`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-001021
`
`Patent 8,118,221
`
`____________
`
`PATENT OWNER’S RESPONSE TO PETITION
`
`
`1 Case CBM2014-00103 has been consolidated with the instant proceeding.
`
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
` STATEMENT OF MATERIAL FACTS ........................................................ 3
`
`III. THE 00102 AND 00103 WECHSELBERGER DECLARATIONS
`SHOULD BE GIVEN LITTLE OR NO WEIGHT ......................................... 4
`
`IV. CLAIM CONSTRUCTION ............................................................................ 8
`
`V.
`
` THE CHALLENGED CLAIMS OF THE ‘221 PATENT ARE NOT
`OBVIOUS ........................................................................................................ 9
`
`A.
`
`B.
`
`Claims 1 and 12 of the ‘221 Patent ....................................................... 9
`
`Obviousness in Light of Stefik ‘235 and Stefik ‘980 .......................... 10
`
`1.
`
`2.
`
`Claims 1 and 11 ......................................................................... 11
`
`Claim 12 .................................................................................... 17
`
`C.
`
`Obviousness of Claims 2, 13, and 14 in Light of Stefik ‘235, Stefik
`‘980, and Poggio .................................................................................. 17
`
`1.
`
`2.
`
`Claim 2 ...................................................................................... 17
`
`Claims 13 and 14....................................................................... 22
`
`D. Obviousness in Light of Ginter ........................................................... 22
`
`1.
`
`2.
`
`
`
` Claims 1 and 11........................................................................ 22
`
`Claim 2 ...................................................................................... 27
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`- i -
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`3.
`
`4.
`
`Claim 12 .................................................................................... 29
`
`Claims 13 and 14....................................................................... 30
`
`VI. CONCLUSION .............................................................................................. 31
`
`
`
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`- ii -
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`I.
`
`
`
`INTRODUCTION
`
`The present proceeding is a consolidated proceeding for Cases CBM2014-
`
`00102 and CBM2014-00103. The granted grounds for unpatentability raised in the
`
`Petition in CBM2014-00102 (hereinafter “the 00102 Petition”) were: (1)
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`unpatentability of claims 1, 11, and 12 under 35 U.S.C. § 103 over U.S. Patent No.
`
`5,530,235 (“Stefik ‘235”) and U.S. Patent No. 5,629,980 (“Stefik ‘980”), and (2)
`
`unpatentability of claims 2, 13, and 14 under 35 U.S.C. § 103 over Stefik ‘235,
`
`Stefik ‘980 and European Patent Application, Publication No. EP0809221A2
`
`(“Poggio”). The PTAB denied the remaining grounds. Decision at 24.
`
`The only granted ground for unpatentability raised in the Petition in
`
`CBM2014-00103 (hereinafter “the 00103 Petition”) was for claims 1, 2, and 11-14
`
`under 35 U.S.C. § 103 over U.S. Patent No. 5,915,019 (“Ginter”). The PTAB
`
`denied the remaining grounds. Decision at 24.
`
`In support of this Patent Owner’s Response, reference will be made to
`
`concurrently filed Exhibit 2028, Declaration of Jonathan Katz, Ph.D. (hereinafter
`
`“the Katz Declaration”). Reference will also be made herein to (1) Exhibit 1021,
`
`DECLARATION OF ANTHONY J. WECHSELBERGER IN SUPPORT OF
`
`APPLE INC.’S PETITION FOR COVERED BUSINESS METHOD PATENT
`
`REVIEW OF UNITED STATES PATENT NO. 8,118,221 PURSUANT TO 35
`
`U.S.C. § 321, 37 C.F.R. § 42.304, filed in CBM2014-00102 (hereinafter “the
`
`
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`- 1 -
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`
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`00102 Wechselberger Declaration”), and (2) Exhibit 1121, DECLARATION OF
`
`ANTHONY J. WECHSELBERGER IN SUPPORT OF APPLE INC.’S PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF UNITED
`
`STATES PATENT NO. 8,118,221 PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. §
`
`42.304, filed in CBM2014-00103 (hereinafter “the 00103 Wechselberger
`
`Declaration”).
