`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`APPLE, INC.
`
`Petitioner
`
`v.
`
`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-001121
`
`Patent 7,942,317
`
`____________
`
`PATENT OWNER’S RESPONSE TO PETITION
`
`
`1 Case CBM2014-00113 has been consolidated with the instant proceeding.
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`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
` STATEMENT OF MATERIAL FACTS ........................................................ 3
`
`III. THE 00112 AND 00113 WECHSELBERGER DECLARATIONS
`SHOULD BE GIVEN LITTLE OR NO WEIGHT ......................................... 4
`
`V.
`
` CLAIM CONSTRUCTION ............................................................................ 8
`
`VI. OBVIOUSNESS GROUNDS AGAINST THE CHALLENGED CLAIMS
`OF THE ‘317 PATENT ................................................................................. 10
`
`A. Obviousness in Light of Stefik ‘235 and Stefik ‘980 .......................... 10
`
`1.
`
`2.
`
`Claims 1, 6, 7, and 16 ............................................................... 10
`
`Claims 8, 12 and 18 .................................................................. 14
`
`B.
`
`Obviousness in Light of Ginter ........................................................... 15
`
`1.
`
`2.
`
`Claims 1, 6, 7, 8, 12, 13, 16, and 18 ......................................... 15
`
`Payment Data ............................................................................ 16
`
`VII. CONCLUSION .............................................................................................. 20
`
`
`
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`- i -
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`I.
`
`
`
`INTRODUCTION
`
`The present proceeding is a consolidated proceeding for Cases CBM2014-
`
`00112 and CBM2014-00113. The Petition in CBM2014-00112 (hereinafter “the
`
`00112 Petition”) raised three Grounds for Unpatentability of claims 1, 6-8, 12-14,
`
`16 and 18. Decision at 3. The first ground was unpatentability under 35 U.S.C.
`
`§ 102 over U.S. Patent No. 5,530,235 (“Stefik ‘235”) and U.S. Patent No.
`
`5,629,980 (“Stefik ‘980”). The second ground was unpatentability under 35 U.S.C.
`
`§ 103 over Stefik ‘235 and Stefik ‘980. The third ground was unpatentability
`
`under 35 U.S.C. § 103 over Stefik ‘235, Stefik ‘980 and EP0809221A2 (“Poggio”).
`
`The PTAB denied the first ground, granted the second ground (except for claim
`
`14) and denied on the third ground. Decision at 22.
`
`The Petition in CBM2014-00113 (hereinafter “the 00113 Petition”) similarly
`
`raised three Grounds for Unpatentability. Decision at 3. The first ground was
`
`unpatentability of claims 1, 6-8, 12-14, 16 and 18 under 35 U.S.C. § 103 over U.S.
`
`Patent No. 5,915,019 (“Ginter”). The second ground was unpatentability of claims
`
`1, 6-8, 12-14, 16 and 18 under 35 U.S.C. § 103 over Ginter and Poggio. The third
`
`ground was unpatentability of claims 12-14 under 35 U.S.C. § 103 over Ginter,
`
`Stefik ‘235, and Stefik ‘980. The PTAB granted the first ground (except for claim
`
`14) and denied on the second and third grounds. Decision at 22.
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`- 1 -
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`In support of this Patent Owner’s Response, reference will be made to
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`concurrently filed Exhibit 2031, Declaration of Jonathan Katz, Ph.D. (hereinafter
`
`“the Katz Declaration”), Exhibit 1021. Reference will also be made herein to (1)
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`DECLARATION OF ANTHONY J. WECHSELBERGER IN SUPPORT OF
`
`APPLE INC.’S PETITION FOR COVERED BUSINESS METHOD PATENT
`
`REVIEW OF UNITED STATES PATENT NO. 7,942,317 PURSUANT TO 35
`
`U.S.C. § 321, 37 C.F.R. § 42.304, filed in CBM2014-00112 (hereinafter “the
`
`00112 Wechselberger Declaration”), and (2) Exhibit 1121, DECLARATION OF
`
`ANTHONY J. WECHSELBERGER IN SUPPORT OF APPLE INC.’S PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF UNITED
`
`STATES PATENT NO. 7,942,317 PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. §
`
`42.304, filed in CBM2014-00113 (hereinafter “the 00113 Wechselberger
`
`Declaration”).
