UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-00113
`
`Patent 7,942,317
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`PATENT OWNER’S LIST OF EXHIBITS .......................................................... .. iii
`
` OVERVIEW OF U.S. PATENT NO. 7,942,317 ............................................ 1
`OVERVIEW OF U.S. PATENT NO. 7,942,317 .......................................... ..1
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`I.
`
`II.
`
`II.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
` THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ........................................................ 3
`
`FINANCIAL PRODUCT OR SERVICE ...................................................... ..3
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW ...... 8
`
`III.
`
`THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW .... ..8
`
`IV.
`
`THE MULTIPLE PETITIONS AGAINST THE ‘317 PATENT SHOULD
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘317 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ......................................................... 10
`VIOLATION OF 37 CFR 42.24(a)(iii) ....................................................... ..1O
`
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`
`
`V.
`
`V.
`
`NEITHER GINTER ALONE NOR GINTER IN COMBINATION WITH
`
`ANY OF THE CITED REFERENCES RENDERS OBVIOUS THE
`
`CLAIMS OF THE PETITION .................................................................... ..12
`
` NEITHER GINTER ALONE NOR GINTER IN COMBINATION WITH
`ANY OF THE CITED REFERENCES RENDERS OBVIOUS THE
`CLAIMS OF THE PETITION ...................................................................... 12
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`D.
`D.
`
`E.
`E.
`
`Obviousness in light of Ginter ........................................................... 12
`Obviousness in light of Ginter ......................................................... ..12
`
`Obviousness in light of Ginter and Poggio ........................................ 13
`Obviousness in light of Ginter and Poggio ...................................... .. 13
`
`Obviousness in light of Ginter and Stefik .......................................... 14
`Obviousness in light of Ginter and Stefik ........................................ .. 14
`
`Obviousness in light of Ginter and Sato ............................................ 16
`Obviousness in light of Ginter and Sato .......................................... .. 16
`
`Obviousness in light of Ginter, Poggio and Stefik ............................ 17
`Obviousness in light of Ginter, Poggio and Stefik .......................... ..17
`
`
`
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`- i -
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`

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`
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`VI. WECHSELBERGER’S DECLARATION SHOULD NOT BEVI. WECHSELBERGER’S DECLARATION SHOULD NOT BEVI. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`
`VI. WECHSELBERGER’S DECLARATION SHOULD NOT BE
`CONSIDERED .............................................................................................. 17
`
`
`
`
`
`CONSIDERED ............................................................................................ . . 17CONSIDERED ............................................................................................ . . 17CONSIDERED ............................................................................................ . . 17
`
`
`VII. CONCLUSION .............................................................................................. 20
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`
`
`
`
`VII. CONCLUSION ............................................................................................ ..2OVII. CONCLUSION ............................................................................................ ..2OVII. CONCLUSION ............................................................................................ ..2O
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`- ii -
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`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`
`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
`
`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. 7,942,317
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`the patent-at-issue, U.S. Patent No. 7,942,317 (hereinafter “the ‘317 patent”)
`
`generally describes “data storage and access systems ... [and] is particularly useful
`
`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.
`
`1, lines 18-26.
`
`Preferred embodiments described in the last full paragraph of col. 15
`
`illustrate this further: “FIG. 7 ... shows a variety of content access terminals for
`
`accessing data supply computer system 120 over internet 142. The terminals are
`
`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
`
`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
`
`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
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 5-17.
`
`Referring to preferred embodiments, the ‘317 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 23, line 63 - col. 24, line 1. Users are able to purchase content
`
`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
`
`act as an intermediary between a user seeking to purchase content and content
`
`providers, such as record labels, movie studios, and software providers. See col.
`
`13, lines 60-67. When a user accesses the system, he or she is able to select
`
`content to purchase or rent from a variety of different content providers. See col. 4,
`
`line 59 - col. 5, line 3. If the user finds a content item to buy, his or her device will
`
`transmit stored “payment data” to a “payment validation system” to validate the
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`payment data. See col. 7, line 67 - col. 8, line 3. The payment validation system
`
`returns proof that the payment data has been validated, in the form of “payment
`
`validation data,” and the user is able to retrieve the purchased content from the
`
`content provider. See col. 8, lines 3-6.
