Paper 7
`Trials@uspto.gov
`571-272-7822 Entered: April 26, 2017
`
`
`
`
`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
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 26, 2017
`
`
`
`
`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
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`CBM2017-00008
`Patent 6,430,603 B2
`
`
`I. INTRODUCTION
`
`This is a preliminary proceeding to decide whether, under
`section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–
`29, 125 Stat. 284, 331 (2011) (“AIA”), a covered business method
`patent review of U.S. Patent No. 6,430,603 B2 (Ex. 1001, “the
`’603 patent” or “the challenged patent”), should be instituted under
`35 U.S.C. § 324(a).1 A covered business method patent review may
`not be instituted “unless . . . the information presented in the
`petition . . ., if such information is not rebutted, would demonstrate that
`it is more likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.” 35 U.S.C. § 324(a); see 37 C.F.R. § 42.208.
`Broadsign International, LLC filed a Petition requesting covered
`business method patent review of claims 1, 11–13, 42, 43, and 48–74
`of the challenged patent. Paper 2 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`For the reasons that follow, we do not institute a covered
`business method patent review.
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies
`various judicial or administrative matters that would affect or be
`
`
`1 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 AIA, as
`subject to “the standards and procedures of[] a post-grant review
`under . . . 35 U.S.C. §§ 321–329,” absent exceptions not applicable
`here).
`
`2
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`CBM2017-00008
`Patent 6,430,603 B2
`
`affected by a decision in this proceeding. Pet. 1–7; Paper 4, 2–6
`(Patent Owner’s Mandatory Notices).
`
`B. The ’603 Patent
`The ’603 patent is titled “System for Direct Placement of
`Commercial Advertising, Public Service Announcements, and Other
`Content on Electronic Billboard Displays” and describes ways to
`display content on electronic displays. Ex. 1001, [54], 2:50–53.
`
`1. Written Description
`The challenged patent describes a system “for direct placement
`of commercial advertisements, public service announcements and other
`content on electronic displays.” Id. at 2:50–53, Fig. 1. According to
`the challenged patent, the electronic displays “are located in high
`traffic areas in various geographic locations,” such as “areas of high
`vehicular traffic, and also at indoor and outdoor locations of high
`pedestrian traffic, as well as in movie theaters, restaurants, sports
`arenas.” Id. at 2:54–60. “In preferred embodiments, each display is a
`large (for example, 23 feet by 33½ feet), high resolution, full color
`display that provides brilliant light emission from a flat panel screen.”
`Id. at 2:62–65.
`
`2. Illustrative Claims
`Claims 13 and 48 are independent and illustrate the challenged
`
`subject matter.
`13. A system for presenting video or still-image
`content at selected times and locations on a networked
`connection of multiple electronic displays, said system
`comprising:
`
`3
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`CBM2017-00008
`Patent 6,430,603 B2
`
`
`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
`or still-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 video or still-
`image content at selected times on a corresponding selected
`electronic display of said network.
`Id. at 8:47–62.
`48. A method for presenting video or still-image
`content at selected times and locations on a networked
`connection of multiple electronic displays, said method
`comprising:
`a) providing a network interconnecting a plurality of
`electronic displays at various geographic locations;
`b) enabling a content provider
`to schedule
`presentation of video or still-image content at selected time
`slots on selected electronic displays of said network and
`receiving said video or still-image content from a content
`provider;
`c) providing a plurality of server devices, each server
`device associated with a corresponding electronic display;
`d) communicating received video or still-image
`content to the associated server devices of corresponding
`selected electronic displays of said network; and,
`e) said server device initiating display of said video
`or still-image content at selected times on an associated
`electronic display of said network.
`Id. at 11:34–53.
`
`4
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`CBM2017-00008
`Patent 6,430,603 B2
`
`
`C. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 11–13, 42, 43, and 48–74 are
`
`unpatentable under 35 U.S.C. § 101 as being directed to an abstract
`idea and claim 13 also is unpatentable under 35 U.S.C. § 112, ¶ 2 as
`indefinite. Pet. 36–81, 86–87.
`
`II. DISCUSSION
`
`A. Claim Construction
`In a covered business method patent review, we construe claim
`terms in an unexpired patent according to their broadest reasonable
`construction in light of the specification of the patent in which they
`appear. 37 C.F.R. § 42.200(b); Versata Dev. Grp., Inc. v. SAP Am.,
`Inc., 793 F.3d 1306, 1328 (Fed. Cir. 2015) (affirming use of the
`broadest reasonable construction standard in a covered business
`method patent review); cf. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard in an inter partes review). Claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). To rebut this presumption by acting as a
`lexicographer, the patentee must give the term a particular meaning in
`the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
`addition, the broadest reasonable construction of a claim term cannot
`be so broad that the construction is unreasonable under general claim
`
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`CBM2017-00008
`Patent 6,430,603 B2
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`construction principles. Cf. Microsoft Corp. v. Proxyconn, Inc., 789
`F.3d 1292, 1298 (Fed. Cir. 2015) (discussing broadest reasonable
`construction in the context of an inter partes review).
`Petitioner proposes constructions for several terms that recite
`“means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must
`set forth “[h]ow the challenged claim is to be construed. Where the
`claim to be construed contains a means-plus-function or step-plus-
`function limitation as permitted under 35 U.S.C. 112(f), the
`construction of the claim must identify the specific portions of the
`specification that describe the structure, material, or acts corresponding
`to each claimed function.”). Patent Owner does not address directly
`Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11.
`We conclude that no term needs to be construed expressly in
`order for us to determine whether a covered business method patent
`review should be instituted.