`
`Reference will also be made herein to Exhibit 2025 which is a concatenation
`
`of Mr. Wechselberger’s Deposition transcript beginning on December 10, 2014
`
`and continuing to December 11, 2014. Pages 1-236 of Exhibit 2025 are for
`
`December 10, 2014, the first day of his two-day deposition for the combined
`
`proceedings of CBM2014-00102, -00106, -00108 and -00112. Pages 239-403 of
`
`Exhibit 2025 are for December 11, 2014. On December 11, 2014, a conference
`
`call was held with the PTAB to resolve an issue relating to testimony sought by
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`- 2 -
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`Patent Owner’s counsel, and pages 339-356 are a transcription of the conference
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`call. Because of the possibility of needing to redact a portion of the transcript in
`
`light of the conference call, transcript pages 358-378 are found on pages 364-384
`
`of Exhibit 2025, starting with their own caption pages. However, ultimately,
`
`Petitioner did not request that any part of the transcript be redacted. See Paper 19,
`
`page 2, footnote 2. The remaining portion of Mr. Wechselberger’s transcript is
`
`pages 379-396 found on pages 386-403 of Exhibit 2025. For consistency, all
`
`references to Exhibit 2025 are made with respect to the page numbers at the
`
`bottom of the exhibit which are Preceded by the word “Page,” not the transcript
`
`page numbers in the upper-right corner of the page. References herein may be
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`made in the form of (1) “nnn:xx-yy” which is intended to mean page “nnn”, lines
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`“xx” to “yy” or (2) “mmm:xx - nnn:yy” which is intended to mean page “mmm”,
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`line “xx” to page “nnn”, line “yy”.
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The 00112 Wechselberger Declaration does not state that Mr.
`
`Wechselberger’s opinions presented therein were based on a “preponderance of the
`
`evidence” standard.
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`- 3 -
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`2.
`
`The 00113 Wechselberger Declaration does not state that Mr.
`
`Wechselberger’s opinions presented therein were based on a “preponderance of the
`
`evidence” standard.
`
`3.
`
`Exhibit 2007 is a document from Apple Inc. dated September 19,
`
`2012 entitled In-App Purchase Programming Guide (to which its Exhibit label has
`
`been added).
`
`4.
`
`Exhibit 2008 is a document from Apple Inc. dated September 18,
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`2013 entitled In-App Purchase Programming Guide (to which its Exhibit label has
`
`been added).
`
`5.
`
`Exhibit 2013 is a document from Apple Inc. dated September 18,
`
`2013 entitled Receipt Validation Programming Guide (to which its Exhibit label
`
`has been added).
`
`
`
`III. THE 00112 AND 00113 WECHSELBERGER DECLARATIONS
`
`SHOULD BE GIVEN LITTLE OR NO WEIGHT
`
`The 00112 and 00113 Wechselberger Declarations do not disclose the
`
`underlying facts on which the opinions are based and are, therefore, entitled to
`
`little or no weight. 37 CFR 42.65 (“Expert testimony that does not disclose the
`
`underlying facts or data on which the opinion is based is entitled to little or no
`
`weight.”).
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`- 4 -
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`More specifically, the 00112 and 00113 Wechselberger Declarations do not
`
`state the evidentiary weight standard (e.g., substantial evidence versus
`
`preponderance of the evidence) that Mr. Wechselberger used in arriving at his
`
`conclusions. Page 4 of the Decision states “On this record, we are not persuaded
`
`by Patent Owner’s argument that we should disregard the Wechselberger
`
`Declaration. ... 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.” However,
`
`establishing that Mr. Wechselberger failed to state the evidentiary standard that he
`
`used, Patent Owner has shown that Mr. Wechselberger “used incorrect criteria”
`
`(i.e., the incorrect evidentiary standard) because he used none.
