IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Hulst et al.
`Attorney Docket No.: 39843-0003CP1
`U.S. Patent No.: 7,334,720
`Issue Date:
`February 26, 2008
`
`Appl. Serial No.: 11/336,758
`
`Filing Date:
`January 19, 2006
`
`Title:
`DATA STORAGE AND ACCESS SYSTEMS
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
`
`REVIEW OF UNITED STATES PATENT NO. 7,334,720 PURSUANT TO 35
`
`U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`
`

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`Attorney Docket No 39843-0003CP1
`CBM of U.S. Patent No. 7,334,720
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`TABLE OF CONTENTS
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`I. 
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................... 1 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .................................. 1 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................ 1 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................... 2 
`PAYMENT OF FEES ..................................................................................... 2 
`II. 
`III.  REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ......................... 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.304(a) ................................... 2 
`B.  Challenge Under 37 § 42.304(b) and Relief Requested ............................. 2 
`C.  Claim Constructions under 37 C.F.R. §§ 42.104(b)(3) .............................. 4 
`CONSTRUCTION 1 – Payment data ................................................. 5 
`1. 
`D.  The ‘720 Patent is a Covered Business Method Patent .............................. 7 
`E.  The ‘720 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. 10 
`IV.  SUMMARY OF THE ‘720 PATENT ........................................................... 13 
`A.  Brief Description ............................................................................................ 13 
`B.  Summary of the Prosecution History of the ‘720 Patent .......................... 15 
`C.  The Effective Priority Date of the Claims of the ‘720 Patent .................. 17 
`V.  DEMONSTRATION OF A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘720 PATENT IS UNPATENTABLE ................. 22 
`A.  GROUND 1 – Claims 13 and 14 Are Unpatentable Under 35 U.S.C. §
`101 22 
`B.  GROUND 2 – Gruse In View of Stefik Renders Obvious Claims 13 and
`37 
`14
`1.  Overview of Gruse ............................................................................... 37 
`2.  Overview of Stefik ............................................................................... 42 
`Combinability of Gruse with Stefik .................................................. 43 
`3. 
`4.  Gruse In View of Stefik Renders Obvious Claims 13 and 14 ....... 47 
`VI.  CONCLUSION ............................................................................................. 68 
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`Attorney Docket No 39843-0003CP1
`CBM of U.S. Patent No. 7,334,720
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`SAMSUNG-1001 U.S. Patent No. 7,334,720 to Hulst et al. (“the ‘720 Patent”)
`
`EXHIBITS
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ‘720 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re the ‘720 Patent (“Bloom”)
`
`SAMSUNG-1004 U.S. Patent No. 5,530,235 (“Stefik ‘235”)
`
`SAMSUNG-1005 U.S. Patent No. 5,629,980 (“Stefik ‘980”)
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`SAMSUNG-1006 PCT Publication No. WO 00/08909 (“Gruse”)
`
`SAMSUNG-1007 PCT Application PCT/GB00/04110 (“the ‘110 Appln.” or
`“‘110”)
`
`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “‘227.2”)
`
`SAMSUNG-1009 Transitional Program for Covered Business Method Pa-tents—
`Definitions of Covered Business Method Patent and Technolog-
`ical Invention, 77 Fed. Reg. 157 (Aug. 14, 2012)
`
`SAMSUNG-1010 A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`
`SAMSUNG-1011 Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (Jul. 27, 2010)
`
`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered Oct. 8, 2013) at 11-13
`
`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Devel-op-
`ment Group, Inc., CBM2013-00017 Paper No. 8 (entered Oct.
`24, 2013)
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`ii
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`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered Nov. 19, 2013)
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`Attorney Docket No 39843-0003CP1
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`SAMSUNG-1015 RESERVED
`
`SAMSUNG-1016 RESERVED
`
`SAMSUNG-1017 RESERVED
`
`SAMSUNG-1018 RESERVED
`
`SAMSUNG-1019 RESERVED
`
`SAMSUNG-1020 RESERVED
`
`SAMSUNG-1021 RESERVED
`
`SAMSUNG-1022 RESERVED
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`SAMSUNG-1023 RESERVED
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`SAMSUNG-1024 RESERVED
`
`SAMSUNG-1025 RESERVED
`
`SAMSUNG-1026 RESERVED
`
`SAMSUNG-1027 RESERVED
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`SAMSUNG-1028 Weinstein “MasterCard Plans Point-of-Sale Product for Mer-
`chants Leery of Bank Cards”
`
`SAMSUNG-1029 Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S. Ct.
