Trials@uspto.gov Paper 9 Tel: 571-272-7822 Entered: November 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE _______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________

FACEBOOK, INC., Petitioner,

v.

BASCOM RESEARCH, LLC, Patent Owner.

_______________

Case CBM2014-00138 Patent 7,389,241 B1 _______________

Before NEIL T. POWELL, MIRIAM L. QUINN, and GEORGE R. HOSKINS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge.

DECISION Institution of Covered Business Method Patent Review

37 C.F.R. § 42.208

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I. INTRODUCTION

On May 22, 2014, Facebook, Inc. (“Petitioner”) filed a Petition

(Paper 1, “Pet.”) requesting review of claims 1, 2, 4, 17, 24, 61, and 78 of

U.S. Patent No. 7,389,241 B1 (Ex. 1001, “the ’241 patent”) under the

transitional program for covered business method patents. Bascom

Research, LLC (“Patent Owner”) filed a Preliminary Response (Paper 8,

“Prelim. Resp.”). The Board has jurisdiction under AIA1 § 18(a) and 37

C.F.R. § 42.300 (2013).

To institute a covered business method patent review, the ’241 patent

must qualify for such review, and the Petition must demonstrate it is more

likely than not that at least one of the challenged claims is unpatentable. See

AIA § 18(a)(1)(A), (E); 35 U.S.C. § 324(a). As set forth below, the

’241 patent qualifies for covered business method patent review, and the

present record indicates it is more likely than not that all challenged claims

are unpatentable. This decision, therefore, institutes review of those claims.

This decision may discuss facts based on the evidentiary record

developed thus far (prior to Patent Owner’s Response). Any inferences or

conclusions drawn from those facts are neither final nor dispositive of any

issue on which trial is instituted. This is not a final decision as to

patentability of any claim in the ’241 patent.

A. The ’241 Patent

The ’241 patent discloses a method for enabling computer network

users to provide other users with access to link relationships between

1 See Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”).

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documents on the network. See Ex. 1001, Abstract. Figure 1 is shown

below:

Figure 1 illustrates a system for collecting and providing categorized

information to users of computer network 10, such as the Internet. See id. at

5:9–11, 5:17–19. The system includes client devices 20 configured to access

document objects 40 and 50 on network 10. See id. at 5:19–22. The system

further includes link references 42 and 52, corresponding to first document

object 40 and second document object 50, respectively, and one or more link

relationships 45. See id. at 5:22–25. Links 41 and 51, respectively, point to

first document object 40 and second document object 50. See id. at 5:25–28.

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Server 30 comprises one or more link directories 35, which store

information regarding link relationships 45 and link references 42 and 52

developed by client devices 20. See id. at 5:37–42.

B. Illustrative Claim

Claim 1 of the ’241 patent is illustrative of the challenged claims:

1. A method for enabling users of a network to provide other users of the network with access to link relationships between document objects that are located on the network, the method comprising: creating one or more link directories on one or more servers

coupled to the network, wherein the one or more link directories store one or

more link relationships between document objects, the one or more link relationships identify a first document object, a second document object, and one or more link relationship attributes describing relationships between the first document object and the second document object, and

the link relationships are separate from the first document object and the second document object;

making the one or more link relationships accessible to one or more users of the network;

enabling one or more users to populate the one or more link directories with one or more link relationships; and

billing based upon the one or more link directories created.

Ex. 1001, 39:34–53 (some indentations added).

C. Related Matters

The parties identify two pending litigations that may affect or be

affected by the current proceeding: Bascom Research, LLC v. Facebook,

Inc., Case No. 3:12‐CV‐6293 (N.D. Cal.) and Bascom Research, LLC v.

LinkedIn, Inc., Case No. 3:12‐CV‐6294 (N.D. Cal.). See Pet. 1; Paper 5, 2.

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D. Prior Art Relied Upon

Brown US 5,941,947 Aug. 1999 Ex. 1006

Miller WO 00/17775 Mar. 2000 Ex. 1005

Richard M. Keller et al., A Bookmarking Service for Organizing and Sharing URLs, 29 Computer Networks & ISDN Systems 1103–1114 (Sept. 1997)

Ex. 1004

E. Asserted Grounds of Unpatentability

Petitioner contends claims 1, 2, 4, 17, 24, 61, and 78 of the

’241 patent are unpatentable based on the following grounds. See Pet. 10.

