The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) recently declined to institute a CBM review of U.S. Patent No. 6,006,227, owned by Mirror World Technologies, LLC. See Apple, Inc. et al v. Mirror World Technologies, LLC. The decision is significant not only because the PTAB refused to institute a covered business method review, but because the panel — Administrative Patent Judges Thomas Giannetti, David McKone, and Barbara Parvis — cited the Federal Circuit’s recent decision in Enfish v. Microsoft when they found that the challenged claims of the ‘227 patent were not abstract.

The Petitioners argued that the challenged claims are directed to an abstract idea that is not patent-eligible subject matter. According to the Petitioners, “the challenged claims of the ‘227 patent are directed to the abstract idea of organizing items of information, i.e., ‘data units,’ in chronological order.” The patent owner responded that the Petitioners’ view “entirely omits the core concept of the claimed invention: using a ‘main stream’ and ‘substreams.’”

The patent refers to a “stream” as a time-ordered sequence of documents. See col. 4, ll. 66–67. The patent refers to a “substream” as a subset of the main stream document collection. See col. 5, ll. 16–17. Although a document may belong to any number of substreams, it remains part of the main stream. See col. 5, ll. 14–16.

The Board found, however, that the patent owner established that the claims specifically require operations to be performed by a computer system, and that the problem being address specifically arose in the realm of computer operating systems, which was relevant given the Federal Circuit’s ruling in DDR Holdings, LLC v. Hotels.com. The Board found unpersuasive the Petitioners’ argument that those with photographic memories could perform activities covered by the patent claims at issue, which does seem rather a stretch at best.

Given that the Federal Circuit has within the last several weeks issued an important, precedential opinion in Enfish, the Board authorized and received supplemental submissions from the parties specifically addressing that decision. Ultimately, the Board concluded, as did the Federal Circuit in Enfish, that the claims at issue do not recite an abstract idea. The Board explained: “Like the claims under consideration in Enfish, we are persuaded that the challenged claims of the ‘277 patent are directed to an “improvement in computer functionality.”

Although it was unnecessary to go beyond the first step of the Mayo/Alice framework, the Board did take the next step to point out that they were not persuaded by the Petitioners’ arguments relating to step two of the Mayo/Alice framework. Pointing out that the district court judge reached the same conclusion, the Board explained (with citations omitted):

The claims do not recite a generic computer system and, like those claims upheld in DDR Holdings, are “rooted” in non-abstract computer technology. We agree with Patent Owner that the claims are not directed generically to organizing and storing data, but instead to the particular use of streams and substreams. We note that the district judge in the pending district court litigation reached the same conclusion.

The Board went on to explain that in addition to considering the Federal Circuit’s recent ruling in Enfish, the Board also considered the even more recent ruling in In re TLI Communications LLC Patent Litigation. The Board also specifically noted that it placed no significance on the fact that the claims at issue in Enfish were written in means-plus-function format because claim format is not a determining factor in a 101 analysis, citing TLI.

Tags: CBM, patent, Patent eligibility, patents, post grant proceedings, PTAB, USPTO

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