UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`Case CBM2014-00190
`
`Patent 7,3 34,720
`
`PATENT OWNER’S RESPONSE
`
`

`
`V TABLE OF CONTENTS
`
`PATENT”OWNER’s LIST OF EXHIBITS .......................................................... .. iii
`
`I.
`
`INTRODUCTION .................................................................................... ..1
`
`II.
`
`2 STATEMENT OF MATERIAL FACTS ...................................................... ..3
`
`III.
`
`THE BLOOM DECLARATION SHOULD BE GIVEN LITTLE OR NO
`
`WEIGHT ........................................................................................................ ..3
`
`A.
`
`B.
`
`No Evidentiary Standard IS Disclosed in the Bloom Declaration....... ..3
`
`Dr. Bloom Is Not a Disinterested Party .............................................. ..4
`
`IV.
`
`OVERVIEW OF U.S. PATENT NO. 7,334,720 .......................................... ..6
`
`A.
`
`B.
`
`Overview of the Technology of the Patent ......................................... ..6
`
`Claim Construction ............................................................................. ..9
`
`CLAIMS l3 AND 14 ARE DIRECTED TO STATUTORY SUBJECT
`
`. MATTER ..................................................................................................... ..ll
`A.
`The TWo—Part Test for Statutory ‘Subject Matter ..........................
`ll
`
`B.
`
`The Claims Are Statutory Underthe Second Step of Mayo and Alice
`.....................................................................................................
`
`1
`
`1.
`
`2.
`
`Claim 13 .................................................................................. ..l4
`
`Claim 14 .................................................................................. ..2O
`
`C.
`
`The Claims Do Not Result in Inappropriate Preemption .................. ..22
`
`l.
`
`2.
`
`3.
`
`Preemption under DDR Holdings ........................................... ..22
`
`Preemption under Mayo and Alice ........................................ . ,..24
`
`Non-Infringing Alternatives Show a Lack of Preemption ...... ..27
`
`D.
`
`Evidence Relied Upon by the Bloom Declaration IS Not from the
`Appropriate Timeframe ..................................................................... ..32
`
`

`
`VI.
`
`PETITTONER HAS ALREADY LOST A CHALLENGE TO THE CLAIMS
`
`ON THE SAI\/IE STATUTORY GROUNDS IN ITS LITIGATION WITH
`
`PATENT OWNER ...................................................................................... ..34
`
`VII. THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER ......................................... ..l ......................................................... ..3 5
`
`VIII. CONCLUSION ............................................................................................ ..36
`
`

`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`. Exhibit Description
`
`F I
`
`2001
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`2002
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2023
`
`Reserved
`
`2024
`
`Samsung’s Motion To Stay Litigation Pending CBM Review
`
`2025-2048
`
`Reserved
`
`
`
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`
`from Smarzflaslz LLC et al. v. Apple, Inc, et al., Case No.
`
`
`Report and Recommendation (on Defendants’ Motions for
`
`
`
`* 6: 13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`
`Samsung Electronics Co. Ltd, et al., Case No. 6:13—CV-448
`
`(E.D. Tex.), dated Jan. 21, 2015
`
`
`
`2049
`
`2050
`
`
`
`
`
`Order adopting Report and Recommendation (on
`
`Defendants’ Motions for Summary Judgment of Invalidity
`
`Pursuant to 35 U.S.C. 101), from Smartflaslz LLC et al. v.
`
`Apple, Inc, et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`
`Smarzfiash LLC et al. V. Samsung Electronics Co. Ltd, et al.,
`
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`
`
`
`
`
`
`2055
`
`
`
`Deposition Transcript of Jeffrey A. Bloom dated May 19,
`
`20151
`‘
`
`
`—iii-
`
`

