`Tel: 571-272-7822
`
`Paper 9
`Entered: September 30, 2014
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00104
`Patent 7,334,720 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`CBM2014-00104
`Patent 7,334,720 B2
`
`A. Background
`
`INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), filed a Petition (Paper 6, “Pet.”) to
`
`institute a covered business method patent review of claims 1, 3, 11, and 13–
`
`15 (“the challenged claims”) of US Patent No. 7,334,720 B2 (Ex. 1001, “the
`
`’720 patent”) pursuant to § 18 of the Leahy-Smith America Invents Act
`
`(“AIA”). Patent Owner, Smartflash LLC (“Smartflash”), filed a Preliminary
`
`Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`
`§ 324, which provides that a covered business method patent review may not
`
`be instituted “unless . . . it is more likely than not that at least 1 of the claims
`
`challenged in the petition is unpatentable.” Pub. L. No. 112-29, 125 Stat.
`
`284, 329 (2011).
`
`B. Asserted Grounds
`
`Apple contends that the challenged claims are unpatentable under 35
`
`U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 22, 43–80).
`
`References
`
`Basis
`
`Claims Challenged
`
`Stefik ’235 1 and Stefik ’9802
`
`§ 1023
`
`1, 3, 11, 13, and 14
`
`Stefik ’235 and Stefik ’980
`
`§ 103
`
`1, 3, 11, 13, and 14
`
`
`1 US Patent No. 5,530,235 (Ex. 1013) (“Stefik ’235”).
`2 US Patent No. 5,629,980 (Ex. 1014) (“Stefik ’980”).
`3 Petitioner refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
`argues that they should be considered as a single reference for anticipation
`purposes because, according to Petitioner, Stefik ’235 incorporates Stefik
`’980 by reference. Pet. 28–29, n.13. Patent Owner disagrees. Prelim. Resp.
`13–15. We do not reach this issue because even when considered as one
`reference, we determine that Stefik ’235 and Stefik ’980 do not teach all the
`recited claim limitations in the same form and order as listed in the claims.
`
`2
`
`
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`CBM2014-00104
`Patent 7,334,720 B2
`
`References
`
`Basis
`
`Claims Challenged
`
`Stefik ’235, Stefik ’980, and
`Poggio4
`
`Stefik ’235, Stefik ’980,
`Poggio, and Sato5
`
`Stefik ’235, Stefik ’980, and
`Sato
`
`Stefik ’235, Stefik ’980, and
`Maari6
`
`Stefik ’235, Stefik ’980,
`Maari, and Sato
`
`§ 103
`
`3, 11, and 13–15
`
`§ 103
`
`3, 11, and 13–15
`
`§ 103
`
`1, 3, 11, and 13–15
`
`§ 103
`
`§ 103
`
`1
`
`1
`
`Petitioner also provides a declaration from Anthony J.
`
`Wechselberger.7 Ex. 1021.
`
`After considering the Petition and Preliminary Response, we
`
`determine that the ’720 patent is a covered business method patent. We
`
`further determine, however, that Apple has not demonstrated that it is more
`
`likely than not that at least one of the challenged claims is unpatentable.
`
`
`4 European Patent Application, Publication No. EP 0 809 221 A2
`(translation), published November 26, 1997 (Ex. 1016, “Poggio”).
`5 JP Patent Application Publication No. H11-164058 (including translation),
`published June 18, 1999 (Ex. 1018, “Sato”).
`6 JP Patent Application Publication No. H10-269289 (including translation),
`published October 9, 1998 (Ex. 1019, “Maari”).
`7 On this record, we are not persuaded by Patent Owner’s argument that we
`should disregard the Wechselberger Declaration. See Prelim. Resp. 16–18.
`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. Id.
`
`3
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`
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`CBM2014-00104
`Patent 7,334,720 B2
`
`Therefore, we deny institution of a covered business method patent review
`
`of claims 1, 3, 11, and 13–15 of the ’720 patent.
