Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7 (CBM2014-00112)
`Paper 7 (CBM2014-00113)
`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 CBM2014-00112
`Case CBM2014-00113
`Patent 7,942,317 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 7 (CBM2014-00112)
`Paper 7 (CBM2014-00113)
`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 CBM2014-00112
`Case CBM2014-00113
`Patent 7,942,317 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`INTRODUCTION
`
`A. Background
`
`Petitioner, Apple Inc. (“Apple”), filed two Petitions to institute
`
`covered business method patent review of claims 1, 6–8, 12–14, 16, and 18
`
`(“the challenged claims”) of U.S. Patent No. 7,942,317 B2 (Ex. 1001, “the
`
`’317 patent”) pursuant to § 18 of the Leahy-Smith America Invents Act
`
`(“AIA”). CBM2014-00112 (Paper 2, “112 Pet.”) and CBM2014-00113
`
`(Paper 2, “113 Pet.”). Patent Owner, Smartflash LLC (“Smartflash”), filed a
`
`Preliminary Response in each of the two cases: CBM2014-00112 (Paper 6,
`
`“112 Prelim. Resp.”) and CBM2014-00113 (Paper 6, “113 Prelim. Resp.”).1
`
`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. §§ 102 and/or 103 based on the following grounds (112 Pet. 16;
`
`28–77; 113 Pet. 40–78).
`
`
`1 Patent Owner argues that the multiple petitions filed against the ’317 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. 112 Prelim. Resp. 10–11; 113
`Prelim. Resp. 10–11. The page limit for petitions requesting covered
`business method patent review is 80 pages (37 C.F.R. § 42.24(a)(iii)), and
`each of the 112 and the 113 Petitions is within that requirement.
`
`2
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`References2
`
`Basis
`
`Claims Challenged
`
`CBM2014-00112
`
`Stefik ’2353 and Stefik ’9804
`
`§ 1025 1, 6–8, 12–14, 16, and 18
`
`Stefik ’235 and Stefik ’980
`
`§ 103 1, 6–8, 12–14, 16, and 18
`
`Stefik ’235, Stefik ’980, and
`Poggio6
`
`§ 103 1, 6–8, 12–14, 16, and 18
`
`CBM2014-00113
`
`Ginter7
`
`§ 103 1, 6–8, 12–14, 16, and 18
`
`Ginter and Poggio
`
`§ 103 1, 6–8, 12–14, 16, and 18
`
`Ginter, Stefik ’235, and Stefik ’980
`
`§ 103 12–14
`
`
`2 Exhibits with numbers 1001–1029 were filed in CBM2014-00112 and
`those with numbers 1101–1129 were filed in CBM2014-00113. For
`purposes of this decision, where the two cases have duplicate exhibits, we
`refer to the exhibit filed in CBM2014-00112.
`3 U.S. Patent No. 5,530,235 (June 25, 1996) (Ex. 1013, “Stefik ’235”).
`4 U.S. Patent No. 5,629,980 (May 13, 1997) (Ex. 1014, “Stefik ’980”).
`5 Petitioner refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
`argues that they should be considered as a single reference for anticipation
`purposes because, according to Petitioner, Stefik ’235 incorporates Stefik
`’980 by reference. 112 Pet. 20–21, n.12. Patent Owner disagrees. 112
`Prelim. Resp. 12–14. We do not reach this issue because even when
`considered as one reference, we determine that Stefik ’235 and Stefik ’980
`do not teach all the recited claim limitations in the same form and order as
`listed in the claims.
`6 European Patent Application, Publication No. EP0809221A2 (including
`translation), published November 26, 1997 (Ex. 1016, “Poggio”).
`7 U.S. Patent No. 5,915,019 (June 22, 1999) (Ex. 1115, “Ginter”).
`
`3
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`References2
`
`Basis
`
`Claims Challenged
`
`Ginter, Stefik ’235, Stefik ’980, and
`Poggio
`
`§ 103 12–14
`
`Ginter and Sato8
`
`§ 103 12–14
`
`Petitioner also provides a declaration from Anthony J. Wechselberger
`
`(“the Wechselberger Declaration”).9 112 Ex. 1021.
