Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8 (CBM2014-00102)
`Paper 8 (CBM2014-00103)
`Entered: September 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00102
`Case CBM2014-00103
`Patent 8,118,221 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed two Petitions to institute covered
`
`business method patent review of claims 1, 2, 11-14, and 32 (the “challenged
`
`1
`
`SAMSUNG 1048
`Samsung Electronics v. SmartFlash
`CBM2014-00192
`
`
`Tel: 571-272-7822
`
`
`Paper 8 (CBM2014-00102)
`Paper 8 (CBM2014-00103)
`Entered: September 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-00102
`Case CBM2014-00103
`Patent 8,118,221 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, NEIL T. POWELL,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed two Petitions to institute covered
`
`business method patent review of claims 1, 2, 11-14, and 32 (the “challenged
`
`1
`
`SAMSUNG 1048
`Samsung Electronics v. SmartFlash
`CBM2014-00192
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`claims”) of U.S. Patent No. 8,118,221 B2 (Ex. 1001, “the ’221 patent”)
`
`pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).1
`
`CBM2014-00102, Paper 2 (“’102 Pet.”); CBM2014-00103, Paper 2 (“’103
`
`Pet.”). Smartflash LLC (“Patent Owner”) filed a Preliminary Response in
`
`each of the two cases. CBM2014-00102, Paper 6 (“’102 Prelim. Resp.”);
`
`CBM2014-00103, Paper 6 (“’103 Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business 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.”
`
`B. Asserted Grounds
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and/or 103 based on the following grounds (’102 Pet. 20–
`
`21, 26–79; ’103 Pet. 22–23; 28–79).
`
`References
`
`Basis Claims Challenged
`
`CBM2014-00102
`
`Stefik ’2352 and Stefik ’9803
`
`§ 1024 1, 11, 12, and 32
`
`
`1 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. ’102 Prelim. Resp. 10–11; ’103
`Prelim. Resp. 10–11. The page limit for petitions requesting covered
`business method patent review is 80 pages (37 C.F.R. § 42.24(a)(iii)), and
`each of the ’102 and the ’103 Petitions is within that requirement.
`2 U.S. Patent 5,530,235 (Ex. 1013) (“Stefik ’235”).
`3 U.S. Patent 5,629,980 (Ex. 1014) (“Stefik ’980”).
`4 Petitioner refers to Stefik ’235 and Stefik ’980 collectively as “Stefik” and
`argues that they should be considered as a single reference for anticipation
`purposes because, according to Petitioner, Stefik ’235 incorporates
`
`2
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`References
`
`Basis Claims Challenged
`
`Stefik ’235 and Stefik ’980
`
`§ 103 1, 11, 12, and 32
`
`Stefik ’235, Stefik ’980, and Poggio5
`
`§ 103 1, 2, 11–14, and 32
`
`Stefik ’235, Stefik ’980, and Sato6
`
`§ 103 1, 2, 11–14, and 32
`
`Stefik ’235, Stefik ’980, Poggio, and
`Sato
`
`§ 103 1, 2, 11–14, and 32
`
`CBM2014-00103
`
`Ginter7
`
`§ 103 1, 2, 11–14, and 32
`
`Ginter and Poggio
`
`§ 103 1, 2, 11–14, and 32
`
`Ginter, Stefik ’235, and Stefik ’980
`
`§ 103 1, 2, 11–14, and 32
`
`Ginter and Sato
`
`§ 103 1, 2, 11–14, and 32
`
`Ginter, Poggio, Stefik ’235, and
`Stefik ’980
`
`§ 103 1, 2, 11–14, and 32
`
`Petitioner also provides a Declaration from Anthony J. Wechselberger
`
`(“the Wechselberger Declaration”).8 Ex. 1021; Ex. 1121.9
`
`
`Stefik ’980 by reference. ’102 Pet. 26–27, n.13. Patent Owner disagrees.
`’102 Prelim. Resp. 12–14. We do not reach this issue because even when
`considered as one reference, we determine that Stefik ’235 and Stefik ’980
`do not teach all the recited claim limitations in the same form and order as
`listed in the claims.
