construction “in the event the
`Board finds that an express construction is necessary.” Id. at 34 (emphasis
`added). Petitioner then notes that in the District Court construction, a
`“subscriber” is “[a] person or company that subscribes to the location
`
`12
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`determination services.” Id. This latter construction does not require a
`payment as a necessary condition of satisfying the challenged claims. See
`Pet. 33. Furthermore, the ’970 patent does not specifically describe any
`money exchange, financial distribution, or financial data exchange as a
`result of having a subscription or as a result of being a subscriber. Rather, as
`indicated above, the focus of the disclosed ’970 patent system involves
`providing generic subscribers information concerning “location tracking of
`mobile platforms” wherein the system chooses from “a plurality of remote
`tracking systems.” See Ex. 1001, Abstract.
`Petitioner cites to another non-binding CBM Board case as
`“describing a user interface that allows promotional material to be displayed
`as incidental or complementary to a financial activity.” Pet. 20 (citing
`Allscripts Healthcare Solutions, Inc. v. Mymedical Records, Inc., Case
`CBM2015-00022, slip. op. at 10–11 (PTAB May 5, 2015) (Paper 10)).
`Notwithstanding that characterization, the panel in that case also found that
`“a necessary step in the [disclosed] enrollment process is that the user must
`enter valid credit card information, thereby completing the sale of the
`service for providing online access to health records,” which the panel tied
`to specific claim language. See Allscripts, slip op. at 11 (tying the disclosure
`to claim reciting “associating access information . . . to access a server”).
`Similarly, in other cases cited by Petitioner, the claims specifically
`recite advertising or other forms of finance-related activity, or at least
`closely tie financial activity as implied in claim terms to a prominently
`described aspect of the disclosed invention. See Pet. 15 (citing Google v.
`Unwired Planet, LLC, Case CBM 2014-00004, slip op. at 10 (PTAB Apr. 8,
`2014) (Paper 8) (Petitioner stating that “the Board found that a claim
`
`13
`
`
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`directed to a ‘method for receiving an advertisement over a mobile network’
`was CBM eligible”)); id. at 16 (citing Google Inc. v. Patrick Zuili, Case
`CBM2016-00008, slip op. at 10 (PTAB Apr. 25, 2016) (Paper 18) (“Claim 1
`refers to web pages that are associated with merchants. In addition, the
`specification contains numerous references to advertising and states that an
`objective of the invention is to ‘fairly invoice merchants’ by identifying
`fraudulent click activity.”)).
`
`C. Summary
`Petitioner has failed to meet its burden of showing that the ’970 patent
`is eligible for the transitional covered business method patent review
`program.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the ’970 patent is not a
`covered business method patent.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business
`method patent review is not instituted as to any claim of the ’970 patent.
`
`PETITIONER:
`
`Christopher Gaspar
`cgaspar@milbank.com
`Nathaniel Browand
`nbrowand@milbank.com
`Mark Scarsi
`mscarsi@milbank.com
`Philip Chen
`pchen@milbank.com
`
`14
`
`
`
`15
`
`CBM2016-00062
`Patent 6,771,970 B1
`
`Dat Nguyen
`dnguyen@milbank.com
`
`
`
`PATENT OWNER:
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`George Haight
`haightg@pepperlaw.com
`Andrew Schultz
`schultza@pepperlaw.com
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