Takeaway: An asserted ground of unpatentability based on 35 U.S.C. § 101 must sufficiently explain how the actual claim elements relate to nothing substantially more than an abstract idea, and not generalize the claim without addressing all of the specific claim limitations.

In its Decision, the Board denied institution of covered business method patent review of all of the challenged claims (claims 1-3, 7, and 22-24) of the ’914 Patent, because Petitioner had not demonstrated “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Petitioner had challenged claims 1-3, 7, and 22-24 of the ’914 Patent as unpatentable under 35 U.S.C. §§ 101, 112, ¶ 2, 102(b), and 103(a). The ’914 Patent relates to wired and non-wired data transmission communication systems.

The Board began by discussing Section 18 of the AIA. The Board determined that Petitioner had standing under § 18(a)(1)(B) of the AIA, because Patent Owner had sued petitioner for alleged infringement of the ’914 Patent. Then, the Board discussed the second requirement under Section 18(a)(1)(E) that CBM review is instituted only for a “covered business method patent,” which 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.” A patent needs only one claim directed to a covered business method to be eligible for review.

The Board then analyzed the claims, and determined that claim 1 as a whole recites a method of transmitting data to selected remote devices, and that based on Figure 2 of the ’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 parser 106, . . . lotto parser 110 . . . and then transmitted to the content manager 114 located in the central broadcast server 34.” Based on this, the Board determined that the ’914 patent contemplates expressly using the method of claim 1 for managing a financial product or service, and thus meets the definition of “covered business method” under AIA § 18(d)(1). With regard to the technological invention prong, the Board determined that even if, as Patent Owner argued, that the problems solved and solutions claimed are technical, the claims do not meet this prong because, as a whole, claim does not recite a technological feature that is novel and unobvious over the prior art. Instead, the Board found that claim 1 only recites the presence of well-known technologies to accomplish the claimed method.

The Board then turned to claim construction. Petitioner asserted the claim interpretations provided in the related District Court litigation and Patent Owner did not dispute those interpretations. The Board found that they were consistent with the broadest reasonable interpretation, and thus adopted those interpretations. However, the Board also noted that neither party offered a construction for the term “instantaneously notifying,” but determined that it should be interpreted under the broadest reasonable interpretation standard to mean “notifying in a very short space of time.”

The Board then addressed the asserted ground of unpatentability based on 35 U.S.C. § 101. Petitioner asserted that the claims are directed to the abstract idea of “packaging and routing information as part of a subscription service,” and that the claims accomplish the alleged invention “through conventional data processing, transmitting, and receiving equipment.” The Board agreed with Patent Owner that Petitioner ignores the claim language and fails to address the actual claim limitations by not explaining sufficiently how the challenged claims allegedly relate to the abstract idea of packaging and routing information as part of a subscription service. The Board also noted that every method can be generalized to the point of abstraction if the claim language is ignored. In this case, Petitioner overlooks the various physical components recited by the claims, including the remote devices and the central broadcast server.

The Board then addressed the asserted ground of unpatentability based on 35 U.S.C. § 112, 2nd paragraph. The Board confirmed that the standard set in Ex parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (BPAI 2008) that a claim is indefinite “if a claim is amenable to two or more plausible claim constructions,” applies to post-grant proceedings. However, the Board did not agree with Petitioner that the claims were amendable to two or more plausible claim constructions, and thus did not find that it was more likely than not that Petitioner would prevail on this ground.

Finally, the Board addressed the prior art grounds of unpatentability. For the first ground, the Board determined that Petitioner failed to explain how “asynchronously notifiying” taught in the prior art reference disclosed “instantaneously notifiying,” as required by the claims. The second ground was an attempt by Petitioner to reframe a ground raised in a previous post-grant proceeding that was not instituted. The Board exercised its discretion under §§ 324(a) and 325(d) to deny instituting for this ground. For the third and fourth grounds, the Board agreed with Patent Owner that Petitioner had failed to explain how the prior art reference disclosed “instantaneously notifiying.” Thus, the Board did not find that the Petitioner met the standard for institution for any of the asserted grounds for any of the challenged claims.

Google Inc. v. SimpleAir, Inc., CBM2014-00170
Paper 13: Decision Denying Institution of Covered Business Method Patent Review
Dated: January 22, 2015
Patent: 7,035,914 B1
Before: Michael R. Zecher, Stacey G. White, and Tina E. Hulse
Written by: Hulse
Related Proceedings: SimpleAir, Inc. v. Google Inc., 2-13-cv-00587 (E.D.Tex.)