`
`Reference will also be made herein to Exhibit 2025 which is a concatenation
`
`of Mr. Wechselberger’s Deposition transcript beginning on December 10, 2014
`
`and continuing to December 11, 2014. Pages 1-236 of Exhibit 2025 are for
`
`December 10, 2014, the first day of his two-day deposition for the combined
`
`proceedings of CBM2014-00102, -00106, -00108 and -00112. Pages 239-403 of
`
`Exhibit 2025 are for December 11, 2014. On December 11, 2014, a conference
`
`call was held with the PTAB to resolve an issue relating to testimony sought by
`
`Patent Owner’s counsel, and pages 339-356 are a transcription of the conference
`
`call. Because of the possibility of needing to redact a portion of the transcript in
`
`light of the conference call, transcript pages 358-378 are found on pages 364-384
`
`of Exhibit 2025, starting with their own caption pages. However, ultimately,
`
`Petitioner did not request that any part of the transcript be redacted. See Paper 21,
`
`page 2, footnote 2. The remaining portion of Mr. Wechselberger’s transcript is
`
`pages 379-396 found on pages 386-403 of Exhibit 2025. For consistency, all
`
`
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`- 2 -
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`
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`references to Exhibit 2025 are made with respect to the page numbers at the
`
`bottom of the exhibit which are Preceded by the word “Page,” not the transcript
`
`page numbers in the upper-right corner of the page. References herein may be
`
`made in the form of (1) “nnn:xx-yy” which is intended to mean page “nnn”, lines
`
`“xx” to “yy” or (2) “mmm:xx - nnn:yy” which is intended to mean page “mmm”,
`
`line “xx” to page “nnn”, line “yy”.
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The 00102 Wechselberger Declaration does not state that Mr.
`
`Wechselberger’s opinions presented therein were based on a “preponderance of the
`
`evidence” standard.
`
`2.
`
`The 00103 Wechselberger Declaration does not state that Mr.
`
`Wechselberger’s opinions presented therein were based on a “preponderance of the
`
`evidence” standard.
`
`3.
`
`Exhibit 2007 is a document from Apple Inc. dated September 19,
`
`2012 entitled In-App Purchase Programming Guide (to which its Exhibit label has
`
`been added).
`
`4.
`
`Exhibit 2008 is a document from Apple Inc. dated September 18,
`
`2013 entitled In-App Purchase Programming Guide (to which its Exhibit label has
`
`been added).
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`- 3 -
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`5.
`
`Exhibit 2013 is a document from Apple Inc. dated September 18,
`
`2013 entitled Receipt Validation Programming Guide (to which its Exhibit label
`
`has been added).
`
`
`
`III. THE 00102 AND 00103 WECHSELBERGER DECLARATIONS
`
`SHOULD BE GIVEN LITTLE OR NO WEIGHT
`
`The 00102 and 00103 Wechselberger Declarations do not disclose the
`
`underlying facts on which the opinions are based and are, therefore, entitled to
`
`little or no weight. 37 CFR 42.65 (“Expert testimony that does not disclose the
`
`underlying facts or data on which the opinion is based is entitled to little or no
`
`weight.”).
`
`More specifically, the 00102 and 00103 Wechselberger Declarations do not
`
`state the evidentiary weight standard (e.g., substantial evidence versus
`
`preponderance of the evidence) that Mr. Wechselberger used in arriving at his
`
`conclusions. Footnote 8 on page 4 of the Decision states “On this record, we are
`
`not persuaded by Patent Owner’s argument that we should disregard the
`
`Wechselberger Declaration. ... Patent Owner identifies purported omissions from
`
`the Declaration, but offers no evidence that Mr. Wechselberger used incorrect
`
`criteria, failed to consider evidence, or is not an expert in the appropriate field.”
`
`However, establishing that Mr. Wechselberger failed to state the evidentiary
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`- 4 -
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`standard that he used, Patent Owner has shown that Mr. Wechselberger “used
`
`incorrect criteria” (i.e., the incorrect evidentiary standard) because he used none.
