`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE, INC.
`
`Petitioner
`
`v.
`
`SMARTFLASH LLC
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`Patent Owner
`
`____________
`
`Case CBM2014-00109
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`Patent 8,061,598
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`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`
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`TABLE OF CONTENTS
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`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`II.
`
` OVERVIEW OF U.S. PATENT NO. 8,061,598 ............................................ 1
`
` THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ........................................................ 3
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘598 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW ...... 9
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘598 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ......................................................... 11
`
`
`V.
`
` GINTER DOES NOT ANTICIPATE CLAIMS 1, 2, 7, 13, 15, 26 AND 31
`AND NEITHER GINTER ALONE NOR GINTER IN COMBINATION
`WITH ANY OF THE CITED REFERENCES RENDERS OBVIOUS THE
`CHALLENGED CLAIMS OF THE PETITION .......................................... 13
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`
`Anticipation of Claims 1, 2, 7, 13, 15, 26 and 31 by Ginter.............. 14
`
`Obviousness in Light of Ginter .......................................................... 16
`
`Obviousness in Light of Ginter and Stefik ........................................ 16
`
`Obviousness in light of Ginter and Sato ............................................ 19
`
`Obviousness in light of Ginter and Poggio ........................................ 20
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`- i -
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`
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`F.
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`Obviousness in light of Ginter, Poggio and Stefik ............................ 21
`
`
`VI. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`CONSIDERED .............................................................................................. 21
`
`
`VII. CONCLUSION .............................................................................................. 24
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`- ii -
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit Number
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`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, H5402-5443
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`- iii -
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`
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`Patent Owner sets forth below, in its Preliminary Response, why no Covered
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`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 8,061,598
`
`Although the claims define the actual scope of coverage of the patent, as
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`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 8,061,598 (hereinafter “the ‘598 patent”)
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`generally describes “data storage and access systems ... [and] is particularly useful
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`for managing stored audio and video data, but may also be applied to storage and
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`access of text and software, including games, as well as other types of data.” Col.
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`1, lines 20-28.
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`Preferred embodiments described in the last full paragraph of col. 15
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`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
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`accessing data supply computer system 120 over internet 142. The terminals are
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`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
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`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
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`data carrier to be inserted into and removed from the terminal, but in some
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`- 1 -
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`embodiments the data carrier may be integral with the terminal.” Exemplary
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`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
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`and mobile communications devices 152. Col. 16, lines 4-17.
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`Referring to preferred embodiments, the ‘598 patent discloses that a data
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`supply system may provide users with a seamless purchase and content delivery
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`experience. Col. 23, line 63 - col. 24, line 1. Users are able to purchase content
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`from a variety of different content providers even if they do not know where the
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`content providers are located or how the content is delivered. See id. The
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`exemplary system is operated by a “content data supply ‘system owner,’” who may
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`act as an intermediary between a user seeking to purchase content and content
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`providers, such as record labels, movie studios, and software providers. See col.
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`13, lines 60-67. When a user accesses the system, he or she is able to select
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`content to purchase or rent from a variety of different content providers. See the
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`paragraph crossing cols. 4 and 5. If the user finds a content item to buy, his or her
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`device will transmit stored “payment data” to a “payment validation system” to
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`validate the payment data. See col. 8, lines 3-6. The payment validation system
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`returns proof that the payment data has been validated, in the form of “payment
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`validation data,” and the user is able to retrieve the purchased content from the
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`content provider. See col. 8, lines 6-9.
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`- 2 -
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`II.
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`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
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`FINANCIAL PRODUCT OR SERVICE
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`Petitioner has cited claim 7 as being the “exemplary” basis for requesting
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`that a covered business method review be instituted. Petition at 13. The Petition
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`cites claim 7 as being “exemplary,” and states on page 4 that “the variations
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`presented in the other challenged system claims add nothing that was not already
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`well-known.” The Petition further alleges on page 17 that “Claim 1 also relates to a
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`financial activity and providing a financial service” and quotes from claim 31.
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`However, the Petition does not set forth any analysis to show why, if claim 7 is not
`
`a basis for review, any of the other challenged claims (i.e., claims 1, 2, 13, 15, 26
`
`and 31) would instead meet the statutory requirements for instituting a review.
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`Furthermore, since claim 7 does not, in fact, meet the requirements for instituting a
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`review, the Petition should be denied.
