Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`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 CBM2014-00111
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`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 CBM2014-00111
`Patent 8,336,772 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`A. Background
`
`INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), filed a Petition (Paper 2, “Pet.”) to
`
`institute a covered business method patent review of claims 1, 5, 8, 10, 14,
`
`19, 22, 25, 26, 30, and 32 (“the challenged claims”) of U.S. Patent
`
`No. 8,336,772 B2 (Ex. 1101, “the ’772 patent”) pursuant to § 18 of the
`
`Leahy-Smith America Invents Act (“AIA”). Patent Owner, Smartflash LLC
`
`(“Smartflash”), filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We
`
`have jurisdiction under 35 U.S.C. § 324, which provides that a covered
`
`business method patent review may not be instituted “unless . . . it is more
`
`likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`B. Asserted Grounds
`
`Apple contends that the challenged claims are unpatentable under
`
`35 U.S.C. § 103 based on the following grounds (Pet. 20, 38–76).
`
`References
`
`Ginter1
`
`Ginter and Poggio2
`
`Ginter and Sato3
`
`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claims Challenged
`
`1, 5, 8, 10, 14, 19, 22, 25, 26,
`30, and 32
`
`1, 5, 8, 10, 14, 19, 22, 25, 26,
`30, and 32
`
`1, 5, 8, 10, 14, 19, 22, 25, 26,
`30, and 32
`
`
`1 U.S. Patent No. 5,915,019 (Ex. 1115) (“Ginter”).
`2 European Patent Application, Publication No. EP0809221A2 (translation)
`(Ex. 1116) (“Poggio”).
`3 JP Patent Application Publication No. H11-164058 (including translation)
`(Ex. 1118) (“Sato”).
`
`2
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`References
`
`Basis
`
`Claims Challenged
`
`Ginter, Stefik ’2354 and
`Stefik ’9805
`
`§ 103
`
`8, 10, 19, 22, 30, and 32
`
`Apple also provides a declaration from Anthony J. Wechselberger
`
`(“the Wechselberger Declaration”).6 Ex. 1121.
`
`After considering the Petition and Preliminary Response, we
`
`determine that the ’772 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, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of the ’772 patent.
`
`C. Related Matters
`
`The parties indicate that Smartflash has sued Apple for infringement
`
`of the ’772 patent, identifying the following district court case: Smartflash
`
`LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.). Pet. 19; Papers 4, 5.
`
`The parties also indicate that the ’772 patent is the subject of other district
`
`court cases, to which Apple is not a party: Smartflash LLC v. Samsung,
`
`Case No. 6:13-cv-448 (E.D. Tex.), and Smartflash LLC v. Google, Case
`
`No. 6:14-cv-435 (E.D. Tex.). Id.
`
`
`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 On this record, we are not persuaded by Smartflash’s argument that we
`should disregard the Wechselberger Declaration. See Prelim. Resp. 18–20.
`Smartflash 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
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`Apple filed a concurrent Petition for covered business method patent
`
`review of the ’772 patent: CBM2014-00110.7 In addition, Apple filed ten
`
`other Petitions for covered business method patent reviews challenging
`
`claims of patents owned by Smartflash and disclosing similar subject matter:
`
`CBM2014-00102; CBM2014-00103; CBM2014-00104; CBM2014-00105;
`
`CBM2014-00106; CBM2014-00107; CBM2014-00108, CBM2014-00109;
`
`CBM2014-00112; and CBM2014-00113.
`
`D. The ’772 Patent
`
`The ’772 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, 1:24–28. 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 1:32–58. The ’772 patent describes providing portable data storage
`
`together with a means for conditioning access to that data upon validated
`
`payment. Id. at 1:62–2:3. According to the ’772 patent, this combination of
`
`the payment validation means with the data storage means allows data
`
`owners to make their data available over the internet without fear of data
`
`pirates. Id. at 2:10–18.
