Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`IPR2014-00106 Paper 8
`IPR2014-00107 Paper 8
`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 CBM2014-00106
`Case CBM2014-00107
`Patent 8,033,458 B2
`_______________
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`IPR2014-00106 Paper 8
`IPR2014-00107 Paper 8
`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 CBM2014-00106
`Case CBM2014-00107
`Patent 8,033,458 B2
`_______________
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed two Petitions to institute covered
`
`business method patent review of claims 1, 6–8, 10, and 11 (“challenged
`
`claims”) of U.S. Patent No. 8,033,458 B2 (Ex. 1001, “the ’458 patent”)
`
`pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).
`
`CBM2014-00106, Paper 2 (“’106 Pet.”); CBM2014-00107, Paper 2 (“’107
`
`Pet.”).1 Smartflash LLC (“Patent Owner”) filed a Preliminary Response in
`
`each of the two cases. CBM2014-00106, Paper 6 (“’106 Prelim. Resp.”);
`
`CBM2014-00107, Paper 6 (“’107 Prelim. Resp.”).2
`
`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.”
`
`B. Asserted Grounds of Unpatentability and Evidence of Record
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and 103 based on the following grounds (’106 Pet. 21–22,
`
`27–78; ’107 Pet. 22–23, 28–78).
`
`
`
`
`1 Exhibit numbers common to both CBM2014-00106 and CBM2014-00107
`will not include a case prefix designation.
`2 Patent Owner argues that the multiple petitions filed against the ’458 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. ’106 Prelim. Resp. 12-13; ’107
`Prelim. Resp. 12–13. 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 ’106 and the ’107 Petitions is within that requirement.
`
` 2
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`References
`
`Basis Claims
`Challenged
`
`Stefik ’2353 and Stefik ’9804
`
`§ 1025 6–8, 10, and 11
`
`CBM2014-00106
`
`Stefik ’235 and Stefik ’980
`
`§ 103
`
`1, 6–8, 10, and 11
`
`Stefik ’235, Stefik ’980, and Sato6
`
`§ 103
`
`1, 6–8, 10, and 11
`
`Stefik ’235,Stefik ’980, and Poggio7
`
`§ 103
`
`1, 6–8, 10, and 11
`
`Stefik ’235, Stefik ’980, Poggio, and Sato
`
`§ 103
`
`1, 6–8, 10, and 11
`
`Stefik ’235, Stefik ’980, Poggio, and Rydbeck8 § 103
`
`1
`
`Ginter9
`
`Ginter
`
`CBM2014-00107
`
`§ 102
`
`1, 6–8, 10, and 11
`
`§ 103
`
`1, 6–8, 10, and 11
`
`Ginter, Stefik ’235, and Stefik ’980
`
`§ 103
`
`1, 6–8, 10, and 11
`
`Ginter and Sato
`
`§ 103
`
`1, 6–8, 10, and 11
`
`
`3 U.S. Patent No. 5,530,235, issued June 25, 1996 (Ex. 1013, “Stefik ’235”).
`4 U.S. Patent No. 5,629,980, issued May 13, 1997 (Ex. 1014, “Stefik ’980”).
`5 Petitioner contends that Stefik ’235 and Stefik ’980 should be treated as a
`single reference and refers to the references collectively as “Stefik.” ’106
`Pet. 27. Patent Owner disagrees that Stefik ’235 and Stefik ’980 should be
`considered as one reference. ’106 Prelim. Resp. 14–15. We do not reach
`this issue, as Petitioner has not shown sufficiently that any of the teachings
`in either Stefik ’235 or Stefik ’980 discloses the claimed “use status data”
`required by claims 6–8, 10, and 11, as discussed below.
`6 JP Patent Application Publication No. H11-164058 (including translation),
`published June 18, 1999 (Ex. 1018, “Sato”).
`7 EP 0809221 A2, published November 26, 1997 (Ex. 1016, “Poggio”).
`8 WO 99/43136, published August 26, 1999 (Ex. 1017, “Rydbeck”).
`9 U.S. Patent No. 5,915,019, issued June 22, 1999 (Ex. 1115, “Ginter”).
