Denying Institution of Covered Business Method Patent Review CBM2014-00053


Takeaway: Pre-AIA 35 U.S.C. § 102(e) references do not qualify as prior art on which a covered business method patent review may be based.

In its Decision, the Board denied institution of covered business method patent review. Specifically, Petitioner challenged claims 13-15 and 18 of the ’099 Patent as unpatentable under both 35 U.S.C. §§ 103 and 112.  The ’099 Patent relates to methods of managing, distributing, and/or retailing digital media assets from various content suppliers, allowing consumers to access content from multiple suppliers at a single location and allowing content suppliers to define parameters regarding distribution of media assets.

The Board began with claim construction, stating that the claims must be construed in using the broadest reasonable meaning of words in their ordinary usage as they would be understood by one of ordinary skill in the art. The Board addressed Petitioner’s allegations that the claim terms “direct supply,” “embedded purchasing opportunities,” and “coded information” are indefinite under 35 U.S.C. § 112.  Regarding “direct supply,” Petitioner argued that it is not clear if the video content must go from the media content supplier to the digital media content service platform without passing through intermediate systems and/or networks.  The Board disagreed, noting that while the ’099 Patent does not explicitly define “direct supply,” the specification describes media assets being supplied via intermediate networks.  Turning to “embedded purchasing opportunities,” the Board disagreed with Petitioner’s assertion that it is unclear if a hyperlink inserted within a video-stream that when selected opens a separate webpage including a form that may be completed for purchasing a product would constitute an “embedded purchasing opportunity.”  The Board again noted that while “embedded purchasing opportunities” are not explicitly defined in the ’099 Patent, the specification provides examples of such, including a point and click option embedded in a video stream through which a user can purchase an item.  Finally, the Board disagreed with Petitioner that the term “coded information” is indefinite, finding again that while there is no explicit definition in the ’099 Patent, the specification discusses “intelligent media” as including coded information.

The Board then examined whether the ’099 Patent is a “covered business method patent” pursuant to the AIA. A “covered business method patent” must claim “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).  In determining whether a patent fits this definition, one must look to the claims, and only one claim must be directed to a covered business method in order for the entire patent to be eligible for CBM review.  The Board first discussed whether the ’099 Patent is for a financial product or service.  Petitioner contended that because it claims activity that is “financial in nature” and is classified in class 705, there is a presumption of a covered business method.  The Board agreed with Petitioner, stating that the claims are directed to the use and availability of advertising information that may allow for the purchase of merchandise, which is a financial activity.  The Board then discussed the exclusion for technological inventions.  The Board stated that in determining whether a patent is for a technological invention, it must consider “whether the claimed subject matter as a whole recites a technological feature that is novel or unobvious over the prior art; and solves a technical problem using a technical solution.” 37 C.F.R. § 4.301(b).  The Board agreed with Petitioner that the ’099 Patent is not a technological invention because it was unable to identify any limitation of claim 13 that is a technological feature that is novel or unobvious over the prior art.

The Board then examined Petitioner’s arguments that the claims are unpatentable based upon 35 U.S.C. § 102(e) prior art references. The Board found that those grounds of asserting obviousness are defective because pre-AIA 35 U.S.C. § 102(e) references do not qualify as prior art on which a covered business method patent review may be based. AIA § 18(a)(1)(C).

Finally, the Board discussed Petitioner’s contention that claim 13 is indefinite under 35 U.S.C. § 112 ¶ 2. Referring back to the discussion regarding claim construction, the Board found that none of the claim terms asserted by Petitioner to be indefinite are in fact indefinite.

Hulu, LLC v. Intertainer, Inc., CBM2014-00053
Paper 11: Decision Denying Institution of Covered Business Method Patent Review
Dated: June 23, 2014
Patent 8,468,099
Before: Michael W. Kim, Susan L.C. Mitchell, and Jennifer M. Meyer
Written by: Meyer
Related Proceedings: Intertainer, Inc. v. Hulu, LLC, No. 2:13-cv-05499 (C.D. Cal.); CBM2014-00052