`
`
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`- 2 -
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`II.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`
`FINANCIAL PRODUCT OR SERVICE
`
`
`
`Petitioner has cited claim 18 as being the “exemplary” basis for requesting
`
`that a covered business method review be instituted. Petition at 13. The Petition
`
`also does not set forth any analysis to show why, if claim 18 is not a basis for
`
`review, any of the other challenged claims (i.e., claims 1, 6-8, 12-14 and 16) would
`
`instead meet the statutory requirements for instituting a review. Furthermore, since
`
`claim 18 does not, in fact, meet the requirements for instituting a review, the
`
`Petition should be denied.
`
`As set forth in 37 CFR 42.301(a), to be eligible for CBM review, claim 18
`
`must be found 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.” In the publication of the Final
`
`Rules for “Transitional Program for Covered Business Method Patents -
`
`Definitions of Covered Business Method Patent and Technological Invention,” the
`
`PTO stated:
`
`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.
`
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`- 3 -
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`

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`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
`
`legislative history of the AIA to determine the specific issue before it, i.e., whether
`
`trial should be instituted on the present petition. The Supreme Court has “stated
`
`time and again that courts must presume that a legislature says in a statute what it
`
`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
`
`is complete.” Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253–54 (1992).
`
`“[W]hen the language of the statute is plain, legislative history is irrelevant.”
`
`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
`
`legislators cannot achieve through floor statements what “they were unable to
`
`achieve through the statutory text.” Exxon Mobil Corp. v. Allapattah Servs., Inc.,
`
`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
`
`“financial product[s] and service[s],” there is no reason to look to the statements of
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`- 4 -
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`a single Senator to re-tool text that was approved by both houses of Congress and
`
`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
`
`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,
`
`Congressional Record - House, June 23, 2011, H4496.) (Emphasis added.)
`
`Similarly, Congressman Shuster expressly discussed his understanding of
`
`the narrow interpretation of the legislation. He stated:
`
`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
`- 5 -
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`

`
`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
`
`Congressman Shuster then voted to keep Section 18 in the bill. (See Id. at H4503.)
`
`
`
`Likewise, Congresswoman Waters discussed that Section 18 was directed to
`
`cost savings measures in the banking industry when she stated “too-big-to-fail
`
`banks ... are now coming to Congress in hopes that [Congress] will help them steal
`
`a specific type of innovation and legislatively take other financial services-related
`
`business method patents referenced in H.R. 1249, section 18. ... Financial
`
`services-related business method patents have saved financial services companies
`
`billions of dollars.” Id. at H4496. See also Exhibit 2002, 157 Cong. Rec. S5428
`
`(Rep. Pryor) (“It is of crucial importance to me that we clarify the intent of the
`
`[AIA § 18] process and implement it as narrowly as possible.”)
`
`In contrast to the banking or other financial products or services patents,
`
`claim 18 recites:
`
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`- 6 -
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`18. A method of providing data to a data requester comprising:
`receiving a request for a data item from the requester;
`receiving payment data from the requester relating to payment
`for the requested data;
`transmitting the requested data to the requester;
`reading payment distribution information from a data store; and
`outputting payment data to a payment system for distributing
`the payment for the requested data.
`
`
`
`Thus, the main thrust of claim 18 is providing data to a data requester, as one
`
`would do, for example, when transferring software, music or a video to a requester
`
`for later use and/or playback. In fact, rather than recite the “practice,
`
`administration, or management of a financial product or service,” claim 18 actually
`
`omits the specifics of how payment is made and focuses on technical steps that
`
`take place as part of transmitting requested data to the requester. Claim 18,
`
`therefore, does not recite a “financial product or service” when that phrase is
`
`properly construed, both under its plain meaning and in light of the legislative
`
`history showing Congress’ intent of the narrow meaning of that phrase.
