Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00105
`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
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00105
`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
`
`
`
`
`
`
`
`CBM2014-00105 B2
`Patent 7,334,720
`
`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 U.S. Patent No. 7,334,720 (Ex. 1101, “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 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.”
`
`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. 22–23, 45–
`
`80).
`
`Ginter1
`
`References
`
`Ginter and Maari2
`
`Ginter
`
`Ginter and Sato3
`
`Claims Challenged
`
`Basis
`
`§ 102
`
`§ 103
`
`1
`
`1
`
`§ 103
`
`1, 3, 11, and 13–15
`
`§ 103
`
`1, 3, 11, and 13–15
`
`
`1 U.S. Patent No. 5,915,019 (Ex. 1115) (“Ginter”).
`2 JP Patent Application Publication No. H10-269289 (including translation),
`published October 9, 1998 (Ex. 1119, “Maari”).
`3 JP Patent Application Publication No. H11-164058 (including translation),
`published June 18, 1999 (Ex. 1118, “Sato”).
`
`2
`
`
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`CBM2014-00105 B2
`Patent 7,334,720
`
`References
`
`Basis
`
`Claims Challenged
`
`Ginter, Stefik ’2354, and
`Stefik ’9805
`
`§ 103
`
`1, 3, 11, and 13–15
`
`Ginter and Poggio6
`
`§ 103
`
`3, 11, and 13–15
`
`Ginter, Poggio, Stefik ’235,
`and Stefik ’980
`
`§ 103
`
`3, 11, and 13–15
`
`Petitioner also provides a declaration from Anthony J.
`
`Wechselberger.7 Ex. 1121.
`
`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.
`
`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, 8.
`
`
`4 U.S. Patent No. 5,530,235 (Ex. 1113) (“Stefik ’235”).
`5 U.S. Patent No. 5,629,980 (Ex. 1114) (“Stefik ’980”).
`6 European Patent Application, Publication No. EP 0809221 A2 (including
`translation), published November 26, 1997 (Ex. 1116, “Poggio”).
`7 On this record, we are not persuaded by Patent Owner’s argument that we
`should disregard the Wechselberger Declaration. See Prelim. Resp. 20–23.
`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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`CBM2014-00105 B2
`Patent 7,334,720
`
`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: CBM2014-00104.8 In addition, Apple filed ten
`
`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
`
`stored” and the “corresponding methods and computer programs.”
`
`Ex. 1101, 1:6–10. Owners of proprietary data, especially audio recordings,
`
`have an urgent need to address the prevalence of “data pirates,” who make
`
`proprietary data available over the internet without authorization. Id. at
`
`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
`
`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. 11–13. 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 the ’105 Petitions
`meets that requirement.
`
`
`4
`
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`CBM2014-00105 B2
`Patent 7,334,720
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`make their data available over the internet without fear of data pirates. Id. at
`
`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.
`
`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 nonvolatile 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
`
`5
`
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`CBM2014-00105 B2
`Patent 7,334,720
`
`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. 1101, 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
`
`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. 1101, 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
`
`6
`
`
`
`CBM2014-00105 B2
`Patent 7,334,720
`
`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
`
`terms 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. 1101, 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
`
`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. 1101 at 22:4–9 (emphases 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.” Similarly, in describing a
`
`particular embodiment, the ’720 patent Specification explains that each
`
`7
`
`
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`CBM2014-00105 B2
`Patent 7,334,720
`
`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. 1101, 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 rule” 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
`
`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) (Comment 8).
`
`8
`
`
`
`CBM2014-00105 B2
`Patent 7,334,720
`
`1. Financial Product or Service
`
`Apple asserts that because claim 14 “explicitly describes 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. 16. 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. 1101, 1:6–7. The Specification also states repeatedly
`
`that the disclosed invention involves managing access to data based on
`
`payment validation. See, e.g., Ex. 1101, 1:46–49, 2:4–19, 3:19–27, 3:50–54,
`
`7:62–8:9, 8:21–34.