`
`When questioned about what evidentiary standards are and which he used,
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`Mr. Wechselberger could neither articulate what the difference was between
`
`“substantial evidence” and “prepondereance of the evidence”, nor could he
`
`articulate which standard he was supposed to use when alleging invalidity of
`
`claims in a patent. Exhibit 2025, 388:13-389:6. More specifically, Mr.
`
`Wechselberger testified:
`
`388: 13
`
`Q. If I could ask you, do you have an understanding of
`
`what substantial evidence is as it relates to relative burdens of proof?
`
`MS. ROBINSON: Objection to form.
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`- 5 -
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`A. I don't think that I have used that term in any of my reports
`
`or declarations in conjunction with this case.
`
`Q. Do you have an understanding of what the standard
`
`"preponderance of the evidence" is?
`
`MS. ROBINSON: Objection to form.
`
`A. I don't think I've used that in any of my reports or
`
`declarations.
`
`BY MR. CASEY:
`
`389:2
`
`Q. Do you have an understanding as to what the standard
`
`called "clear and convincing evidence" is?
`
`MS. ROBINSON: Objection to form.
`
`A. Well, I understand these are all legal terms, and to the extent
`
`that I need to have a firm grip on their legal meaning, that is -- always
`
`ends up in one of my expert reports or a declaration. And, again, I
`
`don't know if that term has been so written out in any of my written
`
`materials.
`
`Q. Do you have an understanding that one has to show
`
`invalidity of a patent based on the legal standard of substantial
`
`evidence?
`
`MS. ROBINSON: Objection to form.
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`- 6 -
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`A. Well, since I have just testified that I don't recall if the term
`
`"substantial evidence" appears in any of my reports, then I wouldn't
`
`have an understanding here today without having my report where
`
`that is explained.
`
`Q. So then it's also fair to say you don't have an understanding
`
`as to whether or not one has to show invalidity of a patent based on
`
`preponderance of the evidence?
`
`MS. ROBINSON: Objection to form.
`
`390:2
`
`A. Again, without the guidance of my report where that's
`
`been written out, I can look at it and read it, I'm not going to pretend
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`that from a legal standpoint I have a firm grasp on all the four corners
`
`of the implications of those statements.
`
`
`
`No standard of evidence is disclosed in the 00112 and 00113 Wechselberger
`
`Declarations. Thus, based on the fact that Mr. Wechselberger testified that he did
`
`not know the difference between the standards or what standard to use, the PTAB
`
`can only afford little or no weight to the testimony therein. To do otherwise would
`
`be to accept his opinions without knowing “the underlying facts ... on which the
`
`opinion is based” (i.e., how much evidence he thinks shows any of his opinions
`
`discussed therein).
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`- 7 -
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`For example, when Mr. Wechselberger opines that he believes a statement to
`
`be true (e.g., there is a motivation to modify a reference), is that belief based on
`
`less than a preponderance of the evidence, or more? Without his having disclosed
`
`what level of evidence he used, and given that he did not even know what level he
`
`was supposed to be using, the PTAB cannot rely on his statements. Thus, the
`
`PTAB should find that his declaration is entitled to little or no weight.
`
`
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`V.
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`CLAIM CONSTRUCTION
`
`Petitioner has alleged that “payment data” should be construed to mean
`
`“data representing payment made for requested content data” and is distinct from
`
`“access control data.” See, for example, 00113 Petition at 22. However, Patent
`
`Owner submits that “payment data” should be interpreted to mean “data that can be
`
`used to make payment for content” when using a broadest reasonable
`
`interpretation.2 Exhibit 2031, ¶ 12.
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`2 Patent Owner’s use of the “broadest reasonable interpretation” (BRI)
`
`standard herein is not an admission that the BRI standard is the proper standard for
`
`CBM proceedings such as this one. However, for the purposes of this proceeding
`
`based on the issues in the instituted proceeding, Patent Owner has presented its
`
`arguments utilizing the BRI standard for “payment data.: Patent Owner reserves
`
`its right to argue for a different standard at a later date or in a different proceeding.