`
`As set forth in 37 CFR 42.301(a), to be eligible for CBM review, claim 7
`
`must be found to be claiming “a method or corresponding apparatus for performing
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`data processing or other operations used in the practice, administration, or
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`management of a financial product or service.” In the publication of the Final
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`Rules for “Transitional Program for Covered Business Method Patents -
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`Definitions of Covered Business Method Patent and Technological Invention,” the
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`PTO stated:
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`- 3 -
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`The definition set forth in § 42.301(a) for covered business
`method patent adopts the definition for covered business method
`patent provided in section 18(d)(1) of the AIA. In administering the
`program, the Office will consider the legislative intent and history
`behind the public law definition and the transitional program itself.
`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.” 157
`CONG. REC. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer). This remark tends to support the notion that “financial
`product or service” should be interpreted broadly.
`
`
`Regardless of this explanation, it is improper for this tribunal to rely on the
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`legislative history of the AIA to determine the specific issue before it, i.e., whether
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`trial should be instituted on the present petition. The Supreme Court has “stated
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`time and again that courts must presume that a legislature says in a statute what it
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`means and means in a statute what it says. When the words of a statute are
`
`unambiguous, then, this first canon of construction is also the last: judicial inquiry
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`is complete.” Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253–54 (1992).
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`“[W]hen the language of the statute is plain, legislative history is irrelevant.”
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`Zedner v. United States, 547 U.S. 489, 510–11 (2006) (Scalia, J., concurring-in-
`
`part). This long standing rule is based on the constitutional limitation that
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`legislators cannot achieve through floor statements what “they were unable to
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`achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc.,
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`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
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`“financial product[s] and service[s],” there is no reason to look to the statements of
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`a single Senator to re-tool text that was approved by both houses of Congress and
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`signed by the President.
`
`Moreover, the PTO’s synopsis of the legislative history is an improper
`
`oversimplification and does not address that “financial product or service” was
`
`intended to be interpreted narrowly. In fact, when the House of Representatives
`
`debated Congressman Schock’s Amendment to remove Section 18 in its entirety
`
`from the America Invents Act, several members of Congress discussed their
`
`understanding of that narrower interpretation. For example, Mr. Schock himself
`
`discussed at the beginning of his remarks that “Section 18 carves out a niche of
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`business method patents covering technology used specifically in the financial
`
`industry and would create a special class of patents in the financial services field
`
`subject to their own distinctive post-grant administrative review.” (Exhibit 2001,
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`Congressional Record - House, June 23, 2011, H4496.) (Emphasis added.)
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`Similarly, Congressman Shuster expressly discussed his understanding of
`
`the narrow interpretation of the legislation. He stated:
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`- 5 -
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`Mr. Chair, I would like to place in the record my understanding
`that the definition of ‘‘covered business method patent,’’ Section
`18(d)(1) of H.R. 1249, the America Invents Act, is intended to be
`narrowly construed to target only those business method patents that
`are unique to the financial services industry in the sense that they are
`patents which only a financial services provider would use to
`furnish a financial product or service. The example that I have been
`given is a patent relating to electronic check scanning, which is the
`type of invention that only the financial services industry would
`utilize as a means of providing improved or more efficient banking
`services. In contrast, Section 18 would not encompass a patent that
`can be used in other industries, but which a financial services
`provider might also use. Lastly, it is also my understanding from
`discussions with the Committee that Section 18 is targeted only
`towards patents for non-technological inventions.
`
`
`
`Id. at H4497. (Emphasis added.) It was based on that understanding that
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`Congressman Shuster then voted to keep Section 18 in the bill. (See id. at H4503.)
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`
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`Likewise, Congresswoman Waters discussed that Section 18 was directed to
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`cost savings measures in the banking industry when she stated “too-big-to-fail
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`banks ... are now coming to Congress in hopes that [Congress] will help them steal
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`a specific type of innovation and legislatively take other financial services-related
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`business method patents referenced in H.R. 1249, section 18. ... Financial
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`services-related business method patents have saved financial services companies
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`- 6 -
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`billions of dollars.” Id. at H4496. See also Exhibit 2002, 157 Cong. Rec. S5428
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`(Rep. Pryor) (“It is of crucial importance to me that we clarify the intent of the
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`[AIA § 18] process and implement it as narrowly as possible.”)
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`In contrast to the banking or other financial products or services patents,
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`claim 7 recites:
`
`7. A portable data carrier as claimed in claim 1, further
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`comprising payment data memory to store payment data and code to
`
`provide the payment data to a payment validation system.
