Apple, Inc. v. ContentGuard Holdings Inc., CBM2015-00046, PTAB Paper 12 (June 3, 2015)

In a recent holding, the Board conducted a thorough covered business method (CBM) analysis when it denied institution of Apple’s petition for CBM review of McKool Smith client ContentGuard’s ’556 Patent. The Board held that that Apple failed to demonstrate sufficiently that the claimed subject matter of the disputed patent is not a technological invention. To determine whether a patent is for a technological invention, the Board considers “on a case-by-case basis, whether the claimed subject matter as a whole recites a technological feature that is a novel and unobvious over the prior art; and solves a technical problem using a technical solution.” Opinion at *7.

Regarding whether the subject matter recites a technological feature, Apple narrowly focused on generic phrases relating to claim 1 of the disputed patent—i.e. “one or more computing devices,” “terms of use of digital assets,” and “asset identifier with the digital asset”—to argue “that claim 1 ‘says nothing specific about particular or novel attributes of these computing devices.’” Id. at *8. In response, ContentGuard pointed out that Apple had ignored the technical features of claim 1, particularly the steps of:

creating . . . a second instance of the digital asset for transfer to the user device, embedding in the at least one other portion of the second instance of the digital asset at least a customer identification associated with the user and the asset identifier, and detecting . . . a transfer of the second instance of the digital asset to the user based at least in part on the customer identification

Id. at *9. The Board agreed, noting that Apple’s analysis “is conclusory and fails to address the above-noted technical features.” Id. at *10. Also of note to the Board was the fact that Apple did not provide expert testimony to support its argument.

Regarding whether the disputed patent solves a technical problem using a technical solution, the Board held that, contrary to Apple’s allegations, the solution described by the patent “depends on, or is integral to, having all the above-noted specific structures and functions” and “the challenged claims require more than generally monetizing or tracking distribution of copies of digital assets.” Id. at *11.

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