Basis Reference(s) Claim(s) Challenged

§ 102(b) Keller 78

§ 103(a) Keller and Miller 1, 2, 4, 17, and 61

§ 103(a) Keller, Miller, and Brown 24

II. ANALYSIS

A. Claim Construction

The ’241 patent is unexpired, so this decision accords the claims their

broadest reasonable construction in light of the ’241 patent Specification.

See 37 C.F.R. § 42.300(b) (2013). Claim terms are given their ordinary and

customary meaning, as would be understood by one of ordinary skill in the

art in the context of the entire patent disclosure. In re Translogic Tech., Inc.,

504 F.3d 1249, 1257 (Fed. Cir. 2007).

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1. “document object” (all challenged claims)

Petitioner proposes that “document object” be construed as

“information stored on computers and networked computing and storage

devices as a document or object.” Pet. 17–18 (citing Ex. 1001, 1:49–58).

The Preliminary Response does not respond to this proposal. On the present

record, Petitioner’s proposal comports with the broadest reasonable

construction standard. See Ex. 1001, 1:49–58, 2:3–48, 5:11–17.

2. “link relationship” (all challenged claims)

Petitioner proposes that “link relationship” be construed as

“information identifying two document objects.” Pet. 18–19 (citing

Ex. 1001, 3:36–47, 5:45–49). Patent Owner proposes “structures having two

or more pointers connecting two or more document objects.” Prelim.

Resp. 9 (underlining in original).2 Neither proposal is persuasive.

Petitioner’s proposal is too broad, because the term “link relationship”

requires something more than a mere identification of two document objects;

it further requires at least a relationship between the document objects.

Patent Owner’s proposal is unpersuasive for two reasons. First, the

proposed “structure” requirement is based on a dictionary definition of

“link” as “a connecting structure” such as “a single ring or division of a

chain.” See Prelim. Resp. 10 (citing Ex. 2001). That dictionary definition is

not probative of the meaning of “link” in the context of the present

Specification, which is directed to “links” to document objects in a computer

network. See Ex. 1001, 5:9–55.

2 Patent Owner further adds “and identifying one or more link relationship attributes.” Prelim. Resp. 9. That is a separately claimed aspect of the “link relationship” discussed further below. See infra Part II.A.3.

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Second, Patent Owner’s suggestion that the “link” should “connect”

two document objects is not supported by the Specification. The

Specification instead describes two document objects 40 and 50, each having

separate link references 42 and 52, as well as separate links 41 and 51 to the

document objects. See Ex. 1001, 5:21–28, 5:43–55, Fig. 1. Moreover,

Patent Owner’s reading of the claims to require a link “between” two

document objects is strained. A more natural reading, on the present record,

is that the claims require a relationship “between” document objects.

Both parties cite the following Specification passage, which describes

Figure 1, as pertinent to the meaning of “link relationship”:

The link relationship 45 comprises two pointers, one each to the first document object 40 and to the second document object 50, and attributes describing characteristics of the relationship between the two document objects 40, 50 related by the link relationship 45. The pointers included in a link relationship 45 may be comprised of pointers to a link reference 42, 52. The link relationship 45 establishes a meaningful relationship between two document objects 40, 50, whereas the locations of the document objects 40, 50 may be maintained within the Linkspace system 100 by means of the link references 42, 52.

Ex. 1001, 5:43–55 (emphasis added); see Pet. 19; Prelim. Resp. 14. Based

on that disclosure and the claim language, a “link relationship” identifies

two document objects as having a meaningful relationship between one

another, and also identifies a connection to the document objects on the

network (i.e., a “link”). See also Ex. 1001, 2:35–46, 3:20–25, 3:36–54,

11:11–23, Fig. 4a (providing further support for claim construction);

Ex. 2001 (pertinently defining “link” as “something analogous to a link of

chain” such as “a connecting element or factor” or “an identifier attached to

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an element (as an index term) in a system in order to indicate or permit

connection with other similarly identified elements”).