`1289 (2012)
`
`SAMSUNG-1030 Gottschalk v. Benson, 409 U.S. 63 (1972)
`
`iii
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`SAMSUNG-1031 Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
`(Fed. Cir. 2011)
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`Attorney Docket No 39843-0003CP1
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`SAMSUNG-1032 Bilski v. Kappos, 130 S. Ct. 3218 (2010)
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`SAMSUNG-1033 Alice Corp. v. CLS Bank International,134 S.Ct. 2347 (2014)
`
`SAMSUNG-1034 Bancorp Serv., L.L.C. v. Sun Life Assur. Co. (U.S.) 687 F.3d
`1266 (Fed. Cir. 2012)
`
`SAMSUNG-1035 Dealertrack, Inc. v. Huber, 674 F.3d 1323 (Fed. Cir. 2012)
`
`SAMSUNG-1036 SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed.
`Cir. 2010)
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`SAMSUNG-1037 In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
`
`SAMSUNG-1038 Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
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`SAMSUNG-1039 RESERVED
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`
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`iv
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`Three sister companies, Samsung Electronics America, Inc., Samsung Elec-
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`Attorney Docket No 39843-0003CP1
`CBM of U.S. Patent No. 7,334,720
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`tronics Co., Ltd., and Samsung Telecommunications America, LLC (“Petitioner”
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`or “Samsung”) petition for Covered Business Method Patent Review (“CBM”) un-
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`der 35 U.S.C. §§ 321 and § 18 of the Leahy-Smith American Invents Act of claims
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`13 and 14 (“the Challenged Claims”) of U.S. Patent No. 7,334,720. As explained
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`in this petition, there exists a reasonable likelihood that Samsung will prevail in
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`demonstrating unpatentability with respect to at least one of the Challenged Claims
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`based on teachings set forth in at least the references presented in this petition.
`
`Samsung respectfully submits that a CBM review should be instituted, and that the
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`Challenged Claims should be canceled as unpatentable.
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`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
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`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., and
`
`
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`Samsung Telecommunications America, LLC are jointly filing this Petition, and
`
`are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Samsung is not aware of any disclaimers or reexamination certificates for
`
`the ‘720 Patent. The ‘720 Patent is the subject of a number of civil actions includ-
`
`ing: Smartflash LLC et al. v. Apple, Inc., Case No. 6:13-cv-00447 and Smartflash
`
`et al v. Samsung Electronics Co. Ltd. et al, Case No. 6:13-cv-00448. It is also the
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`1
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`subject of the following Petitions for Covered Business Method Review: Apple
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`Attorney Docket No 39843-0003CP1
`CBM of U.S. Patent No. 7,334,720
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`Inc. v. Smartflash LLC, CBM2014-00104 and CBM2014-00105. Petitioner is con-
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`currently petitioning, in another petition assigned attorney docket number 39843-
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`0003CP2, for CBM review of the ‘720 Patent under grounds additional to those
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`presented in this petition.
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`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Samsung designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and
`
`Thomas Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available for ser-
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`vice at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-
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`783-5070) or by electronic service by email at CBM39843-0003CP1@fr.com.
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`PAYMENT OF FEES
`
`II.
`Samsung authorizes charges to Deposit Account No. 06-1050 for the fee set
`
`in 37 C.F.R. § 42.15(b) for this Petition and any related additional fees.
`
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
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`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Samsung certifies that the ‘720 Patent is available for CBM review. Sam-
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`sung is not barred or estopped from requesting this review challenging the Chal-
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`lenged Claims on the below-identified grounds.
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`B. Challenge Under 37 § 42.304(b) and Relief Requested
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`2
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`Samsung requests a CBM review of the Challenged Claims on the grounds
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`Attorney Docket No 39843-0003CP1
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`set forth in the table shown below, and requests that each of the Challenged Claims
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`be found unpatentable. An explanation of how these claims are unpatentable under
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`the statutory grounds identified below is provided in the form of detailed descrip-
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`tion that follows, indicating where each claim elements can be found in the cited
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`prior art, and the relevance of that prior art. Additional explanation and support for
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`each ground of rejection is set forth in Exhibit SAMSUNG-1003, the Declaration
`
`of Dr. Jeffrey Bloom (“Bloom”), referenced throughout this Petition.
