U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`Apple Inc.,
`Petitioner
`
`v.
`
`OpenTV, Inc.,
`Patent Owner.
`
`Case No. ______
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW
`OF U.S. PATENT NO. 7,055,169 CHALLENGING CLAIMS 1, 2, 12, 22,
`AND 23 UNDER 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`TABLE OF CONTENTS
`
`
`Introduction ..................................................................................................... 1
`I.
`II. Grounds for Standing, Mandatory Notices, and Fee Authorization ............... 2
`A.
`The ’169 Patent Is A Covered Business Method Patent ...................... 2
`1.
`Covered Business Method Patents ............................................. 2
`2.
`The ’169 Patent Relates To Financial Activities ....................... 3
`3.
`The ’169 Patent Does Not Claim A Technological
`Invention .................................................................................... 7
`Petitioner Is A Real Party In Interest Sued For And Charged
`With Infringement .............................................................................. 10
`C. Mandatory Notices (37 C.F.R. § 42.8) ............................................... 10
`D.
`Fee Authorization ............................................................................... 11
`III. Summary of Challenges ................................................................................ 12
`IV. The Challenged Patent .................................................................................. 12
`A. Overview of the ’169 Patent ............................................................... 12
`B.
`Summary of Prosecution History of the ’169 Patent ......................... 13
`C.
`Level of Ordinary Skill In The Art .................................................... 15
`Claim Construction Of Challenged Claims .................................................. 15
`A.
`“Directive” (claims 1, 2, 22, and 23) ................................................. 16
`VI. Specific Explanation Of Grounds For Invalidity.......................................... 18
`A. Ground 1: Claims 1, 2, 12, 22, and 23 Are Invalid Under § 101 ....... 18
`1.
`Legal Standards ........................................................................ 18
`2.
`The Challenged Claims Are Directed To An Abstract
`Idea ........................................................................................... 19
`The Challenged Claims Lack an “Inventive Concept” ............ 24
`3.
`The Challenged Claims Are Not Patentable Under DDR ........ 28
`4.
`VII. Conclusion .................................................................................................... 32
`
`B.
`
`V.
`
`i
`
`
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`LIST OF EXHIBITS
`
`
`Exhibit No. Description
`
`U.S. Patent No. 7,055,169
`
`Prosecution File History of U.S. Patent No. 7,055,169
`
`U.S. Provisional application No. 60/373,883
`
`Declaration of Dr. Stephen Melvin
`
`Curriculum Vitae of Dr. Stephen Melvin
`
`OpenTV, Inc., et al. v. Apple Inc., Case No. 5:15-CV-02008-EJD,
`Complaint, Dkt. No. 1 (N.D. Cal., filed May 5, 2015).
`
`The American Heritage College Dictionary (3d ed. 1993) (excerpt)
`
`The New Shorter Oxford English Dictionary (1993) (excerpt)
`
`Exhibit A to Joint Claim Construction and Prehearing Statement
`from OpenTV, Inc., et al. v. Apple Inc., Case No. 5:15-CV-02008-
`EJD, Dkt. No. 74-1 (N.D. Cal., filed Feb. 12, 2016).
`
`OpenTV, Inc. v. Apple Inc., No. 5:15-CV-02008-EJD, Dkt. No. 72
`(N.D. Cal. Jan. 28, 2016).
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`ii
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,055,169 (“the ’169 Patent,” attached as Ex. 1001) relates
`
`to “interactive television systems” that provide services to subscribers “such as
`
`commerce via the television.” Ex. 1001 at 1:15-23. The claims of the ’169 Patent
`
`are directed to an abstract concept implemented using nothing more than
`
`conventional technology—the claims lack any technological innovation. See, e.g.,
`
`id. at claim 1. Thus, the ’169 Patent falls within the type of business method
`
`patents Congress had in mind when it enacted legislation to provide a program for
`
`Covered Business Method (“CBM”) review. See 37 C.F.R. § 42.301.
