VideoShare LLC

Patent Trials and Appeals Board

Mar 24, 2021

CBM2020-00027 (P.T.A.B. Mar. 24, 2021)

Trials@uspto.gov Paper No. 14
571-272-7822 Entered: March 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE LLC,
Petitioner,

v.

VIDEOSHARE LLC,
Patent Owner.
____________

CBM2020-00027
Patent 10,362,341 B2
____________

Before JONY Y. CHANG, MICHAEL R. ZECHER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
35 U.S.C. § 324

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Patent 10,362,341 B2

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I. INTRODUCTION
Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
review under the transitional program for covered business method patents
(“CBM”)1 of claims 1–7 (“the challenged claims”) of U.S. Patent No.
10,362,341 B2 (Ex. 1001, “the ’341 patent”). Patent Owner, VideoShare
LLC, filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). With our
authorization, Petitioner filed a Reply (Paper 12, “Reply)” and Patent Owner
filed a Sur-reply (Paper 13, “Sur-reply”).
A covered business method patent review may not be instituted unless
the patent being challenged qualifies as a covered business method patent,
and the information presented in the petition, if unrebutted, “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). For the
reasons that follow, we decline to institute a CBM review of claims 1–7 of
the ’341 patent.
II. BACKGROUND
The ’341 Patent
The ’341 patent is titled “Systems and Methods for Sharing Video
with Advertisements over a Network.” Ex. 1001, (54). According to the
’341 patent, a user can create a video segment, upload the segment to a
server, indicate an advertisement to be associated with the video, and then
send it to a recipient over a computer network. Id. at (57).

1 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284, 329 (2011) (“AIA”). Although the transitional CBM program
has sunset, CBM proceedings based on petitions filed before September 16,
2020, including this Petition, are still pending.
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This process is illustrated by Figure 1B, following.