`
`Ground
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`‘720 Patent Claims
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`Basis for Rejection
`
`Ground 1 13 and 14
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`§ 101
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`Ground 2 13 and 14
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`§ 103: Gruse in view of Stefik
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`The ‘720 Patent issued Feb. 26, 2008 from the ‘758 Appln., which was filed
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`Jan. 19, 2006 as a continuation of the ‘716 Appln. (now abandoned), which was
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`filed Apr. 25, 2002. The ‘716 Appln. is a National Stage Entry of the ‘110 Appln.
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`(SAMSUNG-1007), which was filed Oct. 25, 2000. The ‘110 Appln. claimed pri-
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`ority to United Kingdom Patent Appln. GB9925227.2 (SAMSUNG-1008, “the
`
``227.2 Appln.” or “227.2”), which was filed Oct. 25, 1999. However, as noted in
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`detail below in Section IV.C, because the ‘227.2 disclosure fails to support the
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`Challenged Claims, the effective filing date of the Challenged Claims is no earlier
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`than Oct. 25, 2000.
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`Stefik ‘235(SAMSUNG-1004, U.S. Patent No. 5,530,235), and Stefik ‘980
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`(SAMSUNG-1005, U.S. Patent No. 5,629,980), each qualify as prior art under 35
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`U.S.C. § 102(b). Specifically, Stefik ‘235 issued June 25, 1996, and Stefik ‘980 is-
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`sued May 13, 1997, each more than one year before the earliest effective filing
`
`date of the Challenged Claims.
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`Gruse (SAMSUNG-1006, PCT Publication No. WO00/08909) qualifies as
`
`prior art under 35 U.S.C. § 102(a). Specifically, Gruse is a publication of a PCT
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`Appln. (PCT/US99/18383) filed in the U.S. on Aug. 12, 1999, based on U.S. provi-
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`sional applns. filed as early as Aug. 13, 1998. Gruse was published on Feb. 24,
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`2000, more than two years before the Apr. 25, 2002 filing date of the earliest U.S.
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`National Phase Appln. to which the ‘720 Patent claims priority (i.e., the ‘716 Ap-
`
`pln.), and more than eight months before the Oct. 25, 2000 filing date of the ‘110
`
`Appln. filed outside the U.S.
`
`Accordingly, Stefik ‘235, Stefik ‘980, and Gruse are eligible under AIA §
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`18(a)(1)(C) as prior art for CBM review of the ‘720 Patent.
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`C. Claim Constructions under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to CBM review is given its “broadest reasonable construc-
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`tion in light of the specification of the patent in which it appears.” 37 C.F.R. §
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`4
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`42.100(b). Thus the words of the claim are given their plain meaning unless that
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`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed.
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`Cir. 1989). Petitioner submits, for the purposes of the CBM review only, that the
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`claim terms are presumed to take on their broadest reasonable interpretation in
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`view of the specification of the ‘720 Patent. 1
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`1. CONSTRUCTION 1 – Payment data
`For purposes of this CBM review, “payment data” should be construed to in-
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`clude and be met by data that relates to previous, present, and/or prospective pay-
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`ment.
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`Claims 2, 3, 12, and 14 of the ‘720 Patent each recite the term “payment
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`data.” Claim 3 of the ‘720 Patent (claim 13 depends from claim 3 and therefore in-
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`corporates the subject matter of claim 3), for example, recites the following - “code
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`to read payment data from the data carrier and to forward the payment data to a
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`payment validation system” and “at least one condition for accessing the retrieved
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`data written into the data carrier, the at least one condition being dependent upon
`
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`1 Because the standards of claim interpretation applied in litigation differ from
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`PTO proceedings, any interpretation of claim terms in this CBM review is not
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`binding upon Petitioner in any litigation related to the subject patent. See In re
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`Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
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`the amount of payment associated with the payment data forwarded to the payment
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`Attorney Docket No 39843-0003CP1
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`validation system.” A POSITA2 would understand that, as used in claims 2, 3, 12,
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`and 14, the term “payment data” indicates and is met by data that relates to previ-
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`ous, present, and/or prospective payment. Bloom at, e.g., ¶ 30.