`
`
`7 Smartflash argues that the multiple petitions filed against the ’772 patent
`violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but does not
`cite any authority to support its position. Prelim. Resp. 11–12. The page
`limit for petitions requesting covered business method patent review is 80
`pages (37 C.F.R. § 42.24(a)(iii)), and the Petition in each of CBM2014-
`00110 and CBM2014-00111 meets that requirement.
`
`
`4
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:62–2:3. 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 2:4–7. The
`
`’772 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
`
`25:59–62 (“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
`
`Apple challenges claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of
`
`the ’772 patent. Claims 1, 8, 14, 19, 25, and 30 are independent. Claim 5
`
`depends from claim 1; claim 10 depends from claim 8; claim 22 depends
`
`from claim 19; claim 26 depends from claim 25; and claim 32 depends from
`
`claim 30. Claims 1 and 25 are illustrative of the claims at issue and recite
`
`the following.
`
`1.
`
`A handheld multimedia terminal, comprising:
`
`a wireless interface configured to interface with a wireless
`network for accessing a remote computer system;
`
`non-volatile memory configured to store multimedia content,
`wherein said multimedia content comprises one or more of music
`data, video data and computer game data;
`
`a program store storing processor control code;
`
`a processor coupled to said non-volatile memory, said program
`store, said wireless interface and
`
`a user interface to allow a user to select and play said
`multimedia content;
`
`5
`
`
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`CBM2014-00111
`Patent 8,336,772 B2
`
`a display for displaying one or both of said played multimedia
`content and data relating to said played multimedia content;
`
`wherein the processor control code comprises:
`
`code to request identifier data identifying one or more
`items of multimedia content stored in the non-volatile memory;
`
`code to receive said identifier data;
`
`code to present to a user on said display said identified
`one or more items of multimedia content available from the
`non-volatile memory;
`
`code to receive a user selection to select at least one of
`said one or more of said stored items of multimedia content;
`
`code responsive to said user selection of said at least one
`selected item of multimedia content to transmit payment data
`relating to payment for said at least one selected item of
`multimedia content via said wireless interface for validation by
`a payment validation system;
`
`code to receive payment validation data via said wireless
`interface defining if said payment validation system has
`validated payment for said at least one selected item of
`multimedia content; and
`
`code to control access to said at least one selected item of
`multimedia content on said terminal responsive to said payment
`validation data,
`
`wherein said user interface is operable to enable a user to select
`said at least one item of multimedia content available from said non-
`volatile memory; and
`
`wherein said user interface is operable to enable a user to access
`said at least one selected item of multimedia content responsive to
`said code to control access permitting access to said at least one
`selected item of multimedia content.
`
`Ex. 1101, 25:65–26:43.
`
`
`
`6
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`25. A handheld multimedia terminal for retrieving and accessing
`protected multimedia content, comprising:
`
`a wireless interface configured to interface with a wireless
`network for communicating with a data supplier;
`
`non-volatile memory configured to store multimedia content,
`wherein said multimedia content comprises one or more of music
`data, video data and computer game data;
`
`a program store storing processor control code;
`
`a processor coupled to said non-volatile memory, said program
`store, said wireless interface and
`
`a user interface to allow a user to select and play said
`multimedia content;
`
`a display for displaying one or both of said played multimedia
`content and data relating to said played multimedia content;
`
`wherein the processor control code comprises:
`
`code to request identifier data identifying one or more
`items of multimedia content available for retrieving via said
`wireless interface;
`
`code to receive said identifier data via said wireless
`interface, said identifier data identifying said one or more items
`of multimedia content available for retrieving via said wireless
`interface;
`
`code to request content information via said wireless
`interface, wherein said content information comprises one or
`more of description data and cost data pertaining to at least one
`of said one or more items of multimedia content identified by
`said identifier data;
`
`code to receive said content information via said wireless
`interface;
`
`code to present said content information pertaining to
`said identified one or more items of multimedia content
`available for retrieving to a user on said display;
`
`7
`
`
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`CBM2014-00111
`Patent 8,336,772 B2
`
`code to receive a first user selection selecting at least one
