Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 2, 2015
`
`
`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 CBM2014-00192
`Patent 8,033,458 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: April 2, 2015
`
`
`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 CBM2014-00192
`Patent 8,033,458 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`INTRODUCTION
`
`A. Background
`Samsung Electronics America, Inc., and Samsung Electronics Co.,
`Ltd.(“Petitioner”) filed a Petition requesting covered business method patent
`review of claim 11 (the “challenged claim”) of U.S. Patent No. 8,033,458
`(Ex. 1001, “the ’458 patent”) pursuant to § 18 of the Leahy-Smith America
`Invents Act (“AIA”).1 Paper 2 (“Pet.”).2 Smartflash LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`covered business method patent review may not be instituted “unless . . . it is
`more likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.”
`After considering the Petition and Preliminary Response, we
`determine that the ’458 patent is a covered business method patent and that
`Petitioner has demonstrated that it is more likely than not that the challenged
`claim is unpatentable. Accordingly, we institute a covered business method
`patent review of claim 11 of the ’458 patent.
`
`B. Asserted Grounds
`Petitioner contends that the challenged claim is unpatentable under 35
`U.S.C. §§ 101 and/or 103 in view of Stefik ’235,3 Stefik ’980,4 and Gruse.5
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`2 Samsung Telecommunications America LLC, originally a Petitioner and
`real-party-in-interest at the time of filing the Petition, has merged with and
`into Petitioner Samsung Electronics America, Inc. as of January 1, 2015, and
`no longer exists as a separate corporate entity. Paper 6, 1.
`3 U.S. Patent No. 5,530,235 (Ex. 1004) (“Stefik ’235”).
`4 U.S. Patent No. 5,629,980 (Ex. 1005) (“Stefik ’980”).
`
`2
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`Patent 8,033,458 B2
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`Pet. 3. Petitioner also provides a declaration from Jeffrey A. Bloom, Ph.D.
`Ex. 1003.
`
`C. Related Matters
`The parties indicate that the ’458 patent is the subject of the following
`district court cases: Smartflash LLC v. Apple Inc., Case No. 6:13-cv-447
`(E.D. Tex.); Smartflash LLC v. Samsung Electronics Co. Ltd., Case No.
`6:13-cv-448 (E.D. Tex.). Pet. 1; Paper 4, 2–3. Patent Owner also indicates
`that the ’458 patent is the subject of a third district court case: Smartflash
`LLC v. Google, Inc., Case No. 6:14-cv-435 (E.D. Tex.). Paper 4, 3. Patents
`claiming priority back to a common series of applications are currently the
`subject of CBM2014-00102, CBM2014-00106, CBM2014-00108, and
`CBM2014-00112, filed by Apple Inc. See Paper 4, 2.
`Petitioner filed a concurrent Petition for covered business method
`patent review of the ’458 patent: CBM2014-00197 (“the 197 Petition”).6 In
`addition, Petitioner filed eight other Petitions for covered business method
`patent review challenging claims of other patents owned by Patent Owner
`and disclosing similar subject matter: CBM2014-00190; CBM2014-00193;
`CBM2014-00194; CBM2014-00196; CBM2014-00198; CBM2014-00199;
`CBM2014-00200; and CBM2014-00204.
`
`
`5 PCT Publication No. WO 00/08909 (Ex. 1006) (“Gruse”).
`6 Patent Owner argues that the multiple Petitions filed against the ’458
`patent violate the page limit requirement of 37 C.F.R. § 42.24(a)(iii), but
`does not cite any authority to support its position. Prelim. Resp. 9–12. The
`page limit for a Petition requesting covered business method patent review is
`80 pages (37 C.F.R. § 42.24(a)(iii)), and each of this Petition and the 197
`Petition meets that requirement.
`
`3
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`CBM2014-00192
`Patent 8,033,458 B2
`
`D. The ’458 Patent
`The ’458 patent relates to “a portable data carrier for storing and
`paying for data and to computer systems for providing access to data to be
`stored” and “corresponding methods and computer programs,” and to a data
`access device for retrieving stored data from a data carrier, where the data
`access device uses “use status data and use rules to determine what access is
`permitted to data stored on the data carrier.” Ex. 1001, 1:21–25, 9:7–22.