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`Claim 1, from which claim 7 depends, recites:
`
`1. A portable data carrier comprising:
`
`an interface for reading and writing data from and to the
`
`portable data carrier;
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`content data memory, coupled to the interface, for storing one
`
`or more content data items on the carrier;
`
`use rule memory to store one or more use rules for said one or
`
`more content data items;
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`a program store storing code implementable by a processor; and
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`a processor coupled to the content data memory, the use rule
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`memory, the interface and to the program store for implementing code
`
`in the program store,
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`- 7 -
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`wherein the code comprises code for storing at least one content
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`data item in the content data memory and at least one use rule in the
`
`use rule memory.
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`Thus, the majority of claim 7 is actually the portable data carrier of claim 1, which
`
`the Petition has not shown to be a claim meeting the requirements of a covered
`
`business method patent. Instead, claim 7, as a whole, is directed to an inventive
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`portable data carrier including at least content data memory for storing one or more
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`content data items on the carrier and use rule memory to store one or more use
`
`rules for said one or more content data items, as one would do, for example, when
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`loading software, music or a video onto a data carrier for later use and/or playback
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`according to the stored access rule. Further, rather than recite the “practice,
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`administration, or management of a financial product or service,” claim 7 actually
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`omits the specifics of how payment is made and focuses on technical features of
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`the portable data carrier.
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`At most, the portable data carrier is capable of storing a particular type of
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`data termed “payment data.” According to Petitioner, this payment data is “data
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`representing payment made for requested content data.” Under Petitioner’s
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`analysis, any patent claim covering a device that can store information related to a
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`payment, e.g. a currency counting machine that tracks bills associated with a
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`payment, would be a claim directed towards a “financial product or service.” Even
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`Senator Schumer would find this assertion to be excessive. See 157 Cong. Rec.
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`S5428 (question by Senator Durbin: “[T]here are companies that possess class 705
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`patents which have used the patents to manufacture and commercialize novel
`
`machinery to count, sort, and authenticate currency and paper instruments. Are
`
`these the types of patents that are the target of Section 18? Mr. SCHUMER. No.”)
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`Claim 7, therefore, does not recite a “financial product or service” when that
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`phrase is properly construed, both under its plain meaning and in light of the
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`legislative history showing Congress’ intent of the narrow meaning of that phrase.
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`
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`III. THE CHALLENGED CLAIMS OF THE ‘598 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW
`
`As set forth in 37 CFR 42.301(a), even if claim 7 were considered to be
`
`claiming “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,” Petitioner must show that claim 7 does not meet the exception
`
`of being directed to a technological invention. Section 42.301(b) sets forth that a
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`claim is directed to a technological invention (and therefore not the basis for
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`instituting a CBM review) if “the claimed subject matter as a whole recites a
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`technological feature that is novel and unobvious over the prior art; and solves a
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`technical problem using a technical solution.”
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`Claim 7, as a whole, recites at least one technological feature that is novel
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`and unobvious over the prior art and solves a technical problem using a technical
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`solution. Among others, a technological problem solved by the portable data
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`carrier of claim 7 is controlling use, according to use rules, of data stored on the
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`data carrier. As described in the second paragraph of the Background of the
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`Invention in col. 1, “One problem associated with the increasingly wide use of the
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`internet is the growing prevalence of so-called data pirates. Such pirates obtain
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`data either by unauthorized or legitimate means and then make this data available
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`essentially world-wide over the internet without authorization. Data can be a very
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`valuable commodity, but once it has been published on the internet it is difficult to
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`police access to and use of it by internet users who may not even realize that it is
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`pirated.”
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`Moreover, claim 7 utilizes technical solutions to address the technical
`
`problem of data piracy. The solutions include at least (1) a portable data carrier
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`from which payment data is read and to which at least one content data item is
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`written and (2) one or more use rules, also stored on the portable data carrier,
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`specifying at least one use rule for using the content data item(s) written into the
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`portable data carrier. Petitioner, in fact, admits the technological nature of the
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`portable data carrier when it states on page 3 “Claim 7 involves no ‘technology at
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`- 10 -
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`all’ other than ‘a portable data carrier.’” Petition at 3. (Emphasis added.) Thus,
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`the technical solutions of claim 7 exempt the ‘598 patent from CBM review.
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`Section III.A. of the Petition also does not allege, much less prove, that
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`claim 1, from which claim 7 depends, does not itself solve a technical problem
`
`using a technical solution such that claim 1 is not a covered business method. As a
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`result, even if additional elements are added to claim 1, as in the case of claim 7,
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`claim 1 still continues to solve a technical problem using a technical solution.
