UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`SAMSUNG ELECTRONICS AMERICA, INC., and
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`SAMSUNG ELECTRONICS CO., LTD.,
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`Petitioner,
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`and
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`APPLE INC.,
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`Petitioner,
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`v.
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`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001901
`Patent 7,334,720 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
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`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`1 CBM2015-00118 (U.S. Patent 7,334,720 B2) was consolidated with this proceed-
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`ing. Paper 31, 6-7.
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`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC., and
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`and
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`APPLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2014-001901
`Patent 7,334,720 B2
`______________________
`
`Before the Honorable JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY
`
`
`1 CBM2015-00118 (U.S. Patent 7,334,720 B2) was consolidated with this proceed-
`
`ing. Paper 31, 6-7.
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`By distinguishing the claims there from the type of claims here, BASCOM
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`supports Petitioner, not PO. In BASCOM the Federal Circuit confirmed that it
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`would have ruled differently if it had confronted claims to “an abstract-idea-based
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`solution implemented with generic technical components in a conventional way.”
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`BASCOM Global Internet Servs. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL
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`3514158, at *6, *7 (June 27, 2016). As established both by the unrebutted evi-
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`dence here and by this Board’s detailed findings, that quoted phrase describes PO’s
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`claims. The Board’s Final Written Decision was correct.
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`PO has not even attempted to rebut Petitioner’s Step 2 evidence that all
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`claimed hardware was conventional, that all claimed functions performed by that
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`conventional hardware were conventional, and that there is nothing inventive in the
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`claimed combinations. See, e.g., Reply at 11-21; Ex.1003 ¶¶ 113-128. PO similarly
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`ignores the Board’s findings that “the solution provided by the challenged claim is
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`not rooted in specific computer technology, but is based on conditioning access to
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`content based on payment or rules,” and the ‘720 “treats as well-known and con-
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`ventional all potentially technical aspects” of the Claims. FWD (Pap. 47) 16, 12.
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`That set of evidence and findings defeats PO’s conclusory contention that its
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`claims “improve[] the functioning of the data access terminal.” PO’s Notice (Pap.
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`45 (“N”)) 2-3. PO’s claims “merely rely on conventional devices and computer
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`processes operating in their ‘normal, expected manner.’” FWD 17 (citing OIP
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`1
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`CBM2014-00190
`Patent 7,334,720 B2
`Techs., 788 F.3d at 1363; DDR, 773 F.3d at 1258-59). They “perform[] generic
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`computer functions such as storing, receiving, and extracting data” using “physical
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`components” that “behave exactly as expected according to their ordinary use” and
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`“merely provide a generic environment in which to carry out the abstract idea.” In
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`re TLI Commc’ns LLC, No. 2015-1372, 2016 WL 2865693, at *3, *4, *7 (Fed. Cir.
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`May 17, 2016) (ineligible claims “directed to the use of conventional or generic
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`technology”). PO’s claims thus achieve no “result that overrides the routine and
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`conventional uses of the recited devices and functions” and “are ‘specified at a
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`high level of generality,’ which the Federal Circuit has found to be ‘insufficient to
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`supply an ‘inventive concept.’” FWD 17-18 (citing Ultramercial, 772 F.3d at 716).
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`For the same reasons, there is no merit to PO’s new, waived argument that it
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`was “inventive” to combine payment data, content data, and rules on the data car-
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`rier. N 2-3. PO’s specification admits: “The physical embodiment of the system is
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`not critical and a skilled person will understand that the terminals, data processing
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`systems and the like can all take a variety of forms.” Ex. 1001 12:38-41. Further,
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`as the Board found, the prior art discloses storing different types of content to-
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`gether, and combining rules and content on a data carrier does not give rise to an
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`inventive concept. See, e.g., FWD 19. The Board correctly rejected PO’s actual
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`argued combination of two stored elements (FWD 19-20) as conventional, and the
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`unrebutted evidence here confirms that the combination newly argued by PO here
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`2
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`CBM2014-00190
`Patent 7,334,720 B2
`was likewise conventional before the priority date. See Exs. 1004 5:19-67, 7:63-
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`8:4; 1005 7:23-33, 9:59-60; 1006, 89:6-7, 92:24-26, 96:19-21, 105:5-7; 1003 ¶¶
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`31-128 (Bloom). Similarly, the Federal Circuit has repeatedly held that combining
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`different types of data is not inventive. See, e.g., Digitech Image Techs., LLC v. El-
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`ecs. For Imaging, Inc., 758 F.3d at 1351 (combining two data sets into device pro-
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`file); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d at 1368 (storing
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`two data types in database); Internet Patents Corp. v. Active Network, Inc., 790
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`F.3d at 1349 (“combining information” “to form” an output); see also, e.g., Reply
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`11-21.2 In short, PO’s new, waived argument fails for the same reasons that its
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`briefed arguments do.
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`In contrast to BASCOM’s “limited record” with the owner’s allegations
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`taken as true, BASCOM, at *4, *6, *7, here the wealth of unrebutted evidence and
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`caselaw confirms ineligibility, and PO proffers no evidentiary or caselaw support
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`to supply the inventive concept that is clearly lacking in the Claims.
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`2 Despite PO’s contrary suggestion (N 2), its own cited cases confirm preemption
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`is still not the test. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., No. 2015-1570,
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`2016 WL 3606624, at *7 (Fed. Cir. July 5, 2016); BASCOM, at *8 (Ultramercial’s
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`limitations “narrow[ing] the scope of protection through additional ‘conventional’
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`steps . . . did not make [them] any less abstract”). See Reply 22-31; FWD 21-22.
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`3
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`CBM2014-00190
`Patent 7,334,720 B2
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`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`
`
`Thomas A. Rozylowicz
`Reg. No. 50,620
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorney for Petitioner
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`Dated: July 26, 2016
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`(Control No. CBM2014-00190)
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`CBM2014-00190
`Patent 7,334,720 B2
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on July 26, 2016, a complete and entire copy of this Petitioner’s Response to
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`Patent Owner’s Notice of Supplemental Authority was provided via email to the
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`Patent Owner by serving the correspondence email addresses of record as follows:
`
`
`Michael R. Casey
`J. Scott Davidson
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
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`Email: mcasey@dbjg.com
` jsd@dbjg.com
` docket@dbjg.com
` SmartFlash-CBM@dbjg.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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