IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Hulst et al.
`Attorney Docket No.: 39843-0005CP1
`U.S. Patent No.: 8,033,458
`Issue Date:
`October 11, 2011
`
`Appl. Serial No.: 12/943,847
`
`Filing Date:
`November 10, 2010
`
`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
`
`
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,033,458 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 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`
`
`TABLE OF CONTENTS
`
`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 C.F.R. § 42.304(b) and Relief .................................... 2 
`D.  The ‘458 Patent is a Covered Business Method Patent .............................. 5 
`E.  The ‘458 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. .. 8 
`IV.  SUMMARY OF THE ‘458 Patent ...................................................................... 11 
`A.  Brief Description ............................................................................................ 11 
`B.  Summary of the Prosecution History of the ‘458 Patent .......................... 12 
`C.  The Effective Priority Date of the Claims of the ‘458 Patent .................. 14 
`V.  DEMONSTRATION OF A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘458 PATENT IS UNPATENTABLE ....... 19 
`A.  GROUND 1 – Claim 11 is Unpatentable Under 35 U.S.C. § 101 .......... 19 
`B.  GROUND 2 – Gruse In View of Stefik Renders Obvious Claim 11 ..... 35 
`1.  Overview of Gruse ............................................................................... 35 
`2.  Overview of Stefik ............................................................................... 40 
`Combinability of Gruse and Stefik .................................................... 41 
`3. 
`4.  Gruse in view of Stefik Renders Obvious Claim 11 ....................... 44 
`VI.  CONCLUSION ...................................................................................................... 63 
`
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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`
`
`EXHIBITS
`
`SAMSUNG-1001 U.S. Patent No. 8,033,458 to Hulst et al. (“the ‘458 Patent” or
`“’458”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ‘458 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re the ‘458 Patent (“Bloom”)
`
`SAMSUNG-1004 U.S. Patent No. 5,530,235 (“Stefik ‘235” or “Stefik”)
`
`SAMSUNG-1005 U.S. Patent No. 5,629,980 (“Stefik ‘980”) (incorporated by
`5,530,235)
`
`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
`
`ii
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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Devel-
`opment Group, Inc., CBM2013-00017 Paper No. 8 (entered
`Oct. 24, 2013)
`
`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered Nov. 19, 2013)
`
`SAMSUNG-1015 U.S. Patent No. 8,336,772 (“the ‘772 Patent” or “‘772”)
`
`SAMSUNG-1016 U.S. Patent No. 8,118,221 (“the ‘221 Patent” or “‘221)
`
`SAMSUNG-1017 U.S. Patent No. 8,061,598 (“the ‘598 Patent” or “‘598”)
`
`SAMSUNG-1018 RESERVED
`
`SAMSUNG-1019 U.S. Patent No. 7,942,317 (“the ‘317 Patent” or “‘317”)
`
`SAMSUNG-1020 U.S. Patent Application No. 12/014,558 (“the ‘558 Appln.” or
`“’558”)
`
`SAMSUNG-1021 U.S. Patent No. 7,334,720 (“the ‘720 Patent” or “‘720”)
`
`SAMSUNG-1022 RESERVED
`
`SAMSUNG-1023 RESERVED
`
`SAMSUNG-1024 U.S. Patent Application No. 12/943,847 (“the ‘847 Appln.” or
`“‘847”)
`
`SAMSUNG-1025 RESERVED
`
`SAMSUNG-1026 RESERVED
`
`SAMSUNG-1027 RESERVED
`
`SAMSUNG-1028 Weinstein “MasterCard Plans Point-of-Sale Product for Mer-
`chants Leery of Bank Cards”
`
`iii
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`Attorney Docket No 39843-0005CP1
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`SAMSUNG-1029 Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S. Ct.
