`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS AMERICA, INC., et al.,
`
`Petitioners
`
`v.
`
`SMARTFLASH LLC
`
`Patent Owner
`
`____________
`
`Case CBM2014-00190
`
`Patent 7,334,720
`
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`TABLE OF CONTENTS
`
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................. ii
`
`I.
`
`II.
`
` OVERVIEW OF U.S. PATENT NO. 7,334,720 ............................................ 1
`
` THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE ........................................................ 3
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘720 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW ...... 7
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘720 PATENT SHOULD
`BE TREATED AS A SINGLE PETITION HAVING A LENGTH IN
`VIOLATION OF 37 CFR 42.24(a)(iii) ........................................................... 9
`
`
`V.
`
` CLAIMS 13 AND 14 ARE DIRECTED TO STATUTORY SUBJECT
`MATTER ....................................................................................................... 12
`
`
`VI.
`
`INVALIDITY IN LIGHT OF STEFIK HAS ALREADY BEEN RAISED
`IN ANOTHER PROCEEDING ..................................................................... 14
`
`
`VII. STEFIK ‘235 and STEFIK ‘980 ARE NOT A SINGLE REFERENCE ...... 15
`
`VIII. COMBINATION OF STEFIK ‘235 AND GRUSE IS UNSUPPORTED AS
`PETITIONER HAS NOT PROVEN THAT STEFIK ‘235 AND STEFIK
`‘980 ARE A SINGLE REFERENCE ............................................................ 18
`
`
`IX. GRUSE HAS NOT BEEN SHOWN TO BE 102(A) PRIOR ART
`AGAINST THE CHALLENGED CLAIMS ................................................. 18
`
`
`X.
`
`
`
` CONCLUSION .............................................................................................. 21
`
`
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`- i -
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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, S5402-5443
`
`2003-2023
`
`Reserved
`
`2024
`
`Samsung’s Motion To Stay Litigation Pending CBM Review
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`
`
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`- ii -
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`
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`Patent Owner sets forth below, in its Preliminary Response, why no Covered
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`Business Method (CBM) review should be instituted for the patent-at-issue.
`
`Arguments presented herein are presented without prejudice to presenting
`
`additional arguments in a later response should the PTAB institute a CBM review.
`
`
`
`I.
`
`OVERVIEW OF U.S. PATENT NO. 7,334,720
`
`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. 7,334,720 (hereinafter “the ‘720 patent”)
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`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
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 6-14.
`
`Preferred embodiments described in the first paragraph of col. 16 illustrate
`
`this further: “FIG. 7 ... shows a variety of content access terminals for accessing
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`data supply computer system 120 over internet 142. The terminals are provided
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`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
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`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
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`and mobile communications devices 152. Col. 16, lines 19-33.
`
`Referring to preferred embodiments, the ‘720 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 24, lines 25-30. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. See id. The 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,
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`such as record labels, movie studios, and software providers. See col. 14, lines 5-
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`13. When a user accesses the system, he or she is able to select content to purchase
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`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 payment data. See
`
`col. 8, lines 4-7. 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
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`7-9.
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`- 2 -
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`II.
`
`THE CHALLENGED CLAIMS ARE NOT DIRECTED TO A
`FINANCIAL PRODUCT OR SERVICE
`
`Samsung Electronics America, Inc., et al. (collectively “Petitioner”) has
`
`cited claim 14 as being the “exemplary” basis for requesting that a covered
`
`business method review be instituted. Petition at 9. Since claim 14 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 14
`
`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.
`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.
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`- 3 -
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`Schumer). This remark tends to support the notion that “financial
`product or service” should be interpreted broadly.
`
`
`Regardless of this explanation, it is improper for this tribunal to rely on the
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`legislative history of the AIA to determine the specific issue before it, i.e., whether
`
`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).
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`“[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.,
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`545 U.S. 546, 568 (2005). Because Section 18 is unambiguously limited to
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`“financial product[s] and service[s],” there is no reason to look to the statements of
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`a single Senator to re-tool text that was approved by both houses of Congress and
`
`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
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`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
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`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
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`subject to their own distinctive post-grant administrative review.” (Exhibit 2001,
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`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
`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
`
`
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`- 5 -
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`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 14 recites:
`
`14. A method of providing data from a data supplier to a data
`
`carrier, the method comprising:
`
`reading payment data from the data carrier;
`
`forwarding the payment data to a payment validation system;
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`- 6 -
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`retrieving data from the data supplier;
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`writing the retrieved data into the data carrier;
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`receiving at least one access rule from the data supplier; and
`
`writing the at least one access rule into the data carrier, the at
`
`least one access rule specifying at least one condition for accessing
`
`the retrieved data written into the data carrier, the at least one
`
`condition being dependent upon the amount of payment associated
`
`with the payment data forwarded to the payment validation system.