`of said one or more items of multimedia content available for
`retrieving;
`
`code responsive to said first user selection of said
`selected at least one item of multimedia content to transmit
`payment data relating to payment for said selected at least one
`item of multimedia content via said wireless interface for
`validation by a payment validation system;
`
`code to receive payment validation data via said wireless
`interface defining if said payment validation system has
`validated payment for said selected at least one item of
`multimedia content; and
`
`code responsive to said payment validation data to
`retrieve said selected at least one item of multimedia content via
`said wireless interface from a data supplier and to write said
`retrieved at least one item of multimedia content into said non-
`volatile memory, code to receive a second user selection
`selecting one or more of said items of retrieved multimedia
`content to access;
`
`code to read use status data and use rules from said non-
`volatile memory pertaining to said second selected one or more
`items of retrieved multimedia content; and
`
`code to evaluate said use status data and use rules to
`determine whether access is permitted to said second selected
`one or more items of retrieved multimedia content,
`
`wherein said user interface is operable to enable a user to make
`said first user selection of said selected at least one item of multimedia
`content available for retrieving,
`
`wherein said user interface is operable to enable a user to make
`said second user selection of said one or more items of retrieved
`multimedia content available for accessing, and
`
`8
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`wherein said user interface is operable to enable a user to access
`said second user selection of said one or more item of retrieved
`multimedia content responsive to said code to control access
`permitting access to said second selected one or more items of
`retrieved multimedia content.
`
`Ex. 1101, 29:4–30:47.
`
`A. Claim Construction
`
`ANALYSIS
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable interpretation in light of the specification in which
`
`they appear. See 37 C.F.R. § 42.300(b). Applying that standard, we
`
`interpret the claim terms of the ’772 patent according to their ordinary and
`
`customary meaning in the context of the patent’s written description. See In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For
`
`purposes of this decision, we must construe the following claim term of the
`
`challenged claims, as it is a critical term in independent claims 25 and 30.
`
`Neither party proposed a construction for this term.
`
`“use rule”
`
`Independent claims 25 and 30 require “code to read . . . use rules” and
`
`“code to evaluate . . . use rules.” In describing a particular embodiment, the
`
`’772 patent Specification explains that each content data item has an
`
`associated “use rule” “to specify under what conditions a user of the smart
`
`Flash card is allowed access to the content data item.” Ex. 1101, 21:57–62;
`
`see id. at 5:4–5 (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 9:26–28 (emphasis added). Accordingly, pursuant to the claim
`
`9
`
`
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`CBM2014-00111
`Patent 8,336,772 B2
`
`language and the ’772 patent Specification, we construe “use rule” as a rule
`
`specifying a condition under which access to content is permitted.
`
`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
`
`Apple asserts that claim 8 “clearly concerns a computer system . . . for
`
`performing data processing and other operations used in the practice,
`
`administration, or management of a financial activity and service,” because
`
`it “describes transmitting payment data to a payment validation system,
`
`receiving payment validation, and controlling access to data based on
`
`payment.” Pet. 15. Based on this record, we agree with Apple that the
`
`subject matter recited by claim 8 is directed to activities that are financial in
`
`nature, namely data access conditioned on payment validation. Claim 8
`
`recites “code . . . to transmit payment data relating to payment for said at
`
`least one selected item of multimedia content . . . for validation by a
`
`payment validation system,” “code to receive payment validation data . . .
`
`10
`
`
`
`CBM2014-00111
`Patent 8,336,772 B2
`
`defining if said payment validation system has validated payment for said at
`
`least one selected item of multimedia content,” and “code to control access
`
`to said at least one selected item of multimedia content on said terminal
`
`responsive to said payment validation data.” We are persuaded that payment
`
`validation is a financial activity, and conditioning data access based on
`
`payment validation amounts to a financial service. This is consistent with
`
`the Specification of the ’772 patent, which confirms claim 8’s connection to
`
`financial activities by stating that the invention “relates to a portable data
`
`carrier for storing and paying for data.” Ex. 1101, 1:23–25. The
`
`Specification also states repeatedly that the disclosed invention involves
`
`managing access to data based on payment validation. See, e.g., Ex. 1101,
`
`1:62–2:3; 6:64–7:1; 20:59–63.