`
`After considering the Petitions and Preliminary Responses, we
`
`determine that the ’317 patent is a covered business method patent and that
`
`Apple has demonstrated that it is more likely than not that at least one of the
`
`challenged claims is unpatentable. Based on the information presented, we
`
`institute a covered business method patent review of claims 1, 6–8, 12–14,
`
`16, and 18 of the ’317 patent.
`
`C. Related Matters
`
`The parties indicate that Smartflash has sued Apple for infringement
`
`of the ’317 patent and identify the following district court case: Smartflash
`
`LLC v. Apple Inc., Case No. 6:13-cv-447 (E.D. Tex.). See, e.g., 112 Pet. 15–
`
`16; 112 Papers 4, 5. The parties also indicate that the ’317 patent is the
`
`subject of a second case, to which Apple is not a party: Smartflash LLC v.
`
`Samsung, Case No. 6:13-cv-448 (E.D. Tex.). Id.
`
`
`8 JP Patent Application Publication No. H11-164058 (including translation),
`published June 18, 1999 (Ex. 1118, “Sato”).
`9 On this record, we are not persuaded by Patent Owner’s argument that we
`should disregard the Wechselberger Declaration. See 112 Prelim. Resp. 17–
`20; 113 Prelim. Resp. 17–20. Patent Owner identifies purported omissions
`from the Declaration, but offers no evidence that Mr. Wechselberger used
`incorrect criteria, failed to consider evidence, or is not an expert in the
`appropriate field. Id.
`
`4
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`In addition to the 112 and 113 Petitions, Apple filed ten other
`
`Petitions for covered business method patent review 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;
`
`CBM2014-00110; and CBM2014-00111.
`
`D. The ’317 Patent
`
`The ’317 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. 1001, 1:18–23. 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
`
`1:38–51. The ’317 patent describes providing portable data storage together
`
`with a means for conditioning access to that data upon validated payment.
`
`Id. at 1:55–2:3. This combination allows data owners to make their data
`
`available over the internet without fear of data pirates. Id. at 2:3–11.
`
`As described, the portable data storage device is connected to a
`
`terminal for internet access. Id. at 1:55–63. 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 1:64–67.
`
`The ’317 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 25:49–52 (“The skilled person will understand that many variants to
`
`5
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`the system are possible and the invention is not limited to the described
`
`embodiments.”).
`
`E. Challenged Claims
`
`Apple challenges claims 1, 6–8, 12–14, 16, and 18 of the ’317 patent.
`
`Claims 1, 8, 12, 16, and 18 are independent. Claims 6 and 7 depend from
`
`claim 1 and claims 13 and 14 depend from claim 12. Claims 1 and 8 are
`
`illustrative of the claims at issue and recite the following:
`
`1.
`A computer system for providing data to a data requester,
`the system comprising:
`
`a communication interface;
`
`a data access data store for storing records of data items available
`from the system, each record comprising a data item description and a
`pointer to a data provider for the data item;
`
`a program store storing code implementable by a processor;
`
`a processor coupled to the communications interface, to the data
`access data store, and to the program store for implementing the stored code,
`the code comprising:
`
`code to receive a request for a data item from the requester;
`
`code to receive from the communications interface payment data
`comprising data relating to payment for the requested data item;
`
`code responsive to the request and to the received payment data, to
`read data for the requested data item from a content provider; and
`
`code to transmit the read data to the requester over the
`communications interface.
`
`Ex. 1001, 25:55–26:8.
`
`8.
`
`A method of providing data to a data requester comprising:
`
`receiving a request for a data item from the requester;
`
`6
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`receiving payment data from the requester relating to payment for the
`requested data;
`
`reading the requested data from a content provider responsive to the
`received payment data; and
`
`transmitting the read data to the requester.
`
`Id. at 26:36–44.
`
`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 ’317 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 construe the claim term “use rule data,” as
`
`recited in dependent claim 14. Neither party proposed a construction for this
`
`term.
`
`Dependent claim 14 recites “use rule data.” The ’317 patent describes
`
`“use rule data” as “comprising a list of values (i.e. content data item prices)
`
`and corresponding levels of permitted usage. Ex. 1001, 14:66–15:1
`
`(emphasis added). The ’317 patent further explains that “[t]hus a value of
`
`£1 might permit ten plays of a music track, while the value of £10 might
`
`permit an unlimited number of plays of the track and copying of the track for
`
`personal use.” Id. at 15:1–4. Accordingly, for purposes of this decision, we
`
`construe “use rule data” as data for a rule specifying a condition under which
`
`access to content is permitted.