`
`B. Covered Business Method Patent
`The AIA defines a “covered business method patent” as “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 . . . .” AIA § 18(d)(1);
`see 37 C.F.R. § 42.301(a). “The statutory definition by its terms
`makes what a patent ‘claims’ determinative of the threshold
`requirement for coming within the defined class” of a covered business
`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)
`
`6
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`CBM2017-00008
`Patent 6,430,603 B2
`
`directs us to examine the claims when deciding whether a patent is a
`[covered business method] patent”).
`A patent need have only one claim directed to a covered
`business method to be eligible for review. See Transitional Program
`for Covered Business Method Patents--Definitions of Covered
`Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012); cf. Versata, 793 F.3d at
`1326–27 (accepting single claim analysis to determine whether to
`institute a covered business method patent review). “When properly
`construed in light of the written description, the claim need only
`require one of a ‘wide range of finance-related activities.’” Secure
`Axcess, 848 F.3d at 1381; see also Versata, 793 F.3d at 1312–13,
`1325–26 (identifying a qualifying claim); Blue Calypso, 815 F.3d at
`1339–40 (identifying a qualifying claim); SightSound Techs., LLC v.
`Apple Inc., 809 F.3d 1307, 1315–16 (Fed. Cir. 2015) (identifying a
`qualifying claim).
`
`C. Effect of Statutory Disclaimer
`Patent Owner provided, with its Preliminary Response, evidence
`that it filed with the Office a statutory disclaimer of claims 1–12, 17,
`19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged
`patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a).
`Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . .
`be considered as part of the original patent.” 35 U.S.C. § 253(a). The
`language “considered as part of the original patent” means that a patent
`subject to a disclaimer under § 253(a) “is treated as though the
`disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp.,
`
`7
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`CBM2017-00008
`Patent 6,430,603 B2
`
`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
`F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the
`challenged patent existed at the time the Petition here was filed, we
`must now treat the challenged patent as if it had never included those
`claims.
`
`1. Disclaimed Claims Challenged in the Petition
`Of the challenged claims, Patent Owner disclaimed claims 1, 11,
`12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method
`patent review cannot be instituted based on disclaimed claims.
`37 C.F.R. § 42.207(e) (“The patent owner may file a statutory
`disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R.
`§ 1.321(a), disclaiming one or more claims in the patent. No post-
`grant review will be instituted based on disclaimed claims.”).
`Accordingly, no covered business method patent review will be
`instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74.
`Nevertheless, our analysis continues because not all of the claims
`challenged in the Petition have been disclaimed by Patent Owner.
`
`2. Remaining Claims Challenged in the Petition
`Petitioner challenges some claims that have not been disclaimed
`by Patent Owner—claims 13, 42, 43, 48, 50, 56, and 57. For the
`following reasons, we determine that Petitioner has not established that
`the challenged patent qualifies as a covered business method patent.
`Petitioner identifies six claims that it contends satisfy the
`threshold financial requirement on the basis of their claim language.
`
`8
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`CBM2017-00008
`Patent 6,430,603 B2
`
`Pet. 16–18 (identifying claims 1, 12, 52, 63, 72, and 74). Patent Owner
`argues, however, that these claims cannot provide the basis for
`eligibility for covered business method patent review (“CBM
`eligibility”), because each of these claims has been disclaimed
`pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Prelim.
`Resp. 7; Ex. 2001, 4 (disclaiming 1–12, 17, 19, 20, 22, 28–33, 45–47,
`49, 51–55, and 58–74).
`We agree with Patent Owner that disclaimed claims 1, 12, 52,
`63, 72, and 74 do not provide the basis for the challenged patent’s
`CBM eligibility. Notably, Patent Owner also disclaimed all claims that
`depend from the claims on which Petitioner relied for meeting the
`threshold financial requirement. See Ex. 2001, 4 (disclaiming claims
`2–10 that depend from independent claim 1, claims 58–63 that depend
`from claim 52, and claims 73 and 74 that depend from claim 72).
`Furthermore, Patent Owner disclaimed dependent claims 49 and 51
`that each recites “purchase” or “purchasing of” time slots for electronic
`display placement, as well as claims that depend therefrom. Id.
`(disclaiming claims 51–55 and 58–74).
`We conclude that the information in the Petition does not
`demonstrate that the challenged patent is eligible for covered business
`method patent review. In addition, even after Patent Owner submitted,
`on February 7, 2017, its Preliminary Response and evidence of filing
`statutory disclaimer, Petitioner did not request an opportunity to
`present arguments that any other claims would meet the threshold
`financial requirement for a covered business method patent review.
`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
`
`face do not evince claiming a financial product or service, and the
`written description describes the invention as being broader than
`placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53
`(encompassing “direct placement of commercial advertisements,
`public service announcements and other content on electronic
`displays”).
`Accordingly, we determine that Petitioner has failed to meet its
`burden of showing that the challenged patent is eligible for covered
`business method patent review. Therefore, we do not institute a
`covered business method patent review for claims 13, 42, 43, 48, 50,
`56, and 57 of the ’603 patent.
`
`3. Conclusion
`In sum, we do not institute a covered business method patent
`review for challenged claims 1, 11, 12, 49, 51–55, and 58–74 of the
`’603 patent that were disclaimed by Patent Owner after the Petition
`was filed. Nor do we institute a covered business method patent
`review for challenged claims 13, 42, 43, 48, 50, 56, and 57 because
`Petitioner has failed to demonstrate the challenged patent is eligible for
`covered business method patent review.
`
` III. ORDER
`
`After due consideration of the record before us and for the
`foregoing reasons, it is:
`ORDERED that the Petition is denied and no covered business
`method patent review is instituted.
`
`10
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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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