`
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`- 7 -
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`III. THE CHALLENGED CLAIMS OF THE ‘317 PATENT ARE
`
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW
`
`As set forth in 37 CFR 42.301(a), even if claim 18 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 18 does not meet the
`
`exception of being directed to a technological invention. Section 42.301(b) sets
`
`forth that a claim is directed to a technological invention (and therefore not the
`
`basis for instituting a CBM review) if “the claimed subject matter as a whole
`
`recites a technological feature that is novel and unobvious over the prior art; and
`
`solves a technical problem using a technical solution.”
`
`Claim 18, as a whole, recites at least one technological feature that is novel
`
`and unobvious over the prior art and solves a technical problem using a technical
`
`solution. At least one technological problem solved by the method of claim 18 is
`
`transmitting requested data to a requester, e.g., as part of a convenient, legitimate
`
`acquisition of data from a data supplier. Moreover, it does so using a technical
`
`solution -- a data store, from which payment distribution information is read, in
`
`combination with a payment system. In fact, Petitioner admits the technological
`
`nature of the data store and the payment system when it states that claim 18
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`“involves no ‘technology’ at all other than, at most, the use of a data store and
`
`payment system.” Petition at 17-18. (Emphasis added.)
`
`Section III.A. of the Petition also does not provide a detailed analysis of how
`
`the various claim elements are allegedly disclosed in the cited sections of the
`
`referenced exhibits. Thus, as previously held in Epsilon Data Management, LLC
`
`et al. v. RPOST Comm. Ltd., CBM2014-00017, paper 21, page 8, any analysis in
`
`any other portion of the Petition (other than the portion relating to whether CBM
`
`review is proper) need not be considered in determining that the Petitioner has not
`
`met its burden of proving that the claim at issue is a covered business method
`
`patent. Id. (“In addition, although Patent Owner addresses the analysis in the
`
`Declaration of [Petitioner’s Declarant] (id. at 19), which Petitioner submitted with
`
`the Petition, this analysis was not included in the relevant portion of the Petition
`
`(Pet. 2-6), and need not be considered in determining that the ... Patent[-at-issue] is
`
`a covered business method patent.”) Thus, Petitioner has not proven that the
`
`claims of the ‘317 patent are not directed to technological inventions exempt from
`
`CBM review.
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`- 9 -
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`

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`IV. THE MULTIPLE PETITIONS AGAINST THE ‘317 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 CBM2014-00113) is one of two nearly
`
`80-page Petitions filed by Petitioner on the same day against the same patent (i.e.,
`
`the ‘317 patent). (The second Petition was filed in CBM2014-00112.) 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 ‘317 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 page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but
`
`overlapping Petitions.
`
`The PTAB has previously allowed the same Petitioner to file multiple CBMs
`
`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.
`
`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
`
`the other Petition for each patent (CBM2013-0019 and CBM2013-00021) raised
`
`non-prior art issues.
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`- 10 -
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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
`
`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.”
`
`However, the Petitioner here instead effectively sought to grant its own motion by
`
`filing two allegedly separate petitions, each within the 80-page limit and without
`
`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
`
`there is no requirement for the Petitioner to file its allegations of invalidity over
`
`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
`
`the requirements of Section 42.24(a)(2) are meaningless. Moreover, allowing
`
`more than one CBM request on the same issue for the same patent would invite an
`
`unending stream of Petitions filed by Petitioners in an effort to drown the Patent
`
`Owner’s patents in administrative proceedings before the PTAB. Thus,
`
`Petitioner’s two Petitions in CBM2014-00112 and -00113 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. NEITHER GINTER ALONE NOR GINTER IN COMBINATION WITH
`
`ANY OF THE CITED REFERENCES RENDERS OBVIOUS THE
`
`CLAIMS OF THE PETITION
`
`
`
`A. Obviousness in light of Ginter
`
`Petitioner concedes that Ginter (i.e., U.S. Patent No. 5,915,019) does not
`
`anticipate any of the claims of the ‘317 patent. Instead, Petitioner alleges that
`
`Ginter renders obvious certain limitations without providing sufficient 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 Petition fails to show why one of
`
`ordinary skill in the art, looking at Ginter alone (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 mere conclusory statements;
`
`instead, there must be some articulated reasoning with some rational underpinning
`
`to support the legal conclusion of obviousness.’” KSR Int'l Co. v. Teleflex, Inc.,
`
`550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006)). Thus, the Petition fails to establish that any of the claims of the patent-at-
`
`issue are obvious in light of Ginter alone.