`1289 (2012)
`
`SAMSUNG-1030 Gottschalk v. Benson, 409 U.S. 63 (1972)
`
`SAMSUNG-1031 Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
`(Fed. Cir. 2011)
`
`SAMSUNG-1032 Bilski v. Kappos, 130 S. Ct. 3218 (2010)
`
`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)
`
`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)
`
`SAMSUNG-1039 Keith, Michael C., The Radio Station Broadcast, Satellite and
`Internet, Eighth Edition, 2009
`
`iv
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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`Three sister companies, Samsung Electronics America, Inc., Samsung Elec-
`
`tronics Co., Ltd., and Samsung Telecommunications America, LLC (“Petitioner”
`
`or “Samsung”) petition for Covered Business Method Patent Review (“CBM”) un-
`
`der 35 U.S.C. §§ 321 and § 18 of the Leahy-Smith American Invents Act of claim
`
`11 (“the Challenged Claim”) of U.S. Patent No. 8,033,458 (“the ‘458 Patent”). As
`
`explained in this petition, there exists a reasonable likelihood that Samsung will
`
`prevail in demonstrating unpatentability with respect to at least one of the Chal-
`
`lenged Claim based on teachings set forth in at least the references presented in
`
`this petition. Samsung respectfully submits that a CBM should be instituted, and
`
`that the Challenged Claim should be canceled as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., and
`
`
`
`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 ‘458 Patent. The ‘458 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
`
`1
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`

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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`subject of the following Petitions for Covered Business Method Review: Apple
`
`Inc. v. Smartflash LLC, CBM2014-00106 and CBM2014-00107. Petitioner is
`
`concurrently petitioning, in another petition assigned attorney docket number
`
`39843-0005CP2, for CBM review of the ‘458 Patent under grounds additional to
`
`those presented in this petition.
`
`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-
`
`vice at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-
`
`783-5070) or via electronic service by email at CBM39843-0005CP1@fr.com.
`
`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
`
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Samsung certifies that the ‘458 Patent is available for CBM. Samsung is not
`
`barred or estopped from requesting this review of the Challenged Claim on the fol-
`
`lowing grounds.
`
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief
`
`2
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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`Samsung requests a CBM review of the Challenged Claim on the grounds
`
`set forth in the table shown below, and requests that each of the Challenged Claim
`
`be found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed descrip-
`
`tion that follows, indicating where each claim elements can be found in the cited
`
`prior art, and the relevance of that prior art. Additional explanation and support for
`
`each ground of rejection is set forth in Exhibit SAMSUNG-1003, the Declaration
`
`of Dr. Jeffrey Bloom (“Bloom”), referenced throughout this Petition.
`
`Ground
`
`‘458 Patent Claims
`
`Basis for Rejection
`
`Ground 1 11
`
`Ground 2 11
`
`§ 101
`
`§ 103: Gruse in view of Stefik
`
`The ‘458 Patent issued Oct. 11, 2011 from the ‘847 Appln. (SAMSUNG-
`
`1024), which was filed Nov. 10, 2010. The ‘847 Appln. is a continuation of the
`
`‘558 Appln. (SAMSUNG-1020) filed Jan. 15, 2008 (now the ‘317 Patent, SAM-
`
`SUNG-1019); which is a continuation of U.S. Patent Application No. 11/336,758
`
`(“the ‘758 Appln.”) filed Jan. 19, 2006 (now U.S. Patent No. 7,334,720, SAM-
`
`SUNG-1021), which is a continuation of U.S. Patent Appln. No. 10/111,716 ( “the
`
`‘716 Appln.”) filed Apr. 25, 2002. The ‘716 Appln. is a National Stage Entry of
`
`PCT Appln. No. PCT/GB00/04110 (SAMSUNG-1007, “the ‘110 Appln.”) filed
`
`3
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`

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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`Oct. 25, 2000. The ‘110 Appln. claimed priority to United Kingdom Patent Appln.
`
`GB9925227.2 (SAMSUNG-1008, “the ‘227.2 Appln.” or “227.2”) filed Oct. 25,
`
`1999. However, as noted in Section IV.C, because the ‘227.2 disclosure fails to
`
`support the Challenged Claim, the effective filing date of the Challenged Claim is
`
`no earlier than Oct. 25, 2000.
`
`Stefik ‘235(SAMSUNG-1004) and Stefik ‘980 (SAMSUNG-1005), both
`
`qualify as prior art under 35 U.S.C. § 102(b). Specifically, Stefik ‘235 issued June
`
`25, 1996, and Stefik ‘980 issued May 13, 1997, both more than one year before the
`
`earliest effective filing date of the Challenged Claim.
`
`Gruse (SAMSUNG-1006) qualifies as prior art under 35 U.S.C. § 102(a).
`
`Specifically, Gruse is a publication of a PCT Appln. (PCT/US99/18383) filed in
`
`the U.S. on Aug. 12, 1999, based on U.S. provisional applns. filed as early as Aug.