`
`Smartflash disagrees that claim 8 satisfies the financial-in-nature
`
`requirement of AIA § 18(d)(1), arguing that section should be interpreted
`
`narrowly to cover only technology used specifically in the financial or
`
`banking industry. Prelim. Resp. 3–9. Smartflash cites to various portions of
`
`the legislative history as support for its proposed interpretation. Id.
`
`We do not agree that the phrase “financial product or service” in
`
`§ 18(d)(1) 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 Smartflash’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
`
`11
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`CBM2014-00111
`Patent 8,336,772 B2
`
`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 8 is not directed to an
`
`apparatus or method that is financial in nature, because claim 8 “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 Smartflash point to any other authority that makes
`
`such a requirement. See Prelim. Resp. 8. We determine that because
`
`payment is required by claim 8, as Smartflash acknowledges (id.), the
`
`financial in nature requirement of § 18(d)(1) is satisfied.
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’772 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 8 does not fall within § 18(d)(1)’s exclusion
`
`for “technological inventions.” Pet. 15–19. In particular, Apple argues that
`
`claim 8 “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 15 (quoting
`
`37 C.F.R. § 42.301(b)) (emphases in original). Smartflash disagrees and
`
`argues that claim 8, as a whole, recites at least one technological feature.
`
`Prelim. Resp. 9.
`
`12
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`CBM2014-00111
`Patent 8,336,772 B2
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`We are persuaded that claim 8 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. The
`
`claimed “data access terminal” is a generic hardware device known in the
`
`prior art. The Specification discloses, for instance, that a data access
`
`terminal “may be a conventional computer or, alternatively, it may be a
`
`mobile phone.” See Ex. 1101, 4:8–9. Claim 8 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 9:1–3; see id. at 13:55–67.
`
`In addition, the ’772 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 ’772 patent
`
`states that “there is an urgent need to find a way to address the problem of
`
`data piracy” (id. at 1:56–58), 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 12:37–40). Thus, we determine that claim 8 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).
`
`Smartflash also argues that claim 8 falls within § 18(d)(1)’s exclusion
`
`for “technological inventions,” because it is directed towards solving the
`
`technological problem of “controlling access to content data items available
`
`from a data carrier, e.g., as part of a convenient, legitimate acquisition of
`
`13
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`CBM2014-00111
`Patent 8,336,772 B2
`
`data from a data supplier” with the technological solution of “a data access
`
`terminal from which payment data is read and which controls access to a
`
`selected content data item responsive to the payment validation data.”
`
`Prelim. Resp. 9–10. We are not persuaded by this argument because, as
`
`Apple argues, the problem being solved by claim 8 is a business problem—
`
`data piracy. Pet. 15. 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,
`
`2:15–19. Therefore, based on the particular facts of this proceeding, we
`
`conclude that claim 8 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 ’772 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 Challenges
`
`Apple asserts that claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 are
`
`rendered obvious by Ginter alone or in various combinations with other
`
`references, including Poggio, Sato, Stefik ’235, and Stefik ’980.8 Pet. 20.
`
`Apple provides one claim chart for each of claims 1, 5, 8, 10, 14, 19, 22, 25,
`
`26, 30, and 32.
`
`
`8 Apple refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
`argues that they should be considered as a single reference because,
`according to Apple, Stefik ’235 incorporates Stefik ’980 by reference.
`Pet. 8, n.4. Smartflash disagrees. Prelim. Resp. 15–16. We do not reach the
`issue because neither Stefik ’235 nor Stefik ’980 affects our analysis.