`
`C. Related Matters
`
`The parties indicate that Smartflash has sued Apple for infringement
`
`of the ’720 patent and identify the following district court case: Smartflash
`
`LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.). Pet. 21; Papers 5,
`
`Related Matter, 8, Updated Mandatory Notice Information. The parties also
`
`indicate that the ’720 patent is the subject of a second case, to which Apple
`
`is not a party: Smartflash LLC v. Samsung, Case No. 6:13-cv-448 (E.D.
`
`Tex.). Id.
`
`Apple filed a concurrent petition for covered business method patent
`
`review of the ’720 patent: CBM2014-00105.8 In addition, Apple filed ten
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`other Petitions for covered business method patent review challenging
`
`claims of patents owned by Smartflash and disclosing similar subject matter:
`
`CBM2014-00102; CBM2014-00103; CBM2014-00106; CBM2014-00107;
`
`CBM2014-00108, CBM2014-00109; CBM2014-00110; CBM2014-00111;
`
`CBM2014-00112; and CBM2014-00113.
`
`D. The ’720 Patent
`
`The ’720 patent relates to “a portable data carrier for storing and
`
`paying for data and to computer systems for providing access to data to be
`
`
`8 Patent Owner argues that the multiple petitions filed against the ’720 patent
`violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but does not
`cite any authority to support its position. Prelim. Resp. 11–12. The page
`limit for petitions requesting covered business method patent review is 80
`pages (37 C.F.R. § 42.24(a)(iii)), and each of the ’104 and ’105 Petitions
`meets that requirement.
`
`
`4
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`CBM2014-00104
`Patent 7,334,720 B2
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`stored” and the “corresponding methods and computer programs.”
`
`Ex. 1001, 1:6–10. Owners of proprietary data, especially audio recordings,
`
`have an urgent need to address the prevalence of “data pirates,” who make
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`proprietary data available over the Internet without authorization. Id. at
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`1:15–41. The ’720 patent describes providing portable data storage together
`
`with a means for conditioning access to that data upon validated payment.
`
`Id. at 1:46–62. According to the ’720 patent, this combination of the
`
`payment validation means with the data storage means allows data owners to
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`make their data available over the Internet without fear of data pirates. Id. at
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`1:62–2:3.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:46–55. The terminal reads payment
`
`information, validates that information, and downloads data into the portable
`
`storage device from a data supplier. Id. The data on the portable storage
`
`device can be retrieved and output from a mobile device. Id. at 1:56–59.
`
`The ’720 patent makes clear that the actual implementation of these
`
`components is not critical and may be implemented in many ways. See, e.g.,
`
`id. at 26:13–16 (“The skilled person will understand that many variants to
`
`the system are possible and the invention is not limited to the described
`
`embodiments.”).
`
`E. Challenged Claims
`
`Petitioner challenges claims 1, 3, 11, and 13–15 of the ’720 patent.
`
`Claims 1, 3, and 14 are independent. Claims 11 and 13 depend from claim 3
`
`and claim 15 depends from claim 14. Claims 1 and 3 are illustrative of the
`
`claims at issue and recite the following.
`
`5
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`
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`CBM2014-00104
`Patent 7,334,720 B2
`
`1.
`A method of controlling access to content data on a data carrier,
`the data carrier comprising non-volatile data memory storing content
`memory and non-volatile parameter memory storing use status data
`and use rules, the method comprising:
`
`receiving a data access request from a user for at least one
`content item of the content data stored in the non-volatile data
`memory;
`
`reading the use status data and use rules from the parameter
`memory that pertain to use of the at least one requested content item;
`
`evaluating the use status data using the use rules to determine
`whether access to the at least one requested content item stored in the
`content memory is permitted; and
`
`displaying to the user whether access is permitted for each of
`the at least one requested content item stored in the non-volatile data
`memory.
`
`Ex. 1001, 26:18–36.
`
`
`
`A data access terminal for retrieving data from a data supplier
`3.