`
`When questioned about what evidentiary standards are and which he used,
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`Mr. Wechselberger could neither articulate what the difference was between
`
`“substantial evidence” and “prepondereance of the evidence”, nor could he
`
`articulate which standard he was supposed to use when alleging invalidity of
`
`claims in a patent. Exhibit 2025, 388:13-389:6. More specifically, Mr.
`
`Wechselberger testified:
`
`388: 13
`
`Q. If I could ask you, do you have an understanding of
`
`what substantial evidence is as it relates to relative burdens of proof?
`
`MS. ROBINSON: Objection to form.
`
`A. I don't think that I have used that term in any of my reports
`
`or declarations in conjunction with this case.
`
`Q. Do you have an understanding of what the standard
`
`"preponderance of the evidence" is?
`
`MS. ROBINSON: Objection to form.
`
`A. I don't think I've used that in any of my reports or
`
`declarations.
`
`BY MR. CASEY:
`
`
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`- 5 -
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`389:2
`
`Q. Do you have an understanding as to what the standard
`
`called "clear and convincing evidence" is?
`
`MS. ROBINSON: Objection to form.
`
`A. Well, I understand these are all legal terms, and to the extent
`
`that I need to have a firm grip on their legal meaning, that is -- always
`
`ends up in one of my expert reports or a declaration. And, again, I
`
`don't know if that term has been so written out in any of my written
`
`materials.
`
`Q. Do you have an understanding that one has to show
`
`invalidity of a patent based on the legal standard of substantial
`
`evidence?
`
`MS. ROBINSON: Objection to form.
`
`A. Well, since I have just testified that I don't recall if the term
`
`"substantial evidence" appears in any of my reports, then I wouldn't
`
`have an understanding here today without having my report where
`
`that is explained.
`
`Q. So then it's also fair to say you don't have an understanding
`
`as to whether or not one has to show invalidity of a patent based on
`
`preponderance of the evidence?
`
`MS. ROBINSON: Objection to form.
`
`
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`- 6 -
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`390:2
`
`A. Again, without the guidance of my report where that's
`
`been written out, I can look at it and read it, I'm not going to pretend
`
`that from a legal standpoint I have a firm grasp on all the four corners
`
`of the implications of those statements.
`
`
`
`No standard of evidence is disclosed in the 00102 and 00103 Wechselberger
`
`Declarations for the amount of evidence that he used in arriving at his allegations
`
`of unpatentability. Thus, based on the fact that Mr. Wechselberger testified that he
`
`did not know the difference between the standards or what standard to use, the
`
`PTAB can only afford little or no weight to the testimony therein. To do otherwise
`
`would be to accept his opinions without knowing “the underlying facts ... on which
`
`the opinion is based” (i.e., how much evidence he thinks shows any of his opinions
`
`discussed therein).
`
`For example, when Mr. Wechselberger opines that he believes a statement to
`
`be true (e.g., there is a motivation to modify a reference), is that belief based on
`
`less than a preponderance of the evidence, or more? Without his having disclosed
`
`what level of evidence he used, and given that he did not even know what level he
`
`was supposed to be using, the PTAB cannot rely on his statements. Thus, the
`
`PTAB should find that his declaration is entitled to little or no weight.
`
`
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`IV. CLAIM CONSTRUCTION
`
`Petitioner has alleged that “payment data” should be construed to mean
`
`“data representing payment made for requested content data” and is distinct from
`
`“access control data.” See, for example, 00103 Petition at 24. However, “payment
`
`data” in the context of the ‘221 patent should be interpreted to mean “data that can
`
`be used to make payment for content” when using a broadest reasonable
`
`interpretation.2 Exhibit 2028, ¶ 11.