`
`Rather than recite the “practice, administration, or management of a financial
`
`product or service,” claim 14 actually omits the specifics of how payment is made
`
`and focuses on technical steps that take place with respect to data and at least one
`
`access rule on a user device. Claim 14, 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.
`
`
`
`III. THE CHALLENGED CLAIMS OF THE ‘720 PATENT ARE
`TECHNOLOGICAL INVENTIONS EXEMPT FROM CBM REVIEW
`
`As set forth in 37 CFR 42.301(a), even if claim 14 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
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`
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`product or service,” Petitioner must show that claim 14 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
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`basis for instituting a CBM review) if “the claimed subject matter as a whole
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`recites a technological feature that is novel and unobvious over the prior art; and
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`solves a technical problem using a technical solution.”
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`Claim 14, 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 data access terminal of
`
`claim 14 is writing data and at least one access rule from a data supplier into a data
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`carrier, 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 carrier from
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`which payment data is read and to which retrieved data and at least one access rule
`
`from a data supplier are written.
`
`Section III.D. of the Petition also does not allege, much less prove, that
`
`reading payment data and at least one access rule from the data carrier and writing
`
`the retrieved data and the at least one access rule from the data supplier into the
`
`data carrier were known at the time of the invention of the patent-at-issue. Thus,
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`as previously held in Epsilon Data Management, LLC et al. v. RPOST Comm. Ltd.,
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`CBM2014-00017, paper 21, page 8, any analysis in any other portion of the
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`- 8 -
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`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 ‘720 patent are not
`
`directed to technological inventions exempt from CBM review.
`
`
`
`IV. THE MULTIPLE PETITIONS AGAINST THE ‘720 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 CBM2014-00190) is one of two
`
`Petitions filed by Petitioner on the same day against the same patent (i.e., the ‘720
`
`patent). (The second Petition was filed in CBM2014-00196.) Both Petitions
`
`include a substantial amount of overlap and are at least directed to issues of
`
`invalidity in light of alleged prior art including the anticipation and obviousness of
`
`claims in the ‘720 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
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`- 9 -
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`circumvent the page limits of 37 CFR 42.24(a)(1)(iii) by filing two separate but
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`overlapping Petitions.
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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.”
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`However, the Petitioner here instead effectively sought to grant its own motion by
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`filing two allegedly separate petitions, each within the 80-page limit and without
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`showing “how a waiver of the page limits is in the interests of justice.” Clearly, if
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`there is no requirement for the Petitioner to file its allegations of invalidity over
`
`alleged prior art in a single Petition meeting the page limits set forth by the PTAB,
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`the requirements of Section 42.24(a)(2) are meaningless. Thus, Petitioner’s two
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`Petitions in CBM2014-00196 and -00190 should be treated as a single Petition
`
`beyond the page limits set forth by 37 CFR 42.24(a)(1) and each should be denied
`
`on that basis alone.
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`- 10 -
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`Moreover, allowing more than one CBM request on the same patent by a
`
`single Petitioner is counter to “the just, speedy, and inexpensive resolution of every
`
`proceeding” and invites an unending stream of Petitions filed by Petitioners in an
`
`effort to drown the Patent Owner’s patents in administrative proceedings, as indeed
`
`has happened in the case of this patent family. The PTAB has previously allowed
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`another petitioner to file multiple CBMs against a single patent in the patent family
`
`of the patent under review. See CBM2014-00102 and -00103 for 8,118,221,
`
`CBM2014-00104 and -00105 for 7,334,720 (the patent under review), CBM2014-
`
`00106 and -00107 for 8,033,458, CBM2014-00108 and -00109 for 8,061,598,
`
`CBM2014-00110 and -00111 for 8,336,772 and CBM2014-00112 and -00113 for
`
`7,942,317. However, the result has been a continuing barrage of filings such that
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`the other petitioner subsequently filed another 9 petitions against the same six
`
`patents – at least one additional petition for each patent, and, in the cases of
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`7,334,720 and 8,336,772, two and three more petitions each, respectively.
