`571-272-7822
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`Paper7
`Entered: April 26, 2017 —
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BROADSIGN INTERNATIONAL, LLC,
`Petitioner,
`
`V.
`
`T-REX PROPERTY AB,
`Patent Owner.
`
`Case CBM2017-00008
`Patent 6,430,603 B2
`
`Before BRIAN J. MCNAMARA, BARBARA A. BENOIT,and
`KERRY BEGLEY,Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`
`CBM2017-00008
`Patent 6,430,603 B2
`
`I. INTRODUCTION
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`This is a preliminary proceeding to decide whether, under
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`section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112—
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`29, 125 Stat. 284, 331 (2011) (“AIA”), a covered business method
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`patent review of U.S. Patent No. 6,430,603 B2 (Ex. 1001, “the
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`603 patent” or “the challenged patent”), should be instituted under
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`35 U.S.C. § 324(a).! A covered business method patent review may
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`. the informationpresented in the
`not be instituted “unless. .
`petition .. ., if such information is not rebutted, would demonstrate that
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`it is more likely than not that at least 1 of the claims challenged in the
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`petition is unpatentable.” 35 U.S.C. § 324(a); see 37 C.F.R. § 42.208.
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`Broadsign International, LLC filed a Petition requesting covered
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`business methodpatent review of claims 1, 11-13, 42, 43, and 48-74
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`of the challenged patent. Paper 2 (“Pet.”). Patent Ownerfiled a
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`Preliminary Response. Paper6 (Prelim. Resp.”).
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`For the reasons that follow, we do not institute a covered
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`business methodpatent review.
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`A. Related Matters
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`Asrequired by 37 C.F.R. § 42.8(b)(2), each party identifies
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`various judicial or administrative matters that would affect or be
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`! GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015)
`(describing transitional program for review of covered business
`method patents under 35 U.S.C. §§ 321-329, pursuant to the AJA,as
`subject to “the standards and procedures of[] a post-grant review
`under... 35 U.S.C. §§ 321-329,” absent exceptions not applicable
`here).
`
`
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`CBM2017-00008
`Patent 6,430,603 B2
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`affected by a decision in this proceeding. Pet. 1-7; Paper 4, 2-6
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`(Patent Owner’s Mandatory Notices).
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`B. The ’603 Patent
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`The 603 patentis titled “System for Direct Placement of
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`Commercial Advertising, Public Service Announcements, and Other
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`Content on Electronic Billboard Displays” and describes ways to
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`display content on electronic displays. Ex. 1001, [54], 2:50—53.
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`1. Written Description
`
`The challenged patent describes a system “for direct placement
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`of commercial advertisements, public service announcements and other
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`content on electronic displays.” Jd. at 2:50—53, Fig. 1. According to
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`the challenged patent, the electronic displays “are located in high
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`traffic areas in various geographic locations,” such as “areas of high
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`vehicular traffic, and also at indoor and outdoorlocations of high
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`pedestriantraffic, as well as in movie theaters, restaurants, sports
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`arenas.” Jd. at 2:54-60. “In preferred embodiments, each display is a
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`large (for example, 23 feet by 33’% feet), high resolution, full color
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`display that providesbrilliant light emission from a flat panel screen.”
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`Id. at 2:62-65.
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`2.
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`Illustrative Claims
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`Claims 13 and 48 are independentandillustrate the challenged
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`subject matter.
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`13. A system for presenting video orstill-image
`content at selected times and locations on a networked
`connection of multiple electronic displays, said system
`comprising:
`
`
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`CBM2017-00008
`Patent 6,430,603 B2
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`a network interconnecting a plurality of electronic
`displays provided at various geographic locations;
`means for scheduling the presentation of video or
`still-image content at selected time slots on selected
`electronic displays of said network and receiving said video
`orstill-image content from a content provider;
`
`transmission means in communication with said
`receiving means for communicating scheduled content to
`respective server devices associated with corresponding
`selected electronic displays of said network, each said
`associated device initiating display of said videoorstill-
`image contentat selected times on a correspondingselected
`electronic display of said network.
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`Id. at 8:47-62.
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`48. A method for presenting video orstill-image
`content at selected times and locations on a networked
`connection of multiple electronic displays, said method
`comprising:
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`a) providing a network interconnecting a plurality of
`electronic displays at various geographic locations;
`
`schedule
`to
`content provider
`enabling a
`b)
`presentation of videoorstill-image content at selected time
`slots on selected electronic displays of said network and
`receiving said videoorstill-image content from a content
`provider;
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`c) providing a plurality of server devices, each server
`device associated with a corresponding electronic display;
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`d) communicating received video or still-image
`content to the associated server devices of corresponding
`selected electronic displays of said network; and,
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`e) said server device initiating display of said video
`or still-image content at selected times on an associated
`electronic display of said network.
`
`Td. at 11:34-53.
