Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: January 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLEINC.,
`Petitioner,
`
`V.
`
`SIMPLEAIR,INC.,
`Patent Owner.
`
`_ Case CBM2014-00170
`Patent 7,035,914 Bl
`
`Before MICHAEL R. ZECHER, STACEY G. WHITE,and
`TINA E. HULSE,Administrative Patent Judges.
`
`HULSE,Administrative Patent Judge.
`
`“uw
`
`DECISION
`DenyingInstitution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`571-272-7822
`
`Paper 13
`Date: January 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLEINC.,
`Petitioner,
`
`V.
`
`SIMPLEAIR,INC.,
`Patent Owner.
`
`_ Case CBM2014-00170
`Patent 7,035,914 Bl
`
`Before MICHAEL R. ZECHER, STACEY G. WHITE,and
`TINA E. HULSE,Administrative Patent Judges.
`
`HULSE,Administrative Patent Judge.
`
`“uw
`
`DECISION
`DenyingInstitution of Covered Business Method Patent Review
`37 CFR. § 42.208
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`I.
`
`INTRODUCTION
`
`GoogleInc. (“Petitioner”) filed a Petition requesting a covered
`
`business method patent review of claims 1-3, 7, and 22-24 of US. Patent
`No.7,035,914 B1 (“the ’914 patent”). Paper 2 (“Pet.”). SimpleAir, Inc.
`(“Patent Owner”) timely filed a Preliminary Responseto the Petition.
`Paper 10 (“Prelim. Resp.”).
`.
`Wehavejurisdiction under 35 U.S.C. § 324, whichprovides that a
`covered business method patent review may notbeinstituted unless the
`
`informationin the petition, if unrebutted, “would demonstratethat it is more
`
`likely than notthatat least 1 of the claims challenged in the petition is
`
`‘unpatentable.” 35 U.S.C. § 324. Upon considering the Petition and
`Preliminary Response, we determine that the information presented in the.
`Petition does not demonstrate that any ofthe challenged claimsis more
`likely than not unpatentable. We, therefore, deny the Petition.
`
`Il.
`
`A.
`
`BACKGROUND .
`
` Petitioner’s Standing
`
`Section 18 of the Leahy-Smith America Invents Act (“AIA”) governs
`the transitional program for covered business method patent reviews.'
`_ Section 18(a)(1)(B) of the AIA limits such reviewsto persons, or their
`privies, that have been sued or charged with infringement of a covered |
`business methodpatent.
`
`Petitioner asserts that Patent Ownerhas sued Petitioner foralleged
`
`infringementof the °914 patent. Pet. 8; see also id. at 79 (identifying
`
`' See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284,329 (2011).
`_
`2
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`SimpleAir, Inc. v. Google Inc., No. 2-13-cv-00587 (E.D. Tex.) as a related
`matter). Petitioner, therefore, has standing tofile the Petition.
`
`B.
`
`The ’914 Patent (Ex. 1001)
`
`The ’914 patentrelates to wired and non-wired data transmission
`
`communication systems. Ex. 1001, 1:24—26. Wireless communication
`technology allowsusers to be notified of information anywhere and at any
`. time. Id. at 1:52-53. Moreover, the ’914 patent states that online services
`have made endless amounts of information available to individuals
`throughoutthe world. Id. at 1:58-61.
`According to the 914 patent, however, these technologies suffer from
`numerous disadvantages. For example, the Specification states that the
`
`benefits of wireless technology only have beenutilized for personal
`
`messaging with limited message length. Jd. at 1:65—2:3. The Specification
`
`further states that immediate notification of information is not available. Id.
`at 2:22-26.. Another problem, according to the ’914 patent, is that data
`transmitted over existing wireless broadcast networks suffer from inevitable
`degradation of data. Id. at 2:27—-40.
`|
`To address these issues, the °914 patent describes a system that allows
`
`for broadcast of up-to-the-minute notification centric information that
`
`providesaninstant call to action for users who are provided with the ability
`
`to retrieve further detailed information instantaneously. Jd. at 2:50-58.
`
`C.