`
`
`
`
`
`Non-Confidential Portion of Deposition Transcript of Jeffrey
`
`A. Bloom dated May 20, 2015
`
`Confidential Portion of Deposition Transcript of Jeffrey A.
`
`Bloom dated May 20, 2015
`
` J
`Memorandum Opinion and’ Order (on Defendants’ Motions
`
`for Stay Pending the Outcome CBMS) from Smartflash LLC
`
`et al. V. Apple, Inc, et al., Case No. 6:13-CV-447 (E.D.
`
`TeX.), Smartflash LLC et al. v. Samsung Electronics Co. Ltd,
`
`et al., Case No. 6:13-CV-448 (E.D. Tex.), Smartflash LLC et
`
`al. V. Google, Inc, et al., Case No. 6:l4—CV-435 (E.D.'T€X.),
`
`and Smartflash LLC et al. V. Amazon, Inc., et al., Case No.
`
`6:14-CV—992 (E.D. Tex.) dated May 29, 2015
`
`
`
`Reserved
`
`Civil Docket Report from Smarflash LLC et al. v. Samsung
`
`Electronics Co. Ltd, et al., Case No. 6:l3—CV—448 (E.D.
`
`TeX.)
`
`
`
`
`
`Declaration of Emily E. Toohey in Support of Patent
`
`Owner’s Response
`
`-iV-
`
`
`
`2059-2062
`
`0
`
`2063
`
`2064
`
`

`
`I.
`
`INTRODUCTION
`
`Claims 13 and 14 of U.S. Patent 7,334,720 (“the ‘720 Patent”) are directed
`
`to statutory subject matter because they claim solutions “necessarily rooted in
`computer technology in order to overcome a problem specifically arising in the
`
`realm of computer networks.” DDR Holdings, LLC 12. Hotels. com, LP, 773 F.3d
`
`1245, 1257 (Fed. Cir. 2014). In particular, claims 13 and 14 of the ‘720 patent
`
`overcome the problem of data content piracy on the Internet “[b]y combining
`
`digital rights management with content data storage using a single carrier” such
`
`that “the ‘stored content data becomes mobile and can be accessed anywhere while
`
`retaining control over the stored data for the data content provider or data
`
`copyright owner.” EX.1001, ‘720 patent at 5:25-29. In other words, claims 13 and
`
`14 of the ‘720 patent are directed to a system and method that combine on the data
`
`carrier both the digital content and at least one access rule, so that access control to
`
`the digital content can be enforced prior to access to the digital content.
`
`Moreover, as demonstrated below, claims 13 and 14 of the v‘720 patent do
`
`not result in inappropriate preemption of “the Abstract Idea of Licensing and
`
`Regulating Access to Copyrighted Content” (Petition at 31), nor is there any
`
`evidence that a disproportionate amount of future innovation is foreclosed by
`
`claims 13 and 14.
`
`

`
`As set out in detail below, by Order dated February 13, 2015, Petitioner
`
`already lost in Federal Court the exact same purely legal issue the Board is
`
`considering here — Whether claims 13 and 14 are directed to statutory subject
`
`matter under 35 U.S.C. § 101. See Exhibit 2049, Report and Recommendation (on
`
`Defendants’ Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C.
`
`101) (hereinafter “Report and Recommendation”), from Smartflash LLC et al. V.
`
`Apple, Inc, et al, Case No. 6: 13—CV-447 (E.D. Tex.) and Smartflaslz LLC et al. 12.
`
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448 (E.D. Tex.), dated Jan.
`
`21, 2015, and Exhibit 2050, Order adopting Report and Recommendation (on
`
`Defendants’ Motions for Summary Judgment of Invalidity Pursuant to 35 U.S.C.
`
`101), from Smartfiaslz LLC et al. v. Apple, Inc, et al., Case No. 6:13-CV—447 (E.D.
`
`Tex.) and Smartflash LLC et al. V. Samsung Electronics Co. Ltd, et al, Case No.
`
`6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015.
`
`Finally, Patent Owner submits that the USPTO has already adjudicated the
`
`threshold question of Whether claims 13 and 14 of the ‘720 patent comport with 35
`
`U.S.C. § 101, which is a question of law, during the prosecution of the ‘720 patent.
`
`The USPTO is estopped from re-litigating this purely legal issue already
`
`considered and adjudicated by the USPTO.
`
`In support of this Patent Owner’s Response, reference will be made to
`
`concurrently filed Exhibits 2055-2057: (1) the non-confidential Deposition
`
`-2-
`
`