3. “link relationship attribute” (all challenged claims)

Petitioner proposes that “link relationship attribute” be construed as

“information describing a link relationship.” Pet. 20–21 (citing Ex. 1001,

5:45–49, 11:56–59). Patent Owner proposes “information describing ways

in which two or more document objects are related.” Prelim. Resp. 16–21.

We are not persuaded that the proffered proposals raise meaningful

distinctions that affect our determination to institute trial, so neither is

adopted here. Moreover, the claims themselves indicate the attributes

“describ[e]” the meaningful relationship between the two document objects.

See, e.g., Ex. 1001, 39:43–46 (claim 1).

4. “link directory” (all challenged claims)

Petitioner proposes that “link directory” be construed as “a directory

of link relationships.” Pet. 21 (citing Ex. 1001, Fig. 4a, 6:2–3). The

Preliminary Response does not respond to this proposal. On the present

record, Petitioner’s proposal comports with the broadest reasonable

construction standard. Indeed, each of the independent claims recites the

“link directories store one or more link relationships.” See also Ex. 1001,

8:45–53 (describing storing of link relationships in directories), 11:11–29

(describing link directory 35 of Figure 4a).

5. “network” (independent claims 1 and 61)

Petitioner proposes that “network” be construed as a “set of

interconnected computers, such as the Internet.” Pet. 21–22 (citing

Ex. 1001, 1:48–61). The Preliminary Response does not respond to this

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proposal. On the present record, Petitioner’s proposal comports with the

broadest reasonable construction standard. See Ex. 1001, 1:48–61.

6. “sponsoring user” (dependent claims 2, 4, and 24)

Petitioner proposes that “sponsoring user” be construed as “a person

or entity that is responsible for a link directory.” Pet. 22 (citing Ex. 1001,

24:10–13, 30:30–33). The Preliminary Response does not respond to this

proposal. On the present record, the proposal comports with the broadest

reasonable construction standard. See Ex. 1001, 24:10–13, 30:30–33.

B. Eligibility of the ’241 Patent for Covered Business Method Patent Review

AIA § 18(a) provides for post-grant review of covered business

method patents. A “covered business method patent” is one “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)

(2013). A patent need have only one claim directed to a covered business

method to be eligible for covered business method patent review. See

Transitional Program for Covered Business Method Patents—Definitions of

Covered Business Method Patent and Technological Invention, 77 Fed. Reg.

48,734, 48,736 (Aug. 14, 2012) (response to comment 8). This decision

focuses on claim 1 of the ’241 patent.

1. Financial Product or Service

The “legislative history [of the AIA] explains that the definition of

covered business method patent was drafted to encompass patents ‘claiming

activities that are financial in nature, incidental to a financial activity or

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complementary to a financial activity.’” Id. at 48,735 (response to

comment 1, citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement

of Sen. Schumer)). The legislative history also indicates that “financial

product or service” should be interpreted broadly. Id. Patent Owner’s

contention that the “financial product or service” requirement limits covered

business method patent reviews to the financial services industry (see

Prelim. Resp. 22–24) is unpersuasive. See 77 Fed. Reg. at 48,735–36

(responses to comments 2–3).

Claim 1 of the ’241 patent recites a method for enabling network users

to provide other users with access to link relationships between document

objects, and includes “billing based upon the one or more link directories

created.” Dependent claims indicate such billing may include billing link

directory users based on many different kinds of criteria. See Ex. 1001,

claims 3, 38–44, and 60. Dependent claims also indicate the billing step of

claim 1 may include billing sponsors based on many different kinds of

criteria. See id. at claims 4, 29–34, and 59. These sundry billing practices

arise from the “need . . . to enable users to derive value and/or revenue from

providing [the document linking] service to others.” Id. at 2:46–48. Based

on these various claim requirements, we are persuaded that the method of

claim 1 is incidental or complementary to the financial activity of billing a

party for document linking services rendered to that party.

Patent Owner contends “there is nothing in the language of the

claims . . . to suggest that the patent is aimed at the types of financial

products or services that have been determined to qualify as a covered

business method . . . such as pricing of products and services.” Prelim.