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`This interpretation is consistent with the relevant disclosure in the specifica-
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`tion of the ‘720 Patent. Bloom at, e.g., ¶ 30. The ‘720 Patent describes,
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`e.g., “[d]ata storage and access systems . . . for downloading and paying for data,”
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`including a payment validation system that “validate[s] payment with an external
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`authority such as a bank or building society,” such that “[t]he combination of the
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`payment validation means with the data storage means allows the access to the
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`downloaded data which is to be stored by the data storage means, to be made con-
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`ditional upon checked and validated payment being made for the data.” ‘720 at Ab-
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`stract, 1:60-2:3. The ‘720 Patent’s description of making access to downloaded
`
`content data conditional upon checked and validated payment being made indicates
`
`that “payment data” may relate previous, present, and/or prospective pay-
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`ment. Bloom at, e.g., ¶ 30. The ‘720 Patent also states, e.g., in the Abstract, that
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`“[d]ata storage and access systems are described for downloading a paying for data
`
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`2 The term “POSITA”, as used in this Petition, refers to a Person of Ordinary Skill
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`In the Art at the ‘720 Patent’s effective filing date.
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`6
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`such as audio and video data, text, software, games, and other types of data” – fur-
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`Attorney Docket No 39843-0003CP1
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`ther supporting that “payment data”, as used in the claims of the ‘772 Patent, can
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`relate to present payment. See also ‘720 at 4:45-52 (“the portable data carrier fur-
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`ther comprises a program store for storing code . . . wherein the code comprises
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`code to output payment data from the payment data memory”), 3:49-64, 4:36-38.
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`In yet another example, the ‘720 Patent states that “[t]he carrier may also store
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`content use rules pertaining to allowed use of stored data items,” and that “these
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`use rules may be linked to payments made from [a] card . . .” – further supporting
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`that “payment data”, as used in the claims of the ‘772 Patent, can relate to previous
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`payment. ‘720 at 4:59-5:3; see also 5:4-11, 5:17-20.
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`As such, the disclosure in the specification of the ‘720 Patent is consistent
`
`with the term “payment data,” as used in claims 2, 3, 12, and 14, as it would be un-
`
`derstood by a POSITA: data that relates to previous, present, and/or prospective
`
`payment. Bloom at, e.g., ¶ 30. Thus, for purposes of this proceeding, “payment
`
`data” should be construed to include and be met by data that relates to previous,
`
`present, and/or prospective payment.
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`D. The ‘720 Patent is a Covered Business Method Patent
`The ‘720 Patent, which generally relates to systems and methods “for down-
`
`loading and paying for data” is a “covered business method patent” (“CBM pa-
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`tent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘720 at Abstract.
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`7
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`The AIA defines a CBM patent as “a patent that claims a method or corre-
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`Attorney Docket No 39843-0003CP1
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`sponding apparatus for performing data processing or other operations used in the
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`practice, administration, or management of a financial product or service” (empha-
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`ses added). AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The AIA’s legislative
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`history demonstrates that the term “financial product or service” should be “inter-
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`preted broadly,” encompassing patents “’claiming activities that are financial in na-
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`ture, incidental to a financial activity or complementary to a financial activity.’”
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`SAMSUNG-1009 at 48735 (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8,
`
`2011) (statement of Sen. Schumer)). Moreover, as the Guide to the Legislative His-
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`tory of the America Invents Act indicates, the language “practice, administration, or
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`management” is “intended to cover any ancillary activities related to a financial
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`product or service, including . . . marketing, customer interfaces [and] management
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`of data . . .” (emphases added). SAMSUNG-1010 at 635-36.
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`Augmenting the statutory language with the above-referenced clarifications
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`from the legislative history, and from the Guide to that legislative history, yields
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`the following definition of a CBM patent: a patent that claims a method or corre-
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`sponding apparatus for performing data processing or other operations used in ac-
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`tivities that are financial in nature, incidental to a financial activity, or complemen-
`
`tary to a financial activity, including the management of data. See AIA § 18(d)(1);
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`SAMSUNG-1009 at 48735; and SAMSUNG-1010 at 635-26.