`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; and
`
`a processor coupled to the first interface, the data carrier
`interface, and 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; and
`
`6
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`CBM2014-00104
`Patent 7,334,720 B2
`
`code responsive to the payment validation data to receive at
`least one access rule from the data supplier and to write the at least
`one access rule into the data carrier, the at least one access rule
`specifying at least one condition for accessing the retrieved data
`written into the data carrier, the at least one condition being dependent
`upon the amount of payment associated with the payment data
`forwarded to the payment validation system.
`
`Ex. 1001, 26:41–67.
`
`A. Claim Construction
`
`ANALYSIS
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable interpretation in light of the specification in which
`
`they appear. See 37 C.F.R. § 42.300(b). Applying that standard, we
`
`interpret the claim terms of the ’720 patent according to their ordinary and
`
`customary meaning, in the context of the patent’s written description. See In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`For purposes of this decision, we must construe the following claim
`
`term of the challenged claims as they are critical terms in the independent
`
`claims. Neither party proposed a construction for these terms.
`
`“use rule” and “access rule”
`
`Independent claim 1 requires parameter memory storing “use rules”
`
`and evaluating use status data using the “use rules” to determine whether
`
`access to the requested content item is permitted. Ex. 1001, 26:21–22, 30–
`
`33.
`
`While independent claims 3 and 14 do not recite “use rules,” they
`
`require receiving at least one “access rule” from the data supplier. The ’720
`
`patent Specification imparts the same meaning to “access rule” as “use rule.”
`
`For example, when discussing a particular embodiment, the Specification
`
`7
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`
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`CBM2014-00104
`Patent 7,334,720 B2
`
`states “one or more content access rules is received from the system owner
`
`data supply computer and written to the smart Flash card so that each
`
`content data item has an associated use rule to specify under what conditions
`
`a user of the smart Flash card is allowed access to the content data item.”
`
`Ex. 1001, 22:4–9 (emphasis added). Thus, we give the same construction to
`
`“use rules” and “access rule.”
`
`Claim 3 recites that the “at least one access rule specif[ies] at least one
`
`condition for accessing the retrieved data.” (Emphasis added). Similarly, in
`
`describing a particular embodiment, the ’720 patent Specification explains
`
`that each content data item has an associated “use rule” “to specify under
`
`what conditions a user of the smart Flash card is allowed access to the
`
`content data item.” Ex. 1001, 22:4–9; see id. at 4:62–63 (a data carrier may
`
`store content “use rules pertaining to allowed use of stored data items.”)
`
`(emphasis added). The Specification explains that the data access device
`
`uses the use status data and “use rules” to determine what access is
`
`permitted to data stored on the data carrier. Id. at 9:21–23 (emphasis added).
`
`Accordingly, pursuant to the claim language and the ’720 patent
`
`Specification, we construe “use rules” and “access rule” as a rule specifying
`
`a condition under which access to content is permitted.
`
`For purposes of this decision, we determine that no other terms in the
`
`challenged claims require an express construction at this time.
`
`B. Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. A “[c]overed
`
`business method patent” is a patent that “claims a method or corresponding
`
`apparatus for performing data processing or other operations used in the
`
`8
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`CBM2014-00104
`Patent 7,334,720 B2
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`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). A patent need have only one
`
`claim directed to a covered business method to be eligible for review. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`1. Financial Product or Service
`
`Apple asserts that because claim 14 “explicitly describes
`
`electronically transferring money and allowing such a transfer, as well as
`
`restricting access based on payment, it clearly relates to a financial activity
`
`and providing a financial service.” Pet. 15. Based on this record, we agree
`
`with Apple that the subject matter recited by claim 14 is directed to activities
`
`that are financial in nature, namely data access conditioned on payment
`
`validation. Claim 14 recites:
`
`writing the at least one access rule into the data carrier, the at least one
`access rule specifying at least one condition for accessing the
`retrieved data written into the data carrier, the at least one condition
`being dependent upon the amount of payment associated with the
`payment data forwarded to the payment validation system.