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`
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`B. Obviousness in light of Ginter and Poggio
`
`The Petition also fails to show that one of ordinary skill in the art would
`
`have been motivated to combine Ginter with Poggio (EP0809221) in the manner
`
`alleged in the Petition. The Petition alleges at page 30 that a “POSITA would have
`
`been motivated and found it obvious to combine Ginter with Poggio ..., and thus to
`
`employ Poggio’s teachings in implementing Ginter’s system” and cites as support
`
`that “a POSITA would have considered it obvious to employ Poggio’s disclosures
`
`regarding the purchase of content in the VDE environment disclosed in Ginter in
`
`order to allow a consumer to mirror those traditional forms.” Id. at 32. However,
`
`the cited portions of Ginter and Poggio do not support such an assertion. As
`
`shown in Figure 2 of Poggio, the electronic invoices 222 are stored in the virtual
`
`vending machine 100, and there is no mechanism disclosed in Ginter to receive
`
`such invoices 222. Moreover, there is no disclosure in Ginter to add credit card
`
`information to such invoices and return the updated invoices. Thus, the proposed
`
`combination is based on impermissible hindsight and one of ordinary skill in the
`
`art would not have combined Ginter with Poggio at all.
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`C. Obviousness in light of Ginter and Stefik
`
`1.
`
`U.S. Patent Nos. 5,530,235 and 5,629,980 Are Not a Single
`
`Reference
`
`The Petition alleges in footnote 4 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.” However,
`
`Petitioner has not proven that the alleged incorporation by reference in the ‘235
`
`patent is sufficient to support a finding that the ‘235 and ‘980 patents “should be
`
`considered a single reference.” The ‘235 patent states, at col. 2, lines 48-53, that
`
`“The currently preferred embodiment of a DocuCard is an instance of a 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 incorporated
`
`by reference.” However, such a reference does not meet the MPEP’s standard for
`
`incorporation by reference. MPEP 608.01(p) (Sixth Ed., Jan. 1995) set forth the
`
`procedure for incorporation by reference at the time the ‘235 patent was filed. As
`
`specified in the MPEP on page 600-55, left column, lines 11-13, “In addition to
`
`other requirements for an application, the referencing application should include an
`
`identification of the referenced patent, application, or publication.” The Petitioner
`
`has not established that a reference to “co-pending application entitled ‘System for
`
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`- 14 -
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`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 application is not
`
`referenced by application serial number, filing date, inventors or attorney docket
`
`number.
`
`As set forth in In re Fouche, 169 USPQ 429 (CCPA 1971), when the issue
`
`arises as to whether an incorporation by reference is proper, the test is “whether the
`
`original referring language was adequate to effect an incorporation by reference” --
`
`a test which is resolved by determining whether the application allegedly
`
`incorporated by reference is distinguished “from all others.” Id. at 431. Petitioner,
`
`which bears the burden of proof on the issue, has not proven that the application is
`
`distinguished from all others (e.g., by a declaration from Stefik describing that the
`
`‘980 patent is the only such application). Thus, the alleged incorporation by
`
`reference is not proper, and the ‘235 and ‘980 patents should not be considered a
`
`single reference.
`
`2.
`
`No Motivation to Combine Ginter and Stefik
`
`
`
`As set forth above, the “Stefik” patent has not been shown to be a single
`
`reference; therefore, the alleged combination of Ginter and Stefik is improper as
`
`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
`
`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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`every additional device in the VDE environment advantageously increases its user-
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`base.” Petition at 36. 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. Thus, one of ordinary skill in the art would not have been motivated to
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`combine Ginter and Stefik as alleged.
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`D. Obviousness in light of Ginter and Sato
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`The Petition argues at page 38 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 as part
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`of 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 at page 40 alleges that a “POSITA would have considered it
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`desirable to protect the content on Sato’s device using the VDE environment of
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`Ginter,” using the VDE environment of Ginter would have restricted the playback
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`of 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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`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, Poggio and Stefik
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`As set forth above in Section V.B., Petitioner has not shown that one of
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`ordinary skill in the art would have combined Ginter and Poggio. As a result, one
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`of ordinary skill in the art would not have combined Ginter, Poggio and Stefik for
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`at least the same reasons.