`
`Apple Inc. (“Petitioner”) hereby petitions the Patent Trial and Appeal Board
`
`of the United States Patent and Trademark Office (the “Board”) to institute a CBM
`
`review of claims 1, 2, 12, 22, and 23 of the ’169 Patent (the “Challenged Claims”)
`
`based on the following ground: The Challenged Claims are directed to an abstract
`
`idea—ensuring that necessary resources are available before commencing a
`
`presentation—and do not add any inventive concept, and are, therefore, invalid for
`
`claiming ineligible subject matter under 35 U.S.C. § 101. This ground is
`
`reasonably likely to prevail, and this Petition, accordingly, should be granted.
`
`1
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`II. GROUNDS FOR STANDING, MANDATORY NOTICES, AND FEE
`AUTHORIZATION
`A. The ’169 Patent Is A Covered Business Method Patent
`Covered Business Method Patents
`1.
`A CBM patent, as defined by the Leahy-Smith America Invents Act
`
`(“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 331 (2011) 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); 37 C.F.R. § 42.301.
`
`A patent is eligible for CBM review if it “claim[s] activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.” 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012) (citation omitted).
`
`The scope of CBM review “is not limited to products and services of only the
`
`financial industry, or to patents … directly affecting the activities of financial
`
`institutions such as banks and brokerage houses.” Versata Dev. Grp., Inc. v. SAP
`
`Am., Inc., 793 F.3d 1306, 1325 (2015). Rather, the term “‘financial product or
`
`service’ should be interpreted broadly.” 77 Fed. Reg. 48,734, 48,735; see also,
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00002,
`
`Institution Decision, Paper 36 at 23, (P.T.A.B. Jan. 9, 2013) (finding that the word
`
`“financial” is “an adjective that simply means relating to monetary matters.”). For
`
`2
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`example, CBM review is proper for patents related to “the electronic sale and
`
`distribution of digital audio and video signals” and the “selling [of] video and
`
`karaoke software via an interactive communication system.” Sightsound Techs.,
`
`LLC v. Apple Inc., 809 F.3d 1307, 1311 (Fed. Cir. 2015); Sony Comput. Entm’t
`
`Am. LLC v. ADC Tech. Inc., CBM2015-00026, Paper 10 at 13 (P.T.A.B. July 3,
`
`2015). The Board has jurisdiction to institute review if at least one challenged
`
`claim qualifies for CBM review. See Versata, 793 F.3d at 1326-27.
`
`The ’169 Patent Relates To Financial Activities
`
`2.
`The ’169 Patent qualifies for CBM review because it claims systems and
`
`methods that are financial in nature, incidental to a financial activity, or
`
`complementary to a financial activity. See 77 Fed. Reg. 48,734, 48,735.
`
`First, the ’169 Patent specification discloses interactive television systems
`
`that “provide a means to deliver interactive content as well as ordinary television
`
`audio and video to a large number of subscribers.” Ex. 1001 at 1:15-17. The ’169
`
`Patent describes using interactive television systems to conduct “commerce via the
`
`television.” Id. at 1:20-23. One example of such commerce is the “video-on-
`
`demand” or pay-per-view (“PPV”) service—a service that sells digital media
`
`content to subscribers for a fee. See id.; see also, id. at 7:9-12 (“Alternatively,
`
`retrieved data may be executed or utilized independently, such as for video-on-
`
`demand ….”); 41:38-39 (illustrating PPV-related parameters including
`
`3
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`“DOM_VK_RC_PURCHASE” and “DOM_VK_RC_PPV_SERVICES”). The
`
`’169 Patent describes other examples of commerce conducted by the disclosed
`
`system, including “online transaction[s] to purchase an advertised product” and
`
`“banking.” Id. at 7:50-54, 7:9-12.
`
`Second, the Challenged Claims recite methods and systems for
`
`administrating interactive television services. For example, claim 22 recites “[a]
`
`client device in an interactive television system” comprising a “processing unit”
`
`configured to determine whether a “receiver” permits or prohibits a presentation to
`
`the subscriber. See id. at claim 22. Specifically, the “processing unit” of claim 22
`
`is configured to determine whether an “interactive television system” presents
`
`certain content to a subscriber (i.e., “initiate said presentation …”) or blocks
`
`certain content (i.e., “prohibit initiation of said presentation …”). Id. A “client
`
`device” is used to conduct commerce relating to the purchase of media content by
`
`subscribers—i.e., “video-on-demand.” See id. at 1:20-23, 7:9-12, 41:38-39. In
`
`Sony Comput. Entm’t, the Board found that a claim reciting a “communication
`
`system” was sufficiently related to financial activities because the specification
`
`describes using the system for “selling video and karaoke software via an
`
`interactive communication system.” CBM2015-00026, Paper 10 at 8, 12-13. Even
`
`though the claims at issue in Sony do not recite financial limitations, the Board
`
`found the disclosed purpose of selling video and karaoke software to be “at a
`
`4
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`minimum, complimentary or incidental to a financial activity.” Id. at 13. The
`
`same reason applies in this case—claim 22 of the ’169 Patent is, at a minimum,
`
`incidental to or complementary to the financial transaction of selling video-on-
`
`demand media content to subscribers.