`
`Illustrative Claim
`
`Claim1is the only independentclaim challenged in this proceeding.
`
`Claims 2, 3, 7, and 22-24 all depend,directly or indirectly, from claim 1.
`
`Claim 1 isillustrative of the subject matter of the challenged claims
`
`and is reproduced below:
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`1. A methodfor transmitting data to selected remote devices,
`comprising the stepsof:
`transmitting data from an information source to a central
`broadcast server;
`preprocessingsaid data at said central broadcast server,
`further comprising the step of:
`.
`parsing said data with parsers correspondingto said central
`broadcastserver;
`transmitting said data to an information gateway for building
`data blocks and assigning addresses to said data blocks;
`transmitting said data blocks from said information gateway
`to a transmission gateway for preparing said data blocks
`for transmission to receivers;
`transmitting preprocessed data to receivers communicating
`with said devices; and
`instantaneously notifying said devices of receipt of said
`"preprocessed data whethersaid devicesare online or
`offline from a data channel associated with each device.
`
`The Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims 1-3, 7, and 22-24 of
`
`.
`
`x
`
`
`
`1
`
`the °914 patent on the following grounds (Pet. 17-78):
`
`
`
`
`oe
`os
`
`a
`
`
`hallenged
`
`‘Reference
`imsxS &
`
`a
`2 He
`~o\PBasisdenaiy [2
`S
`S
`
`ae
`os
`ae
`
`
`
`
`
`
`
`
`3,7, and 22-24
`
`
`
`
`
`
`PIC Reference Guide® and
`
`
`Hays‘ (“Magic Link”
`
`z>
`
`Dartmouth System”
`
`1-3, 7, and 22-24
`
`* As discussed in Exs. 1010-1015.
`> Magic Link Personal Intelligent Communicator Reference Guide, ©1994
`(Ex. 1018).
`‘ Hays,et al., WO 95/26113, published Sept. 28, 1995 (Ex. 1019).
`4
`
`€
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`
`
`2
`
`References?)
`
`2 2 22.06
`
`
`
` Nelson, Kane, and Olazabal
`
`
`«| Claims-challenged:» =.
`
`
`
`
`
`I.
`
`ANALYSIS
`
`A.
`
`Covered Business Method Patent
`
`Under§ 18(a)(1)(E) of the AIA, the Board mayinstitute a transitional
`
`proceeding only for a patent that is a covered business method patent. A
`
`“covered business method patent”is a patent that “claims a method or
`
`_corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or managementofa financial product or
`service, except that the term does not include patents for technological
`inventions.” ATA § 18(d)(1); 37 C.F.R. § 42.301(a). For purposes of
`determining whethera patentis eligible for a covered business method.
`patent review, the focus is on the claims. See Transitional Program for
`Covered Business Method Patents—Definitions of Covered Business
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`
`> Kane, WO 94/08419, published Apr. 14, 1994 (Ex. 1009).
`° Gifford et al., The Application ofDigital Broadcast Communication to
`Large Scale Information Systems, 3 IEEE J.ON SELECTED AREASIN
`COMMUNICATIONS 457-67 (1985) (Ex. 1007).
`7 Olazabalet al., US 5,323,148, issued June 21, 1994 (Ex. 1016).
`® Nelsonet al., US.5,347,268, issued Sept. 13, 1994 (Ex. 1008).
`5
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`48,734, 48,736 (Aug. 14, 2012). A patent need only have one claim directed
`
`to a covered business methodto beeligible for review. Jd.
`
`1.
`
`Financial Product or Service
`
`Claim | recites a method oftransmitting data to selected remote
`devices. Ex. 1001, 33:16-17. Referring to Figure 2 ofthe 914 patent, the
`Specification teaches that “the data, which can include .
`.
`. stock quotes, .. .
`lotto, ... etc. is then respectively parsed by parsers, such as the stock quote
`
`. and then transmitted to the content
`.
`. lotto parser 110 .
`.
`parser 106, .
`manager 114 located in the central broadcast server 34.” Ex. 1001, 8:11-16.