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`VI. WECHSELBERGER’S DECLARATION SHOULD NOT BE
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`CONSIDERED
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`
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`Petitioner has filed and cited to the Declaration of Anthony Wechselberger
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`in Support of Apple Inc.’s Petition For Covered Business Method Patent Review of
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`United States Patent No. 7,942,317 Pursuant to 35 U.S.C. § 321, 37 C.F.R. §
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`42.304 (Exhibit 1021) (hereinafter “the Wechselberger Declaration”). However,
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`the Wechselberger Declaration is improper as it does not disclose the underlying
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`facts on which the opinion is based. For example, the Wechselberger Declaration
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`does not state the relative evidentiary weight (e.g., substantial evidence versus
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`preponderance of the evidence) that Mr. Wechselberger used in arriving at his
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`conclusions. As specified in 37 CFR 42.65, “Expert testimony that does not
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`disclose the underlying facts or data on which the opinion is based is entitled to
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`little or no weight.” Similarly, the Wechselberger Declaration does not state the
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`criteria that he used to assess whether one of ordinary skill in the art at the time of
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`the invention would have been motivated to modify a reference or combine two
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`references. For example, the Wechselberger Declaration does not state whether he
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`considered evidence tending to show that one of ordinary skill in the art would not
`
`have made his proposed combination. Thus, the Wechselberger Declaration is
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`entitled to little or no weight and, as a result, cannot support a finding that it is
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`more likely than not that at least one of the challenged claims is unpatentable.
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`
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`In addition, the Wechselberger Declaration does not prove that Mr.
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`Wechselberger is an expert whose testimony is relevant to the issue of what is
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`taught and/or suggested by the cited references. While Mr. Wechselberger may
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`opine that he was “one of ordinary skill in the art,” he does not, however, state that
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`he is an expert in the types of methods and systems defined by the challenged
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`claims. Instead, Mr. Wechselberger references jobs held without tying those jobs
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`to evidence that supports that the jobs provided him insight into being able to
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`testify about what one of ordinary skill in the art would have known and/or been
`
`motivated to do.
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`
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`For example, paragraph 3 of the Wechselberger Declaration states that since
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`1999, in the capacity of President of Entropy Management Solutions (“EMS”), he
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`has “perform[ed] consulting services related to technology and business
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`development, content management, distribution and merchandizing, systems
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`engineering and product design in the areas of industrial and consumer broadband
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`and multimedia technologies and associated commercial systems.” Thus, such a
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`paragraph does not provide evidence indicating that those “consulting services” are
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`of a technical nature that allows him to offer an opinion on what would have been
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`obvious to one of ordinary skill in the art.
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`Nor does paragraph 4 show that Wechselberger is an expert in the claimed
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`field. In paragraph 4, Wechselberger alleges that he has “held various design,
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`leadership and executive positions in, for example, engineering, operations, sales
`
`and marketing, and product management at leading companies in those fields, such
`
`as TV/COM International, Inc. (TV/COM) and Oak Communications, Inc.” Such
`
`an allegation does not disclose which of the positions related to design versus
`
`leadership versus executive functions. Similarly, although paragraph 4 states
`
`“Over many years I have published and/or presented a number of articles and
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`papers related to content/information creation, transmission/distribution and
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`reception/consumption in various media sectors, including cable, satellite,
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`broadcast/wireless, Internet and digital cinema,” that paragraph does not state what
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`his contribution was to the papers (e.g., presenter versus author). Thus, Mr.
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`Wechselberger has not proven that his opinions are proper expert opinions upon
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`which the PTAB can rely as opposed to inadmissible lay opinion.
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`
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`VII. CONCLUSION
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`
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`The Petition does not set forth a basis upon which to institute a CBM review,
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`and Petitioner’s Petition should be denied.
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` /
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` Michael R. Casey /
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`
`Michael R. Ca