`
`The ‘221 patent, col. 20, lines 59-62, states “payment data for making a
`
`payment … is received from the smart Flash card by the content access terminal
`
`and forwarded to an e-payment system.” That is, the payment data is used for
`
`making a payment. Furthermore, as can be seen in Figure 12c of the ‘221 patent,
`
`step S54 reads “PAYMENT FOR SCHEME OWNER RECEIVED FROM CARD
`
`BY CONTENT ACCESS TERMINAL AND FORWARDED TO e-PAYMENT
`
`SYSTEM.” Step S55 then reads “PAYMENT RECORD DATA RECEIVED
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`2 Patent Owner’s use of the “broadest reasonable interpretation” (BRI)
`
`standard herein is not an admission that the BRI standard is the proper standard for
`
`CBM proceedings such as this one. However, for the purposes of this proceeding
`
`based on the issues in the instituted proceeding, Patent Owner has presented its
`
`arguments utilizing the BRI standard for “payment data.: Patent Owner reserves
`
`its right to argue for a different standard at a later date or in a different proceeding.
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`- 8 -
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`FROM e-PAYMENT SYSTEM BY CONTENT ACCESS TERMINAL AND
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`FORWARDED TO CARD.” Both of those steps precede step S56 which recites
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`“PAYMENT RECORD DATA, PURCHASE REQUEST AND CARD
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`REGISTRATION DATA TRANSMITTED TO SCHEME OWNER.” Thus,
`
`“payment data” is not “data representing payment made for requested content
`
`data,” as payment has not yet been made when the payment data of step S54 is
`
`sent. Therefore, Petitioner’s requested claim construction for “payment data”
`
`should not be adopted, and “payment data” should be interpreted to mean “data
`
`that can be used to make payment for content.” Exhibit 2028, ¶ 12.
`
`
`
`V.
`
`THE CHALLENGED CLAIMS OF THE ‘221 PATENT ARE NOT
`
`OBVIOUS
`
`
`
`A.
`
`Claims 1 and 12 of the ‘221 Patent
`
`Independent claim 1 of the ‘221 patent recites:
`
`1. A data access terminal for retrieving data from a data
`supplier and providing the retrieved data to a data carrier, the terminal
`comprising:
`a first interface for communicating with the data supplier;
`a data carrier interface for interfacing with the data carrier;
`a program store storing code implementable by a processor; and
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`- 9 -
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`a processor, coupled to the first interface, to the data carrier
`interface and to the program store for implementing the stored code,
`the code comprising:
`code to read payment data from the data carrier and to forward
`the payment data to a payment validation system;
`code to receive payment validation data from the payment
`validation system;
`code responsive to the payment validation data to retrieve data
`from the data supplier and to write the retrieved data into the data
`carrier.
`
`Independent claim 12 recites:
`
`12. A method of providing data from a data supplier to a data
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`carrier, the method comprising:
`
`reading payment data from the data carrier;
`
`forwarding the payment data to a payment validation system;
`
`retrieving data from the data supplier; and
`
`writing the retrieved data into the date carrier.
`
`B. Obviousness in Light of Stefik ‘235 and Stefik ‘980
`
`
`
`
`
`
`
`The Decision held that “Petitioner does not persuasively establish it is more
`
`likely than not that either Stefik ’980 or Stefik ’235 discloses a system using
`
`repositories in the same form and order as in claims 1, 11, 12, and 32.” Decision at
`- 10 -
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`
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`14. However, the Decision further held “In light of the arguments and evidence,
`
`Petitioner has established that it is more likely than not that claims 1, 11, and 12
`
`are unpatentable as obvious over the combined teachings of Stefik ’235 and Stefik
`
`’980.” Decision at 15. The 00102 Petition, in fact, has not shown that it is more
`
`likely than not that Stefik ‘235 and Stefik ‘980, either alone or in combination,
`
`would have rendered obvious claims 1, 11, and 12 to one of ordinary skill in the
`
`art. Exhibit 2028, ¶ 18.
`
`
`
`1.