`Thus, the ’914 patent contemplates expressly using the method of claim 1
`for managing a financial product or service—thatis, for transmitting stock
`
`quotesandlotto results to remote devices. We, therefore, determine that
`
`claim 1 of the ’914 patent recites “a method. .
`
`. for performing data
`
`processing or other operations used in the practice, administration, or
`
`managementofa financial product or service.” See AIA § 18(d)(1);
`
`37 CFR. § 42.301 (a).
`
`Patent Ownercontendsthat our interpretation of the financial prongis
`overly broad and “would contraveneits purpose.” Prelim. Resp. 18-19. We
`disagree. In promulgating rules for covered business methodpatent reviews,
`the Office consideredthelegislative intent and history behind the AIA’s
`definition of “covered business method patent.” 77 Fed. Reg. at 48,735-36.
`The“legislative history explains that the definition of covered business
`method patent was drafted to encompasspatents ‘claiming activities that are
`
`financial in nature, incidentalto a financial activity or complementary to a
`
`financialactivity.’” Id. (citing 157 Cong. Rec. $5432 (daily ed. Sept.8,
`
`2011) (statement of Sen. Schumer) (emphasis added)). Thus, our.
`
`6
`
`
`
`CBM2014-00170
`Patent 7,035,914 B1
`
`interpretation of the financial prong is consistent with the broad intent
`
`suggested by the legislative history. See 77 Fed. Reg. at 48,735—36.
`
`Technological Invention
`2.
`The definition of a “covered business method patent” in § 18(d)(1) of
`the AIA doesnot include patents for “technological inventions.”
`
`Whendetermining whethera patentis for a technological invention, we
`consider two prongs: “whether the claimed subject matter as a whole
`[1] recites a technological feature that is novel and unobviousoverthe prior
`art; and [2] solves a technical problem using a technical solution.” 37 C.F.R.
`
`§ 42.301(b). To establish that the claimsare not directed to a technological
`
`invention, Petitioner need only show that one prong doesnotexist in at least
`one claim.
`|
`
`Accordingto the Office Patent Trial Practice Guide, the following
`
`claim drafting techniques are examplesthat typically do not render a patent a
`“technological invention”:
`|
`
`(a) Mererecitation of knowntechnologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium,scanners, display
`devices or databases, or specialized machines, such as an ATM
`or point of sale device.
`.
`(b) Reciting the use of knownpriorart technology to accomplish
`a process or method, even if that process or method is novel and
`non-obvious.
`(c) Combining priorart structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763—-64 (Aug.
`
`14, 2012).
`
`Even if we assumethat the problemssolved andthe solutions claimed
`
`by the ’914 patent are technical, as Patent Ownerasserts (Prelim. Resp. 25—
`
`7
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`29), we are persuadedthat claim 1, as a whole, does notrecite a
`technological feature that is novel and unobviousoverthe prior art. In
`particular, we are persuadedthat claim 1 only recites the presence of well-
`
`knowntechnologies to accomplish the claimed method. Petitioner argues
`39 66
`
`that claim 1 recites “remote devices,”
`97 66
`
`corresponding “‘parsers,”
`
`“an information gateway,”
`
`‘‘a central broadcast server” with
`93 66
`
`“a transmission
`
`gateway,” and “receivers,” all of which were well knownin the art before
`the earliest possible critical date for the 914 patent. Pet. 6; Ex. 1002 ff] 64—
`
`68. For example, the Specification states that one skilled in the art will
`recognize that the present invention could be implemented on computers,
`televisions, telephones, and appliances,all of which were knownat that
`
`time. Ex. 1001, 7:40-47. And the Specification states that the present
`
`invention “is designed to operate with any of the above knownor developing
`
`transmission networks.” Jd. at 9:21-25. The Specification also indicates
`that parsing is well known,stating “any type of information source and
`corresponding parser may be used.” Jd. at 8:22-24.