`
`13, 1998. Gruse was published on Feb. 24, 2000, more than two years before the
`
`Apr. 25, 2002 filing date of the earliest U.S. National Phase Appln. to which the
`
`‘458 Patent claims priority (i.e., the ‘716 Appln.), and more than eight months be-
`
`fore 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 §
`
`18(a)(1)(C) as prior art for CBM review of the ‘458 Patent.
`
`C. Claim Constructions under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to CBM review is given its “broadest reasonable construc-
`
`4
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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`tion in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`42.100(b). Thus the words of the claim are given their plain meaning unless that
`
`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed.
`
`Cir. 1989). Petitioner submits, for the purposes of the CBM review only, that the
`
`claim terms are presumed to take on their broadest reasonable interpretation in
`
`view of the specification of the ‘458 Patent. 1
`
`D. The ‘458 Patent is a Covered Business Method Patent
`The ‘458 Patent, which generally relates to systems and methods “for down-
`
`loading and paying for data” is a “covered business method patent” (“CBM pa-
`
`tent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘458 at Abstract.
`
`The AIA defines a CBM patent as “a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service” (empha-
`
`ses added). AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The USPTO recognizes
`
`that the AIA’s legislative history demonstrates that the term “financial product or
`
`
`1 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this CBM review is not
`
`binding upon Petitioner in any litigation related to the subject patent. See In re
`
`Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
`
`5
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`Attorney Docket No 39843-0005CP1
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`service” should be “interpreted broadly,” encompassing patents “’claiming activi-
`
`ties that are financial in nature, incidental to a financial activity or complementary
`
`to a financial activity.’” 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 History of the America Invents Act indicates, the language
`
`“practice, administration, or management” is “intended to cover any ancillary ac-
`
`tivities related to a financial product or service, including . . . marketing, customer
`
`interfaces [and] management of data . . .” (emphases added). SAMSUNG-1010 at
`
`635-36.
`
`Augmenting the statutory language with the above-referenced clarifications
`
`from the legislative history, and from the Guide to that legislative history, yields
`
`the following definition of a CBM patent: a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in ac-
`
`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);
`
`SAMSUNG-1009 at 48735; and SAMSUNG-1010 at 635-26.
`
`In the words of the Patent Owner, the claims of the ‘458 Patent are directed
`
`to a “portable data carrier for storing and paying for data and to computer systems
`
`for providing access to data to be stored.” See ‘458 at 1:21-28. Indeed, claim 6,
`
`for example ( the limitations of which are incorporated into claim 11, which de-
`
`6
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`

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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`pends from claim 6), recites a “data access device for retrieving stored data from a
`
`data carrier” that includes “code to evaluate the use status data using the use rules
`
`data to determine whether access is permitted to the stored data.” See ‘458 at claim
`
`6; Bloom at, e.g., ¶ 23. As the specification explains, the claimed use rules pertain
`
`to “allowed use of stored data items,” and “[t]hese use rules may be linked to pay-
`
`ments made from the card to provide payment options such as access to buy con-
`
`tent data outright; rental access to content data for a time period or for a specified
`
`number of access events; and/or rental/purchase . . . .” ‘458 at 5:1-8. In other
`
`words, the claimed use rules are linked to payment data and are used to ensure that
`
`stored data is only accessible by paying customers. See also ‘458 at 5:17-28 (“In a
`
`debit mode, the additional storage of use rules facilitates the regulation of access to
`
`content data stored on the carrier without the need for further exchange of pay-
`
`ment/use data with an external system to validate the use”); Bloom at, e.g., ¶ 23.
`
`In a recent decision involving highly similar claims, the Board determined
`
`that selling/providing access to a desired digital audio signal to a user constitutes
`
`financial activity. See SAMSUNG-1012 at 11-13 (“The cited entities may not
`
`provide typical financial services, but . . . they do sell digital content, which is the
`
`financial activity recited in claim 1”). Indeed, the specification of the ‘458 Patent
`
`is replete with further examples of financial activity, stating e.g., that payment data
`
`forwarded to a payment validation system may be “data relating to an actual pay-
`
`7
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`Attorney Docket No 39843-0005CP1
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`ment made to the data supplier, or . . . a record of a payment made to an e-payment
`
`system” that can be “coupled to banks.” See ‘458 at 6:60-7:2, 13:35-55.
`
`Thus, for at least the reasons described above, the ‘458 Patent is a CBM pa-
`
`tent that is eligible for the review requested by Petitioner.
`
`E.
`The ‘458 Patent Is Not Directed to a Technological Inven-
`tion, And Thus, Should Not Be Excluded From the Definition of a CBM Pa-
`tent.