`Owners of proprietary data, especially audio recordings, have an urgent need
`to address the growing prevalence of “data pirates” who make proprietary
`data available over the Internet without authorization. Id. at 1:29–55. The
`’458 patent describes providing portable data storage together with a means
`for conditioning access to that data upon validated payment. Id. at 1:59–
`2:11. This combination allows data owners to make their data available over
`the Internet without fear of revenue loss caused by data pirates. Id. at 2:11–
`15.
`
`As described, the portable data storage device is connected to a
`terminal for Internet access. Id. at 1:59–67. The terminal reads payment
`information, validates that information, and downloads data into the portable
`storage device from a data supplier. Id. The data on the portable storage
`device can be retrieved and output from a mobile device. Id. at 2:1–5. In
`addition, the data access device comprises a user interface, a data carrier
`interface, a program store storing code implementable by a processor, and a
`processor coupled to the user interface, data carrier interface and program
`store. Id. at 9:7–13. The ’458 patent makes clear that the actual
`implementation of these components is not critical, and the alleged invention
`may be implemented in many ways. See, e.g., id. at 25:49–52 (“The skilled
`
`4
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`CBM2014-00192
`Patent 8,033,458 B2
`
`person will understand that many variants to the system are possible and the
`invention is not limited to the described embodiments.”).
`
`E. Challenged Claim
`Petitioner challenges claim 11 of the ’458 patent. Claim 11 depends
`from claim 6. Claims 6 and 11 recite the following:
`6. A data access device for retrieving stored data from a
`data carrier, the device comprising:
`a user interface;
`a data carrier interface;
`a program store storing code implementable by a processor; and
`
` a
`
` processor coupled to the user interface, to the data carrier
`interface and to the program store for implementing the
`stored code, the code comprising:
`
`code to retrieve use status data indicating a use status of
`data stored on the carrier, and use rules data indicating
`permissible use of data stored on the carrier;
`
`code to evaluate the use status data using the use rules data to
`determine whether access is permitted to the
`stored data; and
`
`
`
`
`
`code to access the stored data when access is permitted.
`
`
`Ex. 1001, 27:8–23.
`11. A data access device according to claim 6 wherein said
`use rules permit partial use of a data item stored on the carrier
`and further comprising code to write partial use status data to
` the data carrier when only part of a stored data item has been accessed.
`
`Id. at 26:25–28.
`
`5
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`CBM2014-00192
`Patent 8,033,458 B2
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`ANALYSIS
`A. Claim Construction
`In a covered business method patent review, claim terms are given
`their broadest reasonable interpretation in light of the specification in which
`they appear and the understanding of others skilled in the relevant art. See
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 2015 WL
`448667 at *7 (Fed. Cir. Feb. 4, 2015) (“We conclude that Congress
`implicitly adopted the broadest reasonable interpretation standard in
`enacting the AIA.”). Applying that standard, we interpret the claim terms of
`the ’458 patent according to their ordinary and customary meaning in the
`context of the patent’s written description. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes of this decision, we
`construe the claim term “use rules.”
`The term “use rules” is recited in claim 11.7 Neither party proposes a
`construction of “use rules.” The ’458 patent describes “use rules” as “for
`controlling access to the stored content” (Ex. 1001, Abstract) and as
`“indicating permissible use of data stored on the carrier” (id. at 9:14–16).
`
`
`7 We note that claim 11’s recited “said use rules” lacks antecedent basis,
`because independent claim 6, from which claim 11 depends, does not recite
`“use rules,” but rather recites “use rules data.” Ex. 1001, 27:18, 27:20–
`21. Neither party has yet addressed any resulting issues under 35 U.S.C.
`§ 112. The lack of explicit antecedent basis for claim terms does not always
`render a claim indefinite, if the scope of the claim may be reasonably
`ascertainable by those skilled in the art. Energizer Holdings, Inc. v Int’l
`Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006). For purposes of this
`Decision, we construe “use rules,” and expect further explication of this
`issue by the parties during trial.
`
`
`
`
`
`6
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`CBM2014-00192
`Patent 8,033,458 B2
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`The ’458 patent also describes “evaluating the use status data using the use
`rules to determine whether access to the stored data is permitted.” Id. at
`6:38–40; see also id. at 21:48–53 (“[E]ach content data item has an
`associated use rule to specify under what conditions a user of the smart Flash
`card is allowed access to the content data item.”). Accordingly, for purposes
`of this decision, we construe “use rules” as rules specifying a condition
`under which access to content is permitted.