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`Thus, claim 7, which depends from claim 1, should be found to be a technological
`
`invention, and the challenged claims are exempt from CBM review.
`
`
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`IV. THE MULTIPLE PETITIONS AGAINST THE ‘598 PATENT SHOULD
`
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`
`VIOLATION OF 37 CFR 42.24(a)(iii)
`
`The Petition under consideration (in CBM2014-00109) is one of two 80-
`
`page Petitions filed by Petitioner on the same day against the same patent (i.e., the
`
`‘598 patent). (The second Petition was filed in CBM2014-00108.) Both Petitions
`
`include a substantial amount of overlap and are at least directed to the issues of
`
`rejections in light of alleged prior art including the obviousness of claims in the
`
`‘598 patent. However, instead of filing a single Petition addressing all the prior art
`
`issues within the page limits set by the PTAB, Petitioner seeks to circumvent the
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`- 11 -
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`page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but overlapping
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`Petitions.
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`The PTAB has previously allowed the same Petitioner to file multiple CBMs
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`against a single patent (see CBM2013-00019 and CBM2013-00020 for U.S. Patent
`
`No. 5,191,573, and CBM2013-00021 and CBM2013-00023 for U.S. Patent No.
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`5,966,440). However, those cases are distinguishable at least in that one Petition
`
`for each patent (CBM2013-0020 and CBM2013-00023) raised prior art issues and
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`the other Petition for each patent (CBM2013-0019 and CBM2013-00021) raised
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`non-prior art issues.
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`If the Petitioner was unable to file its Petition within the page limits set forth
`
`by 37 CFR 42.24(a)(1), then the Petitioner was free to file a motion to waive the
`
`page limits. Section 42.24(a)(2) specifically sets forth that “Petitions to institute a
`
`trial must comply with the stated page limits but may be accompanied by a motion
`
`to waive the page limits. The Petitioner must show in the motion how a waiver of
`
`the page limits is in the interests of justice and must append a copy of the proposed
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`petition exceeding the page limit to the motion. If the motion is not granted, the
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`proposed petition exceeding the page limit may be expunged or returned.”
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`However, the Petitioner here instead effectively sought to grant its own motion by
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`filing two allegedly separate petitions, each within the 80-page limit and without
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`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
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`there is no requirement for the Petitioner to file its allegations of invalidity over
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`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
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`the requirements of Section 42.24(a)(2) are meaningless. Moreover, allowing
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`more than one CBM request on the same issue for the same patent would invite an
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`unending stream of Petitions filed by Petitioners in an effort to drown the Patent
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`Owner’s patents in administrative proceedings before the PTAB. Thus,
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`Petitioner’s two Petitions in CBM2014-00108 and -00109 should be treated as a
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`single Petition beyond the page limits set forth by 37 CFR 42.24(a)(1) and each
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`should be denied on that basis alone.
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`
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`V. GINTER DOES NOT ANTICIPATE CLAIMS 1, 2, 7, 13, 15, 26 AND 31
`
`AND NEITHER GINTER ALONE NOR GINTER IN COMBINATION
`
`WITH ANY OF THE CITED REFERENCES RENDERS OBVIOUS THE
`
`CHALLENGED CLAIMS OF THE PETITION
`
`Without prejudice to Patent Owner’s right to argue additional reasons that
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`the applied references do not anticipate and/or render obvious the claims of the
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`Petition, and in light of the fact that no CBM review should be instituted for the
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`‘598 patent, Patent Owner briefly addresses the alleged grounds set forth in the
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`Petition.
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`A. Anticipation of Claims 1, 2, 7, 13, 15, 26 and 31 by Ginter
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`The Petition alleges that Ginter (i.e., U.S. Patent No. 5,915,019) anticipates
`
`claims 1, 2, 7, 13, 15, 26 and 31 of the ‘598 patent. Petition at 43. However, with
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`respect to claim 1 (and its dependent claims 2, 7, 13, and 15), the Petition does not
`
`show that Ginter discloses “use rules” or a portable data carrier including “use rule
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`memory to store one or more use rules for said one or more content data items”
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`such that Ginter discloses “code for storing at least one content data item in the
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`content data memory and at least one use rule in the use rule memory.” In fact, as
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`seen on pages 57-59, the Petition cites to billing information for metering rather
`
`than determining whether access is permitted. Thus, for at least this reason
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`independent claim 1 and dependent claims 2, 7, 13, and 15 are not anticipated.