`
`Transcript of Jeffrey A. Bloom, PhD., dated May 19, 2015, (2) the non-
`
`confidential Deposition Transcript of Jeffrey A. Bloom, PhD., dated May 20, 2015,
`
`and (3) the confidential Deposition Transcript of Jeffrey A. Bloom, PhD., dated
`
`May 20, 2015, respectively. Those deposition transcripts refer to Exhibit 1003, the
`
`Declaration of Jeffrey A. Bloom, Ph.D. (hereinafter “the Bloom Declaration”).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The Bloom Declaration does not state that Dr. Bloom’s opinions
`
`presented therein were based on a “preponderance of the evidence” standard.
`
`2.
`
`The Bloom Declaration does not state that Dr. Bloom’s opinions
`
`presented therein were based on a “more likely than not” evidentiary Weight
`
`standard.
`
`III.
`
`THE BLOOM DECLARATION SHOULD BE GIVEN LITTLE OR NO
`
`WEIGHT
`
`A.
`
`No Evidentiary Standard Is Disclosed in the Bloom Declaration
`
`The Bloom Declaration does not disclose the underlying facts on which the
`
`opinions are based and is, therefore, entitled to little or no weight. 37 CFR 42.65
`
`(“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no Weight”). More specifically, the Bloom
`
`-3-
`
`

`
`ll
`:.>
`s4
`2y
`
`3 i§[
`
`,
`
` i
`
`Declaration does not state the evidentiary weight standard (e.g., substantial
`
`evidence versus preponderance of the evidence) that Dr. Bloom used in arriving at
`
`his conclusions. Given that there is no evidence that Dr. Bloom even knows how
`
`much weight need be relied upon to show that a claim is nonstatutory, the PTAB
`
`can only afford little or no weight to the testimony therein. To do otherwise would
`
`be to accepthis opinions without knowing “the underlying facts
`
`on which the
`
`opinion is based” (i.e., how much evidence he thinks shows any of his opinions
`
`discussed therein).
`
`For example, when Dr. Bloom opines that he believes a statement to be true
`
`or that he believes an element is inherently present, is that belief based on less than
`
`a preponderance of the evidence, or more? Without his having disclosed what
`
`evidentiary standard he used in forming his opinions, and given that there is no
`
`evidence that he even knew what evidentiary standard he was supposed to be
`
`using, the PTAB cannot rely on his‘ statements. Thus, the PTAB should find that
`
`his declaration is entitled to little or no weight.
`
`B.
`
`Dr. Bloom Is Not a Disinterested Party
`
`Paragraph 23 of the Bloom Declaration alleges that “the subject matter of
`
`claim 14 covers the abstract idea of enabling limited use of paid-for/licensed
`
`content.” However, as noted in paragraph 5 of the Bloom Declaration, Dr. Bloom
`
`-4-
`
`

`
`l.
`
`iz
`
`lla l l
`
`
`
`
`
`
`
`l.
`
`15Il 5l l
`
`is “currently Director of System Engineering and Software Development for
`
`Conditional Access and Identity Management Systems for SiriusXM radio.” Dr.
`
`Bloom further testified that SiriusXM radio has a product that enables paid for
`
`and/or licensed content to be stored locally and played back later in a disconnected
`
`fashion.
`
`Q. Does SiriusXM have a product or service that enables paid for
`
`and/or licensed content to be stored locally and played back later in a
`
`disconnected fashion from either the Internet or the satellite to which
`
`it received the inf- -- information?
`
`A. Yes, it does.
`
`Q. Can you describe that product for me, please, Without disclosing
`
`any confidential information?
`
`A. On—demand content can be downloaded and stored locally and then
`
`played at a later, off-line time.
`
`Q. What's the name of the product that performs that function?
`
`A. It's a feature in our Internet streaming product.
`
`Q. What's the name of the Internet streaming product?
`
`A. SiriusXM Internet Radio.
`
`See Exhibit 2056, 179:1-20.
`
`