`
`B. Covered Business Method Patent
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. A “covered
`business method patent” is a patent that “claims a method or corresponding
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`1. Financial Product or Service
`Petitioner refers to independent claim 6 and challenged dependent
`claim 11 in arguing that the ’458 patent is eligible for covered business
`method patent review. Petitioner asserts that:
`
`the claimed use rules [in claim 6] may be linked to payments made
`from the [standard smart] card to provide payment options such as
`access to buy content data outright; rental access to content data for a
`
`7
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`CBM2014-00192
`Patent 8,033,458 B2
`
`time period or for a specified number of access events; and/or
`rental/purchase.
`
`Pet. 7; Ex. 1001, 5:1–8. Petitioner continues, “the claimed use rules are
`linked to payment data and are used to ensure that stored data is only
`accessible by paying customers. . . . Indeed, the specification of the ’458
`patent is replete with further examples of financial activity.” Pet. 7. We
`agree with Petitioner that claim 6, while not specifically reciting payment
`validation, satisfies the financial-in-nature requirement by virtue of its
`recitation of use rules.
`Challenged claim 11 recites “a data access device according to claim
`6 wherein said use rules permit partial use of a data item stored on the
`carrier.” Ex. 1001, 28:14–16. As with claim 6, the limitations of claim 11
`recite conditional access to data, although not explicitly reciting payment
`validation. Claim 11, however, requires that access is conditioned on
`satisfaction of use rules, which the Specification states “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 . . . and/or rental
`purchase.” Ex. 1001, 5:1–8.
`Based on this record, we agree with Petitioner that the subject matter
`recited by claim 11 is directed to activities that are financial in nature,
`namely data access conditioned on satisfaction of use rules that are linked to
`payment data. We are persuaded that such access is a financial activity, and
`conditioning data access based on use rules linked to payment data amounts
`to a financial service. This is consistent with the Specification of the ’458
`patent, which confirms claim 11’s connection to financial activities by
`
`8
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`CBM2014-00192
`Patent 8,033,458 B2
`
`stating that the invention “relates to a portable data carrier for storing and
`paying for data.” Ex. 1001, 1:21–23.
`Patent Owner disagrees that claim 11 satisfies the financial-in-nature
`requirement of AIA § 18(d)(1), arguing that the section should be interpreted
`narrowly to cover only technology used specifically in the financial or
`banking industry. Prelim. Resp. 3–6. Patent Owner cites to various portions
`of the legislative history as support for its proposed interpretation. Id.
`Although we agree with Patent Owner that the statutory language
`controls whether a patent is eligible for a covered business method patent
`review, we do not agree that the phrase “financial product or service” is as
`limited as Patent Owner proposes. The AIA does not include as a
`prerequisite for covered business method patent review, a “nexus” to a
`“financial business,” but rather a “method or corresponding apparatus for
`performing data processing or other operations used in the practice,
`administration, or management of a financial product or service.” AIA
`§ 18(d)(1). Further, contrary to Patent Owner’s view of the legislative
`history, the legislative history indicates that the phrase “financial product or
`service” is not limited to the products or services of the “financial services
`industry,” and is to be interpreted broadly. CBM Rules, 77 Fed. Reg. at
`48,735–36. For example, the “legislative history explains that the definition
`of covered business method patent was drafted to encompass patents
`‘claiming activities that are financial in nature, incidental to a financial
`activity or complementary to a financial activity.’” Id. (citing 157 Cong.
`Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)).
`In addition, Patent Owner asserts that claim 11 is not directed to an
`apparatus or method that is financial in nature because claim 11 “actually
`
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`CBM2014-00192
`Patent 8,033,458 B2
`
`makes no mention of payment or specifics of how payment is made.”
`Prelim. Resp. 7. We are not persuaded by this argument because § 18(d)(1)
`of the AIA does not include such a requirement, nor does Patent Owner
`point to any other authority that makes such a requirement. Prelim. Resp. 7.
`For the reasons stated above, and based on the particular facts of this
`proceeding, we conclude that the ’458 patent includes at least one claim that
`meets the financial in nature requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion for Technological Inventions
`Petitioner asserts that the ’458 patent does not fall within § 18(d)(1)’s
`exclusion for “technological inventions.” Pet. 8–10. In particular, Petitioner
`argues that the ’458 claims dos not recite a technological feature that is
`novel and unobvious, or solve a technical problem using a technical solution.
`Id. Patent Owner disagrees and argues that “claim 11, as a whole, recites at
`least one technological feature that is novel and unobvious over the prior art
`and solves a technical problem using a technical solution.” Prelim. Resp. 8.