`
`With respect to claim 26, the Petition does not show that Ginter inherently
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`discloses “a subscriber identity module (SIM) portion storing identification data to
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`identify a user of said portable data carrier to a network operator.” Instead, the
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`Petition alleges that “personal digital assistant with access to a wide area network,
`
`as disclosed in Ginter, communicates with the wide area network over a cellular
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`connection and therefore necessarily and thus inherently includes a subscriber
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`identity module (SIM) portion to identify the subscriber (e.g., user of electronic
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`appliance) to a network operator.” Petition at 72, footnote 29. (Emphasis added.)
`
`Footnote 29 further alleges that “where the data carrier is Ginter’s PEA, a POSITA
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`would have understood for similar reasons that Ginter necessarily and thus
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`inherently discloses or at a minimum renders obvious that the portable data carrier
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`(e.g., PEA) includes a subscriber identity module (SIM) portion, since Ginter
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`teaches that the PEA is capable of performing substantially the same functions as
`
`an electronic appliance.” Id. However, the Petition does not provide a citation to
`
`any reference that shows that Ginter inherently includes a “subscriber identity
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`module (SIM) portion to identify a subscriber to a network operator.” Thus, claim
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`26 is not anticipated by Ginter.
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`With respect to claim 31, the Petition does not show that Ginter discloses
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`“use status data and one or more use rules” or a parameter memory for storing “use
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`status data and one or more use rules” such that Ginter discloses “reading the use
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`status data and one or more use rules from parameter memory that pertain to use of
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`the requested content data item; evaluating the use status data using the one or
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`more use rules to determine whether access to the content data item is permitted;
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`and enabling access to the content data item responsive to a determination that
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`access to the content data item is permitted.” In fact, as seen on pages 57-59, the
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`Petition cites to billing information for metering rather than enabling access to the
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`content data item responsive to a determination that access to the content data item
`
`is permitted. Thus, for at least this reason independent claim 31 is not anticipated.
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`B. Obviousness in Light of Ginter
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`Petitioner further alleges that Ginter renders obvious the challenged claims
`
`without providing evidence that one of ordinary skill in the art would have
`
`modified Ginter in a way that would have rendered obvious the claims. In fact, the
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`Petition fails to show why one of ordinary skill in the art, looking at Ginter alone
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`(including its 146 sheets of drawings and 319 columns of specification), would
`
`have believed that there was a problem in Ginter to be solved such that Ginter
`
`needed to be modified. ‘‘‘[R]ejections on obviousness cannot be sustained by
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`mere conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.’” KSR
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`Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
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`977, 988 (Fed. Cir. 2006)). Thus, the Petition fails to establish that any of the
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`challenged claims of the patent-at-issue are obvious in light of Ginter alone.
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`
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`C. Obviousness in Light of Ginter and Stefik
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`1.
`
`U.S. Patent Nos. 5,530,235 and 5,629,980 Are Not a Single
`
`Reference
`
`The Petition alleges in footnote 4 starting on page 9 that “Because Stefik
`
`’235 incorporates Stefik ’980 [i.e., U.S. Patent No. 5,629,980 (hereinafter “the
`
`‘980 patent”)] by reference, they should be considered a single reference.”
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`However, Petitioner has not proven that the alleged incorporation by reference in
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`the ‘235 patent is sufficient to support a finding that the ‘235 and ‘980 patents
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`“should be considered a single reference.” The ‘235 patent states, at col. 2, lines
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`48-53, that “The currently preferred embodiment of a DocuCard is an instance of a
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`repository, as defined in co-pending application entitled ‘System for Controlling
`
`the Distribution and Use of Digital Works,’ serial number not yet assigned, which
`
`is assigned to the assignee of the present invention and which is herein
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`incorporated by reference.” However, such a reference does not meet the MPEP’s
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`standard for incorporation by reference. MPEP 608.01(p) (Sixth Ed., Jan. 1995)
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`set forth the procedure for incorporation by reference at the time the ‘235 patent
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`was filed. As specified in the MPEP on page 600-55, left column, lines 11-13, “In
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`addition to other requirements for an application, the referencing application
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`should include an identification of the referenced patent, application, or
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`publication.” The Petitioner has not established that a reference to “co-pending
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`application entitled ‘System for Controlling the Distribution and Use of Digital
`
`Works,’ serial number not yet assigned, which is assigned to the assignee of the
`
`present invention,” actually identifies the referenced application. For example, the
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`application is not referenced by application serial number, filing date, inventors or
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`attorney docket number.