`
` 3
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`References
`
`Ginter and Poggio
`
`Basis Claims
`Challenged
`1
`
`§ 103
`
`Ginter, Poggio, Stefik ’235, and Stefik ’980
`
`§ 103
`
`Ginter and Maari10
`
`§ 103
`
`1
`
`8
`
`Petitioner also provides testimony from Anthony J. Wechselberger
`
`(“the Wechselberger Declaration”).11 Ex. 1021; Ex. 1121.
`
`For the reasons given below, we institute a covered business method
`
`patent review of challenged claim 1. We deny institution of a covered
`
`business method patent review of challenged claims 6–8, 10, and 11.
`
`C. Related Matters
`
`Petitioner indicates that the ’458 patent is the subject of the following
`
`co-pending federal district court cases: Smartflash LLC v. Apple Inc., 6:13-
`
`CV-447 (E.D. TX); and Smartflash LLC v. Samsung, 6:13-CV-448 (E.D.
`
`TX). ’106 Pet. 20; ’107 Pet. 21–22.
`
`In addition to the ’106 Petition and the ’107 Petition, Petitioner has
`
`filed the following Petitions for covered business method patent reviews,
`
`challenging claims of Patent Owner’s patents disclosing similar subject
`
`matter: U.S. Patent Nos. 8,118,221 (CBM2014-00102/103), 8,061,598
`
`
`10 JP Patent Application Publication No. H10-269289 (including translation),
`published October 9, 1998 (Ex. 1119, “Maari”).
`11 On this record, we are not persuaded by Patent Owner’s argument that we
`should disregard the Wechselberger Declaration. See Prelim. Resp. 17-19.
`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.
`
` 4
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`(CBM2014-00104/105), 8,061,598 (CBM2014-00108/109), 8,336,772
`
`(CBM2014-00110/111), and 7,942,317 (CBM2014-00112/113).
`
`D. The ’458 Patent
`
`The ’458 patent is titled “Data Storage and Access Systems,” and is
`
`directed to a portable data carrier for storing and paying for data and to
`
`computer systems for providing access to the stored data. Ex. 1001, 1:21–
`
`23. Figure 9 of the ’458 patent, reproduced below, illustrates components of
`
`a portable data carrier.
`
`Figure 9 is a schematic diagram of the components of portable data carrier
`
`202. Portable data carrier 202 is shown as a “smart Flash card.” Id. at 17:6–
`
`
`
`8.
`
`The ’458 patent explains that portable data carrier 202 includes
`
`processor 210, working memory 212, timing and control logic 208, an
`
`external interface for reading data from and writing data to portable data
`
` 5
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`carrier 202, non-volatile (Flash) content data memory 214, permanent
`
`program memory 216, and non-volatile data memory 218. Id. at 16–24.
`
`Content data memory 214 stores content data, such as video data. Id. at
`
`17:66–18:4. Non-volatile data memory 218 includes payment data. Id. at
`
`17:34–35. Permanent program memory 216 stores code implemented by
`
`processor 200 that provides payment data to pay for downloaded content.
`
`Id. at 17:30–35.
`
`Figure 10 of the ’458 patent, reproduced below, illustrates
`
`components of a data access device.
`
`
`
`Figure 10 is a schematic diagram of data access device 220.
`
`The ’458 patent describes data access device 220 as “a conventional
`
`dedicated computer system including a processor 238, permanent program
`
`memory 236 (such as ROM), working memory 234 (such as RAM), and
`
`timing and control logic 226 all coupled by a data and communications bus
`
`222.” Id. at 18:7–12. Data access device 220 additionally includes smart
`
` 6
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`Flash card interface 224 and a user interface having audio interface 228,
`
`display 230, and user controls 232. Id. at 18:12–17. Permanent program
`
`memory 236 stores code implemented by processor 238. Id. at 18:18–19.
`
`A user can access data from portable data carrier 202 via data access
`
`device 220. Id. at 24:16–49. In order to determine whether access to a
`
`selected item is permitted, data access device 220 retrieves use status data
`
`and associated content use rules from portable data carrier 202. Id. at 24:35–
`
`37. The use status data is compared to the use rules to determine if access is
`
`permitted. Id. at 24:37–39.