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Resp. 26–27. Based on the discussion above of the various examples of

“billing” recited in claim 1, that contention is unpersuasive.

In conclusion, the present record indicates that claim 1 is directed to a

method for performing data processing or other operations used in the

practice, administration, or management of a financial product or service.

2. Exclusion for Technological Inventions

The definition of “covered business method patent” excludes “patents

for technological inventions.” 37 C.F.R. § 42.301(a) (2013). Whether a

patent is for a technological invention is determined by considering on a

case-by-case basis “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.” Id. § 42.301(b). The

following claim drafting techniques would not typically render a patent a

technological invention:

(a) Mere recitation of known technologies, such as computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases, or specialized machines, such as an ATM or point of sale device[; and]

(b) Reciting the use of known prior art technology to accomplish a process or method, even if that process or method is novel and non-obvious.

Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64

(Aug. 14, 2012). Based on the present record, we are persuaded that claim 1

of the ’241 patent merely recites the use of known prior art technology that

fails to direct the claim to a technological invention.

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Patent Owner contends the claimed method steps of creating link

relationships between document objects, storing the link relationships in a

link directory, and providing access to the link directory, is a technical

solution to the technical problem of existing searching techniques becoming

increasingly less effective as the amount of information available on

computer networks grows exponentially. See Prelim. Resp. 33–36.

Nevertheless, even if the method of claim 1 is novel and non-obvious (an

issue considered further below), it is not a “technological invention.” See

Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,764 (claim drafting

technique “(b)”). Patent Owner has not established that effecting these

method steps requires anything more than the use of known programming

technology.

In conclusion, the present record indicates that claim 1 does not recite

a “technological invention” excluded from covered business method patent

review.

C. Anticipation by Keller

Petitioner contends claim 78 of the ’241 patent is anticipated by

Keller. See Pet. 23–41.

1. Keller Disclosure

Keller discloses a bookmarking service, called WebTagger™, for

organizing and sharing Web-based information resources. See Ex. 1004,

1103 (Abstract). Each user of the WebTagger system is assigned a

“personal memory,” as well as one or more “group memories,” to store,

organize, and access Web page URLs. See id. at 1105 (col. 1). Each group

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memory is assigned to a group of users who wish to share URLs relevant to

topics of mutual interest to members of the group. See id.

WebTagger is a proxy-based system, wherein the WebTagger proxy

intercepts each Web page served to the user and inserts a set of interface

buttons at the top of the Web page before presentation to the user. See id. at

1105 (col. 2). Figure 2 of Keller is reproduced below3:

3 Exhibit 1004 includes two copies of Keller, published at different times and in different manners. See Pet. 24, n.2. At least the Figures of the two copies appear to be identical, so the clearer version is reproduced here.

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As illustrated in Figure 2, the user has chosen the “Categorize” WebTagger

button, to bookmark the Sixth International WWW Conference Web page.

See id. at 1106 (col. 1). The form of Figure 2 identifies the Web page to be

categorized; the user’s personal memory (“Keller”) and one or more group

memories (“Sigma Group” etc.) associated with the user; and, for a selected

memory, a set of topical categories under which the Web page may be

classified. See id. at 1106 (cols. 1–2). The user checks off the categories

relevant to the Web page, and the WebTagger system associates the selected

categories with the Web page within the selected memory. See id.

A user may retrieve bookmarked URLs in two manners. First, the

user may click the “Retrieve” WebTagger button, and fill out a form similar

to Figure 2, to select a subset of categories. See id. at 1107 (col. 1). The

WebTagger system then retrieves the Web page URLs associated with the

selected categories. See id. at 1107 (col. 1), Fig. 3. Second, the user may

view all Web page URLs stored in a personal or group memory, sorted by

title, by URL, or by category. See id. at 1107 (col. 2), Fig. 4.

2. Analysis of Claim 78

Petitioner maps claim 78 to the Keller disclosure as follows. See

Pet. 26–41. Petitioner contends Keller discloses a method for enabling a

computing device (WebTagger proxy system) to store and access link

relationships (topical categories) between document objects (Web pages).