`In its Preliminary Response, Patent Ownerarguesthat the Petition
`fails to demonstrate that the claimed subject matter, as a whole, does not
`
`recite a technological feature that is novel and unobvious. Prelim. Resp. 20—
`
`25. Patent Ownerfirst argues that the Petition does not addressall
`
`components, such as the “data channel,” and, evenif it did, Patent Owner
`asserts that a “petition cannot establish that a claimed method does not recite
`a technological feature that is novel and unobvious merely by showingthat
`
`the physical components needed to practice that method were previously
`knownin the art.” Id. at 21 (citing Motorola Mobility, LLC v. Intellectual
`Ventures I, LLC, Case CBM2014-00084,slip op. at 7 (PTAB Aug.6, 2014)
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
`
`(Paper 18); Epsilon Data v. Rpost Commc’ns, Case CBM2014-00017,slip
`
`op. at 9 (PTAB Apr. 22, 2014) (Paper 21)).
`
`Weare not persuaded by Patent Owner’s arguments and determine
`that Petitioner has made a sufficient showing that the claimed subject matter,
`as a whole, doesnot recite a technological feature that is novel and
`unobviousoverthe prior art. Whether the step of “instantaneously notifying
`
`said devices of receipt of said preprocessed data whether said devices are
`
`online or offline from a data channel associated with each device”is novel
`
`and unobviousisirrelevantif the prior art technology used to accomplish
`
`that step was known. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
`
`48,763-64.
`
`Moreover,in our previous decision involving the ’914 patent, we
`
`found that Patent Ownerdid not rebut Petitioner’s assertion that the prior art
`
`technology used in claim 1 was knownin the art. Google Inc. v. SimpleAir,
`
`Inc., Case CBM2014-00054,slip op. at 7 (PTAB May 13, 2014) (Paper 19)
`
`(“the -054 case”). In the instant case, Patent Ownerpurports to addressthis
`
`argumentin its Preliminary Response. Prelim. Resp. 24. But rather than
`
`rebut the Petitioner’s assertion by identifying any prior art technology in the
`claims that was not knownin the art, Patent Ownerattacks the sufficiency of
`Petitioner’s arguments. In other words, Patent Owner did not affirmatively
`state, for example, that the “data channel” of the claims was not well known
`in the art; instead it merely argued that Petitioner did not meet its burden.
`
`See id. We, however, are persuaded by Petitioner’s contentions.
`
`Accordingly, we determine that claim 1 doesnot recite a technological
`
`feature that is novel and unobviousoverthe prior art. See 37 C.F.R.
`
`§ 42.301(b).
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
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`Wealso have considered whether the methodof claim 1 solves a
`
`technical problem using a technicalsolution, but, because we concludethat
`
`claim | does notrecite a technological feature that is novel and unobvious
`over the prior art, the °914 patent is a “covered business method patent” and
`is eligible for a covered business method patent review.
`.
`B.
`Claim Construction
`In a covered business method patent review, weinterpret claim terms
`in an unexpired patent according to the broadest reasonable construction in |
`light ofthe specification ofthe patent in which they appear. 37 C.F.R.
`§ 42.300(b). Underthat standard, and absenta special definition, we give
`claim terms their ordinary and customary meaning, as would be understood
`by one ofordinary skill in the art at the time of the invention. Jn re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definitions for claim terms must be set forth with reasonableclarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`| Previously Construed Claim Terms
`1.