`
`7
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`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 “covered
`
`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 “because claim 18 explicitly describes receiving
`
`and responding to payment data, as well as outputting payment data, it
`
`clearly relates to a financial activity and providing a financial service.” 112
`
`Pet. 11; 113 Pet. 16. Based on this record, we agree with Apple that the
`
`subject matter recited by claim 18 is directed to activities that are financial in
`
`nature, namely data access conditioned on payment validation. Claim 18
`
`recites “receiving payment data from the requester relating to payment for
`
`the requested data,” “reading payment distribution information from a data
`
`store,” and “outputting payment data to a payment system for distributing
`
`the payment for the requested data.” We are persuaded that “[r]eceiving
`
`payment data from the requester relating to payment for the requested data”
`
`and “reading payment distribution information from a data store” are
`
`financial activities and “outputting payment data to a payment system for
`
`8
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`distributing the payment for the requested data” amounts to a financial
`
`service. This is consistent with the Specification of the ’317 patent, which
`
`confirms claim 18’s connection to financial activities by stating that the
`
`invention “relates to a portable data carrier for storing and paying for data.”
`
`Ex. 1001, 1:19–20. The Specification also states repeatedly that the
`
`disclosed invention involves managing access to data based on payment
`
`validation. See, e.g., Ex. 1001, 1:55–63, 2:12–26, 3:22–30, 3:51–56, 7:59–
`
`8:6, 8:18–31.
`
`Smartflash disagrees that claim 18 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. 112 Prelim. Resp. 3–7; 113 Prelim. Resp. 3–7.
`
`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) 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 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
`
`9
`
`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`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 18 is not directed to an
`
`apparatus or method that is financial in nature because claim 18 “omits the
`
`specifics of how payment is made.” 112 Prelim. Resp. 7; 113 Prelim.
`
`Resp. 7. 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. 112 Prelim. Resp. 8;
`
`113 Prelim. Resp. 8. We determine that because payment is required by
`
`claim 18, 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 ’317 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 18 does not fall within § 18(d)(1)’s exclusion
`
`for “technological inventions.” 112 Pet. 11–15; 113 Pet. 16–20. In
`
`particular, Apple argues that claim 18 “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.’”
`
`112 Pet. 11; 113 Pet. 16–20 (quoting 37 C.F.R. § 42.301(b)). Smartflash
`
`disagrees and argues that claim 18, as a whole, recites at least one
`
`technological feature. 112 Prelim. Resp. 11; 113 Prelim. Resp. 17.
`
`We are persuaded that claim 18 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art. Claim
`
`10
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
`
`18 recites a “payment system.” The Specification, however, discloses that
`
`the required payment system may be one that is already in use or otherwise
`
`commercially available. For example, the payment validation system “may
`
`be part of the data supplier’s computer systems or it may be a separate
`
`system such as an e-payment system.” Ex. 1001 8:18–22; see also id. at
`
`8:60–63. Claim 18 also recites a “data store.” This component, however, is
`
`described as generic memory. 112 Pet. 12–13; 113 Pet 18. The
`
`Specification discloses, for instance, that “[t]he data storage means is based
`
`on a standard smart card.” Ex. 1001, 11:28–30; see also id. at 14:25–29
`
`(“[l]ikewise data stores 136, 138 and 140 may comprise a single physical
`
`data store or may be distributed over a plurality of physical devices and may
`
`even be at physically remote locations from processors 128-134 and coupled
`
`to these processors via internet 142.”), Fig. 6.
`
`In addition, the ’317 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 ’317 patent
`
`states that “there is an urgent need to find a way to address the problem of
`
`data piracy” (id. at 1:50–51), 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 12:29–32). Thus, we determine that claim 18 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 18 falls within § 18(d)(1)’s
`
`exclusion for “technological inventions” because it is directed towards
`
`11
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
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`solving the technological problem of “transmitting requested data to a
`
`requester, e.g., as part of a convenient, legitimate acquisition of data from a
`
`data supplier” with the technological solution of a “data store, from which
`
`payment distribution information is read, in combination with a payment
`
`system.” 112 Prelim. Resp. 8–9; 113 Prelim. Resp. 8–9. We are not
`
`persuaded by this argument because, as Apple argues, the problem being
`
`solved by claim 18 is a business problem—data piracy. 112 Pet. 14; 113
`
`Pet. 19. For example, the Specification states that “[b]inding the data access
`
`and payment together allows the legitimate owners of the data to make the
`
`data available themselves over the internet without fear of loss of revenue,
`
`thus undermining the position of data pirates.” Ex. 1001, 2:7–11.