Figure 1B is a schematic diagram of a process and system for selecting and
associating an advertisement to a video which is obtained, uploaded, and
sent to a recipient. Ex. 1001, 4:64–67. In Figure 1B, advertiser 30 submits
an advertisement to database 63, which is part of host computer 60. Id. at
7:47–49. When sender 40 uploads a video, using a sender computer, to host
computer 60, the host computer offers the sender an opportunity to select an
advertisement of the one or more advertisements posted to advertisement
database 63 to be associated with the video segment that sender 40 has
uploaded to host computer 60. Id. at 7:59–8:1.
The sender can transmit from the sender computer an indication of an
intent to send the video segment and the advertisement over the computer
network to recipient 92. Id. at 8:23–26. In response to receiving the
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indication, the host computer and its associated server computer system
automatically perform a series of actions. Id. at 8:27–29. These actions
include assuring that the video segment is in a streaming video format,
creating an identifier for the video segment, associating the video segment
and the advertisement, and sending the video segment, the identifier, and the
associated advertisement over the computer network to a receiving computer
system where recipient 92 can view the video segment and the associated
advertisement. Id. at 8:29–37.
B. Illustrative Claim
Claim 1 is the only independent claim, and is illustrative of the
claimed method. Claim 1 follows:
1. A method for sharing video over a structured hierarchical
network comprising:
a first server system receiving a first video file in a first format
from a first client via the structured hierarchical network;
the first server system creating a second video file in a second
format by converting at least a portion of the first video file
from the first format to the second format, independent from
receiving a command from the first client to perform such
conversion;
the first server system storing the first video file and the second
video file;
the first server system generating an identifier for video content
corresponding to the first video file and the second video file;
the first server system receiving a request to stream the
identified video content to a second server system or a second
client via the structured hierarchical network;
the first server system sending the stored first video file or the
stored second video file corresponding to the identified video
content to the second server system or the second client via the
structured hierarchical network depending on a compatibility of
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the second server system or a compatibility of the second client
with the first format or the second format; and
the first server system sending an advertisement for display
with the identified video content sent in the stored first video
file or the stored second video file.
Ex. 1001, 25:14–26:14. The remaining challenged claims 2–7 depend
directly from claim 1. Id. at 26:15–27.
C. Related Matters
The parties indicate that the ’341 patent is involved in VideoShare,
LLC v. Google LLC, No. 6:19-cv-00663-ADA (W.D. Tex.). Pet. 3; Paper 3,
2. Petitioner also filed another petition challenging the same claims of the
’341 patent, in IPR2020-01631. Pet. 3.
D. Real Parties-in-Interest
Petitioner identifies Google LLC and YouTube, LLC as real parties-
in-interest. Pet. 3. Patent Owner identifies VideoShare LLC as a real party-
in-interest. Paper 3, 2. Neither party challenges the sufficiency of these
identifications.
E. Ground Asserted
The Petition challenges the ’341 patent claims as not directed to
patent-eligible subject matter under 35 U.S.C. § 101. Pet. 5, 77–100. No
other ground of challenge is asserted.
III. ANALYSIS
A. Standing
Petitioner states that it has standing to seek a covered business method
patent review of the ’341 patent because it has been sued for alleged
infringement of the ’341 patent, in VideoShare, LLC v. Google LLC, No.
6:19-cv-00663-ADA (W.D.Tex.), and is not estopped from challenging the
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patent claims. Pet. 5. Patent Owner does not contest this assertion of
standing. We determine, therefore, that Petitioner has standing to seek
review of the ʼ341 patent under Section 18 of the AIA. AIA § 18(a)(1)(A);
see 37 C.F.R. § 42.302.
B. Financial Product or Service
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.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). Petitioner contends
that the requirement is met here because the ’341 patent claims “expressly
recite advertising elements.” Pet. 37–38. Further, according to Petitioner,
“the written description of the ’341 patent’s advertising claim elements
makes clear that these elements include financial features in all cases.” Id. at
38. Petitioner asserts “the ’341 [patent] includes significant discussion of
how advertisers must pay for the advertisements recited in the claims.” Id.
Also, Petitioner contends “the ’341 patent further explains a number of ways
to ‘remunerate’ for the advertisements,” and “every claim is directed to
attaching these paid advertisements to video content.” Id. at 38–39. We are
not persuaded by this analysis.
To determine whether a patent is eligible under AIA § 18(d)(1) for a
covered business method patent review, the focus is on the claims. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016)
(challenged patent eligible for review because the claims recited “an express
financial component in the form of a subsidy” that was “central to the
operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to
examine the claims when deciding whether a patent is a CBM patent.” Blue
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Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to
determine whether there is anything “explicitly or inherently financial in the
construed claim language.” Id.
The claims of the ’341 patent are directed to “[a] method for sharing
video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are
not persuaded that this a financial activity. We agree with Patent Owner that
the focus of the claims is video sharing technology. Prelim. Resp. 21. The
claims describe a series of method steps for sharing video content involving
servers and video files. Nowhere do the claims discuss or suggest obtaining
payment or remuneration. Thus, the claims are unlike those in Blue
Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the
term “subsidy,” which the Board construed as “financial assistance given by
one to another.” Id. at 1339–40. The Federal Circuit explained that based
on this understanding, the Board had concluded that the claims “were
financial in nature” and instituted CBM review. Id. at 1340. The Federal
Circuit agreed with the Board’s analysis and affirmed its decision to institute