`
`E.
`
`Challenged Claims
`
`
`
`As noted above, Petitioner challenges claims 1, 6–8, 10, and 11.
`
`Claims 1 and 6 are independent, with claims 7, 8, 10, and 11 depending from
`
`claim 6. Claims 1 and 6 are illustrative of the claimed subject matter and are
`
`reproduced below:
`
`1. A portable data carrier, comprising:
`
`an interface for reading and writing data from and to
`the carrier;
`
`non-volatile data memory, coupled to the interface,
`for storing data on the carrier;
`
`non-volatile payment data memory, coupled to the
`interface, for providing payment data
`to an
`external device;
`
`a program store storing code implementable by a
`processor;
`
`a processor, coupled to the content data memory, the
`payment data memory, the interface and to the
`program store for implementing code in the
`program store; and
`
` 7
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`
`a subscriber identity module (SIM) portion to identify
`a subscriber to a network operator
`
`wherein the code comprises code to output payment
`data from the payment data memory to the
`interface and code to provide external access to the
`data memory.
`
`Id. at 25:53–26:3.
`
`6. A data access device for retrieving stored data
`from a data carrier, the device comprising:
`
`a user interface;
`
`a data carrier interface;
`
`a program store storing code implementable by a
`processor; and
`
`a processor coupled to the user interface, to the data
`carrier interface and to the program store for
`implementing
`the
`stored
`code,
`the
`code
`comprising:
`
`code to retrieve use status data indicating a use
`status of data stored on the carrier, and use rules
`data indicating permissible use of data stored
`on the carrier;
`
`code to evaluate the use status data using the use
`rules data to determine whether access is
`permitted to the stored data; and
`
`code to access the stored data when access is
`permitted.
`
`Id. at 27:8–23.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable interpretation in light of the specification in which
`
` 8
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`they appear and the understanding of others skilled in the relevant art. See
`
`37 C.F.R. § 42.300(b). Applying that standard, we interpret the claim terms
`
`of the ’458 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). Petitioner proposes a construction of
`
`several claim terms of the ’458 patent (’106 Pet. 22–27; ’107 Pet. 23–28),
`
`and Patent Owner does not propose constructions for any of the claim terms.
`
`We determine that the claim terms do not require an express construction at
`
`this stage of the proceeding.
`
`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) (“CBM Rules”) (Comment 8).
`
`1. Financial Product or Service
`
`Petitioner asserts that claim 1 “clearly concerns a computer system
`
`(corresponding to methods discussed and claimed elsewhere in the patent
`
`family) for performing data processing and other operations used in the
`
`practice, administration, or management of a financial activity and service”
`
` 9
`
`
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`because it “explicitly describes storing and providing payment data to a
`
`payment validation system.” ’106 Pet. 15; ’107 Pet. 16. Based on this
`
`record, we agree with Petitioner that the subject matter recited by claim 1 is
`
`directed to activities that are financial in nature, namely “providing payment
`
`data to an external device,” which is recited in the claim. Electronic transfer
`
`of money is a financial activity, and providing for such a transfer amounts to
`
`a financial service. This is consistent with the specification of the ’458
`
`patent, which confirms claim 1’s connection to financial activities by stating
`
`that the invention “relates to a portable data carrier for storing and paying for
`
`data.” Ex. 1001, 1:21–23. The specification also states repeatedly that the
`
`disclosed invention involves handling payment data. See, e.g., Ex. 1001,
`
`17:30–42, 17:49–53.
`
`Patent Owner disagrees that claim 1 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. ’106 Prelim. Resp. 4–6; ’107 Prelim. Resp.
`
`4–6. Patent Owner cites to various portions of the legislative history as
`
`support for its proposed interpretation. Id.