`
`14
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`CBM2014-00111
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`
`1. Claims 1, 5, 8, 10, 14, 19, and 22
`
`Independent claim 1 recites “code to request identifier data identifying
`
`one or more items of multimedia content stored in the non-volatile
`
`memory.” In addressing this limitation, Apple asserts that Ginter discloses a
`
`processor that implements code “requesting identifier data (e.g., library of
`
`VDE content objects) identifying one or more items of multimedia content
`
`(e.g., VDE content object) stored in the non-volatile memory (e.g. secondary
`
`storage).” Pet. 41. Apple further asserts that “Ginter discloses displaying
`
`identifier data (e.g., library of VDE content objects) identifying one or more
`
`items of multimedia content (e.g., VDE content object) stored in the non-
`
`volatile memory (e.g., secondary storage).” Id. at 41, n.14. Apple argues
`
`that:
`
`A [person of ordinary skill in the art] would have
`understood that displaying the identifier data (e.g., library
`of VDE content objects), or for that matter displaying
`any data, necessarily and thus inherently involves first
`requesting the identifier data (e.g., library of VDE
`content objects) identifying one or more items of
`multimedia content (e.g., VDE content object) stored in
`the non-volatile memory (e.g., secondary storage).
`
`Id. at 41–42, n.14.
`
`These arguments do not explain sufficiently Apple’s contention that
`
`Ginter discloses the claimed “code to request identifier data.” As allegedly
`
`disclosing this limitation, Apple cites Figure 72D and the passage at column
`
`238, lines 50–64 of Ginter. Id. at 41–42. Figure 72D of Ginter appears to
`
`show identifier information presented to a user. The passage at column 238,
`
`lines 50–64 discusses a user interface that allows flexibly browsing libraries
`
`of content available for licensing or purchase. Neither of these portions of
`
`Ginter explicitly discloses code to request identifier data. And Apple does
`
`15
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`CBM2014-00111
`Patent 8,336,772 B2
`
`not explain sufficiently any basis for finding that Ginter otherwise discloses
`
`the claim limitation. Apple asserts that Ginter inherently discloses the claim
`
`limitation, but fails to explain why a person of ordinary skill in the art
`
`allegedly would understand that Ginter necessarily discloses code to request
`
`identifier data. “Inherency . . . may not be established by probabilities or
`
`possibilities.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
`
`Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). For the foregoing
`
`reasons, Apple does not persuade us that Ginter discloses the claimed “code
`
`to request identifier data,” either inherently or otherwise. And Apple does
`
`not argue that the claim limitation is taught, suggested, or would have been
`
`otherwise rendered obvious by Ginter alone or in combination with the other
`
`cited references.
`
`Each of independent claims 8, 14, and 19 includes a limitation that
`
`also recites “code to request identifier data.” Claim 8 recites “code to
`
`request identifier data identifying one or more content data items stored on
`
`the data carrier.” Claim 14 recites “code to request identifier data
`
`identifying one or more items of multimedia content available for retrieving
`
`via said wireless interface.” Claim 19 recites “code to request identifier data
`
`identifying one or more content data items available for retrieving.” In
`
`addressing each of these limitations of claims 8, 14, and 19, Apple presents
`
`the same or substantially the same arguments as presented in its assertion
`
`that Ginter inherently discloses the above-discussed limitation of claim 1.
`
`See Pet. 51–52, 54–55, 63. For the reasons discussed in connection with
`
`claim 1, Apple does not persuade us that the foregoing limitations of claims
`
`8, 14, and 19 are disclosed, taught, suggested, or would have been otherwise
`
`rendered obvious by Ginter.