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`In the words of the Patent Owner, the claims of the ‘720 Patent are directed
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`to a “portable data carrier” for “storing and paying for data.” See ‘720 at 1:6-8.
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`Claim 14 of the ‘720 Patent, for example, recites a “method of providing data from
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`a data supplier to a data carrier,” that includes “reading payment data from a data
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`carrier,” “forwarding the payment data to a payment validation system,” and “writ-
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`ing [an] access rule into the data carrier . . . dependent upon the amount of payment
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`associated with the payment data forwarded to the payment validation system.”
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`As an example, the method of claim 14 unquestionably is used for data pro-
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`cessing in the practice, administration, and management of financial products and
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`services; specifically, for processing payments for data downloads. Bloom at, e.g.,
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`¶ 23. Indeed, in a recent decision involving highly similar claims, the Board deter-
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`mined that selling a desired digital audio signal to a user constitutes financial activ-
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`ity. See SAMSUNG-1012 at 11-13 (“The cited entities may not provide typical fi-
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`nancial services, but . . . they do sell digital content, which is the financial activity
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`recited in claim 1”).
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` The specification of the ‘720 Patent, moreover, is replete with examples of
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`financial activity, stating that payment data forwarded to a payment validation sys-
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`tem may be “data relating to an actual payment made to the data supplier, or . . . a
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`record of a payment made to an e-payment system” that can be “coupled to banks.”
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`See ‘720 at 6:59-63, 13:46-58. Even if claim 14 did not explicitly reference finan-
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`cial activity, and it does, this description alone would be sufficient to establish that
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`the claimed method is a method for performing data processing used in the prac-
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`tice, administration, or management of a financial product or service and that,
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`therefore, the ‘720 Patent is a CBM patent. See SAMSUNG-1012 at 5, 6 (deter-
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`mining, based on a specification statement that ‘embodiments of the present inven-
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`tion have application to a wide range of industries’ including ‘financial services,’
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`despite the apparent lack of financial-related language in the claims); see also
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`SAMSUNG-1013 at 9-15 (“Although claim 8 does not expressly refer to financial
`
`activity . . . When applied to the activities listed [in the patent’s specification] . . .
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`the method of claim 8 represents a financial product or service”).
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`Thus, for at least the reasons described above, the ‘720 Patent is a CBM pa-
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`tent that is eligible for the review requested by Petitioner.
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`E.
`The ‘720 Patent Is Not Directed to a Technological Inven-
`tion, And Thus, Should Not Be Excluded From the Definition of a
`CBM Patent.
`
`The AIA excludes “patents for technological inventions” from the definition
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`of CBM patents. AIA § 18(d)(2). To determine when a patent covers a technological
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`invention, “the following will be considered on a case-by-case basis: whether the
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`claimed subject matter as a whole recites a technological feature that is novel and
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`unobvious over the prior art; and solves a technical problem using a technical solu-
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`tion.” 37 C.F.R. § 42.301 (emphasis added); see also SAMSUNG-1009 at 48736-
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`37 (USPTO clarified that to qualify as a technological invention, a patent must have
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`a novel, unobvious technological feature and a technical problem solved by a tech-
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`nical solution). “[A]bstract business concepts and their implementation, whether in
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`computers or otherwise,” are not included in the definition of “technological inven-
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`tions.” SAMSUNG-1010 at 634. Indeed, Congress has explained that accomplish-
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`ing a business process or method is not technological, whether or not that process or
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`method is novel. See id. Finally, to institute a CBM, a patent need only have one
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`claim directed to a covered business method, and not a technological invention. See,
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`e.g., SAMSUNG-1009 at 48736-37.
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`The claims of the ‘720 Patent fail to recite a novel and unobvious technolog-
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`ical feature, and fail to recite a technical problem solved by a technical solution. See
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`Bloom at, e.g., ¶ 24. Thus, the patent is subject to Section 18 review. Although the
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`independent claims of the ‘720 Patent recite computer-related terms such as “non-
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`volatile memory”, “data terminal”, and “data carrier”, Congress has explained that
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`simply reciting words describing generic technology such as “computer hardware, .
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`. .software, memory, computer-readable storage medium, [or] databases” does not
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`make a patent a technological invention. SAMSUNG-1010 at 634.