`Petitioner states that even “the computer-related terms recited in the
`’458 patent’s claims do in fact relate to technology that is merely, in the
`words of the patentee, ‘conventional.’” Pet. 9; Ex. 100, 4:4–5. . We note
`that Claim 6, on which claim 11 depends, recites well known computer
`hardware components such as a “user interface,” a “processor,” and a
`storage component (“program store storing code”). Ex. 1001, 27:10–14.
`Claim 11 further recites a data carrier, a generic hardware device known in
`the prior art. Pet. 9. The Specification discloses, for instance, that a portable
`data carrier may be a “standard smart card.” See Ex. 1001, 11:28–29.
`In addition, the ’458 patent makes clear that the asserted novelty of
`the invention is not in any specific improvement of software or hardware,
`
`10
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`CBM2014-00192
`Patent 8,033,458 B2
`
`but in the method of controlling access to data. For example, the ’458 patent
`states that “there is an urgent need to find a way to address the problem of
`data piracy” (id. at 1:52–55), while acknowledging that the “physical
`embodiment of the system is not critical and a skilled person will understand
`that the terminals, data processing systems and the like can all take a variety
`of forms” (id. at 12:29–32). Thus, we determine that claim 11 is merely the
`recitation of a combination of known technologies, which indicates that it is
`not a patent for a technological invention. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012).
`Patent Owner also argues that claim 11 falls within § 18(d)(1)’s
`exclusion for “technological inventions” because it is directed toward
`solving the technological problem of “retrieving stored data from a data
`carrier” with the technological solution of “code to evaluate the use status
`data using the use rules data to determine whether access is permitted to the
`stored data” and “code to access the stored data when access is permitted.”
`Prelim. Resp. 8. We are not persuaded by this argument because, as
`Petitioner argues, the problem being solved by claim 11 is a business
`problem—data piracy. Pet. 10–11. For example, the Specification states
`that “[b]inding the data access and payment together allows the legitimate
`owners of the data to make the data available themselves over the internet
`without fear of loss of revenue, thus undermining the position of data
`pirates.” Ex. 1001, 2:11–15. Thus, based on the particular facts of this
`proceeding, we conclude that claim 11 does not recite a technological
`invention and is eligible for a covered business method patent review.
`
`11
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`CBM2014-00192
`Patent 8,033,458 B2
`
`3. Conclusion
`In view of the foregoing, we conclude that the ’458 patent is a covered
`business method patent under AIA § 18(d)(1) and is eligible for review
`using the transitional covered business method patent program.
`
`C. 35 U.S.C. § 101
`Petitioner challenges claim 11 as directed to patent-ineligible subject
`matter under 35 U.S.C. § 101. Pet. 19–35. Petitioner asserts that the
`challenged claim is directed to an abstract idea without additional elements
`that transform the claims into a patent-eligible application of that idea. Id.
`Specifically, Petitioner argues that the challenged claim is directed to the
`abstract idea of “regulating authorized use of information.” Pet. 21–22.
`Patent Owner argues that the challenged claim is directed to a more
`narrow invention than that asserted by Petitioner. Prelim. Resp. 12–13.
`Patent Owner specifically cites to the limitations “code to evaluate the use
`status data using the use rules data to determine whether access is permitted
`to the stored data” and “code to write partial use status data to the data
`carrier when only part of a stored data item has been accessed,” as evidence
`that claim 11, which incorporates the limitations of claim 6, “is not
`preemptory as asserted and is, at least for that reason, directed to statutory
`subject matter.” Id. Based on the analysis of the challenged claims using
`the two-step process set forth in Alice Corp. Pty, Ltd. v. CLS Bank
`International, 134 S. Ct. 2347 (2014), as discussed below, we agree with
`Samsung that claim 11 of the ’458 patent is more likely than not directed to
`patent-ineligible subject matter.
`Under 35 U.S.C. § 101, we must first identify whether an invention
`fits within one of the four statutorily provided categories of patent-
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`eligibility: “processes, machines, manufactures, and compositions of
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir.
`2014). Here, challenged claim 11 recites a “machine” under § 101, i.e., a
`“data access device according to claim 6.” Ex. 1001, 27:8. Section 101,
`however, “contains an important implicit exception [to subject matter
`eligibility]: Laws of nature, natural phenomena, and abstract ideas are not
`patentable.” Alice, 134 S. Ct. at 2354 (citing Assoc. for Molecular
`Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal
`quotation marks and brackets omitted)).