`
`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
`
`9
`
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`CBM2014-00105 B2
`Patent 7,334,720
`
`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) of the AIA 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
`
`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.
`
`10
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`CBM2014-00105 B2
`Patent 7,334,720
`
`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 inventions.” Pet. 17–21. 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 17 (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. 9–11.
`
`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. 1101, 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
`
`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
`
`11
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`CBM2014-00105 B2
`Patent 7,334,720
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`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 48,764.
`
`Smartflash also argues that claim 14 falls within § 18(d)(1)’s
`
`exclusion for “technological inventions” 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. 21. 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. 1101, 1:66–2:3.
`
`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.
`
`12
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`CBM2014-00105 B2
`Patent 7,334,720
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`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 Ginter or
`
`is rendered obvious by Ginter alone or in combination with various other
`
`references, including Maari, Sato, and Stefik.9 Pet. 22–23. Petitioner
`
`provides one claim chart for claim 1. Pet. 45–54.
`
`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
`
`“(e.g., billing method map MDE and/or budget method UDE).” Pet. 48, 51;
`
`see Pet. 52. We determine that Petitioner has not shown sufficiently that
`
`Ginter alone or in combination with other references discloses or teaches
`
`“use rules.”
`
`
`9 Petitioner refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
`argues that they should be considered collectively as a single reference
`because, according to Petitioner, Stefik ’235 incorporates Stefik ’980 by
`reference. Pet. 9, n.5. Patent Owner disagrees. Prelim. Resp. 15–17. We
`do not reach this issue because neither Stefik ’235 nor Stefik ’980 affects our
`analysis.
`
`13
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`CBM2014-00105 B2
`Patent 7,334,720
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`Petitioner does not provide adequate argument or explanation as to
`
`why Ginter’s billing method map MDE and/or budget UDE satisfies the
`
`claimed “use rules.” Petitioner’s claim chart provides a lengthy string
`
`citation to numerous portions of Ginter, without providing the corresponding
`
`disclosure. Specifically, Petitioner provides the following:
`
`use rules (e.g., billing method map MDE and/or budget method
`UDE). See, e.g., Ex. 1115 Fig. 8; FIG. 71; 169:4-6 (“In one
`alternate embodiment, SPU 500 may have sufficient internal,
`non-volatile memory to allow it to store some or all of secure
`database 610.”); 229:18-20; 230:7-19; 126:36-44; 181:7-12;
`186:56-62; 187:52-57; 190:45-57; 62:64-67; 264:62-265-16;
`128:23-36; 59:17-23; Ex. 1121, Appx D 69-73.
`
`See e.g., Pet. 48 (footnotes omitted). Without corresponding argument and
`
`explanation, Petitioner’s claim chart does not persuade us that Ginter’s
`
`billing method MDE or budget method UDE satisfies the claimed “use
`
`rules.”
`
`Our review of Ginter does not persuade us otherwise. Ginter
`
`describes billing method map MDE as “a price list, table, or parameters to
`
`the billing amount calculation algorithm” (Ex. 1115, 190:47–50), and budget
`
`method UDE as “limitations on usage of information content 304, and how
`
`usage will be paid for” (id. at 59:17–20). Petitioner does not explain
`
`sufficiently, however, why a price list (billing method map MDE) and/or
`
`limitations on information content usage (budget method UDE), for
`
`example, discloses or teaches “use rules.” To the extent Petitioner alleges
`
`that Ginter’s “access limit” or “budget value” (Pet. 52) satisfies the claimed
`
`“use rules,” Petitioner does not explain why an access limit or budget value,
`
`particularly by itself, teaches a rule specifying a condition under which
`
`access to content is permitted.
`
`14
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`Patent 7,334,720
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`Petitioner has not demonstrated more likely than not that Ginter’s
`
`budget method UDE renders obvious the claimed “use rules.” See Pet. 51
`
`n.23. Petitioner discusses Ginter “using a budget method UDE specific to a
`
`particular VDE content object to limit access to that VDE content object . . .