`In the co-pendinglitigation, the District Court construed several terms
`of the ’914 patent. Ex. 1023, 8-23, 25-41. Petitioner suggests that we adopt
`the District Court’s constructions, at least for purposes of this Decision to
`
`Institute, as we did in the -054 case. Pet. 11-13 (citing CBM2014-00054,
`
`Paper 19 at 9-11. At this time, Patent Owner doesnot appearto disagree
`and doesnotoffer alternative constructions for any of the terms. For
`convenience,the District Court’s constructions of ’914 patent claim terms
`
`are reproducedin the table below:
`
`10
`
`
`
`CBM2014-00170
`Patent 7,035,914 Bl
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`“data channel”
`
`Sonstruction: ©
`
`“one or more communication
`channels or paths for accessing or
`viewing a category or subcategory of
`information that is provided by an
`information source over a
`communications network”
`
`‘“‘whether the remote computing
`devices are or are not connected via
`the Internet or another online service
`to a data channel associated with
`each computing device at the time
`the preprocessed data is received by
`the receivers”
`“whether said computing devices are
`powered on or poweredoff”
`
`the data blocks” “a transmission gateway for
`
`“whether said computing devicesare
`online or offline from a data channel
`associated with each device”
`
`“whether said computing devicesare
`on or off”
`
`“information source”
`
`“parsing said data with parsers”
`
`“one or more content or online
`service providers that provide data to
`the central broadcast server, such as
`an online source of news, weather,
`sports, financial information, games,
`personal messages, or e-mails”
`
`“using multiple computer software
`programs,routines, or functions to
`break or divide data received from
`an information source into
`components whosecontent or format
`can be analyzed, processed or acted
`
`“an information gateway for
`building data blocks and assigning
`addressesto said data blocks”
`
`“one or more software programs(or
`a portion of a program)that build
`data blocks and assign addresses to
`
`preparing said data blocks for
`
`“one or more software programs(or
`a portion of a program)
`that prepare
`
`1]
`
`
`
`CBM2014-00170
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`ofog so- Claimterm
`
`Woeaeie
`
`«Construction
`
`received”
`
`transmission to receivers
`
`33
`
`“central broadcast server”
`
`“contextual graphics”
`
`the data blocks for their transmission
`to receivers andinterface with other
`resourcesusedto transmit the
`preprocessed data”’
`“one or moreserversthat are
`configured to receive data [from] a
`plurality of information sources and
`processthe data priortoits
`transmission to one or moreselected
`remote computing device”
`
`“graphicsrelating to the context of
`the preprocessed data that has been
`
`Aswe foundin the -054 case, upon considering the District Court’s
`claim construction order, we determinethatthe construction of each ofthese
`claim termsis consistent with its broadest reasonable interpretation in light
`ofthe Specification. Accordingly, for purposesofthis Decision to Institute,
`weadopt the District Court’s constructions of the claim terms reproduced in
`the table above.
`|
`
`2.
`
`“instantaneously notifying”
`
`Neither party offers a construction for the term “instantaneously
`
`notifying.” And the Specification does not expressly define the term, which
`
`appears only in the claims.
`
`.
`
`The Specification does, however,state that “[iJn accordance with the
`
`present invention, a user maybeinstantly notified of E-mail messages
`
`without being connected to an E-mail service provider.” Ex. 1001, 30:35—
`36. The Specification further states that whena userreceives an E-mail
`message,“the user’s provider sends an E-mail notification to central
`
`12
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`CBM2014-00170
`Patent 7,035,914 B1
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`broadcast server.” Jd. at 30:37-40. “Upon receivingthis notification, the
`central broadcast server transmits an E-mail alert messageto the user’s
`computer through the broadcast network.” Jd. at 30:40-42.
`
`The Specification also uses the word “instantaneously”in different
`contexts. For example, the Specification states that “the present system
`
`provides for broadcast of up to the minute notification centric information
`thereby providingan instant call to action for users who are provided with
`
`the ability to instantaneously retrieve further detailed information.”
`Ex. 1001, 2:54-58 (emphasis added). In addition, the Specification states .
`that “[i]nformation is thus modified and updated instantaneously and
`
`wirelessly.” Id. at 3:50—51 (emphasis added).
`In each example, the words“instantly” and “instantaneously” are used
`in a mannerconsistent with the ordinary and customary meaning of
`“instantaneously”—.e., “occurring, done, or completed in an infinitesimal
`or very short space oftime.” See Ex. 3001 (definitions of “instantaneous”
`and “instant’”’”). As such, we determine the broadest reasonable interpretation —
`of the term “instantaneously notifying”is “notifying in a very short space of
`time.”
`|
`|
`Unpatentability Under 35 U.S.C. § 101
`
`C.
`
`Petitioner argues that claims 1-3, 7, and 22-24 are not directed to
`patent-eligible subject matter under 35 U.S.C. § 101. Pet. 17-23. Patent
`
`OwneropposesPetitioner’s challenge. Prelim. Resp. 29-38. After
`considering the Petition and the Preliminary Response, we determinethat
`Petitioner has not established that the claims are morelikely than not
`unpatentable under § 101.