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`- 8 -
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`The ‘221 patent, col. 20, lines 59-62, states “payment data for making a
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`payment … is received from the smart Flash card by the content access terminal
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`and forwarded to an e-payment system.” That is, the “payment data” is used for
`
`making a payment. Furthermore, as can be seen in Figure 12c of the ‘317 patent,
`
`step S54 reads “PAYMENT FOR SCHEME OWNER RECEIVED FROM CARD
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`BY CONTENT ACCESS TERMINAL AND FORWARDED TO e-PAYMENT
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`SYSTEM.” Step S55 then reads “PAYMENT RECORD DATA RECEIVED
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`FROM e-PAYMENT SYSTEM BY CONTENT ACCESS TERMINAL AND
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`FORWARDED TO CARD.” Both of those steps precede S56 which recites
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`“PAYMENT RECORD DATA, PURCHASE REQUEST AND CARD
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`REGISTRATION DATA TRANSMITTED TO SCHEME OWNER.” Thus,
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`“payment data” is not “data representing payment made for requested content
`
`data” as payment has not yet been made when the payment data of S54 is sent.
`
`Petitioner’s requested claim construction for “payment data,” therefore, should not
`
`be adopted, and “payment data” should be interpreted to mean “data that can be
`
`used to make payment for content.” Exhibit 2031, ¶ 12.
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`
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`- 9 -
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`
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`VI. OBVIOUSNESS GROUNDS AGAINST THE CHALLENGED CLAIMS
`
`OF THE ‘317 PATENT
`
`
`
`A. Obviousness in Light of Stefik ‘235 and Stefik ‘980
`
`The Decision held that “Petitioner has failed to establish that it is more likely
`
`than not that it would prevail in demonstrating that independent claims 1, 8, 12, 16
`
`and 18 are unpatentable as anticipated by the Stefik references. For the same
`
`reasons, we determine that Petitioner has failed to establish that it is more likely
`
`than not that it would prevail in demonstrating that dependent claims 6, 7, 13, and
`
`14 are unpatentable as anticipated by the Stefik references.” Decision at 14.
`
`However, the Decision further held “We find Petitioner’s contentions that
`
`claims 1, 6–8, 12, 13, 16, and 18 would have been obvious over the combination of
`
`Stefik ’235 and Stefik ’980 persuasive, but are not persuaded by Petitioner’s
`
`contentions regarding claim 14.” Decision at 14. For the reasons set forth below,
`
`the 00112 Petition has not shown that it is more likely than not that the
`
`combination of Stefik ‘235 and Stefik ‘980 would have rendered obvious claims 1,
`
`6, 7, 8, 12, 13, 16, and 18 to one of ordinary skill in the art.
`
`
`
`1.
`
`Claims 1, 6, 7, and 16
`
`Among other elements, independent claim 1 recites “a data access data store
`
`for storing records of data items available from the system, each record comprising
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`- 10 -
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`
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`a data item description and a pointer to a data provider for the data item.” Claims
`
`6 and 7 depend from claim 1.
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`Among other elements, independent claim 16 recites “a data access data
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`store for storing records of data items available from the system, each record
`
`comprising a data item description and a resource locator identifying a data
`
`provider for the data item.”
`
`Page 69 of the 00112 Petition states, with respect to that element of claim
`
`16, “See claim 1 of the ’317 patent, ‘data access data store’ element.” Thus, those
`
`elements are discussed together below.
`
`With respect to claim 1, page 33 of the 00112 Petition alleges that Stefik
`
`‘235 and Stefik ‘980 teach the limitation referenced above, and states:
`
`The records (e.g., the description tree files) include data item
`
`descriptions (e.g., identifiers; usage rights; access conditions; fee
`
`information) and a pointer (e.g., d-blocks of data that indicate a start
`
`address for a string of bits) for each data item (e.g., pointers to data in
`
`content storage 1204). A data provider to which the pointers are
`
`directed (e.g., storage subsystem 203; content storage 1204) that
`
`stores the content may be separate memory and may be on a separate
`
`physical device than the data access data store (e.g., descriptor storage
`
`1203).
