Bloomberg L.P.v.Quest Licensing CorporationDownload PDFPatent Trial and Appeal BoardApr 7, 201509926751 (P.T.A.B. Apr. 7, 2015) Copy Citation Trials@uspto.gov Paper No. 16 571-272-7822 Entered: April 7, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _________________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________________________ BLOOMBERG L.P. and CHARLES SCHWAB & CO., INC., Petitioner, v. QUEST LICENSING CORPORATION, Patent Owner. _______________________________ Case CBM2014-00205 Patent 7,194,468 B1 _______________________________ Before JAMES P. CALVE, THOMAS L. GIANNETTI, and TINA E. HULSE, Administrative Patent Judges. GIANNETTI, Administrative Patent Judge. DECISION Denying Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208 CBM2014-00205 Patent 7,194,468 B1 2 I. BACKGROUND Bloomberg L.P. and Charles Schwab & Co., Inc., (collectively, “Petitioner”) filed a Petition (Paper 4; “Pet.”) requesting institution of a covered business method patent review of claims 1–32 of U.S. Patent No. 7,194,468 B1 (Ex. 1001, “the ’468 patent”) pursuant to 35 U.S.C. §§ 321–329. Quest Licensing Corporation (“Patent Owner”) filed a Preliminary Response. Paper 14 (“Prelim. Resp.”). With the Board’s authorization, Petitioner filed a Reply to the Preliminary Response. 1 Paper 15 (“Reply). We have jurisdiction under 35 U.S.C. § 324. The standard for instituting a covered business method patent review is set forth in 35 U.S.C. § 324(a): THRESHOLD.—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, 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. Petitioner challenges claims 1–32 as unpatentable under 35 U.S.C. §§ 101 and 112, second paragraph. For the reasons that follow, the Petition is denied. A. The’468 Patent (Ex. 1001) The ’468 Patent is entitled “Apparatus and a Method for Supplying Information.” The patent issued on March 20, 2007. The ’468 patent relates to an apparatus and a method for supplying to a subscriber, via a mobile telecommunications network, different types of information that are updated in real time, for example, information relating to 1 The Board’s email of February 6, 2015, authorizing the Reply stated: “Petitioner is authorized to file a reply strictly limited to addressing cases cited by Patent Owner’s preliminary response that were decided after the date of the petition.” CBM2014-00205 Patent 7,194,468 B1 3 financial markets. Ex. 1001, 1:8–12. Figure 1 from the patent is reproduced here: Figure 1 of the ʼ468 patent shows a diagrammatic representation of a system for supplying to a subscriber, via a mobile telecommunications network, different sets of changing or continually updating data. Ex. 1001, 2:47–50. The system includes information provider 2, satellite 3, service provider 4, GSM network 6, and subscribers 5a, 5b, 5c, and 5d. In this system, information provider 2 provides continually updating information regarding a plurality of sets of data to service provider 4 via a satellite 3 communications link. Id. at 3:46–49. Service provider 4 provides continually updating information for specific ones of the sets of data of interest to a subscriber to each of a plurality of subscribers 5a, 5b, 5c, CBM2014-00205 Patent 7,194,468 B1 4 and 5d via GSM mobile telecommunications network 6. Id. at 3:49–52. In the embodiments described, information provider 2 provides continually updating data relating to financial trading markets, in particular commodities (futures and options), stocks, indices, and foreign exchanges and news. Id. at 3:53–57. More details of the invention are provided in subsequent figures and the related text. For example, Figure 2 of the patent, showing the service provider, is reproduced here: Figure 2 shows a functional block diagram of service provider 4 in Figure 1. Ex. 1001, 2:51–52. The service provider consists of information receiving apparatus 6 that receives information via satellite link 3 from information provider 2 and information supplying apparatus 7, and is configured to supply continually updating information to subscribers over GSM network 6 in Figure 1. Id. at 4:2–7. The apparatus includes two client-site processors, CSP1 and CSP2. The processors are each coupled via communications link 6a to satellite dish SD to enable them both to receive an encrypted data stream over satellite network 3 from information provider 2. Id. at 4:8–14. CBM2014-00205 Patent 7,194,468 B1 5 Each of the client-site processors is arranged to decrypt and demodulate the received encrypted data stream and to maintain local database 10 of the financial data provided via satellite network 3 by information provider 2. Id. at 4:15–19. Each client-site processor provides a single client connection 6b or 6c using the TCP/IP protocol so that a client connected to the client-site processor can receive via the TCP/IP connection real time updating financial data provided by information provider 2 via satellite link 3. Id. at 4:20–25. Details of other elements comprising service provider 4 are shown in Figures 3 (demand engine server), 4 (administration section), and 5 (client interface). Ex. 1001, 2:53–61. Other figures of the ʼ468 patent provide details of the system. B. Related Matters According to Patent Owner, the