`
`Moreover, when Dr. Bloom was questioned about the SiriusXM Internet
`
`Radio product‘
`
`B Dr. Bloom refused to testify about its
`
`operation alleging that the information was confidential. See e. g. , Exhibit 2057,-
`
`193217-194:8 ; 195:5-16. However, similarity between his employer’s products and
`
`the claims of the patent would provide Dr. Bloom with a motivation to be biased
`
`against the claims being found to be statutory subject matter under 35 U.S.C.
`
`§101.
`
`IV. OVERVIEW OF U.S. PATENT NO. 7,334,720
`
`A.
`
`Overview of the Technology of the Patent
`
`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”)
`
`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-l4.
`
`Preferred embodiments described in the first paragraph of col. 16 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
`
`-6-
`
`

`
`l r l
`
`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
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes l54, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 19-33.
`
`Referring to preferred embodiments, the ‘72O 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
`
`A 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,
`
`such as record labels, movie studios, and software providers. See col. 14, lines 5-
`
`13. 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 payment data. See
`
`col. 8, lines 4-7. The payment ‘validation system returns proof that the payment
`
`.7.
`
`

`
`Ll2
`it
`i,l,
`
`: l lt l ll
`
`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
`
`7-9.
`
`Col. 24, lines 46-48, discloses that “FIG. 13
`
`shows a flow chart for user
`
`access of stored data on a smart Flash card using a data access device such as the
`
`MP3 player of FIG. 1.” Col. 9, lines 21-23, discloses “The data access device uses
`
`. use rules to determine what access is permitted to data stored on the data
`
`carrier.” Col. 4, line 62 — col. 5, line 3, discloses “The carrier may
`
`store content
`
`' use rules pertaining to allowed use of stored data items. These use rules may be
`
`linked to payments made from the card to provide payment options such as access
`
`to buy content data outright; rental access to content data for a time period or for a
`
`specified number of access events; and/or rental/purchase, for example where
`
`rental use is provided together with an option to purchase content data at the
`
`reduced price after rental access has expired.” Further, as described in col. 9, lines
`
`36-37, “use status data [is retrieved] from the data carrier [to] indicat[e] past use of
`
`the stored data.” Thus, as described in col. 5, lines 25-29, “[b]y combiningdigital
`
`rights management with content data storage using a single carrier, the stored
`
`content data becomes mobile and can be accessed anywhere while retaining control
`
`over the stored data for the data content provider or data copyright owner.”
`
`

`
`iEi.
`
`53;
`lI,
`’:r
`l
`
`By using a system that combines on the data carrier both the digital content
`
`and the at least one access rule, access control to the digital content can be
`
`enforced prior to access to the digital content. By comparison, unlike a system that
`
`uses at least one access rule as claimed, when a DVD was physically rented for a
`
`rental period, the renter could continue to play the DVD, even if the renter kept the
`
`DVD past the rental period because the use rules were not associated with the
`
`DVD. Similarly, there was no way to track a use of the DVD such that a system
`
`could limit its playback to specific number of times (e.g., three times) or determine
`
`that the DVD had only been partially used.
`
`B.
`
`Claim Construction
`
`Petitioner has alleged that “payment data’ should be construed to include
`
`and be met by data that relates to previous, present and/or prospective paymen .”
`
`Petition at 5. However, “payment data” in the context of the claims of the ‘720
`
`patent should be interpreted to mean “data that can be used to make payment for
`
`conten ” when using a broadest reasonable interpretation}
`
`1VPatent Owner’s use of the “broadest reasonable interpretation” (BRI)
`
`standard herein is not an admission that the BRI standard is the proper standard for
`
`CBM proceedings such as this one. However, for the purposes of this proceeding
`
`based on the issues in the instituted proceeding, Patent Owner has presented its
`
`-9-
`
`

`
`The ‘720 patent, col. 21, lines 15-18, states “payment data for making a
`
`payment
`
`is received from the smart Flash card by the content access terminal
`
`I and forwarded to an ed-payment system.” That is, the payment data is usedfor
`
`making (1 payment. Furthermore, as can be seen in Figure 12C of the ‘72O patent,
`
`step S54 reads “PAYMENT FOR SCHEIVLE OWNER RECEIVED FROM CARD
`
`BY CONTENT ACCESS TERMINAL AND FORWARDED TO e-PAYI\/[ENT
`
`SYSTEM.” Step S55 then reads “PAYMENT RECORD DATA RECEIVED
`
`FROM e—PAYI\/TENT SYSTEM BY CONTENT ACCESS TERMINAL AND
`
`FORWARDED TO CARD.” Both of those steps precede step S56 which recites
`
`“PAYMENT RECORD DATA, PURCHASE REQUEST AND CARD
`
`REGISTRATION DATA TRANSMITTED TO SCHEME‘ OWNER.” Thus, as
`
`payment has not yet been made when the payment data of step S5 4 is sent,
`
`“payment data” should be interpreted to mean “data that canbe used to make
`
`payment for content.”
`
`arguments utilizing the BRI standard for “payment data.” Patent Owner reserves
`
`its right to argue for a different standard at a later date or in a different proceeding.
`
`-10-
`
`