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`
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`CBM2017-00008
`Patent 6,430,603 B2
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`C. Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1, 11-13, 42, 43, and 48-74are
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`unpatentable under 35 U.S.C. § 101 as being directed to an abstract
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`idea and claim 13 also is unpatentable under 35 U.S.C. § 112, 9 2 as
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`indefinite. Pet. 36-81, 86-87.
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`II. DISCUSSION
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`A. Claim Construction
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`In a covered business method patent review, we construe claim
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`terms in an unexpired patent according to their broadest reasonable
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`construction in light of the specification of the patent in which they
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`appear. 37 C.F.R. § 42.200(b); Versata Dev. Grp., Inc. v. SAP Am.,
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`Inc., 793 F.3d 1306, 1328 (Fed. Cir. 2015) (affirming use of the
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`broadest reasonable construction standard in a covered business
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`methodpatent review); cf Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
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`2131, 2144-46 (2016) (upholding the use of the broadest reasonable
`
`interpretation standard in an inter partes review). Claim terms
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`generally are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the
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`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007). To rebut this presumption by acting as a
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`lexicographer, the patentee must give the term a particular meaning in
`the specification with “reasonableclarity, deliberateness, and
`precision.” Jn re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
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`addition, the broadest reasonable construction of a claim term cannot
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`be so broad that the construction is unreasonable undergeneral claim
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`an
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`
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`CBM2017-00008
`Patent 6,430,603 B2
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`construction principles. Cf Microsoft Corp. v. Proxyconn, Inc., 789
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`F.3d 1292, 1298 (Fed. Cir. 2015) (discussing broadest reasonable
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`construction in the context of an inter partes review).
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`Petitioner proposes constructions for several terms that recite
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`“means.” Pet. 33-35; see 37 C.F.R. § 42.104(b)(3) (A petition must
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`set forth “[h]ow the challenged claim is to be construed. Where the
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`claim to be construed contains a means-plus-function or step-plus-
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`function limitation as permitted under 35 U.S.C. 112(f), the
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`construction of the claim must identify the specific portions of the
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`specification that describe the structure, material, or acts corresponding
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`to each claimed function.”). Patent Owner does not addressdirectly
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`Petitioner’s proposed constructions. See generally Prelim. Resp. 1-11.
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`Weconcludethat no term needsto be construed expressly in
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`order for us to determine whether a covered business methodpatent
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`review should beinstituted.
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`B. Covered Business Method Patent
`
`The AIA defines a “covered business method patent” as “a
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`patent that claims a method or corresponding apparatus for performing
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`data processing or other operations used in the practice, administration,
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`or managementofa financial product or service... .” AIA § 18(d)(1);
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`see 37 C.F.R. § 42.301(a). “The statutory definition by its terms
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`makes whata patent ‘claims’ determinative of the threshold
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`requirement for coming within the defined class” of a covered business
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`method patent. Secure Axcess, LLC v. PNC Bank Nat’l Assoc., 848
`
`F.3d 1370, 1378 (Fed. Cir. 2017); see Blue Calypso, LLC v. Groupon,
`
`Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (stating that Ҥ 18(d)(1)
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`6
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`CBM2017-00008
`Patent 6,430,603 B2
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`directs us to examine the claims when deciding whethera patentis a
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`[covered business method] patent’).
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`A patent need haveonly one claim directed to a covered
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`business methodto be eligible for review. See Transitional Program
`
`for Covered Business Method Patents--Definitions of Covered
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`Business Method Patent and Technological Invention; Final Rule,
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`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012); cf Versata, 793 F.3d at
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`1326-27 (accepting single claim analysis to determine whether to
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`institute a covered business method patent review). “When properly
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`construed in light of the written description, the claim need only
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`require one of a ‘wide rangeoffinance-related activities.’” Secure
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`Axcess, 848 F.3d at 1381; see also Versata, 793 F.3d at 1312-13,
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`1325-26 (identifying a qualifying claim); Blue Calypso, 815 F.3d at
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`1339-40 (identifying a qualifying claim); SightSound Techs., LLCv.
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`Apple Inc., 809 F.3d 1307, 1315-16 (Fed. Cir. 2015) (identifying a
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`qualifying claim).
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`C. Effect ofStatutory Disclaimer
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`Patent Ownerprovided, with its Preliminary Response, evidence
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`that it filed with the Office a statutory disclaimer of claims 1-12, 17,
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`19, 20, 22, 28-33, 45-47, 49, 51-55, and 58-74 ofthe challenged
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`patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a).
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`Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall...
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`be considered as part of the original patent.” 35 U.S.C. § 253(a). The
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`language “‘consideredaspart of the original patent” meansthat a patent
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`subject to a disclaimer under § 253(a) “is treated as though the
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`disclaimed claims neverexisted.” Vectra Fitness, Inc. v. TNWK Corp.,
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`7
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`CBM2017-00008
`Patent 6,430,603 B2
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`162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres
`
`v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96
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`F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claimsofthe
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`challenged patent existed at the time the Petition here wasfiled, we
`must now treat the challenged patentas if it had never included those
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`claims.