`
`Although we agree with Patent Owner that the statutory language
`
`controls whether a patent is eligible for a covered business method patent
`
`review, we do not agree that the phrase “financial product or service” is as
`
`limited as Patent Owner 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
`
`
`
`10
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`§ 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, Patent Owner asserts that claim 1 is not directed to an
`
`apparatus or method that is financial in nature because claim 1 “omits the
`
`specifics of how payment is made.” ’106 Prelim. Resp. 8; ’107 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 claim 1 recites payment data, as Patent Owner acknowledges, 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 ’458 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
`
`Petitioner asserts that claim 1 does not fall within § 18(d)(1)’s
`
`exclusion for “technological inventions.” ’106 Pet. 15–20; ’107 Pet. 16–21.
`
`In particular, Petitioner argues that claim 1 “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
`
`
`
`11
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`solution.’” ’106 Pet. 15 and ’107 Pet. 16 (quoting 37 C.F.R. § 42.301(b))
`
`(emphases in original). Patent Owner disagrees and argues that the
`
`“subscriber identity module (SIM) portion” qualifies as a novel and
`
`unobvious technological feature. ’106 Prelim. Resp. 9–10; ’107 Prelim.
`
`Resp. 9–10.
`
`We are persuaded that claim 1 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art.
`
`Although claim 1 recites a “subscriber identity module (SIM) portion,” the
`
`specification discloses that “mobile phone SIM (Subscriber Identity Module)
`
`card[s] . . . already include a user identification means, to allow user billing
`
`through the phone network operator.” Ex. 1001, 4:10–13.
`
`In addition, the ’458 patent makes clear that the asserted novelty of
`
`the invention is not in any specific improvement of hardware, but in the
`
`method of controlling access to data. For example, the ’458 patent states
`
`that “there is an urgent need to find a way to address the problem of data
`
`piracy” (id. at 1:52–55), and provides the example of a “smart Flash card”
`
`for a data carrier, referring to “the ISO (International Standards
`
`Organization) series of standards, including ISO 7810, ISO 7811, ISO 7812,
`
`ISO 7813, ISO 7816, ISO 9992 and ISO 10102” (id. at 17:11–15) for further
`
`details on smart cards. Thus, we determine that claim 1 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. 48,756, 48,764 (Aug. 14, 2012).
`
`Patent Owner also argues that claim 1 falls within § 18(d)(1)’s
`
`exclusion for “technological inventions” because it is directed towards
`
`solving the technological problem of “a portable data carrier that allows a
`
`
`
`12
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`subscriber to be identified to a network operator” (’106 Prelim. Resp. 9;
`
`’107 Prelim. Resp. 9) with the technological solution of “a subscriber
`
`identity module (SIM) portion to identify the subscriber to the network
`
`operator” (’106 Prelim. Resp. 10; ’107 Prelim. Resp. 9). We are not
`
`persuaded by this argument because, as Petitioner argues, the problem being
`
`solved by claim 1 is a business problem—data piracy. ’106 Pet. 18–19; ’107
`
`Pet. 20. 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, 2:11–15. Thus,
`
`based on the particular facts of this proceeding, we conclude that claim 1
`
`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 ’458 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. Anticipation by Stefik ’235 and Stefik ’980
`
`Petitioner contends that claims 6–8, 10, and 11 are anticipated by
`
`Stefik ’235 and Stefik ’980. ’106 Pet. 21, 27–31, 56–78. We are not
`
`persuaded by Petitioner’s contentions for the reasons discussed below.
`
`Independent claim 6 recites that the data access device includes “code
`
`to retrieve use status data indicating a use status of data stored on the
`
`carrier.” Emphasis added. Petitioner contends that Stefik ’235 and Stefik
`
`’980 each disclose this limitation. ’106 Pet. 30, 67. Specifically, Petitioner
`
`contends that the usage rights in each of Stefik ’235 and Stefik ’980
`
`
`
`13
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`correspond to the claimed “use status data.” Id. Petitioner also argues that
`
`“[t]hese usage rights and conflict rules for data stored in the repository, such
`
`as a DocuCard, indicate the status of rights and functions available to the
`
`requesting user or fees associated with the use (‘permissible use of the stored
`
`data’).” Id. at 30; see also id. at 67. Petitioner’s claim chart also cites
`
`portions of Stefik ’235 and Stefik ’980, as well as the Wechselberger
`
`Declaration, to support Petitioner’s contentions that “usage rights” satisfies
`
`the claimed “use status data.” Id. (citing Ex. 1013, Abstract, 3:9–11, 4:40–
`
`43, 8:8–10; Ex. 1014, Figs. 10, 15, 18, Abstract, 6:42–55, 7:24–26, 10:28–
`
`32 and Table 1, 11:59–12:7, 14:15–27, 17:66–18:6; 19:12–15, 31:26–35; Ex.
