Denying Request for Rehearing CBM2014-00084


Takeaway: Focusing on the language of the claims, a petition for CBM review must demonstrate that the claimed subject matter as a whole is not directed to a technological invention.

In its Decision, the Board denied Petitioner’s request for rehearing of the Board’s denial to institute a covered business method patent review of the ’464 patent. The Board had denied institution of a CBM review because the Petitioner did not demonstrate that the claims of the ’464 patent qualified the patent as a covered business method patent.

In considering a request for rehearing, the Board reviews decisions for an abuse of discretion, granting a request when the decision is “based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” The requesting party “must identify the matters believed to be misapprehended or overlooked by the Board and the place in the record where it previously addressed each matter it submits for review.”

Addressing Petitioner’s arguments, the Board found that Petitioner incorrectly interpreted the Decision on Institution and the first prong of the technological invention inquiry. Petitioner argued that the Board improperly required a demonstration of both prongs of the technological invention inquiry.  The Board stated that it had determined in its Decision that Petitioner “did not demonstrate sufficiently that the claimed subject matter as a whole does not recite a technological feature that is novel and unobvious over the prior art (the first prong),” and therefore, the Board “addressed whether Petitioner had demonstrated that the claimed subject matter does not solve a technical problem using a technical solution (the second prong).”

The Board also disagreed with Petitioner’s argument that “the first prong of the technological invention inquiry under 37 C.F.R. § 42.301(b) only requires that the claim is novel and unobvious.” Instead, “the proper inquiry under 42.301(b) is whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, not whether the challenged claims are novel and unobvious over the prior art.”  The Board found this to be lacking in the Petition.

Finally, the Board was not persuaded by Petitioner’s arguments “that the Board misapprehended or overlooked that a software product is an apparatus.” In particular, the Board found Petitioner did not focus on the claimed subject matter as required, instead focusing on the implementation on a computer and a network, which are well known in the art.

Motorola Mobility, LLC v. Intellectual Ventures I, LLC, CBM2014-00084
Paper 21: Decision on Request for Rehearing
Dated: September 23, 2014
Patent: 6,658,464 B2
Before: Jameson Lee, Phillip J. Kauffman, and Jo-Anne M. Kokoski
Written by: Kauffman