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`1. Disclaimed Claims Challenged in the Petition
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`Of the challenged claims, Patent Owner disclaimed claims 1, 11,
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`12, 49, 51-55, and 58-74. Ex. 2001, 4. A covered business method
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`patent review cannotbe instituted based on disclaimedclaims.
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`37 C-F.R. § 42.207(e) (“The patent owner mayfile a statutory
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`disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R.
`
`§ 1.321(a), disclaiming one or more claimsin the patent. No post-
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`grant review will be instituted based on disclaimed claims.”).
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`Accordingly, no covered business method patent review will be
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`instituted for disclaimed claims 1, 11, 12, 49, 51-55, and 58-74.
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`Nevertheless, our analysis continues becausenotall of the claims
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`challenged in the Petition have been disclaimed by Patent Owner.
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`2. Remaining Claims Challengedin the Petition
`Petitioner challenges some claims that have not been disclaimed
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`by Patent Owner—claims 13, 42, 43, 48, 50, 56, and 57. For the
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`following reasons, we determinethat Petitioner has not established that
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`the challenged patent qualifies as a covered business method patent.
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`Petitioner identifies six claims that it contendssatisfy the
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`threshold financial requirement on the basis of their claim language.
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`
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`CBM2017-00008
`Patent 6,430,603 B2
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`Pet. 16-18 (identifying claims 1, 12, 52, 63, 72, and 74). Patent Owner
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`argues, however,that these claims cannot provide the basis for
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`eligibility for covered business method patent review (“CBM
`
`eligibility”), because each of these claims has been disclaimed
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`pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Prelim.
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`Resp. 7; Ex. 2001, 4 (disclaiming 1-12, 17, 19, 20, 22, 28-33, 45-47,
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`49, 51-55, and 58-74).
`
`Weagree with Patent Ownerthat disclaimed claims1, 12, 52,
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`63, 72, and 74 do not providethe basis for the challenged patent’s
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`CBMeligibility. Notably, Patent Owneralso disclaimedall claimsthat
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`depend from the claims on which Petitioner relied for meeting the
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`threshold financial requirement. See Ex. 2001, 4 (disclaiming claims
`2-10 that depend from independentclaim 1, claims 58-63 that depend
`from claim 52, and claims 73 and 74 that depend from claim 72).
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`Furthermore, Patent Owner disclaimed dependent claims 49 and 51
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`that each recites “purchase”or “purchasing of” time slots for electronic
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`display placement, as well as claims that depend therefrom. Jd.
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`(disclaiming claims 51-55 and 58—74).
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`Weconcludethat the information in the Petition does not
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`demonstrate that the challenged patent is eligible for covered business
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`method patent review. In addition, even after Patent Owner submitted,
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`on February 7, 2017, its Preliminary Response and evidenceof filing
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`statutory disclaimer, Petitioner did not request an opportunity to
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`present arguments that any other claims would meet the threshold
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`financial requirement for a covered business methodpatent review.
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`The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their
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`CBM2017-00008
`Patent 6,430,603 B2
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`face do not evince claiming a financial product or service, and the
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`written description describes the invention as being broader than
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`placement of commercial advertising. See, e.g., Ex. 1001, 2:50—53
`
`(encompassing “direct placement of commercial advertisements,
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`public service announcements and other content on electronic
`
`displays”).
`
`Accordingly, we determine that Petitioner has failed to meetits
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`burden of showing that the challenged patentis eligible for covered
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`business methodpatent review. Therefore, we do not institute a
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`covered business methodpatent review for claims 13, 42, 43, 48, 50,
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`56, and 57 of the ’603 patent.
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`3. Conclusion
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`In sum, we do notinstitute a covered business methodpatent
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`review for challenged claims 1, 11, 12, 49, 51-55, and 58-74 ofthe
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`603 patent that were disclaimed by Patent Ownerafter the Petition
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`wasfiled. Nor do weinstitute a covered business methodpatent
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`review for challenged claims 13, 42, 43, 48, 50, 56, and 57 because
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`Petitioner has failed to demonstrate the challenged patent is eligible for
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`covered business methodpatent review.
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`I. ORDER
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`After due consideration of the record before us and for the
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`foregoing reasons,it is:
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`ORDEREDthatthe Petition is denied and no covered business
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`methodpatent review is instituted.
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`
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`CBM2017-00008
`Patent 6,430,603 B2
`
`FOR PETITIONER:
`
`Vincent J. Rubino,III
`Alfred R. Fabricant
`Peter Lambrianakos
`Enrique W.Iturralde
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`plambrianakos@brownrudnick.com
`eiturralde@brownrudnick.com
`
`FOR PATENT OWNER:
`
`Steven R. Daniels
`Gurtej Singh
`FARNEY DANIELS PC
`sdaniels@farneydaniels.com
`tsingh@farneydaniels.com
`
`11
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`