`
`V.
`
`CLAIMS 13 AND 14 ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER
`
`A.
`
`The Two-Part Test for Statutory Subject Matter
`
`The Supreme Court articulated a tWo—part test for patentability in Mayo
`
`Collaborative Services V. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012),
`
`which has been followed by Alice Corp. Ply. V. CLS Bank [nt'l, 134 s. Ct. 2347
`
`(2014). The first step in the analysis is to determine whether the claims at issue are
`
`directed to patent-ineligible concepts. If the claims at issue are directed to a
`
`patent-ineligible concept, the second step of the analysis is to determine whether
`
`the limitations of the claims, individually and as ordered combinations, contain an
`
`inventive concept that transforms the nature of the claims into patent-eligible
`
`subject matter. Mayo, 132 S. Ct. at 1294.
`
`B.
`
`The Claims Are Statutory Under the Second Step of Mayo and Alice
`
`Post Mayo and Alice, the Federal Circuit has provided guidance on how to
`
`distinguish statutory claims, like those of the ‘720 patent, from non—statutory
`
`claims. In DDR Holdings, LLC V. Hotels. com, L.P., 773 F.3d 1245 (Fed. Cir.
`
`2014), the Federal Circuit analyzed claims, such as the ones at issue here, that have
`
`technological solutions to technological problems created by the nature of digital
`
`content and the Internet. The system of exemplary claim 19 included (a) a
`
`computer store containing the data needed to support operation ofthe system and
`
`(b) acomputer server (or processor) that was coupled to the computer store, where
`
`-11-
`
`

`
`3,
`e’
`
`ii1
`
`,.
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`9
`
`
`
`
`
`
`
`the claimed system was programmed to (by having code configured to) perform
`
`the solution to a network-specific problem. The computer server was
`
`A “programmed to” perform four steps. The first two steps are “(i) receive from the
`
`web browser ofa computer user a signal indicating activation of one of the links
`
`displayed by one of the first web pages; [and] (ii) automatically identify as the
`
`source page the one of the first web pages on which the link has been activated.”
`
`The third and fourth steps were “(iii) in response to identification of the source
`
`page, automatically retrieve the stored data corresponding to the source page; and
`
`(iv) using the data retrieved, automatically generate and transmit to the web
`
`browser a second web page that displays: (A) information associated with the
`
`commerce object associated with the link that has been activated, and (B) the
`
`plurality of visually perceptible elements visually corresponding to the source
`
`page.” The Court found the claims to be statutory because “the claimed solution is
`
`necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in the realm of computer networks.” Id. at 1257.
`
`Such is the case here too. Here, the claims are not directed to mental
`
`processes or processes performed using pen-and—paper, rather the claims are
`
`directed to particular devices that can download and store digital content into a
`
`data carrier. By using a system that combines on the data carrier both the digital
`
`content and payment data that can be forwarded to a payment validation system,
`
`-12-
`
`

`
`and by responding to payment Validation data when obtaining digital content, the
`
`claimed data access terminals enable digital content to be obtained effectively and
`
`
`
`legitimately.
`
`In addition, the data access terminal of claim 13 and the method of claim 14
`
`also utilize at least one access rule, also Written to the data carrier. The at least one
`
`access rule specifies 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. By using a system that combines on the data carrier both the digital
`
`content and the access rule, access control to the digital content can be enforced
`
`prior to access to the digital content and allowing subsequent use (e. g., playback)
`
`of the digital content to be portable and disconnected. By comparison, unlike a
`
`system that uses an access rule as claimed, when a DVD was physically rented,
`
`access conditions were not written to the DVD to define the rights based on an
`
`amount of amount of payment.
`
`Furthermore, the claims are rooted in computer technology in order to
`
`overcome a problem specifically arising in the realm of computer networks — that
`
`of digital data piracy, and, like in DDR Holdings, “address ... a challenge
`
`particular to the Internet.” 14'. at 1257. The Report and Recommendation too
`
`acknowledged this distinction, finding:
`
`-13-
`
`