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`- 11 -
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`
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`The 00112 Petition has not shown that it is more likely than not that one of
`
`ordinary skill in the art would have considered a start address for a string of bits to
`
`be the claimed “pointer to a data provider for the data item” or “a resource locator
`
`identifying a data provider for the data item.” Exhibit 2031, ¶ 19. Pages 33 and 34
`
`of the 00112 Petition cite a number of portions (Figs. 2 and 5a, Abstract, 2:35-36,
`
`3:32-38, 6:2-17, and 7:22-32) of Stefik ‘235 that disclose that a DocuCard can
`
`utilize a hierarchical file structure, but none of those citations discloses a pointer to
`
`a data provider or a resource locator identifying a data provider for the data item.
`
`Exhibit 2031, ¶ 19. Page 34 of the 00112 Petition cites 7:63-8:10 as describing d-
`
`block structures, but the pointers described therein are pointers to other d-blocks in
`
`the description file, not pointers to data providers (or a resource locator identifying
`
`a data provider for the data item). Further, while that cited section also describes
`
`“a starting address 502 providing the start address of the first byte of the work,”
`
`that is neither a pointer to a “data provider,” nor is it a resource locator identifying
`
`a data provider for the data item. Exhibit 2031, ¶ 19. The only remaining citation
`
`is to 7:35-42 which states “The file information for a document is comprised of a
`
`‘contents file’ and a ‘description file.’… The description file contains the usage
`
`rights for the document and a pointer to the document in the content part.”
`
`However, this is a pointer to the content part itself, not the claimed “data provider
`
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`- 12 -
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`
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`for the data item.” Thus, it is also not “a resource locator identifying a data
`
`provider for the data item.” Exhibit 2031, ¶ 19.
`
`Page 34 of the 00112 Petition cites Stefik ‘980 but is likewise deficient. As
`
`described in 9:54-10:1, the pointers are to other d-blocks in the description file, not
`
`pointers to data providers nor a resource locator identifying a data provider for the
`
`data item. Exhibit 2031, ¶ 20. Further, while that cited section also describes “a
`
`starting address 702 providing the start address of the first byte of the work,” that
`
`is neither a pointer to a “data provider,” nor is it “a resource locator identifying a
`
`data provider for the data item.” The additional citations to 10:26-32 and Table 1
`
`are for rights, rather than pointers. The only remaining citation is to 14:28-39,
`
`which describes the storage system and that the storage system includes
`
`description tree storage 1203 and content storage 1204, and that those storages
`
`1203 and 1204 may be on separate physical devices. However, that discussion
`
`does not disclose either the claimed “pointer to a data provider for the data item” or
`
`“resource locator identifying a data provider for the data item.” Exhibit 2031,
`
`¶ 20.
`
`Thus, the 00012 Petition has not shown that it is more likely than not that
`
`Stefik ‘235 and Stefik ‘980, either individually or in combination, renders obvious
`
`claims 1, 6, 7, and 16. Exhibit 2031, ¶ 21.
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`- 13 -
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`2.
`
`Claims 8, 12 and 18
`
`Claim 8 recites “receiving payment data from the requester relating to
`
`payment for the requested data.” Claim 12 recites “A data access system
`
`comprising: a data supply computer system for forwarding data from a data
`
`provider to a data access terminal; ... wherein data is forwarded from the data
`
`provider to the data carrier on validation of payment data provided from the data
`
`carrier to the electronic payment system.” Pages 55-56 of the 00113 Petition cite
`
`Stefik ‘980 as disclosing “In another embodiment, the credit server acts as a ‘debit
`
`card’ where transactions occur in ‘real-time’ against a user account.” However,
`
`the cited portion is not discussing “real-time” transactions between the repository
`
`and the credit server; it is discussing transactions between the credit server and the
`
`clearinghouse. More specifically, Stefik teaches:
`
`The billing clearinghouse manages the financial transactions as they
`
`occur. As a result, bills may be generated and accounts reconciled.
`
`Preferably, the credit server would store the fee transactions and
`
`periodically communicate via a network with billing clearinghouse
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`for reconciliation. In such an embodiment, communications with the
`
`billing clearinghouse would be encrypted for integrity and security
`
`reasons. In another embodiment, the credit server acts as a "debit
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`card" where transactions occur in "real-time" against a user account.