`
`Third, the financial nature of the ’169 Patent is confirmed by Patent Owner’s
`
`infringement allegations against financial activity performed by “Apple’s iTunes
`
`Store” in the related district court litigation. See Ex. 1006 (District Court
`
`Complaint) at ¶ 75. According to Patent Owner’s Complaint, Apple’s iTunes Store
`
`conducts financial transactions to allow consumers to “purchase and download a
`
`variety of content such as music, music videos, television shows, audiobooks,
`
`podcasts, movies, and movie rentals, and ringtones.” Id. at ¶ 41. Patent Owner
`
`further alleged that the iTunes software controls consumers’ access to purchased
`
`and rented content: “When a user pays to rent a movie, the movie is available for
`
`viewing within 24 hours of when they first start watching it.” Id. The Federal
`
`Circuit has confirmed that the electronic sale of digital media is a “financial
`
`activity” or “financial service.” Sightsound Techs., 809 F.3d at 1315-16. Because
`
`Patent Owner “alleges that a financial product or service infringes its patent, that
`
`patent shall be deemed to cover a ‘financial product or service.’” Salesforce.com
`
`Inc. v. Virtualagility, Inc., CBM2013–00024, Paper 47 at 9-10 (P.T.A.B. Sept. 16,
`
`5
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`2014) (citing 157 Cong. Rec. S1365 (daily ed. Mar. 8, 2011) (statement of Sen.
`
`Schumer)).
`
`Fourth, the ’169 Patent is eligible for CBM review even if its claims do not
`
`literally describe a financial transaction. In Sony Comput. Entm’t Am., the Board
`
`explained that “the literal recitation of financial products or services in a claim” is
`
`not required for CBM review. See Case CBM2015-00026, Paper 10 at 12-13. In
`
`Salesforce.com Inc., the Board found the challenged claims eligible for CBM
`
`review because the specification disclosed financial-related embodiments; that
`
`disclosure indicated that “the claimed methods and apparatus can be used in the
`
`practice, administration, or management of a financial product or service,” even
`
`though the claims are not limited to financial transactions. CBM2013–00024,
`
`Paper 47 at 8-9 (emphasis added). Similarly, in Global Tel*Link Corp. v. Securus
`
`Techs., Inc., the Board confirmed that a patent is eligible for CBM review without
`
`“the literal recitation of financial products or services in a claim” as long as its
`
`specification describes using the claimed invention for financial transactions. See
`
`CBM2015-00145, Paper 20 at 13-14 (B.P.A.I. Nov. 25, 2015) (citing Versata, 793
`
`F.3d at 1325).
`
`In PNC Bank v. Secure Axcess LLC, the Board instituted CBM review for
`
`claims not expressly limited to financial activities “because the patent specification
`
`includes discussions of financial services using the claimed systems and processes,
`
`6
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`and because Patent Owner has sued … financial institutions.” CBM2014-00100,
`
`Paper 10 at 14 (P.T.A.B. Sept. 9, 2014). The ’169 Patent is eligible for CBM
`
`review for the same reason—it claims an “interactive television system” that is
`
`described by the specification to facilitate “commerce via the television.” Ex.
`
`1001 at 1:20-23, 7:50-54. And Patent Owner has asserted the ’169 Patent against
`
`“Apple’s iTunes Store,” an online marketplace for the sale of digital media. See
`
`Ex. 1006 at ¶ 75. Accordingly, the ’169 Patent is sufficiently related to financial
`
`activities to qualify for CBM review. See 77 Fed. Reg. 48,734, 48,735.
`
`The ’169 Patent Does Not Claim A Technological Invention
`
`3.