`
`As in DDR Holdings, the patents here do not simply apply a known
`
`business practice from the pre-Internet world to computers or the
`
`Internet. “The claimed solution is necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the
`
`realm of computer networks.” Digital Rights Management is a
`
`technology that was developed after widespread use of the Internet.
`
`Entry into the Internet Era presented new and unique problems for
`
`digital content providers in combatting unauthorized use and
`
`reproduction of protected media content.
`
`Report and Recommendation at 19, lines 7-l2 (quoting DDR Holdings, 773 F.3d at
`
`1257) (internal citation omitted).
`
`1.
`
`Claim 13
`
`As discussed above, claim 13, which depends from claim 3, recites a data
`
`access terminal (a system) that parallels the structure of the statutory claim 19 in
`
`DDR Holdings. The table below sets forth a mapping of claim 3 of the ‘720 patent
`
`to claim 19 of the patent in DDR Holdings and shows that claim 13 is directed to
`
`statutory subject matter.
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`19. A system useful in an outsource
`
`“3. A data access terminal for retrieving
`
`

`
`1
`
`E,l
`
`i 3
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`provider serving web pages offering
`
`data from a data supplier and providing
`
`commercial opportunities, the system
`
`the retrieved data to a data carrier, the
`
`comprising:
`
`terminal comprising:”
`
`(a) a computer store containing data, for
`
`“a data carrier” that is used to store
`
`each of a plurality of first web pages,
`
`payment data, data retrieved from a data
`
`defining a plurality of visually
`perceptible elements, which visually
`
`supplier, and at least one access rule
`
`retrieved from the data supplier
`
`perceptible elements correspond to the
`
`plurality of first web pages; (i) wherein
`
`each of the first web pages belongs to
`
`one of a plurality of Web page owners;
`
`(ii) wherein each of the first web pages
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii)
`
`(b) a computer server at the outsource
`
`provider, which computer server is
`
`“processor coupled to the first interface,
`
`the data carrier interface, and the
`
`

`
`E i5 1:1
`
`
`
`».3,
`i3
`5
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`coupled to the computer store and
`
`
`
`
`
`program store for implementing the
`
`
`programmed to:
`stored code, the code comprising?’
`
`
`(i) receive from the web browser of a
`
`“code to read payment data from the
`
`
`
`
`
`
`
`
`computer user a signal indicating
`
`
`activation of one of the links displayed
`data to a payment validation systemg”
`
`_ by one of the first web pages;
`
` “code to receive payment validation
` (ii) automatically identify as the source
`
`
`
`
`
`page the one of the first web pages on
`
`data from the payment validation
`
`which the link has been activated;
`
`system;”
`
` (iii) in response to identification of the
`
`
`
`
`
`
`stored data corresponding to the source
`
`
`data supplier ;”
`
`page; and
`
`
`(iv) using the data retrieved,
`. “code responsive to the payment
`
`
`automatically generate and transmit to
`
`the web browser a second web page that
`
`validation data
`
`to Write the retrieved
`
`data into the data carrierg”
`
`displays: (A) information associated
`
`.
`“code responsive to the payment
`
`with the commerce object associated
`
`-16-
`
`source page, automatically retrieve the
`
`validation data to retrieve data from the
`
`“code responsive to the payment
`
`data carrier and to forward the payment L
`
`