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`The specification of the ‘720 Patent confirms that the computer-related terms
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`recited in the ‘720 Patent’s claims relate to technology that is merely, in the words
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`of the Patent Owner, “conventional”: the specification states, for example, that “[t]he
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`data access terminal may be a conventional computer or, alternatively, it may be a
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`mobile phone” that terminal memory “can comprise any conventional storage de-
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`vice,” and that a “data access device . . . such as a portable audio/video player . . .
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`comprises a conventional dedicated computer system including a processor . . . pro-
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`gram memory . . . and timing and control logic . . . coupled by a data and communi-
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`cations bus.” ‘720 at 3:64-65; 16:62-65; 18:24-30. Consequently, the ‘720 Patent
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`claim is not transformed into a technological invention by their recitation of these
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`computer-related terms.
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`The ‘720 Patent fails even to recite a technical problem, and instead addresses
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`the non-technical task of allowing “owners of . . . data to make the data available
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`themselves over the internet without fear of loss of revenue . . . undermining the
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`position of data pirates.” ‘720 at 1:66-2:3, 5:25-26. The ‘720 Patent’s solution to
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`this non-technical problem is nothing more the combination of prior art structures to
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`achieve a normal, expected, and predictable result: the use of a data supply system,
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`content provision system, data terminal and data carrier to restrict access to data
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`based on payment. See, e.g., ‘720 at Abstract; 13:33-38. A teaching of a combina-
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`tion of prior art structures that achieves a predictable result does not “render a patent
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`a technological invention.” SAMSUNG-1009 at 48755. Indeed, “[a] person having
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`ordinary skill in the art at the time that the ‘720 Patent was filed would not have
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`considered the methods described and claimed by the ‘720 Patent to be technical”.
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`Bloom at, e.g., ¶ 24.
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`In sum, the AIA’s exclusion of “patents for technological inventions” from
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`the definition of CBM patents is not applicable here because the ‘720 Patent fails to
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`recite a novel and unobvious technological feature, and fails to recite a technical
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`problem solved by a technical solution. CBM review is therefore appropriate for the
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`‘720 Patent.
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`IV. SUMMARY OF THE ‘720 PATENT
`A. Brief Description
`The ‘720 Patent includes 18 claims, of which claims 1, 3 and 14 are inde-
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`pendent.
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`The claims of the ‘720 Patent generally relates to systems and methods “for
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`downloading and paying for data such as audio and video data, text, software,
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`[and] games . . . .” ‘720 at Abstract. The ‘720 Patent purports to address a specific
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`problem: “the growing prevalence of so-called data pirates” who “obtain data ei-
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`ther by unauthorized or legitimate means and then make this data available essen-
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`tially world-wide over the internet without authorization.” ‘720 at 1:17-19.
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`Within this context, the ‘720 Patent describes “combining digital right manage-
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`ment with content data storage,” and states that “[b]inding the data access and pay-
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`ment together allows the legitimate owners of the data to make the data available
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`themselves over the internet without fear of loss of revenue, thus undermining the
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`position of data pirates.” ‘720, at 1:66-2:3, 5:25-26.
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`Specifically, the ‘720 Patent discloses a data supply system 120 (as shown in
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`Fig. 6) coupled to a content provision system 100 (as shown in Fig. 5). ‘720, 13:
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`37-38. The data supply system includes content access terminals, e-payment sys-
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`tems, and a content access web server. See ‘772 at FIG. 6; 13: 30-63. The content
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`provision system 100 includes content providers and content publishers coupled to
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`content databases. See ‘772 at FIG. 5; 12:41-61; 14:66-15:13.
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`The ‘720 Patent also discloses a “portable data carrier for storing and paying
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`for data.” ‘720 at 1:5-8. The ‘720 Patent further discloses “use status data indicat-
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`ing a use status of data stored on the carrier, and use rules data indicating permissi-
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`ble use of data stored on the carrier.” ‘720 at 9:14-17. This disclosure is reflected
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`in the limitations of independent claim 1, which recites “reading the use status data
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`and use rules from the parameter memory that pertain to use of the at least one re-
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`quested content item; evaluating the use status data using the use rules to determine
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`whether access to the at least one requested content item stored in the content
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`memory is permitted….” ‘720 at 26:27-32.