`
`We are persuaded that payment validation is a financial activity, and
`
`conditioning data access based on the amount of payment associated with
`
`the payment data forwarded to the payment validations system amounts to a
`
`financial service. This is consistent with the Specification of the ’720
`
`patent, which confirms claim 14’s connection to financial activities by
`
`stating that the invention “relates to a portable data carrier for storing and
`
`paying for data.” Ex. 1001, 1:6–7. The Specification also states repeatedly
`
`9
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`CBM2014-00104
`Patent 7,334,720 B2
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`that the disclosed invention involves managing access to data based on
`
`payment validation. See, e.g., Ex. 1001, 1:46–49, 2:4–19, 3:19–27, 3:50–54,
`
`7:62–8:9, 8:21–35.
`
`Smartflash disagrees that claim 14 satisfies the financial-in-nature
`
`requirement of AIA § 18(d)(1), arguing that that section should be
`
`interpreted narrowly to cover only technology used specifically in the
`
`financial or banking industry. Prelim. Resp. 5–8. Smartflash cites to
`
`various portions of the legislative history as support for its proposed
`
`interpretation. Id.
`
`We do not agree that the phrase “financial product or service” in
`
`§ 18(d)(1) is as limited as Smartflash proposes. The AIA does not include as
`
`a prerequisite for covered business method patent review, a “nexus” to a
`
`“financial business,” but rather 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.” AIA
`
`§ 18(d)(1). Further, contrary to Patent Owner’s view of the legislative
`
`history, the legislative history indicates that the phrase “financial product or
`
`service” is not limited to the products or services of the “financial services
`
`industry” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
`
`48,735–36. For example, the “legislative history 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 complementary to a financial activity.’” Id. (citing 157 Cong.
`
`Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`
`In addition, Smartflash asserts that claim 14 is not directed to an
`
`apparatus or method that is financial in nature because claim 14 “omits the
`
`10
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`CBM2014-00104
`Patent 7,334,720 B2
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`specifics of how payment is made.” Prelim. Resp. 8. We are not persuaded
`
`by this argument because § 18(d)(1) of the AIA does not include such a
`
`requirement, nor does Patent Owner point to any other authority that makes
`
`such a requirement. Id. We determine that because payment is required by
`
`claim 14, as Patent Owner acknowledges (id.), the financial-in-nature
`
`requirement of § 18(d)(1) is satisfied.
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’720 patent includes at least one claim that
`
`meets the financial-in-nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`
`Apple asserts that claim 14 does not fall within § 18(d)(1)’s exclusion
`
`for “technological invention.” Pet. 16–20. In particular, Apple argues that
`
`claim 14 “does not claim ‘subject matter as a whole [that] recites a
`
`technological feature that is novel and unobvious over the prior art[] and
`
`solves a technical problem using a technical solution.’” Id. at 16 (quoting
`
`37 C.F.R. § 42.301(b)). Smartflash disagrees and argues that claim 14, as a
`
`whole, recites at least one technological feature. Prelim. Resp. 9.
`
`We are persuaded that claim 14 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. The
`
`claimed “portable data carrier” is a generic hardware device known in the
`
`prior art. The Specification discloses, for instance, that a portable data
`
`carrier may be a “standard smart card.” See Ex. 1001, 11:36–39; Pet. 17.
`
`Claim 14 also recites a “payment validation system.” The Specification,
`
`however, discloses that the required payment validation system may be one
`
`that is already in use or otherwise commercially available. For example,
`
`“[t]he payment validation system may be part of the data supplier’s
`
`11
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`CBM2014-00104
`Patent 7,334,720 B2
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`computer systems or it may be a separate e-payment system.” Id. at 8:64–
`
`66; see id. at 13:46–58.
`
`In addition, the ’720 patent makes clear that the asserted novelty of
`
`the invention is not in any specific improvement of software or hardware,
`
`but in the method of controlling access to data. For example, the ’720 patent
`
`states that “there is an urgent need to find a way to address the problem of
`
`data piracy,” (id. at 1:40–41) while acknowledging that the “physical
`
`embodiment of the system is not critical and a skilled person will understand
`
`that the terminals, data processing systems and the like can all take a variety
`
`of forms” (id. at 12:38–41). Thus, we determine that claim 14 is merely the
`
`recitation of a combination of known technologies, which indicates that it is
`
`not a patent for a technological invention. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. at 48, 756 48,764.