`
`Claims 1 and 11
`
`In its analysis of claim 1, the 00102 Petition is inconsistent with regard to
`
`those elements of Stefik that it alleges correspond to the “data carrier” of the ‘221
`
`patent. Exhibit 2028, ¶ 19. This illustrates that the “data carrier” element is not
`
`really rendered obvious by Stefik ‘235 and Stefik ‘980. In the context of the first
`
`code element of the claim (i.e., “code to read payment data from the data carrier
`
`and to forward the payment data to a payment validation system”), the 00102
`
`Petition alleges that the “data carrier” corresponds to “(e.g., a repository such as a
`
`DocuCard).” More specifically, on page 54, the 00102 Petition states:
`
`Stefik discloses transaction functions performed by a processor (e.g.,
`
`processor element 1201) implementing code (e.g., software
`
`instructions utilized by the processor element 1201) including
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`- 11 -
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`
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`encrypted forwarding (transmission) of payment data read from the
`
`data carrier (e.g., a repository such as a DocuCard) to a payment
`
`validation system (e.g., a credit server). The payment data forwarded
`
`to the payment validation system (e.g., a credit server) includes
`
`transaction identifiers, identifiers for repositories involved in the
`
`transaction, and lists of charges for the transaction.
`
`(Emphasis added.)
`
`Also with respect to the first code element (i.e., “code to read payment data
`
`from the data carrier and to forward the payment data to a payment validation
`
`system”) in claim 1, the 00102 Petition alleges on page 56 that the data carrier is
`
`“(e.g., removable card).” (Emphasis added.) Whether the 00102 Petition is
`
`alleging that this “removable card” is the same as the DocuCard identified earlier is
`
`unclear (Exhibit 2028, ¶ 20), and it certainly is not more likely than not.
`
`In the context of the final code element of the claim (i.e., “code responsive
`
`to the payment validation data to retrieve data from the data supplier and to write
`
`the retrieved data into the data carrier”), the 00102 Petition again shifts positions
`
`and asserts that “Stefik ... writes (e.g., transmits) the data to a data carrier (e.g.,
`
`other repository communicating through external interface 1206).” 00102
`
`Petition at 59 - 60. (Emphasis added). Exhibit 2028, ¶ 21. Thus, the data carrier to
`
`which the data is allegedly written is not alleged to be either of the “repository
`
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`- 12 -
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`
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`such as a DocuCard” referenced as the data carrier on page 54, nor is it alleged to
`
`be “a removable card” referenced as the data carrier on page 56. Exhibit 2028,
`
`¶ 21. When the 00102 Petition page 60 later alleges that the “data access terminal
`
`(e.g., first repository) then writes (e.g., transmits) the data to a data carrier (e.g.,
`
`third repository) when acting as a data provider” (emphasis added), it is again
`
`indicating that the data carrier to which the data is allegedly written is not alleged
`
`to be either the “repository such as a DocuCard” referenced as the data carrier on
`
`page 54, nor “a removable card” referenced as the data carrier on page 56. Exhibit
`
`2028, ¶ 21.
`
`In addition to changing positions on what element in the applied references
`
`allegedly corresponds to the “data carrier,” the 00102 Petition also does not prove
`
`how the alleged “payment data” is being transferred. In the context of “code to
`
`read payment data from the data carrier and to forward the payment data to a
`
`payment validation system,” the 00102 Petition on page 54 does not specify which
`
`DocuCard is being read from and which is allegedly acting as a data carrier, only
`
`that “transaction identifiers, identifiers for repositories involved in the transaction,
`
`and lists of charges for the transaction” are read from it. Nor does the 00102
`
`Petition identify what the “transaction identifiers, identifiers for repositories
`
`involved in the transaction, and lists of charges for the transaction” allegedly are
`
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`- 13 -
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`such that one can verify that that they really are being read from the same data
`
`carrier as the “retrieved data” is eventually written. Exhibit 2028, ¶ 21.
`
`Pages 55 and 56 of the 00102 Petition additionally cite various “logging in”
`
`steps, but how such steps are relevant to the “code to read payment data” is
`
`unclear. Page 55 of the 00102 Petition cites col. 6, line 63 - col. 7, line 2 as
`
`disclosing “In this case, the user of the DocuCard is logging onto the DocuCard.
