PTAB challenges

Proceedings overview

One Covered Business Method (CBM) review was filed against US patent 6460050, resulting in the invalidation of all challenged claims that were instituted for trial, including all independent claims except claim 21. This outcome, which was affirmed on appeal, provides a defendant with an extremely strong defensive posture, as any infringement assertion based on the invalidated claims is baseless.

CBM2014-00114 — Symantec Corporation v. Intellectual Ventures I LLC

• Type: Covered Business Method (CBM) Review
• Filed: 2014-04-07
• Status: Terminated - Final Written Decision. The PTAB found the challenged, instituted claims unpatentable. This decision was affirmed by the U.S. Court of Appeals for the Federal Circuit.
• Judge panel: Administrative Patent Judges Michael P. Tierney, Jameson Lee, and Thomas L. Giannetti.
• Petition grounds: Symantec Corporation petitioned for review of claims 1–25, asserting they were unpatentable as being directed to an abstract idea under 35 U.S.C. § 101 and as obvious under 35 U.S.C. § 103 over various prior art references.
• Institution decision: On 2014-10-09, the PTAB instituted trial on claims 1, 4, 8, 9, 13–16, 20, and 22–25 on § 101 grounds only. The panel determined the patent was eligible for CBM review as its claims were directed to "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." The Board agreed at the institution stage that the claims were likely directed to the abstract idea of "receiving, processing, and replying to data."
• Final Written Decision: Issued on 2015-10-06. The PTAB determined that claims 1, 4, 8, 9, 13–16, 20, and 22–25 are unpatentable under 35 U.S.C. § 101. The panel found the claims were directed to the abstract idea of "content-based filtering of data." It concluded that the claim elements, viewed individually and as an ordered combination, did not supply an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. The claims were seen as merely requiring generic computer components to perform their conventional functions.
• Settlement / termination: The proceeding was not terminated due to settlement; it concluded with a Final Written Decision on the merits.
• Appeal: Intellectual Ventures I LLC appealed the PTAB's decision to the Federal Circuit. On 2017-09-13, in case no. 2016-1188, the Federal Circuit issued a summary affirmance under Rule 36, upholding the PTAB's invalidation of the claims. This was part of the same oral argument session that addressed the appeal from the district court litigation, which had reached the same conclusion on patent ineligibility.
• Defensive value: Extremely high. This proceeding invalidates independent claims 1, 9, 16, and 22, along with several dependent claims. Any infringement theory built on these specific claims is untenable, as they have been found unpatentable by the USPTO and that finding was affirmed by the Federal Circuit.

Strategic summary

The PTAB's review has significantly impacted the enforceability of US patent 6460050. All independent claims (1, 9, 16, 22) and their dependent claims that were reviewed in CBM2014-00114 have been canceled. The only independent claim not invalidated in this proceeding is claim 21, as trial was not instituted on it.

• CANCELED: Claims 1, 4, 8, 9, 13, 14, 15, 16, 20, 22, 23, 24, and 25.
• SUSTAINED: None.
• UNTESTED in FWD: Claims 2, 3, 5–7, 10–12, 17–19, and 21. While the petition originally challenged these claims, the PTAB did not institute trial on them, so no final decision was rendered on their patentability in this proceeding. However, it is critical to note that the parallel district court litigation (Intellectual Ventures I LLC v. Symantec Corp.) resulted in a Federal Circuit opinion finding the claims ineligible under § 101, which casts serious doubt on the validity of any remaining claims that are substantially similar.

For a defendant facing an assertion today, the estoppel landscape is favorable. While the petitioner (Symantec) is barred under 35 U.S.C. § 315(e)(2) from re-litigating grounds that it raised or reasonably could have raised, a new defendant is not. More importantly, the § 101 invalidity holding from the CBM review and its affirmance provide a powerful, publicly-available defense that does not depend on prior art. The patent owner, Intellectual Ventures, has demonstrated a willingness to appeal adverse decisions, but in this instance, both the PTAB and district court invalidity rulings were upheld.

Recommended next steps

If you are a defendant and have received a demand letter citing US patent 6460050, your response should be direct and firm, especially if the letter cites any of the invalidated claims.

1. Reference the CBM Proceeding: Explicitly cite the Final Written Decision in CBM2014-00114 and the subsequent Federal Circuit affirmance (Appeal No. 2016-1188). You should state that the asserted claims have been found unpatentable by the USPTO.

   "The Final Written Decision for CBM2014-00114, issued October 6, 2015, and available from the USPTO Patent Trial and Appeal Board, states: 'we determine that petitioner has shown by a preponderance of the evidence that claims 1, 4, 8, 9, 13–16, 20, and 22–25 of the ’050 patent are unpatentable under 35 U.S.C. § 101.' This decision was summarily affirmed by the Court of Appeals for the Federal Circuit."

2. Reference the Parallel Federal Court Litigation: In addition to the PTAB proceeding, cite the Federal Circuit’s decision in Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), which also held the patent invalid under 35 U.S.C. § 101. This separate court ruling provides an independent and powerful basis for invalidity, likely covering any remaining untested claims of a similar nature.

3. Assess Untested Claims: If the assertion is based on the small subset of claims not invalidated in the CBM (e.g., claim 21), a thorough analysis should be conducted to determine if the reasoning from the CBM and Federal Circuit court decisions applies equally to them. Given the breadth of the court's reasoning on the abstract idea of "content-based filtering," it is highly probable that any remaining claims are also invalid.