CBM patent review: “Significantly, Blue Calypso has not challenged the
Board’s interpretation of subsidy as ‘financial assistance given by one to
another.’” Id.
Here, the claims recite “sending an advertisement for display with the
identified video content sent in the stored first video file or the stored second
video file.” Ex. 1001, 26:11–13. There is no suggestion in the claims that
“sending an advertisement” is itself inherently financial in nature. And
unlike the claim construction of “subsidy” in Blue Calypso, neither party
here has sought a special construction of “advertising,” let alone one that is
financial in nature.
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The claims before us here are more like those in the cases involving
advertising cited by Patent Owner, in which institution was denied. Prelim.
Resp. 22. In those cases, all involving petitioner Google, the Board
concluded that merely claiming facilitation of advertising is insufficient to
show a patent is eligible for CBM review. See, e.g., Google Inc. v.
KlausTech, CBM2016-00096, Paper 10 at 11 (PTAB Feb. 27, 2017) (claims
“cover[ing] the facilitation of advertisement, without more, are not enough
to justify concluding that a patent is a covered business method patent
eligible for review”). The Federal Circuit also has rejected the argument by
Google that claiming facilitation of advertising is sufficient, in Unwired
Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), vacating the
Board’s decision to institute a CBM review:
Google further notes that the specification discusses using the
claimed method to facilitate advertising, which would thereby
facilitate financial activity. In Google’s view, proposed use of
the claimed method in facilitating advertising is sufficient to
support the Board’s determination that the ’752 patent is a
CBM patent. We disagree.
841 F.3d at 1379 (emphasis added). The Court went on to reason that “it
cannot be the case that a patent covering a method and corresponding
apparatuses becomes a CBM patent because its practice could involve a
potential sale of a good or service. All patents, at some level, relate to the
potential sale of a good or service.” Id. at 1382 (emphasis added).
For at least these reasons, Petitioner’s arguments based upon the
written description of the ’341 patent are unavailing. Pet. 39–41. For
example, we are not persuaded that Petitioner supports the argument that
“the written description of the ’341 patent’s advertising claim elements
makes clear that these elements include financial features in all cases.” Id.
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at 38 (emphasis added). We find, at best, examples of potential financial
activity of the type discounted in Unwired Planet, 841 F.3d at 1382. Thus,
the ’341 patent explains that “[a]n advertiser can be charged a fee for
posting and/or storing an advertisement.” Ex. 1001, 9:24–25 (emphasis
added). Similarly, the patent explains “there are many ways that senders 40
and viewers 92 of advertisements may be induced to participate,” before
discussing remuneration as one example. Id. at 9:39–40 (emphasis added).
Petitioner’s reliance (Pet. 35) on a non-precedential panel decision in
Dish Network v. Customedia Technologies, L.L.C., CBM2017-00032, Paper
50 (PTAB July 25, 2018), is misplaced. There, the panel instituted a
covered business method patent review, observing that several of the
challenged dependent claims “add express financial elements” to the claims
from which they depend. Paper 50, 9 (quoting the panel’s institution
decision, Paper 10, 8–9). Specifically, the Dish Network panel found that
dependent claims referring to “monitoring a product rental or purchase by
an end user” met the financial product or service test for covered business
method patent eligibility. Id. Here, however, the recitations in the
dependent claims cited by Petitioner (Pet. 35) do not add any financial
components to the “advertisement” recited in claim 1, from which they
depend.
In sum, we conclude that, while the ’341 patent discusses optional
ways to facilitate the dissemination of advertising, including receiving
payments, as examples, we are not persuaded there is sufficient evidence in
the claims or specification that “sending an advertisement for display with
the identified video content” is a financial activity. See Unwired Planet, 841
F.3d at 1382 (“It is not enough [for CBM eligibility] that a sale has occurred
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or may occur, or even that the specification speculates such a potential sale
might occur.”).
C. Technological Invention
The AIA excludes from CBM review patents for a “technological
invention.” AIA § 18(d)(1). 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 asserts that the claims of the ’341 patent are not directed to
a “technological invention.” Pet. 41–77. Patent Owner disputes that
Petitioner has carried its burden on this issue. Prelim. Resp. 29–63.
Because we have determined that the ’341 patent does not qualify for
covered business method patent review, we do not address whether the
exception for technological inventions applies.
D. Discretionary Denial
Patent Owner contends that the Board should exercise its discretion to
deny the Petition under 35 U.S.C. § 324(a) “because the parallel district
court proceeding in the Western District of Texas is at an advanced stage
with trial scheduled to conclude in November 2021—well before the Board
would be expected to issue any Final Written Decision.” Prelim. Resp. 10.
Because we have determined that the ’341 patent does not qualify for
covered business method patent review, we do not address whether we
should exercise our discretion to deny the Petition.
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E. Subject Matter Eligibility
Under 35 U.S.C. § 101
Petitioner contends that the challenged claims are directed to an
abstract idea that is not eligible subject matter for a patent under 35 U.S.C.
§ 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea
of including advertising with appropriately formatted video.” Id. at 80.
Patent Owner responds that Petitioner has failed to show that the
claims recite ineligible subject matter. Prelim. Resp. 64. According to
Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve
the functioning of a video server providing shared video files.” Id.
Because we have determined that the ’341 patent does not qualify for
covered business method patent review, we do not address whether the
claims recite eligible subject matter under 35 U.S.C. § 101.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all grounds and all
challenged claims of the ’341 patent and no trial is instituted.

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PETITIONER:
Ben Haber
Amy Liang
O’MELVENY & MYERS LLP
bhaber@omm.com
aliang@omm.com

PATENT OWNER:
Michelle F. Armond
Douglas R. Wilson
ARMOND WILSON LLP
michelle.armond@armondwilson.com
doug.wilson@armondwilson.com