`
`This logging in process may also activate credit accounts.” Page 56 later is cited
`
`because Stefik allegedly “discloses that logging in and activating a credit account
`
`grants access to read (e.g., retrieve) payment data (e.g., bank and credit account
`
`information) that is stored on the data carrier (e.g., removable card) and assign fees
`
`against the account associated with the payment data.” However, there is no
`
`disclosure of what it means to “activate credit accounts,” and neither the 00102
`
`Petition nor Mr. Wechselberger clearly define what this is supposed to mean, let
`
`alone show how “logging in and activating a credit account grants access to read
`
`(e.g., retrieve) payment data (e.g., bank and credit account information) that is
`
`stored on the data carrier (e.g., removable card).” Exhibit 2028, ¶ 23.
`
`Moreover, with respect to assigning payments, col. 6, line 66 - col. 7, line 2
`
`of Stefik ‘235 also states “The user on the DocuCard now uses the user interface to
`
`assign payment of any fees associated with the transaction to be executed, step
`
`303. The fees may be assigned to either the user of the DocuCard or to the owner
`
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`- 14 -
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`of the repository.” This, however, does not mean that any payments are actually
`
`made at that point or even that any fees are yet known. Exhibit 2028, ¶ 24. As
`
`shown in Figure 3, cited by the 00102 Petition on page 55, step 303 is “User
`
`Assigns Payment of Fees.” This, however, happens before step 304 (“User Selects
`
`Desired Function”) and step 305 (“User Selects Desired Document”). As such, no
`
`fee information is known in step 303 because no document or function has yet
`
`been selected that might incur a fee. Exhibit 2028, ¶ 24.
`
`The 00102 Petition alleges that “Bank account information is later
`
`transmitted along with fee charges to a payment system (e.g., credit server).” Page
`
`56. However, this does not allege that such bank account information is read from
`
`the DocuCard that the user just logged into, nor that it is identical to the Petition’s
`
`alleged “payment data read from the data carrier (e.g., a repository such as a
`
`DocuCard).” Page 54. Exhibit 2028, ¶ 24. Thus, how that the bank account
`
`information is allegedly used is unclear.
`
`Pages 76-77 of the 00102 Petition further cites Stefik ‘980 as disclosing “In
`
`another embodiment, the credit server acts as a ‘debit card’ where transactions
`
`occur in ‘real-time’ against a user account.” Exhibit 17:20-44. However, the cited
`
`portion is not discussing “real-time” transactions between the repository and the
`
`credit server; it is discussing transactions between the credit server and the
`
`clearinghouse. In fact, to distort the Stefik ‘980 teaching, the 00102 Petition omits
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`- 15 -
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`the connecting sentences between the two cited sentences to create the
`
`misimpression that they are directly linked. Page 45 states “The billing
`
`clearinghouse manages the financial transactions as they occur… In another
`
`embodiment, the credit server acts as a ‘debit card’ where transactions occur in
`
`‘real-time’ against a user account.” However, the original states:
`
`The billing clearinghouse manages the financial transactions as they
`
`occur. As a result, bills may be generated and accounts reconciled.
`
`Preferably, the credit server would store the fee transactions and
`
`periodically communicate via a network with billing clearinghouse
`
`for reconciliation. In such an embodiment, communications with the
`
`billing clearinghouse would be encrypted for integrity and security
`
`reasons. In another embodiment, the credit server acts as a "debit
`
`card" where transactions occur in "real-time" against a user account.
`
`Thus, the “debit card” embodiment is for transactions between the credit
`
`server and the clearinghouse, and Stefik ‘980 is still discussing post-usage
`
`processing.
`
`As a result, the 00102 Petition has not shown that it is more likely than not
`
`that Stefik ‘235 and Stefik ‘980, either alone or in combination, renders obvious
`
`claim 1 (and its dependent claims 2 and 11). Exhibit 2028, ¶ 25.
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`- 16 -
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`2.