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`- 14 -
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`Thus, the “debit card” embodiment is for transactions between the credit
`
`server and the clearinghouse, and Stefik ‘980 is still discussing post-usage
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`processing.
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`Similarly, claim 18 recites “receiving payment data from the requester
`
`relating to payment for the requested data“ and “outputting payment data to a
`
`payment system for distributing the payment for the requested data.” As the
`
`Petition has adopted an incorrect interpretation of “payment data”, the 00112
`
`Petition has not shown that this limitation is rendered obvious by Stefik ‘235 and
`
`Stefik ‘980, either alone or in combination.
`
`
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`B. Obviousness in Light of Ginter
`
`1.
`
`Claims 1, 6, 7, 8, 12, 13, 16, and 18
`
`The Decision held that “Petitioner has established that it is more likely than
`
`not that claims 1, 6–8, 12, 13, 16 and 18 are unpatentable as obvious over Ginter.”
`
`Decision at 19. For the reasons set forth below, the 00113 Petition has not shown
`
`that it is more likely than not that Ginter renders obvious claims 1, 6, 7, 8, 12, 13,
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`16, and 18.
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`- 15 -
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`2.
`
`Payment Data
`
`Each of claims 1, 6, 7, 8, 12, 13, 16, and 18 recites “payment data,” either
`
`explicitly or implicitly based on the dependency of the claim. As discussed supra,
`
`the 00113 Petition is premised on an incorrect assertion that “payment data” should
`
`be construed to mean “data representing payment made for requested content data”
`
`and is distinct from “access control data.” However, as such an interpretation is
`
`inconsistent with the specification, “payment data” should be interpreted to mean
`
`“data that can be used to make payment for content.”
`
`Among other elements, independent claim 1 recites “code to receive from
`
`the communications interface payment data comprising data relating to payment
`
`for the requested data item.” Claims 6 and 7 depend from claim 1.
`
`Among other elements, independent claim 8 recites “A method of providing
`
`data to a data requester comprising: ... receiving payment data from the requester
`
`relating to payment for the requested data; [and] reading the requested data from a
`
`content provider responsive to the received payment data.”
`
`Among other elements, independent claim 12 recites “A data access system
`
`comprising: a data supply computer system for forwarding data from a data
`
`provider to a data access terminal; ... wherein data is forwarded from the data
`
`provider to the data carrier on validation of payment data provided from the data
`
`carrier to the electronic payment system.”. Claim 13 depends from claim 12.
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`- 16 -
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`Among other elements, independent claim 16 also recites “code to receive
`
`from the communications interface payment data comprising data relating to
`
`payment for the requested data item.”
`
`Among other elements, claim 18 recites “A method of providing data to a
`
`data requester comprising: ... receiving payment data from the requester relating to
`
`payment for the requested data; ... and outputting payment data to a payment
`
`system for distributing the payment for the requested data.”
`
`Pages 44-45 of the 00113 Petition allege, with respect to claim 1, that Ginter
`
`teaches this limitation and state:
`
`Ginter discloses a processor (e.g., CPU) implementing code
`
`(e.g., software instructions utilized by the CPU) to perform functions
`
`including receiving from the communications interface (e.g.,
`
`communications controller) payment data (e.g., audit information) that
`
`includes data relating to payment for the requested data item (e.g.,
`
`VDE content object).
`
`With respect to claim 8, page 54 of the 00113 Petition cites to similar
`
`arguments from claim 1 for “code to receive from the communications interface
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`payment data comprising data relating to payment for the requested data item” as it
`
`does for “receiving payment data from the requester relating to payment for the
`
`requested data.” With respect to claim 16, page 73 of the 00113 Petition
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`- 17 -
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`incorporates the arguments from claim 1 for the same limitation, so all arguments
`
`discussed below with respect to claim 1 are equally applicable to claim 16.
`
`Moreover, with respect to the arguments about “payment data” made in the 00113
`
`Petition, the arguments below show that Ginter does not teach or suggest “payment
`
`data.” Accordingly, claims 1, 6, 7, 8, 12, 13, 16, and 18 are not rendered obvious
`
`by Ginter.