`
`Therefore, based on the particular facts of this proceeding, we conclude that
`
`claim 18 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 ’317 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`using the transitional covered business method patent program.
`
`C. Anticipation by Stefik ’235 and Stefik ’980
`
`Stefik ’235 teaches a portable Document Card (“DocuCard”) for
`
`storing information in a digital form, storing usage rights for the
`
`information, processing user-initiated functions and requests to access
`
`documents stored therein, interfacing to external devices for reading and
`
`writing digital information, and allowing a user to directly interact with the
`
`DocuCard. Ex. 1013, 2:29–40, 7:35–42.
`
`12
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
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`Stefik ’980 teaches a “repository” for storing digital works,
`
`controlling access to digital works, billing for access to digital works and
`
`maintaining the security and integrity of the system. Ex. 1014, 6:57–61.
`
`Petitioner asserts that claims 1, 6–8, 12–14, 16, and 18 are anticipated
`
`by Stefik ’235 and Stefik ’980. 112 Pet. 28–47. We are not persuaded that
`
`Petitioner has shown that every claim limitation, and sub part, of claims 1,
`
`6–8, 12–14, 16, and 18 are set forth in the prior art in the same form and
`
`order as in the claim. See In re Omeprazone Patent Litigation, 483 F.3d
`
`1364, 1373 (Fed. Cir. 2007); Continental Can Co. v Monsanto Co., 948 F.2d
`
`1264, 1267 (Fed. Cir. 1991).
`
`Petitioner relies on the multiple repositories acting in different
`
`capacities described in Stefik ’235 and Stefik ’980, as disclosing several of
`
`the claim limitations of independent claims 1, 8, 12, 16, and 18. See, e.g.,
`
`112 Pet. 28–47 (claim 1), 50 (claim 8, refers to claim 1 claim chart), 50–63
`
`(claim 12), 68–73 (claim 16, refers to claim 1 claim chart), 73–77 (claim 18,
`
`refers to claim 1 claim chart). While Stefik ’980 discloses repositories that
`
`may act in different capacities (see, e.g., Ex. 1014, Abstract; Ex. 1014, 4:9–
`
`10 (“[a] repository has two primary operating modes, a server mode and a
`
`requester mode”)), Petitioner does not persuasively establish more likely
`
`than not that either Stefik ’235 or Stefik ’980 discloses a system of
`
`repositories that is configured in the exact form and order as in independent
`
`claims 1, 8, 12, 16, and 18. Rather, Petitioner argues Stefik teaches that the
`
`repositories described in Stefik ’235 and ’980 may be configured in the exact
`
`form and order as in independent claims 1, 8, 12, 16, and 18. See, e.g., 112
`
`Pet. 31 (“A DocuCard can be inserted into a PCMCIA slot of another
`
`repository or can interface with a second DocuCard.”) (emphasis added)
`
`13
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`Patent 7,942,317 B2
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`(citations omitted); Ex. 1013, 6:32–43 (“The repositories and rendering
`
`systems to which a DocuCard may interface would fulfill the functional
`
`requirements as defined in the aforementioned ‘System For Controlling The
`
`Distribution and Use of Digital Works’ application.”) (emphasis added).
`
`Thus, 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
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`references.
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`D. Additional Grounds Based on Stefik ’235 and Stefik ’980
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`Petitioner asserts that claims 1, 6–8, 12–14, 16, and 18 would have
`
`been obvious over the Stefik references alone. 112 Pet. 25–77. Petitioner
`
`also contends that claims 1, 6–8, 12–14, 16, and 18 would have been
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`obvious over Stefik and Poggio. Id. at 28–77. We find Petitioner’s
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`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
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`persuaded by Petitioner’s contentions regarding claim 14 for the reasons
`
`discussed below.
`
`1. Claims 1, 6–8, 12, 13, 16, and 18
`
`In light of the arguments and evidence, Petitioner has established that
`
`it is more likely than not that claims 1, 6–8, 12, 13, 16, and 18 would have
`
`been obvious over the combination of Stefik ’235and Stefik ’980. See id. at
`
`25–77.