`
`Together with the ten petitions for the present Petitioner, the six patents in the
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`patent family under review have now been subject to 31 different petitions. Thus,
`
`of the 277 petitions filed through the end of 2014, 31/277 or more than 11% of all
`
`CBMs ever filed have targeted only six patents belonging to the same assignee.
`
`Clearly, the PTAB should enforce the single Petition requirements in order to meet
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`- 11 -
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`the requirements of 37 C.F.R. 42.1 that requires “the just, speedy, and inexpensive
`
`resolution of every proceeding.”
`
`
`
`V.
`
`
`
`CLAIMS 13 AND 14 ARE DIRECTED TO STATUTORY SUBJECT
`MATTER
`
`Petitioner alleges that claims 13 and 14 are “patent ineligible under 35
`
`U.S.C. § 101.” Petition at 22-37. Petitioner further argues that “claims 13 and 14
`
`of the ‘720 Patent does not add anything meaningful that would prevent claims 13
`
`and 14 from effectively preempting all relevant uses of the general idea of using a
`
`third party to validate payments.” Id. at 33. However, such an assertion is made
`
`without any reference to the challenged claims that, in fact, show the challenged
`
`claims actually are directed to more narrow inventions than “all relevant uses of
`
`the general idea of using a third party to validate payments.” Claim 13 depends
`
`from claim 3. Claim 3 recites:
`
`code responsive to the payment validation data to receive at
`
`least one access rule from the data supplier and to write the at least
`
`one access rule into the data carrier, the at least one access rule
`
`specifying at least one condition for accessing the retrieved data
`
`written into the data carrier, the at least one condition being dependent
`
`upon the amount of payment associated with the payment data
`
`forwarded to the payment validation system.
`- 12 -
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`Given that one could still “us[e] a third party to validate payments” without, for
`
`example, “the at least one access rule specifying at least one condition for
`
`accessing the retrieved data written into the data carrier, the at least one condition
`
`being dependent upon the amount of payment associated with the payment data
`
`forwarded to the payment validation system,” it can be seen that claim 13 is not
`
`preemptory as asserted and is, at least for that reason, directed to statutory subject
`
`matter.
`
`Claim 14 recites “writing the at least one access rule into the data carrier, the
`
`at least one access rule specifying at least one condition for accessing the retrieved
`
`data written into the data carrier, the at least one condition being dependent upon
`
`the amount of payment associated with the payment data forwarded to the payment
`
`validation system.” Given that one could still “us[e] a third party to validate
`
`payments” without, for example, “writing the at least one access rule into the data
`
`carrier, the at least one access rule specifying at least one condition for accessing
`
`the retrieved data written into the data carrier, the at least one condition being
`
`dependent upon the amount of payment associated with the payment data
`
`forwarded to the payment validation system,” it can be seen that claim 14 is not
`
`preemptory as asserted and is, at least for that reason, directed to statutory subject
`
`matter.
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`- 13 -
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`
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`VI.
`
`INVALIDITY IN LIGHT OF STEFIK HAS ALREADY BEEN RAISED
`IN ANOTHER PROCEEDING
`
`Petitioner contends that WO/00/08909 (“Gruse”) in combination with Stefik
`
`‘235 (i.e., U.S. Patent No. 5,530,235) renders obvious claims 13 and 14. Petition
`
`at 37. However, in CBM2014-00104, an earlier petitioner already raised the issues
`
`of: (1) anticipation of claims 13 and 14 in light of Stefik ‘235, (2) obviousness of
`
`claims 13 and 14 in light of Stefik ‘235 and Stefik ‘980 (U.S. Patent No.