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`In addition to the claimed features of “use status data” and “use rules,” inde-
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`pendent claims 3 and 14 of the ‘720 Patent recite an “access rule specifying at least
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`one condition for accessing the retrieved content data written into the data carrier,
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`the at least one condition being dependent on the amount of payment associated
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`with the payment data forwarded to the payment validation system.” ‘720 at
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`26:62-67; 28:16-19. Access rule data, according to the specification, “may be
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`stored by a content provider but is preferably held by the computer system, and
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`links a content identifier with an access rule, typically based upon a required pay-
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`ment value. . . .” See ‘720 at 7:28-30.
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`Summary of the Prosecution History of the ‘720 Patent
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`B.
`U.S. 7,334,720 issued on Feb. 26, 2008 from the ‘758 Appln.” filed on Jan.
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`19, 2006 initially with 74 claims.
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`During the prosecution of the ‘758 Appln., on Nov. 6, 2006, a Non-Final Of-
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`fice Action rejected pending claims 22, 23, 35-50 and 59-62 under 35 U.S.C.
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`§102(b) as anticipated by U.S. Patent 5,754,654 to Hiroya (“Hiroya”). See Non-
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`Final Office Action of Nov. 6, 2006 at 3-9.
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`In a response filed Feb. 6, 2007, Patent Owner amended claim 22 and as-
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`serted that the Hiroya “does not disclose status data and use rules stored in a pa-
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`rameter memory, wherein the use rules stored on the non-volatile memory are used
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`to analyze the use status data stored on the nonvolatile memory to determine
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`whether access to separately-stored requested content is permitted as required in
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`Applicants' claim 22 as amended.” See Response to Office Action of Feb. 6, 2007,
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`at 9 (emphasis added). Noting that the prior art disclosure of “electronic ticket in-
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`formation itself includes both the ticket data and the validity data, and that the elec-
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`tronic ticket information must be decrypted to be validated,” the Patent Owner rea-
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`soned that the prior art “does not disclose use status data stored separately from as-
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`sociated content data.” See id (emphasis added).
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`A Final Office Action mailed May 3, 2007 indicated an intent to allow
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`Claims 22, 23, and 35-50 because the applied prior art “does not disclose use status
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`data stored separately from associated content data [and that it] also fails to teach
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`writing separate access rules to an electronic ticket storage device, particularly
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`where the access rules contain conditions that are dependent upon an amount of
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`payment associated with the payment data forwarded to the payment validation
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`system.” See Final Office Action of May 3, 2007, at 4 (emphasis added).
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`On Sep. 4, 2007, the Patent Owner cancelled the remaining rejected claims
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`and without substantive amendments. See Response to Final Office Action of Sep.
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`4, 2007. Subsequently Claims 22, 23 and 35-50 were allowed, which are renum-
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`bered as claims 1-18 in the issued patent. See Notice of Allowance Oct. 4, 2007.
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`The Notice stated that “none of the cited prior art of the record discloses, teaches,
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`or fairly suggests claimed method and apparatus for controlling access to content
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`data on a data carrier where the data carrier comprising non-volatile data memory
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`storing content memory and non-volatile parameter memory storing use status and
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`use rules.” See id. at 2. The Notice further stated that “[t]he prior art is also silent
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`about the step of evaluating the use status data using the use rules to determine
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`whether access to the at least one requested content item stored in the content
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`memory is permitted and displaying to the user whether access is permitted for
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`each of the at least one requested content item stored in the data memory.” Id. at
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`2-3.
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`C. The Effective Priority Date of the Claims of the ‘720 Patent
`The ‘720 Patent is a continuation of the the ‘716 appln (SAMSUNG-1017),
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`which was filed Apr. 25, 2002 as a National Stage Entry of the ‘110 Appln.
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`(SAUMSUNG-1007), which was filed Oct. 25, 2000 outside the U.S. The ‘110
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`Appln. claimed priority to the ‘227.2 Appln. filed Oct. 25, 1999 in U.K.
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`As explained in detail below, however, because the specification of the
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`‘227.2 Appln. fails to support the Challenged Claims, the Challenged Claims do
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`not enjoy the priority date established by the ‘227.2 Appln. Rather, the effective
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`filing date of the Challenged Claims is no earlier than Oct. 25, 2000, the filing date
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`of the ‘110 Appln. See Bloom at, e.g., ¶109.
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`The ‘110 Appln. contains forty-sev