`
`Smartflash also argues that claim 14 falls within § 18(d)(1)’s
`
`exclusion for “technological invention” because it is directed towards
`
`solving the technological problem of “data piracy” with the technological
`
`solution of “(1) a data carrier from which payment data is read and to which
`
`retrieved data from a data supplier is written and (2) at least once access
`
`rule, also stored on the data carrier, specifying at least one condition for
`
`accessing the retrieved data written into the data carrier.” Prelim. Resp. 9–
`
`10. We are not persuaded by this argument because, as Petitioner argues,
`
`the problem being solved by claim 14 is a business problem—data piracy.
`
`Pet. 19. For example, the Specification states that “[b]inding the data access
`
`and payment together allows the legitimate owners of the data to make the
`
`data available themselves over the internet without fear of loss of revenue,
`
`thus undermining the position of data pirates.” Ex. 1001, 1:66–2:3.
`
`12
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`CBM2014-00104
`Patent 7,334,720 B2
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`Therefore, based on the particular facts of this proceeding, we conclude that
`
`claim 14 does not recite a technological invention and is eligible for a
`
`covered business method patent review.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’720 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`using the transitional covered business method patent program.
`
`C. Claim 1
`
`Petitioner asserts that independent claim 1 is anticipated by “Stefik”
`
`or is rendered obvious by Stefik alone or in combination with various other
`
`references, including Maari and Sato. Pet. 22. Petitioner provides one claim
`
`chart for claim 1. Pet. 44–48.
`
`Claim 1 requires “use rules,” which, as explained above, we construe
`
`as a rule specifying a condition under which access to content is permitted.
`
`Specifically, claim 1 recites “non-volatile parameter memory storing [ ] use
`
`rules,” “reading the [ ] use rules from the parameter memory that pertain to
`
`use of the at least one requested content item,” and “evaluating the use status
`
`data using the use rules to determine whether access to the at least one
`
`requested content item stored in the content memory is permitted.”
`
`Petitioner’s claim chart states that the claimed “use rules” corresponds to
`
`Stefik’s “(e.g., conflict rules; descriptor tree files containing usage rights).”
`
`Pet. 45, 47. The claim chart also cites the following disclosure: “The
`
`description file contains the usage rights for the document and a pointer to
`
`the document in the content part.” Id. at 46 (citing Ex. 1013, 7:35–42).
`
`Petitioner also asserts that Stefik discloses “using the use rules (e.g.,
`
`checking the usage rights to determine if all conditions associated with a
`
`13
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`right are satisfied; applying conflict rules).” Id. at 47; see Ex. 1013, 7:25–
`
`29. Petitioner provides insufficient explanation as to how Stefik’s “usage
`
`rights” operate. Petitioner also does not show sufficiently why “usage
`
`rights” satisfies “use rules.” Even though “usage rights” may have
`
`“conditions,” they are not necessarily rules, and Petitioner has not persuaded
`
`us otherwise. For example, rights portion 504 is described as “a data
`
`structure, such as a look-up table, wherein the various information
`
`associated with a right is maintained.” Pet. 47 (citing Ex. 1013, 8:8–10); see
`
`also Ex. 1014, 9:54–10:1. An exemplary data structure is illustrated in
`
`Figure 10 of Stefik ’980 and the information contained in such a data
`
`structure is indicated in Table 1. Ex. 1014, 10:28–32. Table 1 of Stefik ’980
`
`discloses, for example, a “Loan-Period” property with a value in “Time-
`
`Units” that is an “[i]ndicator of the maximum number of time-units that a
`
`document can be loaned out.” Ex. 1014, 10:55–57. A data structure and the
`
`information within it, however, cannot be a rule. At best, a rule might use
`
`the information in the data structure—e.g., if the number of time-units that a
`
`document has been leased out is less than Loan-Period, then allow access—
`
`but the usage right itself (e.g., Loan-Period) is not “a rule specifying a
`
`condition under which access to content is permitted,” as we have construed
`
`“use rule.”