`5 European Patent Application, Publication No. EP0809221A2 (Ex. 1016)
`(“Poggio”).
`6 JP Patent Application Publication No. H11-164058 (including translation)
`(Ex. 1018) (“Sato”).
`7 U.S. Patent No. 5,915,019 (Ex. 1015) (“Ginter”).
`
`3
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`After considering the Petitions and Preliminary Responses, we
`
`determine that the ’221 patent is a covered business method patent and that
`
`Petitioner has demonstrated that it is more likely than not that at least one of
`
`the challenged claims is unpatentable. Therefore, we institute a covered
`
`business method patent review of claims 1, 2, and 11–14. We deny
`
`institution of a covered business method patent review of claim 32.
`
`C. Related Matters
`
`Petitioner indicates that the ’221 patent is the subject of the following
`
`co-pending district court cases: Smartflash LLC v. Apple Inc., Case No.
`
`6:13-cv-447 (E.D. Tex.); and Smartflash LLC v. Samsung, Case No. 6:13-
`
`CV-448 (E.D. Tex.). ’102 Pet. 20; ’103 Pet. 22.
`
`In addition to the Petitions in CBM2014-00102 and CBM2014-00103,
`
`Petitioner filed ten other petitions for covered business method patent review
`
`challenging claims of patents owned by Patent Owner and disclosing similar
`
`subject matter: CBM2014-00104; CBM2014-00105; CBM2014-00106;
`
`CBM2014-00107; CBM2014-00108; CBM2014-00109; CBM2014-00110;
`
`CBM2014-00111; CBM2014-00112; and CBM2014-00113.
`
`
`8 On this record, we are not persuaded by Patent Owner’s argument that we
`should disregard the Wechselberger Declaration. See ’102 Prelim. Resp.
`15–17; ’103 Prelim. Resp. 18–20. Patent Owner identifies purported
`omissions from the Declaration, but offers no evidence that Mr.
`Wechselberger used incorrect criteria, failed to consider evidence, or is not
`an expert in the appropriate field. Id.
`9 Exhibits with numbers 1001–1029 were filed in CBM2014-00102 and
`those with numbers 1101–1129 were filed in CBM2014-00103. For
`purposes of this Decision, where the two cases have duplicate exhibits, we
`refer to the exhibit filed in CBM2014-00102.
`
`4
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`D. The ’221 Patent
`
`The ’221 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 the “corresponding methods and computer programs.” Ex. 1001
`
`1:21–25. Owners of proprietary data, especially audio recordings, have an
`
`urgent need to address the prevalence of “data pirates,” who make
`
`proprietary data available over the Internet without authorization. Id. at
`
`1:29–56. The ’221 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 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 the data supplier. Id. The data on the portable storage
`
`device can be retrieved and output from a mobile device. Id. at 2:1–4. The
`
`’221 patent makes clear that the actual implementation of these components
`
`is not critical and may be implemented in many ways. See, e.g., id. at
`
`25:41–44 (“The skilled person will understand that many variants to the
`
`system are possible and the invention is not limited to the described
`
`embodiments.”).
`
`E. Challenged Claims
`
`Petitioner challenges claims 1, 2, 11–14, and 32 of the ’221 patent.
`
`Claims 1, 12, and 32 are independent. Claims 2 and 11 depend from claim 1
`
`and claims 13 and 14 depend either directly or indirectly from claim 12.
`
`5
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`Claims 1, 12, and 32 are illustrative of the claims at issue and recite the
`
`following:
`
`1.
`A data access terminal for retrieving data from a data supplier
`and providing the retrieved data to a data carrier, the terminal
`comprising:
`
`a first interface for communicating with the data supplier;
`
`a data carrier interface for interfacing with the data carrier;
`
`a program store storing code implementable by a processor; and
`
`a processor, coupled to the first interface, to the data carrier
`interface and to the program store for implementing the stored code,
`the code comprising:
`
`code to read payment data from the data carrier and to forward
`the payment data to a payment validation system;
`
`code to receive payment validation data from the payment
`validation system;
`
`code responsive to the payment validation data to retrieve data
`from the data supplier and to write the retrieved data into the data
`carrier.