`
`13
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`Section 101 provides that “[w]hoever invents or discovers any new
`
`and useful process, machine, manufacture, or composition of matter, or any
`
`new anduseful improvement thereof, may obtain a patent therefor, subject to
`
`the conditions and requirementsofthis title.” The U-S. Supreme Court has
`
`carved out three exceptions to the broad categories of patent-eligible subject
`
`matter:
`
`laws of nature, natural phenomena,andabstract ideas. Mayo
`
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
`|
`(2012).
`In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`Supreme Court set forth the analysis todistinguish claims for patent-
`ineligible laws of nature, natural phenomena, and abstract ideas from claims
`for patent-eligible applications of those concepts. Jd. at 2355. Thefirst step
`in the analysis is to “determine whether the claimsat issue are directed to
`one of those patent-ineligible concepts.” Jd. If the claims are directed to a
`
`patent-ineligible concept, the second step in the analysis is to consider the
`
`elements of the claims “individually and ‘as an ordered combination’”to
`
`determine whetherthere are additional elements that “‘transform the nature
`
`of the claim’ into a patent-eligible application.” Jd. (citation omitted). That
`
`is, the secondstep is to “search for an ‘inventive concept’—1.e., an element
`
`or combination of elements thatis ‘sufficient to ensure that the patent in
`
`practice amountsto significantly more than a patent uponthe[ineligible
`
`concept] itself.’” Jd. (citation omitted).
`The challenged claims ofthe "914 patent eachrecite a “method,”
`whichconstitutes statutory subject matter under § 101. We must, therefore,
`
`determine whetherthe claims represent an unpatentable abstract idea.
`
`Petitioner has not persuadedusthatit is more likely than not that they do.
`
`14
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`CBM2014-00170
`Patent 7,035,914 B1
`
`Petitioner asserts that the claimsare directed to the abstract idea of
`“packaging and routing information aspart of a subscription service.”
`
`Pet. 17. Petitioner argues that the 914 patent does not purport to disclose
`
`any new devices; instead, it accomplishesthe alleged invention “through
`
`conventionaldata processing, transmitting, and receiving equipment.” Jd.
`at 19. Petitioner also analogizes the claimed invention to conventional
`
`periodical publication delivery. /d. at 19-20. Specifically,-Petitioner asserts
`
`that reporters gather information and sendit to a central news office where
`
`editors analyze and parse through the information to determine whatis
`newsworthy. According to Petitioner, the selected informationis then put
`
`into a periodical and addressedto its individual subscribers. The postal
`
`system sorts and routes the periodicals to the subscribers, and the mail
`carrier delivers the periodicals to the subscribers’ mailboxes. Finally,
`
`Petitioner concludes that the mail carrier then raises the flags on the
`mailboxesto instantaneously notify the subscribers that their mail has
`arrived, which happens regardless of whether the subscribers are otherwise
`in communication with the source of the information. /d.
`
`In response, Patent Ownerasserts that Petitioner ignores the claim
`
`language andfails to address the actual claim limitations. Prelim. Resp. 32.
`
`Weagree. Petitioner does not explain sufficiently how the challenged
`
`claimsallegedly relate to the abstract idea of packaging and routing
`
`information as part of a subscription service. This is particularly true when
`
`noneof the challenged claimsrecites a “subscription service”at all.
`
`Regardless, Petitioner’s analogy to conventional periodical publication
`
`delivery is no substitute for an analysis of how, or why, the claim language
`
`supports Petitioner’s assertion that the claims merely recite an abstract idea.