`
`14
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`Patent 7,942,317 B2
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`We are not persuaded by Patent Owner’s argument that there is no
`
`evidence that one of ordinary skill in the art would have combined the
`
`teachings of the Stefik ’235 patent with the teachings of the Stefik ’980
`
`patent because Patent Owner’s argument is based on an unproven premise
`
`that the Stefik ’235’s reference to the Stefik ’980 patent must uniquely
`
`identify the Stefik ’980 patent. 112 Prelim. Resp. 13–14. One reference
`
`need not identify explicitly another reference in order to form the basis for
`
`an obviousness combination. We also are not persuaded by Patent Owner’s
`
`argument that because Petitioner has not proven that Stefik ’235 and Stefik
`
`’980 qualify as a single reference, all combinations including those
`
`references fail. 112 Prelim. Resp. 14. Petitioner argues that “there is
`
`explicit motivation to implement the repository disclosed by Stefik ’980
`
`using the Document Card (DocuCard) of Stefik ’235.” 112 Pet. 21, n.12
`
`(citing Ex. 1013, 2:47–52; Ex. 1014, 16:56–58; Ex. 1021 ¶¶ 51, 53). Stefik
`
`’980 teaches that “the repository could be embedded in a ‘card’ that is
`
`inserted into an available slot in a computer system” (Ex. 1014, 16:56–58),
`
`and Stefik ’235 teaches a repository embedded in a card (Ex. 1013, 2:47–
`
`52). On the record before us, we are persuaded that Petitioner has provided
`
`sufficiently an articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness over a combination of Stefik
`
`’235 and Stefik ’980. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`We discuss dependent claims 6, 7, and 13 as examples.
`
`Claim 6
`
`Claim 6 recites “[a] computer system as claimed in claim 1, further
`
`comprising an access control data store coupled to said processor for storing
`
`15
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
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`access control data comprising a requester identifier, corresponding
`
`requester system access data and payment system data for identifying a
`
`payment system for use by the requester.” For this limitation, Petitioner
`
`refers to disclosure from Stefik ’235 teaching that “[a] Login transaction is
`
`the process by which a user logs onto a repository, typically by entering a
`
`Personal Identification Number (PIN). In this case, the user of the DocuCard
`
`is logging onto the DocuCard. This logging in process may also activate
`
`credit accounts.” 112 Pet. 48 (citing Ex. 1013, 6:60–65).
`
`Claim 7
`
`Claim 7 recites “[a] computer system as claimed in claim 1, further
`
`comprising content synthesis code to generate substantially complete item
`
`data from partial item data provided from two or more sources.” For this
`
`limitation, Petitioner refers to disclosure from Stefik ’235 teaching that
`
`“[f]or composite documents comprised of multiple individual digital works,
`
`the description part is an acyclic structure (e.g. a tree structure) wherein each
`
`node corresponds to one or more of the multiple individual digital works.”
`
`112 Pet. 49 (citing Ex. 1013, 7:42–50). Stefik ’980 also discloses the
`
`following extract transaction.
`
`A extract transaction is a request to copy a part of a digital work
`and to create a new work containing it. The extraction operation
`differs from copying in that it can be used to separate a part of a
`digital work from d-blocks or shells that place additional
`restrictions or fees on it. The extraction operation differs from
`the edit operation in that it does not change the contents of a
`work, only its embedding in d-blocks. Extraction creates a new
`digital work.
`
`Ex. 1014, 39:57–64
`
`
`
`Claim 13
`
`16
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
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`Claim 13 recites “[a] data access system according to claim 12 further
`
`comprising a payment distribution store and wherein the electronic payment
`
`system makes payments according to data in the payment distribution store
`
`associated with the forwarded data on confirmation of the payment and/or
`
`provision of the forwarded data to the card.” For this limitation, Petitioner
`
`refers to disclosure from Stefik ’980, which indicates that data content has
`
`information associated with it, including “[a] handle identifying a revenue
`
`owner for a digital work,” “used for reporting usage fees.” Ex. 1014, 9:21–
`
`29, 10:24–32, Table 1.