`
`lfi
`J,
`li
`E3I
`
`EElra
`
`Claim element from DDR Holding
`
`Similar claim element from claim 3
`
`with the link that has been activated, and
`
`validation data to receive at least one
`
`(B) the plurality of visually perceptible
`
`access rule from the data supplier and to
`
`elements visually corresponding to the
`
`write the at least one access rule into the
`
`source page.
`
`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”
`
`Thus, like in DDR Holdings, when “the limitations of the
`
`claims are taken as [a]
`
`combination, the claims recite[] an invention that is not merely the routine or
`
`conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. Such a
`
`finding was further echoed by the Report and Recommendation when it held the
`
`“asserted claims
`
`recite specific ways of using distinct memories, data types, and
`
`use rules that amount to significantly more than the underlying abstract idea.
`
`Although in some claims the language is functional and somewhat generic, the
`
`-17-
`
`

`
`l ll
`
`lll l l
`
`
`
`claims. contain significant limitations on the scope of the inventions.” Report and
`Recommendation at 19, lines 1-4.
`.
`
`While it is the combination of elements that ultimately defines patentability,
`
`exemplary limitations show that the Petition has failed to show that claim 13 is
`non-statutory. For example, claim 13 (based on its dependence on claim 3)
`
`expressly 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.” The at least one access rule is
`
`written to the data carrier that also stores data received from the data supplier, and
`
`the Petition has not shown that such limitations were known, or were directed to
`
`mental or pen-and—paper activities.
`
`Pages 29 and 30 of the Petition allege with respect to that limitation that
`
`“This is no different than the compulsory licenses for terrestrial radio broadcasters
`
`(e.g., Bl\/H)?’ This does not show that the at least one access rule specifies at least
`
`one condition for accessing the retrieved data written into the data carrier, and that
`
`the at least one condition is dependent upon the amount of payment associated with
`
`-13-
`
`

`
`EE
`
`E l i ltE l {l3l1
`
`».
`l,
`
`I
`
`the payment data forwarded to the payment validation system. In fact, Dr. Bloom
`
`confirmed this when he testified:
`
`Exhibit 2057, l59:l4-18.
`
`Claim 13 (based on its dependence on claim 3) also recites “code responsive
`
`to the payment validation data to retrieve data from the data supplier and to Write
`
`the retrieved data into the data carrier.” The last paragraph of page 27 of the
`
`Petition analogizes this limitation to when “a paper—and—ink payment form [is] used
`
`in order to retrieve oversized items from loading docks (i.e.., at places like Toys-
`
`R-Us).” However, by relying on “oversized items,” it can be seen that the Petition
`
`is ignoring even the context of the problem -- that a technological solution is
`
`necessary to address the technological problem created by the nature of digital
`
`content and the Internet. Moreover, such an assertion ignores that the claim
`
`language actually requires that the retrieved data be Written to the data carrier from
`
`which the payment data was written —- something not possible With an “oversized
`
`-19-
`
`

`
`item” and a paper—and-ink payment form. Accordingly, claim 13 is directed to
`
`statutory subject matter under the two_-part test of Mayo and Alice.
`
`2.
`
`Claim 14
`
`Claim 14 recites a method of providing data from a data supplier to a data
`
`carrier. Like in DDR Holdings, when “the limitations of the
`
`claims are taken as
`
`[a] combination, the claims .recite[] an invention that is not merely the routine or
`
`conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. Such a
`
`finding was further echoed by the Report and Recommendation when it held the
`
`“asserted claims
`
`recite specific Ways of using distinct memories, data types, and
`
`use rules that amount to significantly more than the underlying abstract idea.
`
`Although in some claims the language is functional and somewhat generic, the
`
`claims contain significant limitations on the scope of the inventions.” Report and
`
`Recommendation at 19, lines 1-4.
`
`While it is the combination of elements that ultimately defines patentability,
`
`exemplary limitations show that the Petition has failed to show that claim 14 is
`
`non-statutory. For example, claim 14 expresslyrecites “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
`
`_2()_
`
`
`
`
`
`

`
`payment data forwarded to the payment Validation system.” The at least one
`
`access rule is written to the data carrier that also stores data received from the data
`
`supplier, and the Petition has not shown that such limitations were known or were
`
`directed to mental or pen-and—paper processes.
`
`Page1§*»29 and 30 of the Petition allege with respect to that limitationthat
`
`“This is no different than the compulsory licenses for terrestrial radio broadcasters
`
`(e.g., B/l\/11).” This does not show that the at least one access rule specifies at least
`
`one condition for accessing the retrieved data written into the data carrier, and tha