`
`15
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`CBM2014-00170
`Patent 7,035,914 Bl
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`Moreover, every method can be generalized to the point of abstraction
`
`if the claim languageis ignored. Here, Petitioner overlooks the various
`
`physical components recited by the claims, including the remote devices and
`the central broadcast server. But Petitioner’s analogy to conventional
`
`periodical publication delivery still fails because it does not account for each
`step of the claimed method. For example, claim 1 recites “instantaneously
`notifying said devices of receipt of said preprocessed data whethersaid
`
`devices are online or offline from a data channel associated with each
`
`device.” Petitioner contends that a mail carrier’s raising the flag on a
`
`mailbox instantaneously notifies subscribers that their mail has arrived
`
`regardless of whether the subscribers “are otherwise in communication with
`
`the sources of the information.” Pet. 20. Even if mail carriers did raise
`
`mailbox flags when delivering mail, Petitioner does not explain how being
`in communication with the source of the information equates to being
`
`“online or offline from a data channelassociated with each device,” as
`required bythe claims.
`
`Petitioner’s generalized arguments, not directed to the specific
`language of the challengedclaims,are insufficient to show that the claims
`morelikely than not are directed to a patent-ineligible abstract idea. As
`
`such, we need not turn to the secondstep in Alice to look for additional
`
`elements that can transform the nature of the claim into a patent-eligible
`
`application of an abstract idea.
`
`,
`
`Basedon the information presented in the Petition and supporting
`evidence,we are not persuaded that Petitioner has shownsufficiently that
`claims 1-3, 7, and 22—24 are morelikely than not unpatentable as being
`
`directed to patent-ineligible subject matter under 35 U.S.C. § 101.
`
`16
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`CBM2014-00170
`Patent 7,035,914 Bl
`
`D.
`
`—_Unpatentability Under 35 U.S.C. § 112, 9 2
`
`Petitioner argues that claims 1-3, 7, and 22—24 are unpatentable as
`
`indefinite under 35 U.S.C. § 112, § 2. Pet. 23-26. Patent Owner opposes
`
`Petitioner’s challenge. Prelim. Resp. 38-50. After considering the Petition
`and the Preliminary Response, we determinethat Petitioner has not
`established that the claims are more likely than not unpatentable as indefinite
`
`under § 112, § 2.
`
`Section 112, | 2 requires that claims “particularly point[] out and
`distinctly claim[] the subject matter which the applicant regards as his
`invention.” During proceedings before the Office, the Board holds that a
`
`claim is indefinite “if a claim is amenable to two or more plausible claim
`
`constructions.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
`(precedential).
`Patent Ownerasserts that Miyazaki does not apply to post-grant
`
`proceedings. Prelim. Resp. 40-41. Wedisagree. The Board’s rationale in
`Miyazaki for applying this indefiniteness standard stems from two factors:
`(1) the broadest reasonable interpretation claim construction standard; and
`(2) the lack of a presumption ofvalidity before the Office. Miyazaki, 89
`USPQ2d at 1210-11. Because both factors are present in post-grant
`
`proceedings, the indefiniteness standard in Miyazaki applies here, as well.
`
`Havingset forth the standard for indefiniteness before the Board, we
`
`now turn to Petitioner’s argument. Petitioner contends that the various types
`
`of “data” recited in claim 1 are ambiguous. Pet. 24. Specifically, Petitioner
`
`arguesthatit is unclear whether the “preprocessed data” of the step of
`
`“transmitting preprocessed data to receivers communicating with said
`
`devices” refers to data that has been parsed. /d. Petitioner also arguesthat it
`
`17
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`CBM2014-00170
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`
`is unclear whether“said data” of the step of “transmitting said data to an
`information gateway for building data blocks and assigning addressesto said
`
`data blocks” refers to data that has been parsed. /d. at 24-25. Finally,
`
`Petitioner asserts that it is unclear whether or how the “preprocessed data”
`
`relates to “said data blocks.” Jd. at 25.
`
`We do notfind Petitioner’s arguments persuasive. Claim 1 recites a
`
`method comprising a series of steps. Although wetypically do not read a
`specific order of steps into method claims, we will do soif “the sequential
`nature of the claim steps is apparent from the plain meaning of the claim
`
`language and nothing in the written description suggests otherwise.” See
`Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375-76
`(Fed. Cir. 1998).
`.