`
`Claim 1 also requires “use status data.” Specifically, claim 1 recites
`
`“non-volatile parameter memory storing use status data,” “reading the use
`
`status data [ ] from the parameter memory that pertain to use of the at least
`
`one requested content item,” and “evaluating the use status data using the
`
`use rules to determine whether access to the at least one requested content
`
`item stored in the content memory is permitted.” Petitioner’s claim chart
`
`14
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`Patent 7,334,720 B2
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`states that the claimed “use status data” corresponds to Stefik’s “(e.g.,
`
`conflict rules; descriptor tree files containing usage rights).” Pet. 45.
`
`Petitioner’s chart also asserts “[t]he use status data and use rules (e.g., usage
`
`rights; conflict rules) are stored in parameter memory.” Id. at 46. In
`
`addition, Petitioner contends that “Stefik discloses evaluating use status data
`
`(e.g., examining usage rights status, for example number of copy rights
`
`remaining, stored in a descriptor file for the requested content).” Id. at 47.
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`Petitioner does not explain, however, why “usage rights” satisfies the recited
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`“use status data.” For example, Petitioner does not explain sufficiently why
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`the “number of copy[ing] rights remaining” is within the scope of the
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`examples of “use status data” provided by the Specification of the ’720
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`patent (e.g., “indicating a use status of data” (Ex. 1001, 9:14–16),
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`“indicating past use of the stored data” (id. at 9:36–37), “present use status”
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`(id. at 25:1), “actual use of the data item made so far” (id. at 25:5–8), “how
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`much use has been made of the accessed content data time” such as “start
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`and end time markers or simply a play duration time” (id. at 25:26–32)).
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`For the reasons set forth above, Petitioner has failed to establish that it
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`is more likely than not that it would prevail in demonstrating that claim 1 is
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`unpatentable as anticipated by Stefik ’235 and/or Stefik ’980 or obvious over
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`Stefik ’235 and/or Stefik ’980 alone or in combination with any other
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`asserted reference.
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`D. Claims 3, 11, and 13
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`Petitioner asserts that independent claim 3 is anticipated by “Stefik”
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`or is rendered obvious by Stefik alone or in combination with various other
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`references, including Poggio and Sato. Pet. 22. Petitioner provides one
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`claim chart for claim 3. Pet. 49–69.
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`Claim 3 requires an “access rule,” which we have interpreted as
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`having the same meaning as “use rule.” Specifically, claim 3 recites “code
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`. . . to receive at least one access rule from the data supplier,” “code . . . to
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`write the at least one access rule into the data carrier,” and “the at least one
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`access rule specifying at least one condition for accessing the retrieved data
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`written into the data carrier.” Petitioner’s claim chart states that the claimed
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`“access rule” corresponds to “(e.g., usage rights)” and includes cites to
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`Stefik ’235 and Stefik ’980. Pet. 67–68. For the same reasons discussed
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`above as to why Stefik ’235 and/or Stefik ’980 do not disclose or teach “use
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`rules,” as recited in claim 1, we determine that Petitioner has not shown
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`sufficiently that Stefik ’235 and/or Stefik ’980 alone or in combination with
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`other references teaches an “access rule,” as recited in claim 3.