`The ’169 Patent does not claim a technological invention because the
`
`Challenged Claims recite the application of a method using conventional computer
`
`hardware and programming techniques.
`
`To determine whether a patent claims a technological invention, the Board
`
`considers “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). The following claim
`
`drafting techniques, for example, typically do not 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
`
`7
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`medium, scanners, display devices or databases, or
`specialized machines, such as an ATM or point of sale
`device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that 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. 48,756, 48,764.
`
`The Challenged Claims merely recite the use of known prior art technology
`
`to accomplish a process or method. For example, claim 22 recites the use of
`
`known electronic hardware, including “interactive television system,” “client
`
`device,” “receiver,” and “processing unit.” See Ex. 1001 at claim 22. The ’169
`
`Patent specification acknowledges that these hardware components were widely
`
`used in the field of interactive televisions at the time of the invention. See, e.g., id.
`
`at 1:31-34 (“The interactive functionality of the television is generally controlled
`
`by an integrated receiver/decoder (IRD) or similar mechanism, frequently
`
`incorporated into a set-top box, connected to the television.”); 2:16-25. In
`
`describing an embodiment of a “client” device, the ’169 Patent discloses using
`
`“ordinary general purpose” computer components such as a microprocessor and
`
`RAM memory. See id. at 5:25-35 (“Client 1012 includes a control unit 1030 ….
`
`Control unit 1030 may comprise a microprocessor, memory (e.g., RAM), and other
`
`8
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`components which are necessary to perform ordinary general purpose
`
`computing.”). These computer components neither provide a new technological
`
`feature nor solve a technical problem using a technical solution. See 37 C.F.R. §
`
`42.301(b).
`
`The disclosure of “directives” by the ’169 Patent does not constitute a
`
`technological invention. Claim 22 recites using “directives” to determine whether
`
`to “initiate [a] presentation” or “prohibit initiation of said presentation.” Ex. 1001
`
`at claim 22. The specification describes “directives” as “declarations or other
`
`statements used in the creation and/or manipulation of resources and content.” Id.
`
`at 47:7-10. While the specification discloses “HTML, JavaScript, CSS, and other
`
`such languages and constructs” as examples of computer programming languages
`
`that can be used to implement “directives,” the claims are not limited to either
`
`computer languages and constructs in general or the specific languages and
`
`constructs identified in the specification. See id. at 47:2-5, claim 22. And the ’169
`
`Patent implements “directives” using “languages and constructs which are
`
`commonly used in creating and manipulating Web content;” there is no disclosure
`
`of a new computer language or a novel mechanism to implement directives. Id. at
`
`47:5-7 (emphasis added). Therefore, the ’169 Patent’s use of prior art
`
`technology—known computer languages and constructs executed on general-
`
`purpose computer hardware—cannot qualify as a “technology invention.” See
`
`9
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`Sightsound Techs., 809 F.3d at 1316 (affirming institution of CBM review for
`
`claims that use “generic hardware devices known in the prior art”).
`
`Claims 1, 2, and 12 of the ’169 Patent are method claims that are untethered
`
`to any specific hardware. Thus, they do not claim a technological invention for at
`
`least the same reasons as those provided above for claim 22. Claim 23 is a
`
`Beauregard claim reciting a method similar to claim 1. Rewriting a method claim
`
`in a “computer readable medium” form does not constitute a technological
`
`invention. See 77 Fed. Reg. 48,756, 48,764.
`
`The Challenged Claims are eligible for CBM review because (1) they recite
`
`activities that are at least incidental or complementary to a financial activity, and
`
`(2) they do not recite a technological invention.
`
`B.
`
`Petitioner Is A Real Party In Interest Sued For And Charged
`With Infringement
`
`Petitioner has been sued for alleged infringement of the ’169 Patent in
`
`OpenTV, Inc., et al. v. Apple Inc., Case No. 5:15-CV-02008-EJD, pending in the
`
`U.S. District Court for the Northern District of California. Neither Petitioner, nor
`
`any privy of Petitioner, is estopped from challenging the claims on the grounds
`
`identified in this Petition.
`
`C. Mandatory Notices (37 C.F.R. § 42.8)
`Real party-in-interest: Apple, Inc.