`
`1021, App’x D, 85–86). The cited portions of the Wechselberger
`
`Declaration repeat the contentions presented in the claim chart. See Ex.
`
`1021, App’x D, 85–86.
`
`The portions of Stefik ’235 and Stefik ’980 quoted by Petitioner’s
`
`claim chart relate to usage rights attached to digital works. See ’106 Pet. 67
`
`(quoting Ex. 1013, 3:9–11, 4:40–46, 8:8–10). For example, Stefik ’235
`
`explains that “[u]sage rights are attached to digital works and control how
`
`the digital work can be used or distributed, and are further used to specify
`
`any fees associated with use or distribution of digital works.” Ex. 1013,
`
`4:40–43. Petitioner does not explain sufficiently why usage rights, as taught
`
`by Stefik ’235 and Stefik ’980, satisfies “use status data.” For example,
`
`Petitioner does not explain why usage rights in Stefik ’235 and Stefik ’980
`
`fall within the examples of “use status data” provided by the specification of
`
`the ’458 patent (e.g., past usage of stored data, that stored data has not been
`
`accessed, the number of times stored data has been accessed, the duration of
`
`
`
`14
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`access of stored data, etc.). Ex. 1001, 9:32–39, 24:63–25:11. Thus, we are
`
`not persuaded that either Stefik ’235 or Stefik ’980 discloses this limitation.
`
`For the reasons set forth above, Petitioner has failed to establish that it
`
`is more likely than not that it would prevail in challenging claim 6 as
`
`anticipated by either Stefik ’235 or Stefik ’980. For the same reasons,
`
`Petitioner has failed to establish that it is more likely than not that it would
`
`prevail in challenging dependent claims 7, 8, 10, and 11 as anticipated by
`
`Stefik ’235 and Stefik ’980.
`
`D. Obviousness over Stefik ’235 and Stefik ’980
`
`Petitioner contends that claims 1, 6–8, 10, and 11 would have been
`
`obvious over Stefik ’235 and Stefik ’980.12 ’106 Pet. 21, 27–31, 39–78. We
`
`find Petitioner’s contentions regarding claim 1 persuasive, but are not
`
`persuaded by Petitioner’s contentions regarding claims 6–8, 10, and 11 for
`
`the reasons discussed below.
`
`1. Claim 1
`
`Stefik ’235 describes a data storage device (repository) including “an
`
`I/O port for interfacing to external devices for reading and writing digital
`
`information” (Ex. 1013, Abstract, 2:37–39), “a nonvolatile storage means for
`
`storing information in a digital form” (id. at Abstract, 2:35–36), “a credit
`
`server for reporting usage fees that are associated with the access to a
`
`document” (id. at 6:22–24), “internal memory means contain[ing]
`
`
`12 Patent Owner’s arguments addressing this ground are directed at the
`combined teachings of Stefik ’235 and Stefik ’980. ’106 Prelim. Resp. 15–
`16. Petitioner, however, appears to rely on the disclosures of Stefik ’235
`and Stefik ’980 individually, as alternatively disclosing the limitations of
`claim 1, rather than any modification to either reference based on their
`combination. See ’106 Pet. 21, 27–31, 39–78.
`
`
`
`15
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`programming instructions” (id. at 5:45–46), and a controller module (id. at
`
`5:34–41), which Petitioner contends correspond to the claimed “interface,”
`
`“non-volatile data memory,” “non-volatile payment data memory,”
`
`“program store,” and “processor,” respectively (’106 Pet. 39–49). We are
`
`persuaded by these contentions.