`
`Claim 12
`
`The 00102 Petition makes similar arguments with respect to claim 12. In the
`
`step “reading payment data from the data carrier,” the 00102 Petition identifies the
`
`data carrier as both “a repository such as a DocuCard” and “a removable card”.
`
`Page 65. However, with respect to “writing the retrieved data into the data
`
`carrier,” the data carrier is identified as (1) a “requesting repository” (page 68), (2)
`
`a “repository communicating with the processing element” (page 69), or (3) a
`
`“second repository” (page 69). Thus, the data carrier in the “reading” and
`
`“writing” steps are not alleged to be the same. Exhibit 2028, ¶ 26.
`
`Thus, the 00102 Petition has not shown that it is more likely than not that
`
`Stefik ‘235 and Stefik ‘980, either alone or in combination, renders obvious claim
`
`12 (and its dependent claims 13 and 14). Exhibit 2028, ¶ 27.
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`
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`C. Obviousness of Claims 2, 13, and 14 in Light of Stefik ‘235, Stefik
`
`‘980, and Poggio
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`
`
`1.
`
`Claim 2
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`Claim 2 depends from claim 1 and further includes “code to transmit at least
`
`a portion of the payment validation data to the data supplier or to a destination
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`received from the data supplier.” In attempting to show that this element is met in
`
`dependent claim 2, the 00102 Petition cites “payment validation data”
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`
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`- 17 -
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`
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`inconsistently from how that element was alleged to be shown with respect to
`
`claim 1. Page 74 of the 00102 Petition cites to Stefik ‘980 when it alleges that
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`“Stefik discloses sending a portion of payment validation data (e.g., billing
`
`information) to a destination when document requests are serviced.” (Emphasis
`
`added.) However, with respect to claim 1, pages 57-58 of the 00102 Petition allege
`
`that “Stefik discloses making the receipt of payment validation data by the data
`
`access terminal (e.g., acceptance of assigned fees).” The 00102 Petition does not
`
`disclose how “billing information” corresponds to “acceptance of fees” or vice
`
`versa, so the 00102 Petition is using “payment validation data” inconsistently such
`
`that this limitation of claim 2 is not taught. Exhibit 2028, ¶ 28.
`
`The 00102 Petition cites to Stefik ‘980 when it alleges that “Stefik further
`
`discloses examples in which the credit server to which both repositories in a
`
`transaction report the validation data (e.g., billing information) is an integrated
`
`component of a data supplier (e.g., the first of the repositories).” Page 74. The
`
`00102 Petition further alleges that Stefik ‘980 7:33-36 teaches “Once the digital
`
`work has been transmitted to repository 2, repository 1 and 2 each generate billing
`
`information for the access which is transmitted to a credit server, step 108.” Id.
`
`However, Stefik ‘980 does not disclose that there is a “credit server to which
`
`both repositories in a transaction report the validation data.” The sentence
`
`immediately after 7:33-36 makes clear that each repository transmits billing
`
`
`
`- 18 -
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`
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`information to a separate credit server by stating “Such double billing reporting is
`
`done to insure against attempts to circumvent the billing process.” This is
`
`confirmed by 17:51-61 which, as the 00102 Petition even cites, states “For
`
`example, when a digital work is copied by one repository to another for a fee,
`
`credit servers coupled to each of the repositories will report the transaction to the
`
`billing clearinghouse. This is desirable in that it insures that a transaction will be
`
`accounted for in the event of some break in the communication between a credit
`
`server and the billing clearinghouse.” (Emphasis added.) As the undisclosed
`
`billing information is not sent to the same credit server by both repositories, Stefik
`
`does not teach the limitation of claim 2. Exhibit 2028, ¶ 30.