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To determine when a patent covers a technologi-
`
`cal invention, “the following will be considered on a case-by-case basis: whether
`
`the claimed subject matter as a whole recites a technological feature that is novel
`
`and unobvious over the prior art; and solves a technical problem using a technical
`
`solution.” 37 C.F.R. § 42.301 (emphasis added); see also SAMSUNG-1009 at
`
`48736-37 (USPTO clarified that to qualify as a technological invention, a patent
`
`must have a novel, unobvious technological feature and a technical problem solved
`
`by a technical solution). “[A]bstract business concepts and their implementation,
`
`whether in computers or otherwise,” are not included in the definition of “techno-
`
`logical inventions.” SAMSUNG-1010 at 634. Indeed, Congress has explained that
`
`accomplishing a business process or method is not technological, whether or not
`
`that process or method is novel. See id. Finally, to institute a CBM, a patent need
`
`8
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`Attorney Docket No 39843-0005CP1
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`only have one claim directed to a covered business method, and not a technological
`
`invention. See, e.g., SAMSUNG-1009 at 48736-37.
`
`The claims of the ‘458 Patent fail to recite a novel and unobvious technolog-
`
`ical feature, and fail to recite a technical problem solved by a technical solution;
`
`thus, the patent is subject to Section 18 review. See Bloom at, e.g., ¶ 24. Although
`
`the independent claims of the ‘458 Patent recite computer-related terms such as
`
`“non-volatile payment data memory”, “data access device”, and “data carrier”,
`
`Congress has explained that simply reciting words describing generic technology
`
`such as “computer hardware, . . .software, memory, computer-readable storage
`
`medium, [or] databases” does not make a patent a technological invention. SAM-
`
`SUNG-1010 at 634.
`
`The specification of the ‘458 Patent confirms that 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”: the specification states, e.g.,
`
`that “The data access terminal may be a conventional computer or, alternatively, it
`
`may be a mobile phone” that terminal memory “can comprise any conventional
`
`storage device,” and that a “data access device . . . such as a portable audio/video
`
`player . . . comprises a conventional dedicated computer system including a pro-
`
`cessor . . . program memory . . . and timing and control logic . . . coupled by a data
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`9
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`Attorney Docket No 39843-0005CP1
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`and communications bus.” ‘458 at 4:4-5, 16:46-49, 18:24-30. Consequently, the
`
`‘458 Patent claims cannot be saved by the recitation of computer-related terms.
`
`The ‘458 Patent fails even to recite a technical problem, and instead address-
`
`es the non-technical task of allowing “owners of . . . data to make the data availa-
`
`ble themselves over the internet without fear of loss of revenue . . . undermining
`
`the position of data pirates.” ‘458 at 2:11-15, 5:29-33. The ‘458 Patent’s solution
`
`to this non-technical problem is nothing more the combination of prior art struc-
`
`tures to achieve a normal, expected, and predictable result: the use of a data supply
`
`system, content provision system, data terminal and data carrier to restrict access to
`
`data based on payment. See e.g.,‘458 at Abstract, 13:60-14:6. A teaching of a
`
`combination of prior art structures that achieves a predictable result does not “ren-
`
`der a patent a technological invention.” SAMSUNG-1009 at 48755. Indeed, “[a]
`
`person having ordinary skill in the art at the time that the ‘458 Patent was filed
`
`would not have considered the methods described and claimed by the ‘458 Patent
`
`to be technical”. Bloom at, e.g., ¶ 24.
`
`In sum, the AIA’s exclusion of “patents for technological inventions” from
`
`the definition of CBM patents is not applicable here because the ‘458 Patent fails
`
`to recite a novel and unobvious technological feature, and fails to recite a technical
`
`problem solved by a technical solution. CBM review is therefore appropriate for
`
`the ‘458 Patent.
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`10
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`Attorney Docket No 39843-0005CP1
`CBM of U.S. Patent No. 8,033,458
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`IV. SUMMARY OF THE ‘458 Patent
`A. Brief Description
`The ‘458 Patent includes 12 claims, of which claims 1, 3, 4, 5 and 6 are in-
`
`dependent.
