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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 52
`Entered: September 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG
`ELECTRONICS CO., LTD.,
`Petitioners,
`
`And
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-001901
`Patent 7,334,720 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00118 (U.S. Patent 7,334,720 B2) was consolidated with this
`proceeding. Paper 31, 6–7.
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`INTRODUCTION
`
`Petitioners, Samsung Electronics America, Inc., Samsung Electronics
`
`Co., Ltd., and Samsung Telecommunications America, LLC (“Samsung”),2
`
`filed a Corrected Petition to institute covered business method patent review
`
`of claims 13 and 14 of U.S. Patent No. 7,334,720 B2 (Ex. 1001, “the ’720
`
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).3
`
`Paper 4 (“Pet.”). On April 2, 2015, we instituted a covered business method
`
`patent review (Paper 9, “Institution Decision” or “Inst. Dec.”) based upon
`
`Samsung’s assertion that claims 13 and 14 are directed to patent ineligible
`
`subject matter under 35 U.S.C. § 101. Inst. Dec. 18. Subsequent to
`
`institution, Smartflash filed a Patent Owner Response (Paper 23, “PO
`
`Resp.”), and Samsung filed a Reply (Paper 30, “Pet. Reply”) to Patent
`
`Owner’s Response. We consolidated Apple Inc.’s (“Apple”) challenge to
`
`claims 13 and 14 of the ’720 patent with this proceeding. Paper 31; Apple
`
`Inc. v. Smartflash LLC, Case CBM2015-00118 (Paper 11) (PTAB Aug. 6,
`
`2015).
`
`In our Final Decision, we determined that Petitioners had established,
`
`by a preponderance of the evidence, that claims 13 and 14 of the ’720 patent
`
`are unpatentable. Paper 47 (“Final Dec.”), 3, 30. Smartflash requests
`
`rehearing of the Final Decision. Paper 49 (“Request” or “Req. Reh’g”).
`
`Subsequent to its Rehearing Request, Smartflash, with authorization, filed a
`
`Notice of Supplemental Authority. Paper 50 (“Notice”). Petitioners filed a
`
`
`2 Samsung Telecommunications America, LLC, a petitioner at the time of
`filing, merged with and into Samsung Electronics America, Inc. as of
`January 1, 2015. Paper 8.
`
`3 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`
`2
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`Response to Smartflash’s Notice. Paper 51 (“Notice Resp.”). Having
`
`considered Patent Owner’s Request, we decline to modify our Final
`
`Decision.
`
`
`
`STANDARD OF REVIEW
`
`In covered business method patent review, the petitioner has the
`
`burden of showing unpatentability by a preponderance of the evidence. 35
`
`U.S.C. § 326(e). The standard of review for rehearing requests is set forth in
`
`37 C.F.R. § 42.71(d), which states:
`
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`Smartflash’s Request is based on a disagreement with our
`
`ANALYSIS
`
`determination that claims 13 and 14 (“the challenged claims”) are directed to
`
`patent-ineligible subject matter. Req. Reh’g 5. In its Request, Smartflash
`
`presents arguments directed to alleged similarities between the challenged
`
`claims and those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773
`
`F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and Enfish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327 (Fed. Cir. 2016), and alleged differences between the
`
`challenged claims and those at issue in Alice Corp. Pty. Ltd. v. CLS Bank
`
`Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).
`
`As noted above, our rules require that the requesting party
`
`“specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`3
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`
`§ 42.71(d) (emphasis added). In its Request, however, Smartflash does not
`
`identify any specific matter that we misapprehended or overlooked. Rather,
`
`the only citation to Smartflash’s previous arguments are general citations,
`
`without explanation as to how we misapprehended or overlooked any
`
`particular matter in the record. For example, with respect to Smartflash’s
`
`arguments regarding DDR Holdings, Smartflash simply notes that
`
`“[p]ursuant to 37 C.F.R. § 42.71(d), whether the challenged claims were
`
`similar to those in DDR Holdings was previously addressed. See PO Resp.
`
`11-20.” Request 7 n.3. Similarly, in Smartflash’s arguments regarding
`
`Alice, Smartflash simply notes that “[p]ursuant to 37 C.F.R. § 42.71(d), the
`
`issue of whether the claims are directed to patent eligible subject matter was
`
`previously addressed. See PO Resp. 11-33.” (id. at 11 n.4) and “[p]ursuant
`
`to 37 C.F.R. § 42.71(d), the issue of whether the challenged claims contain
`
`‘additional features’ beyond an abstract idea was previously addressed. See
`
`PO Resp. 17, 20” (id. at 13 n.5). These generic citations to large portions of
`
`the record do not identify, with any particularity, specific arguments that we
`
`may have misapprehended or overlooked.
`
`Rather than providing a proper request for rehearing, addressing
`
`particular matters that we previously misapprehended or overlooked,
`
`Smartflash’s Request provides new briefing by expounding on argument
`
`already made. Smartflash cannot simply allege that an “issue” (e.g., whether
`
`the claims are directed to an abstract idea) was previously addressed,
`
`generally, and proceed to present new argument on that issue in a request for
`
`rehearing. See 37 C.F.R. § 42.71.
`
`4
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`Smartflash’s arguments are either new or were addressed in our Final
`
`Decision. For example, Smartflash’s argument that the challenged claims
`
`are not directed to an abstract idea (Req. Reh’g 11–13) is new, and therefore,
`
`improper in a request for rehearing, because Smartflash did not argue the
`
`first step of the analysis articulated in Mayo and Alice in its Patent Owner
`
`Response. See PO Resp. 11–24; see also Paper 46 (transcript of oral
`
`hearing), 17:9–14 (Smartflash stating that “even if Patent Owner says
`
`nothing about [abstract idea], it is still the Petitioner’s burden to prove that
`
`the claims are directed to an abstract idea.”).