`
`Related matters: OpenTV, Inc. v. Apple Inc., 5:15-CV-02008-EJD (N.D. Cal.).
`
`10
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`
`Lead and back-up counsel:
`• Lead Counsel: Mark E. Miller (Reg. No. 31,401), O’Melveny & Myers LLP,
`
`Two Embarcadero Center, 28th Floor, San Francisco, CA 94111. (Telephone:
`
`415-984-8700; Fax: 415-984-8701; Email: markmiller@omm.com.)
`• Backup Counsel: Ryan K. Yagura (Reg. No. 47,191), Anne E. Huffsmith (Reg.
`
`No. 57,041), Brian M. Cook (Reg. No. 59,356), Xin-Yi Zhou (Reg. No.
`
`63,366), and John Kevin Murray (Reg. No. 69,529), O’Melveny & Myers LLP,
`
`400 S. Hope Street, Los Angeles, CA 90071. (Telephone: 213-430-6000; Fax:
`
`213-430-6407; Emails: ryagura@omm.com, ahuffsmith@omm.com,
`
`bcook@omm.com, vzhou@omm.com, and kmurray2@omm.com).
`
`Service of documents may be made to Apple’s counsel at O’Melveny &
`
`Myers LLP, Two Embarcadero Center, 28th Floor, San Francisco, CA 94111, with
`
`courtesy copies to the email addresses identified above.
`
`Fee Authorization
`
`D.
`The Office is authorized to charge an amount in the sum of $30,000 to
`
`Deposit Account No. 50-0639 for the fee set forth in 37 CFR § 42.15(b) for this
`
`Petition, and any additional fees that might be due in connection with this Petition.
`
`11
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`III. SUMMARY OF CHALLENGES
`Petitioner requests that claims 1, 2, 12, 22, and 23 be cancelled on the
`
`following ground: Claims 1, 2, 12, 22, and 23 are invalid under 35 U.S.C. § 101 for
`
`claiming ineligible subject matter.
`
`IV. THE CHALLENGED PATENT
`A. Overview of the ’169 Patent
`The ’169 Patent “relates generally to interactive television systems.” Ex.
`
`1001 at 1:11-13. The specification describes interactive television systems that
`
`“provide a means to deliver interactive content as well as ordinary television audio
`
`and video to a large number of subscribers.” Id. at 1:15-17. For example, the
`
`interactive television systems provide services such as “commerce via the
`
`television, electronic program guides (EPGs), video-on-demand, and other
`
`interactive applications to viewers.” Id. at 1:20-23. The interactive television
`
`systems can also execute applications that administer, for example, “an online
`
`transaction to purchase an advertised product.” See id. at 7:48-58.
`
`The claims of the ’169 Patent define methods and systems that involve “an
`
`audio, video and/or graphic presentation requiring a set of resources.” See id. at
`
`claims 1, 22, and 23. The claims recite receiving “directives” that indicate a
`
`presentation which requires a set of resources. Id. The ’169 Patent describes
`
`“directives” as “declarations or other statements used in the creation and/or
`
`manipulation of resources and content.” Id. at 47:7-10. For example, these
`
`12
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`“directives” can be comprised of a markup language, a scripting language, and/or a
`
`style sheet. Id. at 46:54-47:10, claim 2.
`
`The claims of the ’169 Patent further recite that “directives” may include a
`
`“prerequisite directive” indicating that “acquisition of a subset of said set of
`
`resources is a prerequisite” either “for initiating the presentation” or “for the
`
`presentation.” Id. at claims 1, 22, and 23; see also, id. at Abstract, 2:33-57, 21:8-
`
`52, 26:46-54, 47:11-48:67. The claimed method and system require determining
`
`whether any of the received “directives” are “prerequisite directives,” indicating
`
`that a subset of the resources must be acquired. Id. If the “directives” do not
`
`include a “prerequisite directive,” then the presentation is initiated. Id. If the
`
`“directives” include a “prerequisite directive” indicating that there are resources
`
`that must be acquired, then the method or system “prohibit[s]” the initiation or
`
`presenting of the presentation until the “prerequisite” resources are acquired. Id.
`
`In one claim, the “prohibiting” step is modified such that the presentation is
`
`“allow[ed]” after determining that a time for expiration has expired. Id. at claim
`
`12.