`
`16
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`CBM2014-00111
`Patent 8,336,772 B2
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`With respect to claim 14, Apple further addresses the claim limitation
`
`“code to request identifier data identifying one or more items of multimedia
`
`content available for retrieving via said wireless interface” by arguing that
`
`Sato “discloses requesting identifier data identifying one or more items of
`
`multimedia content (e.g., music software) available for retrieving via the
`
`wireless interface (e.g., radio transceiver).” Pet. 54–55, 67. Apple cites
`
`specifically paragraphs [0003], [0006], and [0010]–[0012] of Sato as
`
`allegedly containing such disclosure. Of the cited portions of Sato,
`
`paragraphs [0006] and [0012] discuss the “music software” that Apple
`
`equates to the “multimedia content” recited in the claims. Paragraph [0006]
`
`of Sato discloses that:
`
`The portable music selection and viewing device
`50 has a similar structure to a mobile phone, for example,
`and is provided with a display 52 and necessary push
`buttons or the like on a main body 51. A receiver 54 is
`connected to the main body 51. Users having the portable
`music selection and viewing device 50 operate the push
`buttons or the like on the main body 51 to call the
`distribution center 10 via the public communications
`network 30 and receive the desired music software via
`the public communications network 30. The received
`software is amplified by an amp mounted in the main
`body 51 of the portable music selection and viewing
`device 50 and is output to a receiver 54.
`Ex. 1118 ¶ [0006].9 Paragraph [0012] of Sato discloses that:
`
`Once the distribution center is accessed, the user
`commands a song selection, and the distribution center
`sends back the selected music software. The music
`control unit 200 which has received this music software
`amplifies the signal using a music amplifier and outputs
`
`
`9 Citations to Sato refer to the English translation in the exhibit.
`
`17
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`CBM2014-00111
`Patent 8,336,772 B2
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`audio to a music receiver 230 inserted into a receiver jack
`220. This audio output can also be output to a receiver
`172. Information about lyrics or the like is displayed on
`the display unit 162.
`
`Id. at ¶ [0012]. These paragraphs state that “[u]sers . . . call the distribution
`
`center 10 . . . and receive the desired music software,” and that “the user
`
`commands a song selection, and the distribution center sends back the
`
`selected music software.” But neither of these statements nor any other
`
`portion of the cited passages discloses code to request identifier data for the
`
`music software. And Apple does not explain any basis for finding that the
`
`cited passages otherwise disclose code to request identifier data.
`
`Accordingly, Apple does not persuade us that Sato discloses the claimed
`
`“code to request identifier data identifying one or more items of multimedia
`
`content available for retrieving via said wireless interface.”
`
`For the foregoing reasons, Apple has failed to establish that, more
`
`likely than not, it would prevail in demonstrating that claims 1, 8, 14, and 19
`
`are unpatentable as obvious over Ginter alone or in combination with any
`
`other asserted reference. For the same reasons, we determine that Apple has
`
`failed to establish that it, more likely than not, would prevail in
`
`demonstrating that claims 5, 10, and 22, each of which depends from one of
`
`claims 1, 8, and 19, are rendered obvious over Ginter alone or in
`
`combination with any other asserted reference.
`
`2. Claims 25, 26, 30, and 32
`
`Like claim 14, independent claim 25 recites “code to request identifier
`
`data identifying one or more items of multimedia content available for
`
`retrieving via said wireless interface.” Like claim 19, independent claim 30
`
`recites “code to request identifier data identifying one or more content data
`
`18
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`CBM2014-00111
`Patent 8,336,772 B2
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`items available for retrieving.” To address these limitations, Apple refers to
`
`its arguments regarding the same limitations in claims 14 and 19,
`
`respectively. See Pet. 67, 73–74. For the reasons discussed above, these
`
`arguments do not persuade us that the claim limitations are disclosed, taught,
`
`suggested, or would have been otherwise rendered obvious by the cited
`
`references.
`
`Independent claims 25 and 30 also recite “use rules.” Claim 25
`
`recites “code to read use status data and use rules from said non-volatile
`
`memory pertaining to said second selected one or more items of retrieved
`
`multimedia content” and “code to evaluate said use status data and use rules
`
`to determine whether access is permitted to said second selected one or more
`
`items of retrieved m
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