See Pet. 26–27; Ex. 1003, ¶¶ 26–27, 46, 71–73. According to Petitioner,

Keller discloses creating one or more link directories (personal or group

memories) on the WebTagger system’s computer. See Pet. 28–29; Ex. 1003,

¶¶ 75–76. Petitioner asserts that each personal or group memory stores

topical categories, each of which may include a first Web page and a second

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Web page. See Pet. 29–34; Ex. 1003, ¶¶ 77–87. Further, Petitioner

contends that each personal or group memory stores link relationship

attributes (the textual names of each topical category) describing

relationships between the first and second Web pages. See Pet. 34–35;

Ex. 1003, ¶¶ 88–89. Petitioner asserts that the topical categories of Keller

are separate from the first and second Web pages. See Pet. 35–36; Ex. 1003,

¶¶ 90–92. According to Petitioner, Keller discloses enabling one or more

users of the WebTagger system to populate the personal or group memories

with one or more topical categories containing Web pages. See Pet. 36–39;

Ex. 1003, ¶¶ 93–98. Petitioner contends the Keller system further allows the

users to access the one or more topical categories and the corresponding

Web pages. See Pet. 39–41; Ex. 1003, ¶¶ 99–104. On the present record,

these contentions are persuasive.

Patent Owner contends that Keller fails to disclose “link

relationships” between document objects. See Prelim. Resp. 42–51, 54–57.4

This contention rests upon Patent Owner’s proposed construction of “link

relationship” which, for reasons noted above in Section II.A.2, is not

persuasive. Under our claim construction, discussed above, Keller discloses

the claimed link relationship, because Keller identifies two document objects

(Web pages) as having a meaningful relationship between one another, and

also identifies a connection to the document objects on the network (URL

links).

4 These portions of the Preliminary Response span three different section headings. Except as otherwise discussed here, the arguments presented in those three sections are based on Patent Owner’s contention that Keller lacks the claimed “link relationships.”

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Patent Owner also contends that Petitioner’s analysis is faulty in citing

Keller’s topical categories as corresponding to both the claimed “link

relationships” and the claimed “link relationship attributes.” See Prelim.

Resp. 51–54. That contention is not persuasive, for two reasons. First, as

recited in claim 78, the “link relationships identify . . . one or more link

relationship attributes.” Ex. 1001, 46:23–27. Thus, claim 78 describes the

attributes as identified by the link relationship, so there is no incongruity in

Keller’s topical categories corresponding to both of those claim limitations.

Second, as Petitioner argues, the ’241 patent Specification indicates a link

relationship attribute may be a “plain language name” or a “field of text

data” describing the relationship in terms which are useful to the system

users. Ex. 1001, 8:24–44, 11:56–59; see Pet. 34–35.

Patent Owner further contends that, during prosecution of the

’241 patent, the Examiner understood that categorizing as in Keller was

different from creating a link relationship as claimed, and thereby allowed

the claims over prior art such as US 6,725,227 to Li. See Prelim. Resp. 40,

56. However, Patent Owner fails to establish how Keller is allegedly similar

to Li with respect to claim 78, much less that the alleged similarities led the

Examiner to allow claim 78 over Li. See id.

In conclusion, the present record indicates it is more likely than not

that claim 78 is anticipated by Keller.

D. Obviousness Over Keller and Miller

Petitioner contends claims 1, 2, 4, 17, and 61 of the ’241 patent are

unpatentable over Keller and Miller. See Pet. 42–59.

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1. Miller Disclosure

Miller discloses a dynamic collaborative environment on a computer

network. See Ex. 1005, Abstract, 39:8–11. The environment allows group

members to use tools that facilitate communication, research, and analysis

among the group. See id. at 4:1–5. Miller provides various methods of

obtaining payment for creating or joining groups. See id. at 38:28–39:2.

2. Analysis of Independent Claims 1 and 61

Petitioner contends that independent claims 1 and 61 recite several

limitations that are substantially similar to claim 78, discussed above. See

Pet. 42, 47–50, 57–59. Indeed, on the present record, it appears that there

are only two substantive differences pertinent to the prior art involved here.