`
`Ex. 1001, 25:45–61.
`
`12. A method of providing data from a data supplier to a data
`carrier, the method comprising:
`
`reading payment data from the data carrier;
`
`forwarding the payment data to a payment validation system;
`
`retrieving data from the data supplier; and
`
`writing the retrieved data into the date [sic] carrier.
`
`Id. at 26:43–49.
`
`32. A data access terminal for retrieving data from a data supplier
`and providing the retrieved data to a data carrier, the terminal
`comprising:
`
`a first interface for communicating with the data supplier;
`
`a data carrier interface for interfacing with the data carrier;
`
`6
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`a program store storing code; and
`
`a processor coupled to the first interface, the data carrier
`interface, and the program store for implementing the stored code, the
`code comprising:
`
`code to read payment data from the data carrier and to forward
`the payment data to a payment validation system;
`
`code to receive payment validation data from the payment
`validation system;
`
`code responsive to the payment validation data to retrieve data
`from the data supplier and to write the retrieved data into the data
`carrier;
`
`code responsive to the payment validation data to receive at
`least one access rule from the data supplier and to write the at least
`one access rule into the data carrier, the at least one access rule
`specifying at least one condition for accessing the retrieved data
`written into the data carrier, the at least one condition being dependent
`upon the amount of payment associated with the payment data
`forwarded to the payment validation system; and
`
`code to retrieve from the data supplier and output to a user-
`stored data identifier data and associated value data and use rule data
`for a data item available from the data supplier.
`
`Id. at 28:23–50.
`
`A. Claim Construction
`
`ANALYSIS
`
`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. § 42.300(b). Applying that standard, we interpret the claim terms
`
`of the ’221 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 “access rule.”
`
`7
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`Independent claim 32 requires receiving at least one “access rule”
`
`from the data supplier and that the “at least one access rule specif[ies] at
`
`least one condition for accessing the retrieved data.” The ’221 patent also
`
`states that “one or more content access rules are received from the system
`
`owner data supply computer and written to the smart Flash card so that each
`
`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.”
`
`Ex. 1001, 21:48–53; see also id. at 7:31–32 (stating that access data “links a
`
`content identifier with an access rule, typically based upon a required
`
`payment value”). Accordingly, for purposes of this Decision, we construe
`
`“access rule” as a rule 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 “[c]overed
`
`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).
`
`8
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`1. Financial Product or Service
`
`Petitioner asserts that claim 12 “clearly relates to a financial activity
`
`and providing a financial service” because it “describes electronically
`
`transferring money and allowing such a transfer.” ’102 Pet. 15; ’103 Pet.
`
`16–17. Based on this record, we agree with Petitioner that the subject matter
`
`recited by claim 12 is directed to activities that are financial in nature,
`
`namely data access conditioned on payment validation. Claim 12 recites
`
`“reading payment data from the data carrier” and “forwarding the payment
`
`data to a payment validation system.” We are persuaded that payment
`
`validation is a financial activity, and conditioning data access based on
`
`payment validation amounts to a financial service. This is consistent with
`
`the specification of the ’221 patent, which confirms claim 12’s connection to
`
`financial activities by stating that the invention “relates to a portable data
`
`carrier for storing and paying for data.” Ex. 1001, 1:21–23. The
`
`specification also states repeatedly that the disclosed invention involves
`
`managing access to data based on payment validation. See, e.g., Ex. 1001
`
`1:59–68; 6:60–64; 20:50–54.
`
`Patent Owner disagrees that claim 12 satisfies the financial-in-nature
`
`requirement of AIA § 18(d)(1), arguing that that section should be
`
`interpreted narrowly to cover only technology used specifically in the
`
`financial or banking industry. ’102 Prelim. Resp. 3–7; ’103 Prelim. Resp.