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`to a finite amount,” and simply concludes that one skilled in the art “would
`
`have considered it at minimum obvious to use a budget method UDE
`
`pertaining to a particular content item (e.g., VDE content object) to limit
`
`user access to that particular content item (e.g., VDE content object).” Id.
`
`Petitioner does not provide any further rationale as to why claim 1 would
`
`have been obvious over Ginter, and the cited portion of the Wechselberger
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`Declaration simply reiterates Petitioner’s contentions and conclusory
`
`reasoning. See Pet. 51, n.24; Ex. 1121, App. D 75–77.
`
`
`
`Petitioner’s claim chart also states that Stefik ’235 and Stefik ’980
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`disclose the claimed “use rules.” Pet. 48. Petitioner provides no persuasive
`
`argument or explanation of why the relied upon disclosure from Stefik ’235
`
`and Stefik ’980 corresponds to “use rules.” Without corresponding
`
`argument or explanation, Petitioner’s claim chart does not persuade us that
`
`either Stefik ’235 or Stefik ’980 teaches “use rules.” Our review of the
`
`Petition does not indicate that Petitioner refers to any other reference as
`
`teaching the claimed “use rules.”
`
`For the reasons set forth above, Petitioner has failed to establish that,
`
`more likely than not, it would prevail in demonstrating that claim 1 is
`
`unpatentable as anticipated by Ginter or obvious over Ginter alone, or in
`
`combination with any other asserted reference.
`
`15
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`CBM2014-00105 B2
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`D. Claim 3
`
`Petitioner asserts that independent claim 3 is rendered obvious over
`
`Ginter, alone or in combination with various other references, including
`
`Stefik, Sato, and Poggio. Pet. 22–23. Petitioner provides one claim chart
`
`for claim 3. Pet. 54–65.
`
`Claim 3 requires an “access rule,” which we’ve construed as a rule
`
`specifying a condition under which access to content is permitted.
`
`Specifically, claim 3 recites “code . . . to receive at least one access rule
`
`from the data supplier,” “code . . . to write the at least one access rule into
`
`the data carrier,” and “the at least one access rule specifying at least one
`
`condition for accessing the retrieved data written into the data carrier.”
`
`Petitioner’s claim chart states that the claimed “access rule” corresponds to
`
`“(e.g., billing method map MDE and/or budget method UDE).” Pet. 62, 64;
`
`see also Pet. 63. For the same reasons discussed above as to why Ginter
`
`does not disclose or teach “use rules,” as recited in claim 1, we determine
`
`that Petitioner has not shown sufficiently that Ginter, alone or in
`
`combination with other references, teaches an “access rule.”
`
`Petitioner’s claim chart for claim 3 cites the following disclosure from
`
`Ginter:
`
`“Budgets” 308 shown in FIG. 5B are a special type of
`“method” 1000 that may specify, among other things,
`limitations on usage of information content 304, and how usage
`will be paid for. Budgets 308 can specify, for example, how
`much of the total information content 304 can be used and/or
`copied. The methods 310 may prevent use of more than the
`amount specified by a specific budget.
`
`Pet. 63 (citing Ex. 1115, 59:17–23). This disclosure indicates that Ginter’s
`
`Budgets 308 can specify a limiting value. As discussed above, however,
`
`16
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`CBM2014-00105 B2
`Patent 7,334,720
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`Petitioner does not explain why a limiting value, particularly by itself,
`
`teaches a rule specifying a condition under which access to content is
`
`permitted.
`
`
`
`In addition, claim 3 recites “code responsive to the payment validation
`
`data to receive at least one access rule from the data supplier.” Petitioner’s
`
`claim chart asserts that Ginter teaches the “responsive to the payment
`
`validation data” element because the alleged “access rule” is “received
`
`together with the VDE content object and thus responsive to the payment
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`validation data.” Pet. 62 (citations omitted). We are not persuaded by
`
`Petitioner’s conclusory statement that the access rule is received in response
`
`to the payment validation data because it is received together with the VDE
`
`content object. Our review of the Petition does not indicate that Petitioner
`
`refers to any other reference as teaching this claim limitation.