First, claim 78 recites creating link directories “on the computing device,”

whereas claims 1 and 61 more narrowly recite creating link directories “on

one or more servers coupled to the network.” Ex. 1001, 39:38–39, 44:20–

22, 46:21–22. Second, claims 1 and 61 each recite a “billing” step which,

while somewhat different from one another, have no corollary in claim 78.

See id. at 39:53, 44:34–35, 46:18–35.

For the reasons provided above, the present record indicates that

Keller discloses the commonly claimed subject matter among independent

claims 1, 61, and 78. Petitioner contends claims 1 and 61 would have been

obvious over Keller and Miller, citing the latter as disclosing the

requirements of claims 1 and 61 not also found in claim 78. See Pet. 42, 59.

Concerning the “server” requirement, Keller’s WebTagger system is

implemented on a computer network. See supra Part II.C.1. Keller,

however, does not expressly state that it is implemented by a server.

Petitioner contends Miller’s collaborative environments, which are

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implemented on servers, perform the same purpose as the personal or group

memories in Keller: storing information and selections provided by users to

share among the users. See Pet. 44–45; Ex. 1003, ¶¶ 56–62. Petitioner

further contends it would have been obvious to one of ordinary skill in the

art to implement Keller’s WebTagger system using a web server, as

disclosed by Miller in a similar context, to store the personal and group

memories of Keller and thereby facilitate easier access and sharing with

other users. See Pet. 45–47; Ex. 1003, ¶¶ 19, 113–116. On the present

record, these contentions are persuasive.

Patent Owner contends: “Miller is very different than Keller because

Keller stores only data (e.g., URLs of web pages and categories) on a shared

memory accessible to users in a particular group while Miller stores both

software computer programs as well as data on a server that is accessible to

a group.” Prelim. Resp. 67–68. Based on that difference, Patent Owner

faults Petitioner for failing to explain sufficiently why one of ordinary skill

would have been motivated by Miller to modify Keller to operate on a server

instead of a shared memory accessible to users in a group. See id. at 71–72.

Petitioner, however, asserts that one of ordinary skill would recognize that

using Miller’s network server in Keller “would facilitate easier access and

sharing with other users.” Pet. 46 (citing Ex. 1003, ¶ 114). The Preliminary

Response does not cite any evidence in the present record to contradict that

contention.

The method of claim 1 further includes “billing based upon the one or

more link directories created,” and the method of claim 61 further includes

“billing based upon activity involving access to the one or more link

directories.” Ex. 1001, 39:53, 44:34–35. Keller does not discuss billing at

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all. Miller, however, provides for “various methods of obtaining payment

for creating or joining groups” including either a fixed fee or a service fee

based on the number of group members, the functions made available to the

group, or the length of time the environment exists or is used. Ex. 1005,

38:28–39:2. Petitioner contends that it would have been obvious to one of

ordinary skill in the art to add the billing feature of Miller to Keller, such

that Keller’s users would be billed as recited in claims 1 and 61. See

Pet. 51–52, 59; Ex. 1003, ¶¶ 127–128. The alleged motivation for this

combination is “obtaining revenue,” because operating a web service such as

WebTagger costs money. See Pet. 52, 59; Ex. 1003, ¶¶ 129–130. On the

present record, these contentions are persuasive.

Patent Owner contends Petitioner fails to establish that Miller’s

description of “obtaining payment” (Ex. 1005, 38:28–39:2) corresponds to

the respective “billing” requirements of claims 1 and 61. See Prelim.

Resp. 61–63. Patent Owner characterizes Miller as having “nothing to do

with charging members of the groups usage fees for activities performed

within the environment as would have the instant patented claims,” and

Miller fails to “disclose the billing based upon usage.” Id. at 62 (emphasis

added). The “billing” steps of claims 1 and 61 are not, however, based upon

“usage,” but rather upon link directory creation (claim 1) or link directory

access (claim 61). The present record indicates Miller discloses both of

those kinds of billing. See Ex. 1005, 38:29–31 (charging fixed fee when

new group is created), 38:31–32 (charging service fee based on number of

members that join).