`
`For the reasons set forth above, Petitioner has established that it is
`
`more likely than not that it would prevail in demonstrating that claims 1, 6–
`
`8, 12, 13, 16, and 18 would have been obvious over the combination of
`
`Stefik ’235 and Stefik ’980. We deny as redundant the asserted ground that
`
`claims 1, 6–8, 12, 13, 16, and 18 would have been obvious over Stefik ’235,
`
`Stefik ’980, and Poggio. See 37 C.F.R. § 42.208(a).
`
`2. Claim 14
`
`Claim 14 recites “[a] data access system according to claim 12 further
`
`comprising a data use rule data store and wherein data use rule data is
`
`provided to the data carrier with the forwarded data for controlling user
`
`access to the forwarded data.” Petitioner’s claim chart states that the
`
`claimed “use rule data” corresponds to Stefik’s “(e.g., conflict rules;
`
`descriptor tree files containing usage rights and access conditions).” 112
`
`Pet. 66. Petitioner also refers to disclosure from Stefik ’980 teaching that
`
`“[e]ach usage right might have one or more specified conditions which must
`
`be satisfied before the right may be exercised.” Id. at 67; see Ex. 1014,
`
`17
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
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`6:46–48.10 Petitioner provides insufficient explanation, however, as to how
`
`Stefik’s “usage rights” operate. Petitioner also does not show sufficiently
`
`why “usage rights” satisfies “use rule data.” Even though “usage rights”
`
`may have “conditions,” they are not necessarily rules, and Petitioner has not
`
`persuaded us otherwise. For example, rights portion 504 is described as “a
`
`data structure, such as a look-up table, wherein the various information
`
`associated with a right is maintained.” Pet. 67 (citing Ex. 1013, 8:8–10); see
`
`Ex. 1014, 9:54–10:1. An exemplary data structure is illustrated in Figure 10
`
`of Stefik ’980 and the information contained in such a data structure is
`
`indicated in Table 1. Ex. 1014, 10:28–32. Table 1 of Stefik ’980 discloses,
`
`for example, a “Loan–Period” property with a value in “Time-Units” that is
`
`an “[i]ndicator of the maximum number of time-units that a document can
`
`be leased out.” Petitioner, however, does not explain sufficiently why a
`
`“Loan-Period,” by itself, without, for example, corresponding content data
`
`item price, satisfies “data for a rule specifying a condition under which
`
`access to content is permitted,” as we have construed “use rule data.”
`
`Petitioner does not refer to Poggio as teaching this limitation. 112 Pet. 66–
`
`68.
`
`For the reasons set forth above, Petitioner has not established that,
`
`more likely than not, it would prevail in demonstrating that claim 14 would
`
`have been obvious over the combination of Stefik ’235 and Stefik ’980 or
`
`over Stefik ’235, Stefik ’980, and Poggio.
`
`
`10 We note that Petitioner mistakenly cites to Stefik ’235 (Ex. 1013) as citing
`this disclosure. Pet. 66–67.
`
`18
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`
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`CBM2014-00112 and CBM2014-00113
`Patent 7,942,317 B2
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`E. Obviousness over Ginter
`
`Petitioner contends that claims 1, 6–8, 12–14, 16, and 18 would have
`
`been obvious over Ginter. 113 Pet. 22, 40–78.
`
`Ginter discloses a portable “virtual distribution environment”
`
`(“VDE”) that can “control and/or meter or otherwise monitor use of
`
`electronically stored or disseminated information.” Ex. 1115, Abstract,
`
`Fig. 71, 52:26–27.
`
`1. Claims 1, 6–8, 12, 13, 16, and 18
`
`In light of the arguments and evidence, 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.
`
`We are not persuaded by Patent Owner’s argument that Petitioner has
`
`not provided evidence that one of ordinary skill in the art would have
`
`modified Ginter in a way to render obvious the claimed subject matter. 113
`
`Prelim. Resp. 12. For example, Petitioner points to Ginter’s teaching “the
`
`known flexibility in such distribution systems, and underscores that one of
`
`ordinary skill would have known that combinations between and among
`
`disclosures of such distribution systems would have been obvious to one of
`
`ordinary skill in the art.” 113 Pet. 28–29 (citing Ex. 1015, 255:22–43; Ex.
`
`1121 ¶ 58). We are, therefore, persuaded that Petitioner has provided
`
`sufficiently an articulated r
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