`
`To the extent portions of the Request are supported by Smartflash’s
`
`argument in the general citations to the record, we considered those
`
`arguments in our Final Decision, as even Patent Owner acknowledges. See,
`
`e.g., Req. Reh’g 7 (citing Final Dec. 16) (“The Board rejected Patent
`
`Owner’s reliance on DDR Holdings (at 16), holding that the challenged
`
`claims were not ‘rooted in computer technology in order to overcome a
`
`problem specifically arising in the realm of computer networks.’”).
`
`For example, Smartflash’s arguments about inventive concept (Req.
`
`Reh’g 5–7, 11–15) were addressed at pages 10–20 of our Final Decision,
`
`Smartflash’s arguments about preemption (Req. Reh’g. 6–7) were addressed
`
`at pages 20–22 of our Final Decision, and Smartflash’s arguments about
`
`DDR Holdings (Req. Reh’g. 6–10) were addressed at pages 14–18 of our
`
`Final Decision. Mere disagreement with our Final Decision also is not a
`
`proper basis for rehearing. Accordingly, Smartflash’s Request does not
`
`apprise us of sufficient reason to modify our Final Decision.
`
`Smartflash’s Notice of Supplemental Authority also does not alter the
`
`determination in our Final Decision. Smartflash characterized the Federal
`
`5
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`Circuit’s decision in BASCOM Global Internet Services, Inc. v. AT&T
`
`Mobility, LLC., 827 F.3d 1341, 1350 (Fed. Cir. 2016) as follows:
`
`The Federal Circuit concluded, at step two of Alice, that the
`claims did not “merely recite the abstract idea of filtering content
`along with the requirement to perform it on the Internet, or to
`perform it on a set of generic computer components.” Id. at *6-
`*7. The patent claimed “installation of a filtering tool at a
`specific location . . . with customizable filtering features specific
`to each end user.” Id. at *6. That design provided specific
`benefits over alternatives; it was not “conventional or generic.”
`Id.
`
`Notice 1. Relying on BASCOM, Smartflash contends that its claims “‘recite
`
`a specific, discrete implementation’ – concrete devices, systems, and
`
`methods – for purchasing, downloading, storing, and conditioning access to
`
`digital content.” Notice 2 (citation omitted). Using claim 3 of the ’720
`
`patent as an example,4 Smartflash contends that the challenged claims
`
`“describe[e] a system for content delivery that uses a data carrier that stores
`
`(1) payment data that a data access terminal transmits to a payment
`
`validation system; (2) content data delivered by a data supplier; and (3)
`
`access rules supplied by the data supplier –thus ‘improv[ing] an existing
`
`technological process.’” Id. at 2–3. According to Smartflash, the
`
`“specific arrangement of data elements and organization of transaction
`
`steps” “provides a technical solution that improves the functioning of the
`
`data access terminal.” Id. at 3. We disagree.
`
`
`
`As we stated in our Final Decision and Petitioners argue, the ’720
`
`patent specification treats as well-known and conventional all potentially
`
`technical elements of claims 13 and 14, the claimed code limitations perform
`
`
`4 We note that claim 13 depends from claim 3.
`
`6
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`generic computer functions, and the claims recite several generic and
`
`conventional data types. Final Dec. 12–13; Notice Resp. 1–2. These
`
`limitations of claims 13 and 14 do not “achiev[e] a result that overrides the
`
`routine and conventional use of the recited devices and functions.” Final
`
`Dec. 16–17. Rather, each of the challenged claims is “an abstract-idea-
`
`based solution implemented with generic technical components in a
`
`conventional way,” making it patent ineligible. See BASCOM, 827 F.3d at
`
`1351. Also, “[t]he concept of storing two different types of information5 in
`
`the same place or on the same device is an age old practice.” Final Dec. 19.
`
`For example,
`
`the prior art discloses products that could store both content and
`conditions for providing access to the content. See, e.g., Pet. 42
`(citing Ex. 1004, Abstract (describing a transportable unit storing
`both content and a control processor for controller access to that
`content)); Pet 66 (citing Ex. 1005, 18:9–16 (“Defining usage
`rights in terms of a language in combination with the hierarchical
`representation of a digital work enables the support of a wide
`variety of distribution and fee schemes. An example is the ability
`to attach multiple versions of a right to a work. So a creator may
`attach a PRINT right to make 5 copies for $10.00 and a PRINT
`right to make unlimited copies for $100.00. A purchaser may
`then choose which option best fits his needs.” (emphasis
`added))).
`
`Id. at 19–20.
`
`
`
`Lastly, Smartflash also reargues that DDR Holdings is controlling.
`
`Notice 3. As we discussed above, however, our Final Decision addresses
`
`DDR Holdings.
`
`
`5 We agree with Petitioners that Smartflash newly argues that combining
`payment data, content data, and rules on the data carrier is “inventive.”
`Notice 2–3; Notice Resp. 2; Final Decision 18–19.
`
`7
`
`
`
`CBM2014-00190
`Patent 7,334,720 B2
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Smartflash’s Rehearing Request is denied.
`
`
`
`
`
`PETITIONER SAMSUNG:
`
`Walter Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`axf@fr.com
`CBM39843-0003CP1@fr.com
`
`PETITIONER APPLE:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`Megan Raymond
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`Megan.raymond@ropesgray.com
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`
`
`8
`
`
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