ʼ468 patent has been asserted against Petitioner and other parties in several district court proceedings that have been consolidated into the following case: Quest Licensing Corp. v. Bloomberg LP, 1:14-cv-00561-GMS (D. Del., filed April 29, 2014). Paper 13. C. Illustrative Claim The ʼ468 patent has 32 claims. Claim 1 is illustrative of the claims at issue: 1. Apparatus for supplying interested subscribers via a mobile telecommunications network changing information for each of a plurality of different sets of data, the apparatus comprising: first receiving means for receiving said changing information; second receiving means for receiving said changing information in synchronism with said first receiving means; a data base for storing information received by the first receiving means relating to said different sets of data; CBM2014-00205 Patent 7,194,468 B1 6 communication means for establishing communication with each interested subscriber via the mobile telecommunications network; a subscriber profile store for storing, for each interested subscriber, information associating that interested subscriber with a corresponding group of said different sets of data; means for supplying to each interested subscriber via the mobile telecommunications network information from the data base for the corresponding group of data sets associated in the subscriber profile store with that interested subscriber when communication with that interested subscriber is established; and means for supplying from said second receiving means to each interested subscriber via the mobile telecommunications network changing information relating to the corresponding group of data sets associated with that interested subscriber once said information has been supplied to that interested subscriber from the data base. D. Asserted Grounds of Unpatentability Petitioner challenges the patentability of claims 1–32 of the ʼ468 patent based on the following asserted grounds: Description/Reference(s) Basis Claims challenged Ineligible subject matter 35 U.S.C. § 101 1–32 Indefiniteness 35 U.S.C. § 112 ¶ 2 1–32 II. ANALYSIS A. Standing In General 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 management of a financial product or service, except that the term does not include patents for technological inventions.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) CBM2014-00205 Patent 7,194,468 B1 7 (“AIA”) § 18(d)(1)(emphasis added); see 37 C.F.R. § 42.301(a). A petition for covered business method review must set forth the petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). The burden of proving standing falls on the Petitioner. “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id. As Petitioner points out, the ʼ468 patent specification and several claims of the ʼ468 patent “expressly reflect the financial aspect of the invention.” Pet. 6–7. Patent Owner does not dispute that Petitioner meets this element of standing. Thus, we conclude that the ʼ468 patent meets the “financial product or service” requirement under § 18(d)(1) of the AIA. We, therefore, concentrate our analysis of standing under 37 C.F.R. § 42.304(a) on whether Petitioner has demonstrated that the ’468 patent is not a patent for a technological invention. See Motorola Mobility, LLC v. Intellectual Ventures I, LLC, Case CBM2014-00084, slip op. at 4 (PTAB Aug. 6, 2014) (Paper 18). B. Technological Invention To determine whether a patent is for a technological invention, we consider “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). Petitioner argues that the ’468 patent is not directed to a “technological invention.” Pet. 7–8. Petitioner asserts that the patent claims do not recite any novel and unobvious technological feature, nor do they solve a technical problem using a technical solution. Id. at 8–10. Petitioner argues that the patent “discloses CBM2014-00205 Patent 7,194,468 B1 8 then-conventional technology implementing an information-updating service.” Pet. 8 (citing Ex. 1002 (Declaration of Bernard S. Donefer (“Donefer Declaration”)) ¶¶ 35–36, 150–51). Patent Owner responds that Petitioner has failed to carry its burden of showing that the ʼ468 patent is not a patent for a technological invention. Prelim. Resp. 5 (“The petition must assess the claims as a whole and not merely specific claim elements.”) (citing Experian Mktg. Solutions, Inc. v. RPost Commc’ns Ltd., Case CBM2014-00010, slip op. at 8–9 (PTAB Apr. 22, 2014) (Paper 20). Patent Owner contends that the Petition fails to show that the solution claimed in the ’468 patent, as a whole, is not “novel and unobvious over the prior art.” Prelim. Resp. 6 (quoting 37 C.F.R. § 42.301(b)). Patent Owner asserts, for example, that the Petition does not “analyze any claim of the ʼ468 patent.” Id.. Patent Owner argues also that Petitioner performs “no comparison between the prior art and any claim of the ʼ468 patent.” Id. at 6–7. As noted, Petitioner argues that the ʼ468 patent is not a novel and nonobvious technical solution because the disclosure identifies “conventional commercially-available hardware components.” Pet. 8. Patent Owner responds by asserting that addressing this question requires analysis of the combination of hardware and software, and