`
`With respect to the claimed SIM portion, Petitioner contends that one
`
`skilled in the art “would have been motivated and found it obvious to
`
`employ a memory card for a mobile or cellular device that included a SIM
`
`portion that identifies a subscriber to a network operator, such as a mobile
`
`phone, as a repository in Stefik’s content distribution and access network.”
`
`Id. at 49 (citing Ex. 1021, App’x D at 63–64). Mr. Wechselberger’s
`
`testimony supports this contention. Ex. 1021, 64. As Petitioner points out,
`
`Stefik ’235 explains that each repository has an identifier such as “a unique
`
`number assigned to the DocuCard upon manufacture.” ’106 Pet. 49 (quoting
`
`Ex. 1013, 8:4–7). We are persuaded, for purposes of this decision, that one
`
`skilled in the art would have found it obvious to use a SIM portion as the
`
`identifier in Stefik ’235.
`
`In addition, Petitioner cites the credit server in Stefik ’235 as teaching
`
`the claimed “code to output payment data from the payment data memory to
`
`the interface” and the discussion of data being written to the repository
`
`(DocuCard) as teaching the claimed “code to provide external access to the
`
`data memory.” Id. at 52–53 (citing Ex. 1013, Fig. 2, Abstract, 6:22–24,
`
`6:60–65, 7:2–4, 7:12–13). We are persuaded by these contentions for the
`
`following reasons. Stefik ’235 explains that “a DocuCard [repository] may
`
`also have stored within it a credit server for reporting usage fees that are
`
`associated with the access to a document.” Ex. 1013, 6:22–24. Stefik ’235
`
`
`
`16
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`additionally explains that the DocuCard (repository) “has an interface for
`
`sending and receiving data, data memory for storing received content data,
`
`and payment validation memory for providing payment validation data to an
`
`external device.” Id. at Abstract.
`
`Petitioner makes substantially similar contentions in support of its
`
`assertion that claim 1 would have been obvious over Stefik ’980. ’106 Pet.
`
`27–31, 39–56. For reasons similar to those discussed above with respect to
`
`Steifik ’235, we are persuaded by Petitioner’s contentions that claim 1
`
`would have been obvious over Stefik ’980.
`
`Further, we are persuaded that one skilled in the art would have
`
`combined the teachings of Stefik ’235 and Stefik ’980 because, as Petitioner
`
`notes, “there is explicit motivation to implement the repository disclosed by
`
`Stefik ’980 using the Document Card (DocuCard) of Stefik ’235.” Pet. 27
`
`fn. 10 (citing Ex. 1013, 2:47–52).
`
`Accordingly, we conclude that the information presented shows that it
`
`is more likely than not that Petitioner would prevail in demonstrating that
`
`claim 1 would have been obvious over Stefik ’235 and Stefik ’980.
`
`2. Claims 6–8, 10, and 11
`
`Petitioner’s arguments that claims 6–8, 10, and 11 would have been
`
`obvious over Stefik ’235 and Stefik ’980 do not cure the deficiency we noted
`
`above in our analysis as to why Petitioner has not persuaded us that either
`
`Stefik ’235 or Stefik ’980 discloses “use status data.” For the same reasons,
`
`Petitioner has failed to establish that it is more likely than not that it would
`
`prevail in challenging claims 6–8, 10, and 11 as having been obvious over
`
`Stefik ’235 and Stefik ’980.
`
`
`
`17
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`
`E. Additional Grounds based on Stefik ’235 and Stefik ’980
`
`Petitioner additionally challenges claims 1, 6–8, 10, and 11 as having
`
`been obvious over various combinations of Stefik ’235, Stefik ’980, Sato,
`
`and Poggio, and claim 1 as having been obvious over the combination of
`
`Stefik ’235, Stefik ’980, Poggio, and Rydbeck. ’106 Pet. 31–79.
`
`1. Claim 1
`
`For the additional challenges to claim 1 noted above, we deny these
`
`additional grounds as redundant in light of our determination that it is more
`
`likely than not that Petitioner would prevail in demonstrating that claim 1
`
`would have been obvious over Stefik ’235 and Stefik ’980.