`
`Just as Stefik ‘235 and Stefik ‘980 fail to teach “code to transmit at least a
`
`portion of the payment validation data to the data supplier or to a destination
`
`received from the data supplier,” so too does Poggio. In its analysis of claim 2, the
`
`00102 Petition (pages 74-75) alleges that Poggio discloses that “The data access
`
`terminal (e.g., virtual vending machine) transmits payment validation data (e.g.,
`
`indication from the electronic banking network signifying successful completion of
`
`the payment transaction) received from the payment validation system (e.g.,
`
`electronic banking network) to a data supplier (e.g., web server; vending
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`information database).” The 00102 Petition, however, does not supply any analysis
`
`of how this is shown. Exhibit 2028, ¶ 31. Moreover the citations provided in the
`
`
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`- 19 -
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`
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`00102 Petition (5:45-47; Fig. 7; 9:56-10:25; 10:35-37; 10:41-53; 10:54-11:3;
`
`11:13-18) and the text of Mr. Wechselberger’s declaration do not show how
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`Poggio teaches that an indication from the electronic banking network signifying
`
`successful completion of the payment transaction that is received from the payment
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`validation system (e.g., electronic banking network) is transmitted to a data
`
`supplier (e.g., web server; vending information database). Exhibit 2028, ¶ 31.
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`Under cross-examination, Mr. Wechselberger identified the electronic
`
`banking network as the payment validation system when he testified:
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`208:20 Q. All right. ... Claim 1 says code to receive payment
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`validation data from the payment validation system. What are you
`
`saying is the payment validation system in Poggio?
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`209: 2 A. The electronic banking network.
`
`
`
`Q. ... So the thing that -- the electronic banking network, if it's the
`
`payment validation system, has to send payment validation data
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`where?
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`A. To the data access terminal.
`
`Q. To the data access terminal.
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`...
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` A. Which is the virtual vending machine.
`
`
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`- 20 -
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`
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`Exhibit 2025, 208:21 - 209:10.
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`Later Mr. Wechselberger admitted that Poggio does not actually describe
`
`what comes back from the electronic banking network, so Poggio cannot disclose
`
`transmiting at least a portion of the payment validation data to the data supplier or
`
`to a destination received from the data supplier. Specifically, he testified:
`
`214:21 Q. Okay. So let me ask it this way. Does Poggio tell you
`
`which portion of the bits that it received from the electronic banking
`
`network it then sends to the data supplier as the payment validation
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`data?
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`215:2 MS. ROBINSON: Objection to form.
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`A. And as I said, Poggio doesn't tell us what comes back to the digital
`
`cash interface, other than it's an indication of successful transmission.
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`So the answer to your question has to be no, he doesn't tell us that.
`
`
`
`The 00102 Petition page 75 similarly provides no additional evidence of
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`where the alleged teachings are found when it references “Poggio’s advantageous
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`explicit teachings of a virtual vending machine that connects vendors while
`
`ensuring that vendors are compensated for content (including by providing them
`
`with payment confirmation).” Exhibit 2028, ¶ 31.
`
`
`
`- 21 -
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`
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`Thus, the 00102 Petition has not shown that it is more likely than not that
`
`claim 2 is obvious in light of the proposed combination of Stefik ‘235, Stefik ‘980,
`
`and Poggio. Exhibit 2028, ¶ 32.
`
`
`
`
`
`2.
`
`Claims 13 and 14
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`Similar to how claim 2 depends from claim 1, claim 13 depends from clam
`
`12 and further recites “receiving payment validation data from the payment
`
`validation system” and “transmitting at least a portion of the payment validation
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`data to the data supplier.” Claim 14 depends from claim 13.
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`With respect to “transmitting at least a portion of the payment validation
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`data to the data supplier,” the 00102 Petition cites the same portions of Stefik ‘980
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`and Poggio discussed above with reference to claim 2. Thus, for the reasons
`
`described earlier, the 00102 Petition has not shown that it is more likely than not
`
`that claims 13 and 14 are obvious in light of the proposed combination of Stefik
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`‘235, Stefik ‘980, and Poggio. Exhibit 2028, ¶ 32.
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`
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`D. Obviousness in Light of Ginter
`
`
`
`1.
`
` Claims 1 and 11
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`As discussed supra, the 00103 Petition has proposed a construction of
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`“payment data” that should not be adopted, and that improper construction is used
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`
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`- 22 -
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`
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`to allege that
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