`
`5,629,980), and (3) obviousness of claims 13 and 14 in light of Stefik ‘235, Stefik
`
`‘980 and two other references individually. When enacting the post-grant review
`
`proceedings, Congress explicitly sought to protect patent owners from serial
`
`attacks, such as this one, by including 35 U.S.C. 325(d) that provides in pertinent
`
`part “In determining whether to institute or order a proceeding …, the Director
`
`may take into account whether, and reject the petition or request because, the same
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`or substantially the same prior art or arguments previously were presented to the
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`Office.” In this case, the same prior art, Stefik ‘235, has been applied to the same
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`claims (i.e., claims 13 and 14) in both the current proceedings and CBM2014-
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`00104. Indeed, Petitioner was not only aware of the contents of the CBM2014-
`
`00104 Petition prior to filing this Petition, Petitioner even agreed in litigation to be
`
`bound by the results of that proceeding if the Texas litigation was to stayed. See
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`footnote 4, page 3 of Exhibit 2024 (“should the Court grant Defendants’ Motion
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`- 14 -
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`To Stay Pending CBM review, the present Defendants would stipulate to be bound
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`to the same extent as Apple is under § 18(a)(1)(D) of the America Invents Act”).
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`In CBM2014-00104, the Petition, including the arguments based on Stefik,
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`was denied in its entirety. Thus, the Director should reject the petition under 35
`
`U.S.C. 325(d) as well.
`
`
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`VII. STEFIK ‘235 and STEFIK ‘980 ARE NOT A SINGLE REFERENCE
`
`The Petition alleges at page 37 that “Stefik ’235… incorporates Stefik ’980.”
`
`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
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`repository, as defined in co-pending application entitled ‘System for Controlling
`
`the Distribution and Use of Digital Works,’ serial number not yet assigned, which
`
`is assigned to the assignee of the present invention and which is herein
`
`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
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`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
`
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`- 15 -
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`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 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
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`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.
`
`Furthermore, the Petition does not allege that if Stefik ‘235 does not
`
`properly incorporate Stefik ‘980 by reference that it would have been obvious to do
`
`so. As a result, any reliance by the Petition on Stefik ‘980 is an acknowledgment
`
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`
`
`
`that the combination of Gruse and Stefik ‘235 does not actually render obvious
`
`claim 7. See, e.g., for claim 3: Petition at 43 (citing Stefik ‘980: Abstract), Petition
`
`at 49 (citing Stefik ‘980: 2:34-45), Petition at 50 (citing Stefik ‘980: FIG. 12; 7:14-
`
`17; 7:48-49; 14:16-39; 14:44-46), Petition at 54 (citing Stefik ‘980: Fig. 12; 14:11-
`
`50), Petition at 55 (citing Stefik ‘980: FIG. 12 and 14:15-27), Petition at 58 (citing
`
`Stefik ‘980: 8:11-20; 14:22-27; 17:1-6; 17:20-44; 19:6-8; 29:59-30:11; 32:21-26),
`
`Petition at 59 (citing Stefik ‘980: 8:11-20; 17:20-44; 29:59-64; 32:21-26), Petition
`
`at 61 (citing Stefik ‘980: 7:46-49), Petition at 66 (citing Stefik ‘980: Abstract;
`
`6:42-55; 10:28-32 and Table 1; 11:34-43; 11:59-12:7; 17:8-16; 18:9-16). See, e.g.,
`
`for claim 13: Petition at 67 (citing Stefik ‘980: 8:23-27; 13:48-50). See, e.g., for
`
`claim 14: Petition at 58 (citing Stefik ‘980: 8:11-20; 14:22-27; 17:1-6; 17:20-44;
`
`19:6-8; 29:59-30:11; 32:21-26), Petition at 59 (citing Stefik ‘980: 8:11-20; 17:20-
`
`44; 29:59-64; 32:21-26), Petition at 61 (citing Stefik ‘980: 7:46-49), Petition at 66
`
`(citing Stefik ‘980: Abstract; 6:42-55; 10:28-32 and Table 1; 11:34-43; 11:59-12:7;
`
`17:8-16; 18:9-16).
`
`Moreover, as described in the first full paragraph of the Petition at 45, the
`
`discussion of the external interface, which is the reason for combining Gruse with
`
`Stefik ‘235, is actually found in Stefik ‘980 (“Stefik ‘980 at FIGS. 2, 12, 7:43-56;
`
`14:11-50 (discussing external interface 1206 such as RS-232, PCMCIA, or
`
`FDDI).”).
`
`
`
`- 17 -
`
`
`
`
`
`VIII. COMBINATION OF STEFIK ‘235 AND GRUSE IS UNSUPPORTED AS
`PETITIONER HAS NOT PROVEN THAT STEFIK ‘235 AND STEFIK
`‘980 ARE A SINGLE REFERENCE
`
`Starting at page 37, the Petition alleges that claims 13 and 14 are obvious
`
`based on Gruse in combination with Stefik ‘235. As described in Section VII.