In conclusion, the present record indicates it is more likely than not

that independent claims 1 and 61 are unpatentable over Keller and Miller.

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3. Analysis of Dependent Claims 2, 4, and 17

As to claim 2, Petitioner contends that Keller discloses the recited

“sponsoring user” via Keller’s “moderator,” or alternatively that Miller

discloses a sponsoring user via the creator of its environment or group,

which it would have been obvious to add to Keller “to maintain centralized

control over the membership of the group.” Pet. 54; Ex. 1003, ¶¶ 134–136.

As to claim 4, Petitioner contends both Keller and Miller disclose receiving

information identifying the sponsoring user, and Miller discloses charging

the sponsoring user a fee for sponsoring the link directories. See Pet. 55–56.

As to claim 17, Petitioner contends Keller discloses providing an interface

for enabling users to access the one or more topical categories. See id. at

56–57. The Preliminary Response does not address these various

contentions. We are persuaded that the present record indicates it is more

likely than not that claims 2, 4, and 17 are unpatentable over Keller and

Miller.

E. Obviousness Over Keller, Miller, and Brown

Petitioner contends that claim 24 of the ’241 patent is unpatentable

over Keller, Miller, and Brown. See Pet. 60–64. Claim 24 requires the

enabling step of claim 2 to include “providing the sponsoring user with the

capability to allow one or more users to populate the one or more link

directories with one or more link relationships.” Ex. 1001, 41:33–36.

According to Petitioner, “Keller does not disclose the specific ability of a

moderator to allow another user to populate the link directory with link

relationships.” Pet. 60. Therefore, Petitioner cites Brown as disclosing a

technique for allowing a sponsoring user (the “system administrator” of

Brown) to control user access to data entities accessible through a network.

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See id. at 60–61; Ex. 1003, ¶¶ 63–67. Specifically, Petitioner asserts Brown

discloses a bulletin board system (BBS) which is closely analogous to

Keller’s WebTagger system, whereby a BBS system administrator may

permit some users to have read-only access to the BBS, and permit other

users to add or reply to messages on the BBS. See Pet. 61–62 (citing

Ex. 1006, 10:46–53, 10:66–11:2); Ex. 1003, ¶¶ 151–153. According to

Petitioner, it would have been obvious to add the access control feature of

Brown to Keller, to provide flexibility to the system. See Pet. 62–64;

Ex. 1003, ¶¶ 154–158. The Preliminary Response does not address these

contentions. We are persuaded that the present record indicates it is more

likely than not that claim 24 is unpatentable over Keller, Miller, and Brown.

III. CONCLUSION

For the foregoing reasons, the ’241 patent qualifies for covered

business method patent review, and the present record indicates it is more

likely than not that claims 1, 2, 4, 17, 24, 61, and 78 are unpatentable. This

decision institutes a trial. We have not made a final determination under

35 U.S.C. § 328(a) as to the patentability of claims or any underlying factual

and legal determinations.

IV. ORDER

Accordingly, it is:

ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business

method patent review of the ’241 patent is hereby instituted on the following

grounds:

A. Claim 78 under 35 U.S.C. § 102(b) as anticipated by Keller;

CBM2014-00138 Patent 7,389,241 B1

22

B. Claims 1, 2, 4, 17, and 61 under 35 U.S.C. § 103(a) as obvious

over Keller and Miller; and

C. Claim 24 under 35 U.S.C. § 103(a) as obvious over Keller,

Miller, and Brown.

FURTHER ORDERED that pursuant to 35 U.S.C. § 324(d) and

37 C.F.R. § 42.4 (2013), notice is hereby given of the institution of a trial.

The trial will commence on the entry date of this decision.

CBM2014-00138 Patent 7,389,241 B1

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FOR PETITIONER:

Heidi L. Keefe Andrew C. Mace Mark R. Weinstein COOLEY LLP hkeefe@cooley.com amace@cooley.com mweinstein@cooley.com zpatdcdocketing@cooley.com FOR PATENT OWNER:

Aldo Noto Sean Wooden ANDREWS KURTH, LLP aldonoto@andrewskurth.com seanwooden@andrewskurth.com DCIPDocketing@andrewskurth.com