`
`Summary of Prosecution History of the ’169 Patent
`
`B.
`The ’169 Patent issued from U.S. Patent App. No. 10/419,621 (the “’621
`
`Application”). The ’621 Application was filed on April 21, 2003, claiming priority
`
`13
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`to Provisional application No. 60/373,883 (Ex. 1003) filed on April 19, 2002. See
`
`Ex. 1001 at Cover.
`
`On October 15, 2004, the Examiner issued a non-final office action rejecting
`
`all pending claims. Ex. 1002 at 239-247. The Examiner found claims 1-7, 11-16,
`
`and 20-23 to be anticipated by U.S. Patent Pub. No. 2002/0010798 A1 (“Ben”) and
`
`claims 8-10 and 17-19 to be obvious in view of Ben. Id. at 241, 245.
`
`On January 21, 2005, Patent Owner responded to the Office Action by
`
`amending claims 1-4, 13-15, and 21-22 “to further clarify the nature of the claimed
`
`invention” and by arguing that Ben does not include “any disclosure related to the
`
`recited ‘determining’, ‘prerequisite directive’, or ‘subset of resources,’” nor does it
`
`disclose “initiating or prohibiting as recited.” Id. at 253-263. According to Patent
`
`Owner, Ben merely “describe[s] the delivery of content to end customers and
`
`describe[s] the ability to create server profiles.” Id. at 260. Patent Owner further
`
`argued that “the directives editor of Ben is a tool for generating service profiles
`
`and is not directly related to Applicant’s claimed directives which are indicative of
`
`‘an audio, video and/or graphic presentation which requires a set of resources.’”
`
`Id. Patent Owner also argued that Ben did not disclose a “billing directive,” but
`
`that even if it had, “such a directive would merely serve to allow or deny access to
`
`a presentation and would not be equivalent to the features recited in claim 1.” Id.
`
`at 260-261.
`
`14
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`On June 29, 2005, the Examiner issued a Notice of Allowance for all of the
`
`pending claims. Id. at 264-266. On July 14, 2005, the Examiner issued a
`
`Supplemental Notice of Allowance and an Examiner’s Amendment, amending
`
`claim 23 based on then-existing case law on patent eligibility. Id. at 272-275.
`
`Another Supplemental Notice of Allowance issued on November 28, 2005 (id. at
`
`282-285), and the patent issued on May 30, 2006.
`
`C. Level of Ordinary Skill In The Art
`One of ordinary skill in the art would be someone with a bachelor’s degree
`
`or higher in computer science, computer engineering, or the equivalent, plus two or
`
`more years of experience in the field of software development. Ex. 1004 at ¶¶ 17-
`
`22.1 A hypothetical person having ordinary skill in the art at the time of the
`
`alleged invention shall be referred to herein as a “POSITA.”
`
`V. CLAIM CONSTRUCTION OF CHALLENGED CLAIMS
`In the context of a CBM review, “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the patent
`
`in which it appears.” 37 C.F.R. § 42.300(b). The ’169 Patent has not expired;
`
`Petitioner, therefore, proposes constructions for certain claim terms according to
`
`their broadest reasonable interpretation in light of the specification. Because the
`
`
`1 Petitioner submits the declaration of Dr. Stephen Melvin (Ex. 1004), an expert in
`
`the field of the ’169 Patent, and Dr. Melvin’s CV (Ex. 1005) herewith.
`
`15
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`claim construction standard in this proceeding differs from the standard applicable
`
`to a district court litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
`
`1364, 1369 (Fed. Cir. 2004), Petitioner expressly reserves the right to argue in
`
`litigation a different construction for any term recited by the claims of the ’169
`
`Patent.2 For terms not specifically construed below, Petitioner interprets them in
`
`accordance with their plain and ordinary meaning consistent with the broadest
`
`reasonable interpretation standard.
`
`“Directive” (claims 1, 2, 22, and 23)
`
`A.
`In light of the ’169 Patent specification, the broadest reasonable construction
`
`of “directive” is “declaration or instruction.” See Ex. 1004 at ¶¶ 41-44.