`
`
`
`Furthermore, claim 3 requires “at least one access rule specifying at
`
`least one condition for accessing the retrieved data . . . the at least one
`
`condition being dependent upon the amount of payment associated with the
`
`payment data forwarded to the payment validation system.” For this claim
`
`element, Petitioner’s claim chart provides the following:
`
`Ginter further discloses that the at least one access rule (e.g., the
`billing method map MDE and/or budget method UDE) depends
`upon the amount of payment associated with the payment data
`forwarded to the payment validation system (e.g., is dependent
`upon the amount a user is charged to access the VDE content
`object). See, e.g., Ex. 1115 Fig,. 72D; 28:21-42; Ex. 1121
`App[.] D 114-15.
`
`Pet. 64; see also id. at 65. Petitioner alleges that the “access rule” “is
`
`dependent upon the amount a user is charged to access the VDE content,”
`
`but does not explain why that disclosure teaches “at least one access rule
`
`17
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`CBM2014-00105 B2
`Patent 7,334,720
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`specifying at least one condition for accessing the retrieved data . . . the at
`
`least one condition being dependent upon the amount of payment associated
`
`with the payment data forwarded to the payment validation system.” Id. In
`
`other words, the amount a user is charged to access content may occur after
`
`the amount of payment associated with the payment data is forwarded to the
`
`payment validation system. Petitioner has not persuaded us that the amount
`
`a user is charged is the same amount of payment forwarded to the payment
`
`validation system.
`
`
`
`Petitioner’s claim chart also refers to disclosure from Poggio for this
`
`claim element. Specifically, Petitioner’s claim chart provides the following.
`
`Additionally, Poggio also discloses receiving at least one access
`rule (e.g., license information) specifying at least one condition
`for accessing the retrieved data (e.g., a vendor product can be
`rented or purchased) from a data supplier (e.g., web server)
`responsive to the payment validation data (confirmation that the
`payment has been made). See, e.g., Ex. 1116 Fig. 7; 9:56-10:25;
`10:41-53; Ex. 1121 App[.] D 118-20.
`
`Pet. 65. Petitioner, however, fails to explain why receiving an access
`
`rule in response to “payment validation data” or “confirmation that the
`
`payment has been made” teaches “at least one access rule specifying
`
`at least one condition for accessing the retrieved data . . . the at least
`
`one condition being dependent upon the amount of payment
`
`associated with the payment data forwarded to the payment validation
`
`system.” For example, Petitioner does not explain why the amount of
`
`the payment that was made is the same amount of payment associated
`
`with the payment data forwarded to the payment validation system.
`
`The Petition does not indicate that Petitioner refers to any other
`
`reference as teaching this claim limitation.
`
`18
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`CBM2014-00105 B2
`Patent 7,334,720
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`For the reasons set forth above, Petitioner has failed to establish that it
`
`is more likely than not that it would prevail in demonstrating that claim 3 is
`
`rendered obvious over Ginter, alone or in combination with any other
`
`asserted reference. For the same reasons, we determine that Petitioner has
`
`failed to establish that it is more likely than not that it would prevail in
`
`demonstrating that claims 11 and 13, which depend from claim 3, are
`
`rendered obvious over Ginter, alone or in combination with any other
`
`asserted reference.
`
`E. Claims 14 and 15
`
`Petitioner asserts that independent claim 14 is rendered obvious over
`
`Ginter, alone or in combination with various other references, including
`
`Sato, Stefik, and Poggio. Pet. 22–23. Petitioner provides one claim chart
`
`for claim 14. Pet. 72–77.
`
`Claim 14 requires an “access rule,” which we’ve construed as a rule
`
`specifying a condition under which access to content is permitted.
`
`Specifically, claim 14 recites “receiving at least one access rule from the
`
`data supplier,” “writing the at least one access rule into the data carrier,” and
`
`“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
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