`
`3–7. Patent Owner cites to various portions of the legislative history as
`
`support for its proposed interpretation. Id.
`
`We do not agree that the phrase “financial product or service” in
`
`§ 18(d)(1) of the AIA is as limited as Patent Owner proposes. The AIA does
`
`not include as a prerequisite for covered business method patent review, a
`
`9
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`“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 12 is not directed to an
`
`apparatus or method that is financial in nature because claim 12 “omits the
`
`specifics of how payment is made.” ’102 Prelim. Resp. 7; ’103 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. Id. We determine that
`
`because payment is required by claim 12, as Patent Owner acknowledges
`
`(id.), the financial-in-nature requirement of § 18(d)(1) is satisfied.
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’221 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 claim 12 does not fall within § 18(d)(1)’s
`
`exclusion for “technological inventions.” ’102 Pet. 15–19; ’103 Pet. 17–20.
`
`10
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`In particular, Petitioner argues that claim 12 “does not recite a technological
`
`feature that is novel and unobvious” or “solve a technical problem using a
`
`technical solution.” Id. (quoting 37 C.F.R. § 42.301(b) (emphasis omitted)).
`
`Patent Owner disagrees and argues that claim 12, as a whole, recites at least
`
`one technological feature. ’102 Prelim. Resp. 8–9; ’103 Prelim. Resp. 8–9.
`
`We are persuaded that claim 12 as a whole does not recite a
`
`technological feature that is novel and unobvious over the prior art.
`
`Claim 12 does recite a “payment validation system.” The specification,
`
`however, discloses that the required payment validation system may be one
`
`that is already in use or otherwise commercially available. For example,
`
`“[t]he payment validation system may be part of the data supplier’s
`
`computer systems or it may be a separate e-payment system.” Ex. 1001,
`
`8:63–65; see id. at 13:35–47. Claim 12 also recites a “data carrier.” This
`
`component, however, is a generic hardware device known in the prior art.
`
`The specification discloses, for instance, that a data carrier may be a
`
`“standard smart card.” See Ex. 1001, 11:28–29.
`
`In addition, the ’221 patent makes clear that the asserted novelty of
`
`the invention is not in any specific improvement of software or hardware,
`
`but in the method of controlling access to data. For example, the ’221 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). Claim 12 is merely the recitation of known
`
`technologies to perform a method, which indicates that it is not a patent for a
`
`11
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`technological invention. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,764 (Aug. 14, 2012).
`
`Patent Owner also argues that claim 12 falls within § 18(d)(1)’s
`
`exclusion for “technological inventions” because it is directed towards
`
`solving the technological problem of “writing data from a data supplier into
`
`a data carrier” with the technological solution of “a data carrier from which
`
`payment data is read and to which retrieved data from a data supplier is
`
`written.” ’102 Prelim. Resp. 8; ’103 Prelim. Resp. 8. We are not persuaded
`
`by this argument because, as Petitioner argues, the problem being solved by
`
`claim 12 is a business problem—data piracy. ’102 Pet. 18–19; ’103 Pet. 17–
`
`20. For example, the specification states that “[b]inding 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. Therefore,
`
`based on the particular facts of this proceeding, we conclude that claim 12
`
`does not recite a technological invention and is eligible for a covered
`
`business method patent review.
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’221 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`under the transitional covered business method patent program.
`
`C. Anticipation by Stefik ’235 and Stefik ’980
`
`Stefik ’235 teaches a portable Document Card (“DocuCard”) for
`
`storing information in a digital form, storing usage rights for the
`
`information, processing user-initiated functions and requests to access
`
`documents stored therein, interfacing to external devices for reading and
`
`12
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`writing digital information, and allowing a user to directly interact with the
`
`DocuCard. Ex. 1013, 2:29–40; 7:35–42.
`
`Stefik ’980 teaches a “repository” for storing digital works,
`
`controlling access to digital works, billing for access to digital works and
`
`maintaining the security and integrity of the system. Ex. 1014, 6:57–61.