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`
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`In addition, claim 3 recites “code responsive to the payment validation
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`data to receive at least one access rule from the data supplier and to write the
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`at least one access rule into the data carrier.” Petitioner’s claim chart asserts
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`that “Stefik discloses attaching at least one access rule (e.g., usage rights) to
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`retrieved data (e.g., digital works), and then transmitting the attached access
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`rule (e.g., usage rights) with the content when the content is provided to a
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`data carrier (e.g., requesting repository).” Pet. 67. Petitioner, however, does
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`not explain why transmitting usage rights with the content when the content
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`is provided to a data carrier teaches code that is responsive to payment
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`validation data to receive an access rule. Petitioner’s claim chart further
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`asserts that “Stefik discloses an example in which the receipt of payment
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`validation data (e.g., acceptance of assigned fees) is a prerequisite to
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`providing a user with options to select a document and a desired function to
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`perform for the document, and the requested content and attached access
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`rule (e.g., usage rights) is provided to the requester responsive to (e.g., only
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`after) payment validation.” Id. Petitioner, however, does not explain why a
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`requesting repository providing a user with the usage rights in response to
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`payment validation teaches code that is responsive to the payment validation
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`system to receive an access rule from the data supplier and to write the rule
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`to the data carrier.
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`
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`Furthermore, claim 3 requires “at least one access rule specifying at
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`least one condition for accessing the retrieved data . . . the at least one
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`condition being dependent upon the amount of payment associated with the
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`payment data forwarded to the payment validation system.” (Emphasis
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`added). For this claim limitation, Petitioner’s claim chart asserts that “[t]he
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`type of content sent to the data carrier (e.g., requesting repository) and its
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`attached access rules and conditions (e.g., usage rights) are dependent on the
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`type of request and the amount of payment (e.g., the fees paid by the
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`requester) transmitted to the payment validation system (e.g., billing server)
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`for certain usage rights (e.g., “print” or “view” rights and “purchase” or
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`“loan” rights).” Pet. 67–68 (emphasis added). The claim chart does not
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`indicate which specific disclosure in either Stefik ’235 or Stefik ’980
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`supports Petitioner’s assertion.9 In any event, Petitioner does not explain
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`sufficiently why “usage rights” dependent on the fees paid by the requester
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`teaches an access rule that specifies a condition being dependent upon the
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`amount of payment associated with the payment data forwarded to the
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`payment validation system. In other words, the fees paid by the requester
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`may occur after the amount of payment associated with the payment data is
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`9 We note that the references to Stefik ’235 and Stefik ’980 are preceded
`with “See, e.g.” Pet. 68.
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`forwarded to the payment validation system. Petitioner has not persuaded us
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`that, more likely than not, the amount a user is charged is the same amount
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`of payment forwarded to the payment validation system.
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`
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`Petitioner’s claim chart also refers to disclosure from Poggio for this
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`claim element. For example, Petitioner’s claim chart provides the following.
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`Poggio discloses receiving at least one access rule (e.g., license
`information) responsive to (e.g., only after) payment validation
`data (e.g., confirmation that the payment has been made) from
`the payment validation system.
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`Pet. 68. Petitioner, however, fails to explain persuasively why
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`receiving an access rule in response to “payment validation data” or
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`“confirmation that the payment has been made” teaches “at least one
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`access rule specifying at least one condition for accessing the
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`retrieved data . . . the at least one condition being dependent upon the
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`amount of payment associated with the payment data forwarded to the
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`payment validation system.” For example, Petitioner does not explain
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`persuasively why the amount of the payment that was made is the
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`same amount of payment associated with the payment data forwarded
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`to the payment validation system. Our review of the Petition does not
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`indicate that Petitioner refers to any other reference as teaching this
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`claim limitation.
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`For the reasons set forth above, Petitioner has failed to establish that it
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`is more likely than not that it would prevail in demonstrating that claim 3 is
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`unpatentable as anticipated by Stefik ’235 and/or Stefik ’980 or obvious over
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`Stefik ’235 and/or Stefik ’980 alone or in combination with any other
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`asserted reference. For the same reasons, we determine that Petitioner has
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`failed to establish that it is more likely than not that it would prevail in
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`demonstrating that claims 11 and 13, which depend from claim 3, are
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`anticipated by or rendered obvious over Stefik ’235 and/or Stefik ’980 alone
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`or in combination with any other asserted reference.
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`E. Claims 14 and 15
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`Petitioner asserts that independent claim 14 is anticipated by “Stefik”
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`or is rendered obvious by Stefik alone or in combination with various other