`Here, the plain language of claim 1 makesclear that each step must
`occur in the order recited, as each step refers to elements in the step before:
`1. A methodfor transmitting data to selected remote devices,
`comprising:-the steps of:
`transmitting data from an information source to a central
`broadcast server;
`preprocessing said data at said central broadcast server,
`further comprising the step of:
`parsing said data with parsers correspondingto said central
`broadcast server;
`transmitting said data to an information gatewayfor building
`data blocks and assigning addressesto said data blocks;
`transmitting said data blocks from said information gateway
`to a transmission gateway for preparing said data blocks
`for transmission to receivers;
`transmitting preprocessed data to receivers communicating
`with said devices; and
`instantaneously notifying said devices of receipt ofsaid
`preprocessed data whethersaid devices are online or
`offline from a data channel associated with each device.
`
`18
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`CBM2014-00170
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`
`Nothing in the Specification suggests that claim 1 should be read in a
`
`way other than the order recited. Indeed, as Patent Ownernotes, the:
`
`Specification demonstrates that the data proceeds from an information
`sourceto a central broadcast server for parsing, to aninformation gateway,
`
`to a transmission gateway,andfinally to the remote device. Prelim. Resp.
`46 (citing Ex. 1001, 8:19:25); Ex. 1001, Fig. 2. Thus, to take any of the
`transmitting steps out of order would disruptthis procession ofthe data.
`
`Accordingly, we construe claim 1 to require that the steps occurin the order
`
`recited.
`
`Giventhis order ofsteps,it is clear that “said data” in the second
`transmitting step refers to the data that has been preprocessed in the prior
`step. Moreover, “said data blocks”in the third transmitting step clearly |
`refers to the data blocks that were built from the data recited in the step
`
`beforeit (i.e., “said data,” which has been preprocessed). Finally, the
`
`“preprocessed data” of the fourth transmitting step refers to data that has
`
`been preprocessed by parsing in the steps beforeit.
`
`Because, on this record, we are not persuadedthat the claim language
`is amenable to two or more plausible claim constructions, we determine that
`Petitioner has failed to show sufficiently that the claims are more likely than
`not unpatentable as indefinite under 35 U.S.C. § 112, 42.
`E.
`Unpatentability over the Dartmouth System
`Petitioner asserts that claims 1-3, 7, and 22-24 are unpatentable over
`
`the Dartmouth System under 35 U.S.C. § 102 or § 103. Pet. 26-41. Patent
`Owner opposes the challenge. Prelim. Resp. 52-59. Afterconsidering the
`Petition and Preliminary Response, we determine that Petitioner has not
`
`19
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`CBM2014-00170
`Patent 7,035,914 Bl
`shown sufficiently that it is more likely than not that any ofthe claims are
`unpatentable over the Dartmouth System.
`|
`I.
`Overview ofthe Dartmouth System (Exs. 1010-1015)
`
`The Dartmouth System is an email andbulletin board system
`developed at Dartmouth College for use by Dartmouth’s students, faculty,
`and staff. Ex. 1011, 2.? The majority of Dartmouthusers use an email
`
`system called BlitzMail, whichis a client/server system. Jd. at 7. The
`BlitzMail server program provides message storage and forwarding
`|
`functions needed by the BlitzMail client. Jd. at 10. The BlitzMail client
`
`allowsthe user to read, reply to, compose, and file mail messages. Jd. at 9.
`2.
`Analysis
`Petitioner asserts that the Dartmouth Systemi discloses each limitation
`of claim 1 of the ’914 patent. Pet. 31-39. Regardingthe last step of claim 1,
`
`Petitioner asserts that the Dartmouth System discloses the step of
`“instantaneously notifying said devices of receipt of said preprocessed data”
`because Dartmouth teachesthat “[t]he receiver notifies the user device of the
`
`new message by providing a messageto the notification driver, which alerts
`the user. The notification occurs ‘asynchronously.’” Jd. at 38 (citing
`
`Ex. 1011, 13). Petitioner further states that “[t]o alert the user, the driver
`
`mayprovide‘a beep,a flashing icon, a dialog box, or [an] automatic
`opening of a window for reading the new message.”” /d. (citin
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