`
`
`2 Petitioner reserves the right to argue in the district court litigation that one or
`
`more terms of the ’169 Patent are indefinite under 35 U.S.C. § 112, ¶ 2 for failing
`
`to “inform those skilled in the art about the scope of the invention with reasonable
`
`certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129-30
`
`(2014). Specifically, Petitioner contends that the terms “prerequisite
`
`directive” (claims 1, 2, 22, and 23), “wherein said prohibiting …” (claim 12), and
`
`“a processor unit … configured to …” (claim 22) are indefinite under 35 U.S.C. §
`
`112, ¶ 2 and/or ¶ 6. Petitioner does not, however, propose grounds of invalidity
`
`based on indefiniteness in this CBM Petition.
`
`16
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`Petitioner’s proposed construction is consistent with the plain and ordinary
`
`meaning of the term. The American Heritage College Dictionary defines
`
`“directive” as: “An order or instruction, esp. one from a central authority.” Ex.
`
`1007 at 393. The New Shorter Oxford English Dictionary defines “directive” as:
`
`“Something that directs; spec. a general instruction for procedure or action given to
`
`a subordinate.” Ex. 1008 at 680.
`
`Petitioner’s proposed construction is also supported by the specification.
`
`The ’169 Patent explains: “[T]he declarations or other statements used in the
`
`creation and/or manipulation of resources and content in this document may be
`
`generally referred to as ‘directives.’” Ex. 1001 at 47:7-10. The specification
`
`further explains: “In one embodiment, a device in an interactive television system
`
`is configured to receive one or more directives provided by a content author which
`
`describe or otherwise indicate an audio and/or video presentation.” Id. at 2:39-42.
`
`Thus, in the context of the patent specification, a POSITA would understand
`
`“directive” to mean “declaration or instruction.” See Ex. 1004 at ¶¶ 41-44.
`
`Although the specification provides “declaratory languages” and “HTML,
`
`JavaScript, CSS, and other such languages and constructs” as examples of
`
`computer languages and constructs that can be used to implement “directives,” the
`
`’169 Patent does not limit “directives” to computer languages and constructs. See
`
`Ex. 1001 at 47:2-5. The examples from the specification describe certain
`
`17
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`embodiments of the disclosed invention and do not constitute a clear definition or
`
`an intentional disavowal of claim scope. See Hill-Rom Servs. v. Stryker Corp., 755
`
`F.3d 1367, 1371 (Fed. Cir. 2014). Any interpretation limiting “directives” to
`
`computer languages would be an improper attempt to “import limitations from the
`
`specification into the claims.” Id. at 1372-73.
`
`Accordingly, Petitioner submits that the broadest reasonable construction of
`
`“directive” in light of the ’169 Patent specification is “declaration or instruction.”
`
`See Ex. 1004 at ¶¶ 41-44.
`
`VI. SPECIFIC EXPLANATION OF GROUNDS FOR INVALIDITY
`A. Ground 1: Claims 1, 2, 12, 22, and 23 Are Invalid Under § 101
`Legal Standards
`1.
`There are three well-established exceptions to the scope of patent-eligible
`
`subject matter under 35 U.S.C. § 101: “Laws of nature, natural phenomena, and
`
`abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.
`
`Ct. 2347, 2354 (2014).
`
`Patent eligibility under 35 U.S.C. § 101 is determined by a two-step test: (1)
`
`whether the “claims at issue are directed to one of [the three] patent-ineligible
`
`concepts,” and (2) if so, whether the claim elements add “an ‘inventive concept’
`
`sufficient to transform the claimed abstract idea into a patent-eligible application.”
`
`Alice Corp., 134 S. Ct. at 2355, 2357 (citing Mayo Collaborative Servs. v.
`
`Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). The Board has authority to
`
`18
`
`

`
`U.S. Patent No. 7,055,169
`Petition for Covered Business Method Patent Review
`review subject matter eligibility in a CBM proceeding. Versata Dev. Group, Inc.,
`
`793 F.3d at 1330.
`
`Claims 1, 2, 12, 22, and 23 of the ’169 Patent fail both steps of the Alice test:
`
`(1) these claims are directed to an abstract idea, and (2) the limitations in these
`
`claims lack any inventive concept sufficient to confer patent eligibility.
`
`The Challenged Claims Are Directed To An Abstract Idea
`
`2.
`The Challenged Claims cover the abstract idea of ensuring that necessary
`
`resources are available before commencing a