`We are persuaded that the challenged claim is more likely than not
`drawn to a patent-ineligible abstract idea. In Alice, the Supreme Court
`reiterated the framework set forth previously in Mayo Collaborative Servs.
`v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) “for distinguishing
`patents that claim laws of nature, natural phenomena, and abstract ideas
`from those that claim patent-eligible applications of those concepts.” Alice,
`134 S. Ct. at 2355. The first step in the analysis is to “determine whether the
`claims at issue are directed to one of those patent-ineligible concepts.” Id.
`If so, the second step in the analysis is to consider the elements of the claim
`“individually and ‘as an ordered combination’” to determine whether there
`are additional elements that “‘transform the nature of the claim’ into a
`patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1297).
`In other words, the second step is to “search for an ‘inventive concept’—i.e.,
`an element or combination of elements that is ‘sufficient to ensure that the
`patent in practice amounts to significantly more than a patent upon the
`[ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S.
`Ct. at 1294).
`
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`Petitioner contends that the challenged claim is directed to “the
`abstract idea of regulating authorized use of information.” Pet. 21–22. As
`discussed above, the ’458 patent discusses addressing recording industry
`concerns of data pirates offering unauthorized access to widely available
`compressed audio recordings. Ex. 1001, 1:20–55. The ’458 patent proposes
`to solve this problem by restricting access to data on a device based upon
`satisfaction of use rules linked to payment data. Ex. 1001, 9:7–25. The ’458
`patent makes clear that the heart of the claimed subject matter is restricting
`access to stored data based on supplier-defined access rules and payment
`data. Id. Abstract, 1:59–2:15. We are persuaded, on this record, that the
`claimed “device” is directed to an abstract idea. See Alice, 134 S. Ct. at
`2356 (holding that the concept of intermediated settlement at issue in Alice
`was an abstract idea); Accenture Global Servs., GmbH v. Guidewire
`Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (holding the abstract
`idea at the heart of a system claim to be “generating tasks [based on] rules . .
`. to be completed upon the occurrence of an event”).
`Turning to the second step of the analysis, we look for additional
`elements that can “transform the nature of the claim” into a patent-eligible
`application of an abstract idea. Mayo, 132 S. Ct. at 1297. On this record,
`we are not persuaded that claim 11 of the ’458 patent adds an inventive
`concept sufficient to ensure that the patent in practice amounts to
`significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct.
`at 2355; see Accenture Global Servs., 728 F.3d at 1345 (holding claims
`directed to the abstract idea of “generating tasks [based on] rules . . . to be
`completed upon the occurrence of an event” to be unpatentable even when
`applied in a computer environment and within the insurance industry). As
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`discussed above, the Specification treats as well-known all potentially
`technical aspects of claim 11, which also incorporates the limitations of
`claim 6, including “interface,” “program store,” “processor,” “data carrier,”
`and code to retrieve, evaluate, and access data, and write partial use data.
`The linkage of existing hardware devices to existing payment validation
`processes and supplier-defined access rules appear to be “‘well-understood,
`routine, conventional activit[ies]’ previously known to the industry.” Alice,
`134 S. Ct. at 2359; Mayo, 132 S. Ct. at 1294.
`Having considered the information provided in the Petition and the
`Preliminary Response, we are persuaded that Petitioner has demonstrated
`that it is more likely than not that claim 11 is unpatentable under 35 U.S.C.
`§ 101.
`
`D. Obviousness over Gruse, Stefik ’235, and Stefik ’980
`Petitioner argues that claim 11 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Gruse and Stefik. Pet. 35–60.
` The ’458 patent claims priority to international PCT Application No.
`GB00104110 (“the ’110 Appln”), filed on October 25, 2000, which claims
`priority to UK Application No. 9925227.2 (“the GB application”), filed on
`October 25, 1999. Ex. 1001, 1:6–16.
`Gruse was published February 24, 2000. Ex. 1006, 1.
`Petitioner’s obviousness ground is based on a combination that
`includes Gruse. Pet. 35–62. According to Petitioner, Gruse is prior art to
`the claim 11 under 35 U.S.C. § 102(a)8 because the date of its publication—
`February 24, 2000—is before the earliest filing date to which claim 11 is
`
`8 The ’598 patent was filed prior to the effective date of the AIA § 102
`(March 16, 2013) and is governed by pre-AIA § 102(a). AIA § 3(n)(1).