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`- 17 -
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`
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`As set forth in In re Fouche, 169 USPQ 429 (CCPA 1971), when the issue
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`arises as to whether an incorporation by reference is proper, the test is “whether the
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`original referring language was adequate to effect an incorporation by reference” --
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`a test which is resolved by determining whether the application allegedly
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`incorporated by reference is distinguished “from all others.” Id. at 431. Petitioner,
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`which bears the burden of proof on the issue, has not proven that the application is
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`distinguished from all others (e.g., by a declaration from Stefik describing that the
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`‘980 patent is the only such application). Thus, the alleged incorporation by
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`reference is not proper, and the ‘235 and ‘980 patents should not be considered a
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`single reference.
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`
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`2.
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`No Motivation to Combine Ginter and Stefik
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`
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`As set forth above, the “Stefik” patent has not been shown to be a single
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`reference; therefore, the alleged combination of Ginter and Stefik is improper as
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`the Petition must show there was a motivation to combine all the references.
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`
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`Even if the Stefik references were considered to be a single reference or
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`there was a motivation to combine the Stefik patents, one of ordinary skill in the
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`art still would not have combined Ginter and the Stefik patents. The Petition
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`alleges that a “POSITA would have considered it obvious to apply Stefik’s
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`teachings of a removable card in the VDE environment discussed in Ginter, since
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`- 18 -
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`
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`every additional device in the VDE environment advantageously increases its user-
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`base.” Petition at 39. However, the Petition has not identified any evidence that
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`indicates that combining Stefik and Ginter would increase the user base or even
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`that doing so would be considered to be an advantage to one of ordinary skill in
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`that art. Similarly, the Petition cites to no evidence that having a display “would
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`encourage users to make additional purchases.” Id. Thus, one of ordinary skill in
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`the art would not have been motivated to combine Ginter and Stefik as alleged.
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`
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`D. Obviousness in light of Ginter and Sato
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`The Petition argues at pages 40-41 that “a POSITA would have known that
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`Sato’s cellular phone could readily be programmed to function as an embodiment
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`of the VDE environment taught by Ginter.” However, the Petition does not cite
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`any evidence that shows that either Ginter envisioned utilizing its teachings part of
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`a cellular phone or that Sato envisioned utilizing an environment such as is
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`disclosed in Ginter to store music which is not disclosed as being secure. In fact,
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`although the Petition alleges that a “POSITA would have considered it desirable to
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`protect the content on Sato’s device using the VDE environment of Ginter,” (id. at
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`43) using the VDE environment of Ginter would have restricted the playback of
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`any music stored in Sato to VDE-compatible devices and potentially reduced the
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`availability of the music of Sato. Therefore, Sato would have taught against the
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`
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`- 19 -
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`
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`combination with Ginter, and one of ordinary skill in the art would not have
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`combined the references as alleged in the Petition.
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`
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`E.
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`Obviousness in light of Ginter and Poggio
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`The Petition also fails to show that one of ordinary skill in the art would
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`have been motivated to combine Ginter with Poggio (EP0809221) in the manner
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`alleged in the Petition. The Petition alleges at page 35 that a “POSITA would have
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`been motivated and found it obvious to employ the transactional method taught by
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`Poggio in implementing the secure storage system of Ginter” and cites as support
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`that “By securely storing a consumer’s credit card number, as taught in Poggio, in
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`the secure database of Ginter’s SPU and/or secondary storage location, a user
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`could protect his or her payment information from unauthorized access in a system
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`that does not require re-entering the information every time content is purchased.”
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`Id. at 35. However, the Petition does not cite to any evidence that one of ordinary
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`skill would even have recognized that this was possible without the teachings of
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`the patent-at-issue. As shown in Figure 2 of Poggio, the electronic invoices 222
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`are stored in the virtual vending machine 100, and there is no mechanism disclosed
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`in Ginter to receive such invoices 222. Moreover, there is no disclosure in Poggio
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`to have any credit card information pre-stored. Thus, the proposed combination is
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`based on impermissible hindsight.
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`- 20 -
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`
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`The Petition further alleges that a “POSITA would also have known that this
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`configuration [of securely storing a consumer’s credit card number in the secure
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`database of Ginter’s SPU and/or secondary location] advantageously encourages
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`users to engage in impulse purchase of content.” Id. at 35. This allegation is
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`without any evidentiary support to show why one of ordinary skill would have
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`known that the configur
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