Denying Institution of Covered Business Method Review CBM2014-00083

Motorola Mobility LLC v. Intellectual Ventures I LLC
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Takeaway: Expert testimony is likely needed to show the claimed subject matter as a whole recites a technological feature that is novel and unobvious and solves a technical problem using a technical solution for obtaining institution of a covered business method review.

In its Decision, the Board denied institution of the covered business method review, because it determined that Petitioner had not demonstrated that the ’054 Patent is a “covered business method patent.” The ’054 Patent relates to systems and methods of distributing electronic information updates for a number of different products to multiple, uncoordinated user stations using a non-proprietary network.

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.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). The Board began its analysis with the technological invention inquiry, which includes considering (1) whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and (2) solves a technical problem using a technical solution. 37 C.F.R. § 42.301(b).

Petitioner contended that the claimed method is the normal, expected, or predictable result of the combination of a computer and a network. However, the Board determined that Petitioner failed to establish that simply combining the two known technologies would normally result in that combination performing the specific steps claimed in the ’054 Patent. For example, claim 151 includes the step of “receiving from the remote computer system over the communications network software updates indicated by the selection,” where “the selection of software updates is selected at the user station as a function of the directory” of software updates available for installation on the user station. “Petitioner’s contention that the combination of a computer and network predictably results in receiving software is not enough to show that the combination would predictably result in the specific claimed step.” Such general, conclusory statements, without more, is not sufficient to show that at least one claim recites a technological feature that is novel and unobvious over the prior art. The Board also determined that Petitioner also did not provide any specific or persuasive reasoning to establish that the claims of the ’054 Patent do not solve a technical problem using a technical solution, and did not refer to or rely on any expert testimony in that regard.

Motorola Mobility LLC v. Intellectual Ventures I LLC, CBM2014-00083
Paper 17: Denying Institution
Dated: August 6, 2014
Patent 6,557,054 B2
Before: Jameson Lee, Phillip J. Kauffman, and Jo-Anne M. Kokoski
Written by: Kokoski
Related Proceedings: Intellectual Ventures I v. Motorola Mobility, Inc., No. 11-908 (SLR) (D. Del.)