that Petitioner made no effort to address that question. Prelim. Resp. 8. Patent Owner asserts also that Petitioner mischaracterizes the invention and, using claim 1 as an example, demonstrates that Petitioner does not address the combination of hardware and software. Id. at 9. Patent Owner further asserts, affirmatively, that the ʼ468 patent addresses a technical problem: “Before the ‘468 patent, mobile users had a limited ability to access data in real time. Existing hardware and software prevented the transmission of real-time data, or did not allow users who lost wireless CBM2014-00205 Patent 7,194,468 B1 9 connectivity to learn what they had missed when data was not coming through.” Prelim. Resp.11. Patent Owner further explains that the ʼ468 patent claims technical solutions to existing problems of mobile connectivity: low bandwidth, transient connectivity, and server processing volume. Id. at 12–13. Patent Owner explains how the elements of the claims (including the two receiving means that receive data synchronously) address the existing problems and combine software and hardware to change the fundamental operation of data delivery systems. Id. at 11–13. “By creating a specific structure to route data — i.e. using one pathway to send changing data to a mobile user and one to send data to a database — the [ʼ468] patent enables real-time transmission of changing data over mobile networks, without falling prey to the transient connectivity problem and without causing significant lag. The ’468 patent thus claims a technical solution to technical problems.” Id. at 13. We have considered the arguments for standing presented by the Petition in light of Patent Owner’s responses, and find them insufficient to discharge Petitioner’s burden of proof on that issue. We agree with Patent Owner that Petitioner has failed to assess the claims as a whole as required by 37 C.F.R. § 42.301(b), and has instead focused on certain individual elements. We also find convincing Patent Owner’s explanation of the technical problems addressed by the ʼ468 patent and its technical solution to those problems. We have also reviewed Petitioner’s other arguments, as well as the supporting portions of the Donefer Declaration (Ex. 1002), and find them likewise insufficient. For example, Petitioner asserts that the claims of the ʼ468 patent do not recite “expressly” the use of two identical CSPs. Pet. 9. We are not persuaded by this argument. As Petitioner recognizes, most of the claims include means-plus-function elements and other limitations that would include the CSPs. CBM2014-00205 Patent 7,194,468 B1 10 See, e.g., the “means for supplying” recitations in claim 1, supra. 2 Nor are we persuaded that there is standing by Petitioner’s discussion of the state of the art (including the art discussed there and in the Donefer Declaration). Pet. 1–4. We agree with Patent Owner that this approach is conclusory and is contrary to the requirement that the claim as a whole must be considered, not individual elements. Prelim. Resp. 8 (citing Experian, slip op. at 8–9). Finally, we have also considered the arguments presented in Petitioner’s Reply. In authorizing the Reply, the Board directed Petitioner to limit its response to “addressing cases cited by Patent Owner’s preliminary response that were decided after the date of the petition.” See supra n.1 . We have considered, therefore, Petitioner’s arguments regarding the panel decision in E*TRADE Fin. Corp. v. Droplets, Inc., Case CBM2014-00123 (PTAB Oct. 30, 2014) (Paper 15). See Prelim. Resp. 7. Although we agree with Petitioner that the panel decision does not require a “full showing of prior art invalidity” (Reply 2), we do, nevertheless, read the decision as calling for more than a “conclusory” showing of standing, one that does address the claimed subject matter “as a whole.” E*TRADE, slip op. at 9. We are persuaded that, contrary to Petitioner’s assertions, the Petition here provides only conclusory arguments that do not address the claims as a whole. Thus, we find Petitioner’s arguments for standing unconvincing. 2 Patent Owner explains that a few of these claims are directed to the subscriber’s mobile device. Prelim. Resp. 8. We agree with Patent Owner that the discussion of standing in the Petition does not focus on this aspect of the patent and, therefore, fails to convince us that there is standing based on these claims. Id. CBM2014-00205 Patent 7,194,468 B1 11 III. SUMMARY We are persuaded that Petitioner has failed to carry its burden to establish standing by showing that the ’468 patent is not directed to a technological invention. In view of the foregoing, we are not persuaded that the claims of the ’468 patent are directed to a covered business method patent under AIA § 18(d)(1). IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims. FURTHER ORDERED that no covered business method patent review is instituted. CBM2014-00205 Patent 7,194,468 B1 12 PETITIONER: Michael T. Rosato Wesley Derryberry Brian D. Range WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com wderryberry@wsgr.com brange@wsgr.com PATENT OWNER: Ben Quarmby MOLOLAMKEN LLP bquarbmy@mololamken.com Copy with citationCopy as parenthetical citation