`
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`entitled—October 25, 2000 (the filing date of ’110 Appln.). Pet. 4.
`Petitioner’s position is that the challenged claim 11 lacks written description
`support in the GB application. Id. at 14–19. See Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008); Ariad Pharms., Inc. v.
`Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Petitioner
`argues that “because the specification of the GB application fails to support
`the Challenged Claim . . . the effective filing date of the Challenged Claim is
`no earlier than Oct. 25, 2000, the filing date of the ‘110 Appln.” Pet. 15.
`Specifically, Petitioner argues that with respect to independent claim 6, from
`which challenged claim 11 depends, the GB application’s
`scant disclosure fails to support many limitations recited in the
`Challenged Claim. For example, referenced at (3) in the above
`annotation, claim 6 of the ‘458 Patent recites “code to retrieve
`use status data indicating a use status of data stored on the
`carrier, and use rules data indicating permissible use of data
`stored on the carrier; code to evaluate the use status data using
`the use rules data to determine whether access is permitted to
`the stored data; and code to access the stored data when access
`is permitted.” The purported limitation of access control to
`stored data on the carrier is not supported by the disclosure of
`the 227.2 Appln.
`
`
`Pet. 17–18 (emphasis added). Petitioner further argues that the GB
`application does not “reveal evaluation of the stored usage information by
`leveraging use rules data to determine whether access is permitted to the
`stored data.” Pet. 18. As Patent Owner states, however, Petitioner’s
`contention regarding “leveraging” of use rules data “does not sufficiently
`explain how such an allegation relates to the actual claim language” of claim
`6 or claim 11. Prelim. Resp. 19. Furthermore, as argued by Patent Owner,
`
`16
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`the “purported limitation of access control to stored data on the carrier” is
`indeed supported by the GB application.
`Specifically, Patent Owner argues that the “purported limitation of
`access control to stored data on the carrier” (see Pet. 18) is supported by the
`following disclosure in the GB application:
`The data storage means and/or the retrieval device can be
`provided with access control means to prevent unauthorised
`access to the downloaded data. Alternatively, this access
`control means can be used to stop or provide only limited
`access of the user to the downloaded data in accordance with
`the amount paid. Thus, for example, a complete set of data
`information relating to a particular topic, a particular music
`track, or a particular software package might be downloaded,
`although access to part of the data set might thereafter be
`controlled by payments made by a user at a later stage. Thus, a
`user could pay to enable an extra level on a game or to enable
`further tracks of an album.
`Prelim. Resp. 18–19 (quoting Ex. 1008, 3–4).
`Based on our review of the record before us, Petitioner has not
`sufficiently persuaded us that the GB application does not provide written
`description support for the “purported limitation of access control to stored
`data on the carrier” In particular, the GB application describes “access
`control means to prevent unauthorized access to the downloaded data” and
`“to stop or provide only limited access of the user to the downloaded data in
`accordance with the amount paid.” Ex. 1008, 4. Thus, the GB application
`explicitly describes access control to stored data. We determine that this
`disclosure “reasonably conveys to those skilled in the art that the inventor
`had possession” of claim 11’s “purported limitation of access control to
`stored data on the carrier.” Ariad Pharms., 598 F.3d at 1351.
`
`17
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`Therefore, we are not persuaded that Petitioner has shown sufficiently
`that challenged claim 11 is not entitled to the benefit of the GB application’s
`filing date. Because we are not persuaded that claim 11 is not entitled to a
`priority date of October 25, 1999, we are not persuaded that Gruse is prior
`art under 35 U.S.C. § 102(a).
`Accordingly, on this record, we are not persuaded that Petitioner has
`established that it is more likely than not that claim 11 is unpatentable as
`obvious over Gruse, Stefik ’235, and Stefik ’980.
`
`
`CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that it is more likely than not that
`Petitioner would prevail in establishing the unpatentability of claim 11 of the
`’458 patent under 35 U.S.C. § 101, as discussed above.
`The Board has not made a final determination on the patentability of
`the challenged claim.
`
`ORDER
`
`For the reasons given, it is:
`ORDERED that a covered business method patent review is instituted
`on claim 11 under 35 U.S.C. § 101 as being directed to patent-ineligible
`subject matter; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 324(d) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commencing on the entry date of this Order.
`
`
`
`18
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`PETITIONER:
`W. Karl Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`CBM39843-0006CP1@fr.com
`
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`
`
`19
`
`
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