`
`above, Petitioner has not proven that the ‘235 and ‘980 patents are a single
`
`reference. As such, the Petition has not provided sufficient evidence that one of
`
`ordinary skill in the art would have combined Gruse with the ‘235 and ‘980
`
`patents.
`
`
`
`IX. GRUSE HAS NOT BEEN SHOWN TO BE 102(A) PRIOR ART
`AGAINST THE CHALLENGED CLAIMS
`
`The Petition alleges that “Gruse ... qualifies as prior art under 35 U.S.C.
`
`
`
`§ 102(a)” and discusses various dates (e.g., filing dates of priority applications)
`
`related to Gruse. Petition at 4. However, the only relevant date with respect to
`
`Gruse is its publication date: February 24, 2000. Gruse is not alleged to be prior
`
`art under 35 U.S.C. § 102(e), and even if it was alleged to be so, prior art under 35
`
`U.S.C. § 102(e) is improper in CBM proceedings. See Meridianlink, Inc. v. DH
`
`Holdings, LLC, CBM2013-00008, Paper 24 (Sept. 12, 2013) (citing Section
`
`18(a)(1)(C) of the America Invents Act).
`
`
`
`- 18 -
`
`
`
`
`
`In order to attempt to overcome the fact that the publication date of Gruse
`
`(i.e., Feb. 24, 2000) is after the filing date (i.e., Oct. 25, 1999) of the Great Britain
`
`priority document (Exhibit 1008) to which priority is claimed, the Petition alleges
`
`that the challenged claims are not entitled to the filing date of the Great Britain
`
`priority document. However, Petitioner has not met its burden of proof to establish
`
`that the challenged claims are not entitled to the filing date of the Great Britain
`
`priority document.
`
`
`
`The Petition alleges that the Great Britain application “fails to support many
`
`limitations recited in the Challenged Claims” but then only attempts to explain in
`
`detail1 why the Great Britain application does not, with respect to claim 3, support:
`
`code responsive to payment validation data to receive at least
`
`one access rule from the data supplier and to write the at least one
`
`access rule into the data carrier, the at least one condition being
`
`dependent upon the amount of payment associated with the payment
`
`data forwarded to the payment validation system.
`
`See Petition at 19-20.
`
`To support its allegations, the Petition creates a straw man argument that the
`
`second sentence of the first full paragraph of page 4 of the Great Britain
`
`1 Without providing any details, the Petition also states “Similarly recited
`
`limitations from the asserted claim 14 are likewise unsupported.” Petition at 21.
`
`
`
`- 19 -
`
`
`
`application does not support the limitation allegedly missing from the Great Britain
`
`application. Petition at 20. However, the Petition ignores that in addition to other
`
`disclosures in the priority document, the paragraph in the Great Britain application
`
`before the one cited by Petitioner (crossing pages 3 and 4) recites:
`
`
`
`The data storage means and/or the retrieval device can be
`
`provided with access control means to prevent unauthorised access to
`
`the downloaded data. Alternatively, this access control means can be
`
`used to stop or provide only limited access of the user to the
`
`downloaded data in accordance with the amount paid. Thus, for
`
`example, a complete set of data information relating to a particular
`
`topic, a particular music track, or a particular software package might
`
`be downloaded, although access to part of the data set might thereafter
`
`be controlled by payments made by a user at a later stage. Thus, a user
`
`could pay to enable an extra level on a game or to enable further
`
`tracks of an album.
`
`Thus, the Petition fails to prove that claims 13 and 14 are not supported by
`
`the Great Britain application. As a result, Gruse has not been shown to be
`
`prior art under 35 U.S.C. § 102(a), and the combination of Gruse and Stefik
`
`is thus improper for that reason as well.
`
`
`
`
`
`- 20 -
`
`
`
`X.
`
`CONCLUSION
`
`
`
`The Petition does not set forth a basis upon which to institute a CBM review,
`
`the claims are directed to statutory subject matter, the invalidity of the claims in
`
`light of Stefik and other references has already been raised in another proceeding
`
`(CBM2014-00104), Gruse has not been shown to be proper prior art to the
`
`challenged claims, and Petitioner’s Petition should be denied.
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,29
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