`
`The claims of the ‘458 Patent generally relate to systems and methods “for
`
`downloading and paying for data such as audio and video data, text, software,
`
`[and] games . . . .” ‘458 at Abstract. The ‘458 Patent purports to address a specific
`
`problem: “the growing prevalence of so-called data pirates” who “obtain data ei-
`
`ther by unauthorized or legitimate means and then make this data available essen-
`
`tially world-wide over the internet without authorization.” ‘458 at 1:31-33. With-
`
`in this context, the ‘458 Patent describes “combining digital right management
`
`with content data storage,” and states that “[b]inding the data access and payment
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`together allows the legitimate owners of the data to make the data available them-
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`selves over the internet without fear of loss of revenue, thus undermining the posi-
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`tion of data pirates.” ‘458 at 2:11-15, 5:29-33.
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`Specifically, the ‘458 Patent discloses a data supply system 120 (as shown
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`in FIG. 6) coupled to a content provision system 100 (as shown in FIG. 5). ‘458 at
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`13: 22-27. The data supply system includes content access terminals, e-payment
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`systems, and a content access web server. See ‘458 at 13: 22-62, FIG. 6. The con-
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`tent provision system 100 includes content providers and content publishers cou-
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`pled to content databases. See ‘458 at 12:43-45; 14:63-65; and FIG. 5.
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`The ‘458 Patent also discloses a “portable data carrier for storing and paying
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`for data.” ‘458 at 1:20-25. In a parameter memory, the portable data carrier stores
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`use status data and use rules leveraged by the data supply system to control access
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`to content data, and, in a separate content memory, the portable data carrier stores
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`content data acquired through the content provision system. See ‘458 at 9:32-39
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`(“Use status data indicat[es] a use status of data stored on the carrier, and use rules
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`data indicat[es] permissible use of data stored on the carrier”). This disclosure is
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`reflected in the limitations of independent claim 6, which recites “use status data”
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`and “use rules” for “determin[ing] whether access is permitted to the stored data.”
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`Summary of the Prosecution History of the ‘458 Patent
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`B.
`U.S. 8,033,458 issued on Oct. 11, 2011 from the ‘847 Appln. (SAMSUNG-
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`1024) filed on Nov. 10, 2010 with 25 claims.
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`During prosecution of the ‘847 Appln., on Jan. 13, 2014, a Non-Final Office
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`Action rejected claims 1, 2, 5, 7-8,14-16, 24 and 25 under 35 U.S.C. §102(b) as an-
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`ticipated by U.S. Patent 4,697,073 to Hara (“Hara”). Claims 17-23 were allowed
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`but an objection was raised regarding claims 3-4, 6 and 9-13 based on their de-
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`pendency from a rejected base claim. See Non-Final Office Action of Jan. 13,
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`2014 at 3. The articulated reasons for allowing claims 17-23 included “[t]he prior
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`art fails to disclose a data access device comprising: a user interface, a data carrier
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`interface, a program store, a processor, a code having the functions and characteris-
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`tics as recited in claim 17. The prior art also fails to disclose a portable data carrier
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`as recited in claim 1 further including the limitations of claims 3-4,6 and 9-13.” Id.
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`In a response filed Feb. 10, 2014, Patent Owner cancelled the rejected claims
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`without addressing the rejection. Patent Owner also amended the objected to
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`claims to incorporate the subject matter of the rejected base claims. Patent Owner
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`further added claims 26 and 27.
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`In a Non-Final Office Action issued Apr. 29, 2014, claims 3, 4, 6, 9, 10, and
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`17-23 were allowed largely based on the reasoning expressed above. However,
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`claims 11-13, and 26 were rejected as anticipated by U.S. Patent 7,747,930 to
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`Weldon et al. (“Weldon”) and claim 27 was rejected as obvious over Weldon. See
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`Non-Final Office Action of Jan. 13, 2014 at 3-4.
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`On Jul. 7, 2011, Patent Owner cancelled claims 11-13, 26, and 27 without
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`addressing pending rejections. Subsequently, claims 3-4, 6, 9-10 and 17-23 were
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`allowed. See Notice of Allowance dated Aug. 9, 2014. In the reasons for allow-
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`ance, earlier reasoning was repeated. Namely, “[t]he prior art fails to disclose a da-
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`ta access device comprising: a user interface, a data carrier interface, a program
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`store, a processor, a code having the functions and characteristics as recited in
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`claim 17. The prior art also fails to disclose a portable data carrier as recited in
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`claims 3-4,6 and 9-10. Id. at 2.
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`C. The Effective Priority Date of the Claims of the ‘458 Patent
`The ‘458 Patent issued from a continuation Appln. of the ‘716 appln, which
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`was filed Apr. 25, 2002 as a National Stage Entry of the ‘110 Appln.