`
`2. Claims 6–8, 10, and 11
`
`Petitioner’s arguments that claims 6–8, 10, and 11 would have been
`
`obvious over Stefik ’235 and Stefik ’980 in combination with the additional
`
`references noted above do not cure the deficiency we noted above in our
`
`analysis as to why Petitioner has not persuaded us that either Stefik ’235 or
`
`Stefik ’980 discloses “use status data.” For the same reasons, Petitioner has
`
`failed to establish that it is more likely than not that it would prevail in
`
`challenging claims 6–8, 10, and 11 as having been obvious over: (1) Stefik
`
`’235, Stefik ’980, and Sato; (2) Stefik ’235, Stefik ’980, and Poggio; and (3)
`
`Stefik ’235, Stefik ’980, Sato, and Poggio.
`
`F. Anticipation by Ginter
`
`Petitioner contends that claims 1, 6–8, 10, and 11 are anticipated by
`
`Ginter. ’107 Pet. 28–32, 45–79. For the reasons discussed below, we are
`
`not persuaded by Petitioner’s contentions.
`
`
`
`18
`
`
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`
`1. Claim 1
`
`Claim 1 requires “a subscriber identity module (SIM) portion to
`
`identify a subscriber to a network operator.” Petitioner contends that Ginter
`
`discloses this limitation because a personal digital assistant, provided as an
`
`example of an electronic appliance in Ginter, “communicates with the wide
`
`area network over a cellular connection and therefore necessarily and thus
`
`inherently includes a subscriber identity module (SIM) portion to identify
`
`the subscriber (e.g., user of electronic appliance) to a network operator.”
`
`’107 Pet. 57–58 (citing Ex. 1115, 34:1–6, 161:5–11; Ex. 1121, App’x D at
`
`80–82).
`
`Patent Owner responds that “the Petition has not shown that Ginter
`
`inherently discloses ‘a subscriber identity module (SIM) portion to identify a
`
`subscriber to a network operator.’” ’107 Prelim. Resp. 14 (emphasis
`
`omitted). We agree with Patent Owner. We are not persuaded that Ginter’s
`
`personal digital assistant inherently includes a SIM portion because the cited
`
`portions of Ginter simply list a personal digital assistant as an example of an
`
`electronic appliance (see Ex. 1115, 34:1–6) and explain that “the end user’s
`
`electronic appliance 600 may initiate communications with a clearinghouse
`
`. . . across the electronic highway 108, or across other communications
`
`networks such as a LAN, WAN, two-way cable or using portable media
`
`exchange between electronic appliances” (id. at 161:5–11). The cited
`
`portion of the Wechselberger Declaration fails to offer any explanation as to
`
`why a SIM portion is present necessarily in Ginter’s personal digital
`
`assistant and, instead, simply restates the allegation from the Petition. See
`
`Ex. 1121, 81.
`
`
`
`
`
`19
`
`
`
`CBM2014-00106 and CBM2014-00107
`Patent 8,033,458 B2
`
`
`Furthermore, a SIM card is designed for use with mobile devices that
`
`comply with the Global System for Mobile Communications standard. See,
`
`e.g., Microsoft Computer Dictionary, 2d. Ed. (2002) (“SIM card n. Short for
`
`Subscriber Identity Module card use with GSM (Global System for Mobile
`
`Communications) mobile phones. SIM cards contain chips that store a
`
`subscriber’s personal identifier (SIM PIN), billing information, and data
`
`(names, phone numbers).”). Petitioner identifies nothing in Ginter that
`
`discloses that its personal digital assistant complies with the GSM standard,
`
`and nothing in Ginter precludes the use of alternative standards. To the
`
`extent that Ginter’s personal digital assistant communicates over a wireless
`
`wide area network based on a standard other than GSM, it does not
`
`necessarily require a SIM card. Accordingly, on this record, we are not
`
`persuaded that a SIM card is inherent in Ginter.
`
`For the reasons set forth above, Petitioner has failed to establish that it
`
`is more likely than not that it would prevail in challenging claim 1 as
`
`anticipated by Ginter.
`
`2. Claims 6–8, 10, and 11
`
`Turning to claim 6,
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