`
`One of ordinary skill in the art would not have considered the “audit
`
`information” described in the 00113 Petition to be “payment data.” Exhibit 2031,
`
`¶ 28. Ginter itself acknowledges that auditing and payment are different. As the
`
`00113 Petition (page 44-45) even cites, Ginter 63:34-41 states “SPU 500 may also
`
`perform secure data management processes including governing usage of, auditing
`
`of, and where appropriate, payment for VDE objects 300.” Moreover, 175:47-
`
`176:1 cited by the 00113 Petition likewise shows that audit information is post-
`
`usage information, not “payment data” when it states “a VDE repository may
`
`perform audit information clearinghouse services ... for usage information reported
`
`by VDE users.” Thus, Ginter does not disclose “code to receive from the
`
`communications interface payment data comprising data relating to payment for
`
`the requested data item” or “receiving payment data from the requester relating to
`
`payment for the requested data.” Exhibit 2031, ¶ 28.
`
`
`
`- 18 -
`
`
`
`As an alternative argument, footnote 16 (page 45) of the 00113 Petition
`
`alleges that to “the extent it is argued that the audit information received by
`
`Ginter’s object repository does not necessarily relate to payment for a currently-
`
`requested VDE content object, Ginter at a minimum renders this obvious. Ginter
`
`discloses paying for VDE content objects with ‘real-time debits from bank
`
`accounts.’” However, in the context of Ginter, the audit information is for tracking
`
`post-usage information, not current purchase information. Exhibit 2031, ¶ 29. As
`
`discussed in the paragraph crossing cols. 161 and 162, “the clearinghouse may
`
`analyze the contained audit information to determine whether it indicates misuse of
`
`the applicable VDE object 300,” which indicates the tracked usage has already
`
`occurred. Thus, the 00103 Petition has not shown that such post-usage information
`
`to determine whether an applicable VDE object 300 is being misused corresponds
`
`to “payment data” as claimed. Exhibit 2031, ¶ 29. Also, the change from post-
`
`usage tracking to pre-purchase processing would change the principle upon which
`
`Ginter works, which indicates nonobviousness. Exhibit 2031, ¶ 29. See In re
`
`Ratti, 270 F.2d 810, 813 (CCPA 1959).
`
`Also, to the extent that the Petition is relying on Ginter 63:34-41 as
`
`disclosing “real-time debits from bank accounts,” the reference to “real-time debits
`
`from bank accounts” relates to real-time debits from bank accounts for paying for
`
`previous usage of VDE objects. Exhibit 2031, ¶ 29. Thus, the 00113 Petition does
`
`
`
`- 19 -
`
`
`
`not show that a “POSITA would at minimum have found it obvious to apply
`
`Ginter’s teaching of using audit information as payment data to a real-time
`
`transaction in order to reflect payment for a currently-requested VDE object,” as
`
`also alleged in footnote 16. As discussed above, the change from post-usage
`
`tracking to pre-purchase processing would change the principle upon which Ginter
`
`works, which indicates nonobviousness. See In re Ratti, 270 F.2d at 813. Thus,
`
`the 00013 Petition has not shown that it is more likely than not that Ginter renders
`
`obvious claims 1, 6, 7, 8, 12, 13, 16, and 18.
`
`
`
`VII. CONCLUSION
`
`
`
`Thus, claims 1, 6, 7, 8, 12, 13, 16 and 18 of the ‘317 patent should be held
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`
`
`VALID.
`
`
`
`Dated: February 27, 2015
`
`
`
`
`
`- 20 -
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that this PATENT OWNER’S RESPONSE
`
`TO PETITION (including Patent Owner’s List of Exhibits and Exhibits 2006-
`
`2008, 2013, 2019-2021, ) in CBM2014-00112 was served, by agreement of the
`
`parties, February 27, 2015 by emailing copies to counsel for the Petitioner as
`
`follows:
`
`Steven.Baughman@ropesgray.com
`Ching-Lee.Fukuda@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`
`
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`Dated: February 27, 2015
`
`
`
`
`
`- 21 -
`
`
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