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`(SAUMSUNG-1009), 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. As ex-
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`plained in detail below, however, because the specification of the ‘227.2 Appln.
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`fails to support the Challenged Claim, the effective filing date of the Challenged
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`Claim is no earlier than Oct. 25, 2000.
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`The ‘110 Appln. contains forty-seven (47) pages of subject matter disclosure
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`with thirteen (13) accompanying figures. In contrast, the ‘227.2 Appln. contains
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`only eight (8) pages of description accompanied by four (4) hand-drawn figures.
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`And, for the subject matter of the Challenged Claim, the `227.2 Appln. fails to
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`provide the required support.
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`FIG. 5 of the ‘110 Appln. (reproduced below), which was not included in the
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`‘227.2 Appln., depicts a network of content access terminals, e-payment systems
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`connected to banks, and a content access web server that includes a payment pro-
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`cessor, an access control processor, a DRM processor, and a content distribution
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`processor. The four processors of the content access web server are, in turn, con-
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`nected to various data stores.
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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 Claim, the Challenged Claim do not
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`enjoy the priority date established by the ‘227.2 Appln. Rather, the effective filing
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`date of the Challenged Claim is no earlier than Oct. 25, 2000, the filing date of the
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`‘110 Appln.
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`The ‘110 Appln. contains forty-seven (47) pages of subject matter disclosure
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`with thirteen (13) accompanying figures. In contrast, the ‘227.2 Appln. contains
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`only eight (8) pages and just four (4) hand-drawn figures. And, as to the subject
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`matter of the Challenged Claim, the relatively thin ‘227.2 Appln. fails to provide
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`required support for at least the reason noted below.
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`FIG. 5 of the ‘110 Appln. (reproduced below), which was not included in the
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`‘227.2 Appln., depicts a network of content access terminals, e-payment systems
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`connected to banks, and a content access web server that includes a payment pro-
`
`cessor, an access control processor, a DRM processor, and a content distribution
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`processor. The four processors of the content access web server are, in turn, con-
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`nected to various data stores.
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`As indicated, this network is neither described nor depicted in the ‘227.2
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`Appln. Notably, the closest disclosure of a network within the ‘227.2 Appln. can
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`be found in FIGS. 4A and 4B (reproduced below).
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`
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`Yet, many features are still absent from the disclosure and the corresponding
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`text, including, for example, (1) the DRM processor and (2) the content distribu-
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`tion processor that interacts with a content access and a DRM data store. Indeed,
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`the ‘227.2 Appln.’s scant disclosure fails to support many limitations recited in the
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`Challenged Claim. For example, referenced at (3) in the above annotation, claim 6
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`of the ‘458 Patent recites “code to retrieve use status data indicating a use status of
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`data stored on the carrier, and use rules data indicating permissible use of data
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`stored on the carrier; code to evaluate the use status data using the use rules data to
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`determine whether access is permitted to the stored data; and code to access the
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`stored data when access is permitted.” The purported limitation of access control
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`to stored data on the carrier is not supported by the disclosure of the 227.2 Appln.
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`In fact, the only language within the ‘227.2 Appln. related to usage data
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`stored on the carrier is found in claim 34, which merely recites “writing usage in-
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`formation into the data storage means, the usage information relating to use made
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`of the data storage means, such as information relating to the downloaded data, to
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`data supplier or suppliers used; and/or to a user's spending patterns.” Neither claim
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`34 nor other portions of the ‘227.2 Appln. reveal evaluation of the stored usage in-
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`formation by leveraging use rules data to determine whether access is permitted to
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`the stored data. In fact, the only instance within ‘227.2 Appln. that addresses the
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`stored usage information actually teaches leveraging such usage information to ac-
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`complish something other than determining whether access is permitted to stored
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`data, namely “determine incentives” for users of the system. See ‘227.2 Appln. at
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`7 (“Preferably the service provider (60) monitors the user's access to the system
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`and either stores or forwards to data suppliers (80), or downloads to data storage
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`means (30), usage information. In a preferred embodiment the service provider
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`sends information via terminal (40) to data storage means (30) which can be used
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`to determine incentives to be provided to users of the system”).
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`For at least these reasons, independent claim 6 is not supported by ‘227.2
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`Appln. By virtue of dependency, claim 11 is also unsupported by the ‘227.2 Ap-
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`pln. Hence, the earliest effective filing date of the claimed invention is no earlier
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`than Oct. 25, 2000, the filing date of the