`
`Petitioner asserts that claims 1, 11, 12, and 32 are anticipated by
`
`Stefik ’235 and Stefik ’980. ’102 Pet. 21; 26–31. We are not persuaded that
`
`Petitioner has shown that every claim element and limitation of claims 1, 11,
`
`12, and 32 is set forth in the prior art in the same form and order as in the
`
`claim. See In re Omeprazole Patent Litig., 483 F.3d 1364, 1373 (Fed. Cir.
`
`2007); Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264,
`
`1267 (Fed. Cir. 1991).
`
`Petitioner relies on the repository described in Stefik ’980, as
`
`describing several of the claim elements. For example, Petitioner describes
`
`a combination of two examples of repositories as corresponding to the
`
`claimed subject matter. ’102 Pet. 44, n. 14; see also ’102 Pet. 41–61 (claim
`
`chart for claim 1), 62–73 (claim charts for claims 12 and 32). In the first
`
`example, “a data access terminal (processing means 1200) and data supplier
`
`(storage system 1207) are both located within a first repository . . . and a
`
`data carrier (second repository) is communicating with the data access
`
`terminal through a communications interface (external interface 1206) of the
`
`first repository.” ’102 Pet. 44, n.14. In the second example, “a data access
`
`terminal (processing means 1200) and data carrier (storage system 1207) are
`
`both located within a first repository . . . and a data supplier (second
`
`repository) is communicating with the data access terminal through a
`
`13
`
`
`
`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
`
`communications interface (external interface 1206) of the first repository.”
`
`Id.
`
`To support this assertion, Petitioner cites to several figures and the
`
`corresponding description of Stefik ’980. Id. at 45–61. Petitioner, however,
`
`does not explain persuasively how either Stefik ’235 or Stefik ’980 alone or
`
`in combination discloses the claimed limitations in the same form and order
`
`as in the claim. Although Stefik ’980 discloses repositories that may act in
`
`different capacities (see, e.g., Ex. 1014, Abstract), Petitioner does not
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`persuasively establish it is more likely than not that either Stefik ’980 or
`
`Stefik ’235 discloses a system using repositories in the same form and order
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`as in claims 1, 11, 12, and 32. For example, Petitioner asserts that “either of
`
`the first or second repositories shown in Fig. 1, or both of those repositories,
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`could be configured as shown in Fig. 12,” but does not point to any
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`disclosure of this configuration in the Stefik references. ’102 Pet. 42 (claim
`
`chart for claim 1) (emphasis added); 63 (claim chart for claim 12) (emphasis
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`added).
`
`Thus, Petitioner has failed to establish that it is more likely than not
`
`that it would prevail in demonstrating that claims 1, 11, 12, and 32 are
`
`unpatentable as anticipated by the Stefik references.
`
`D. Additional Grounds Based on Stefik ’235 and Stefik ’980
`
`Petitioner contends that claims 1, 11, 12, and 32 would have been
`
`obvious over the Stefik references alone. ’102 Pet. 21, 26–31. Petitioner
`
`also contends that claims 1, 2, 11–14, and 32 would have been obvious over
`
`Stefik combined with Poggio and/or Sato. We find Petitioner’s contentions
`
`that claims 1, 2, and 11–14 would have been obvious over the Stefik
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`14
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`Patent 8,118,221 B2
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`references persuasive, but are not persuaded by Petitioner’s contentions
`
`regarding claim 32 for the reasons discussed below.
`
`1. Claims 1, 11, and 12
`
`In light of the arguments and evidence, Petitioner has established that
`
`it is more likely than not that claims 1, 11, and 12 are unpatentable as
`
`obvious over the combined teachings of Stefik ’235 and Stefik ’980. See
`
`’102 Pet. 41–69.
`
`We are not persuaded by Patent Owner’s argument that there is no
`
`evidence that one of ordinary skill in the art would have combined
`
`Stefik ’235 and Stefik ’980 because Stefik ’235 does not identify sufficiently
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`Stefik ’980. ’102 Prelim. Resp. 13–14. One reference need not identify
`
`explicitly another reference by “application serial number, filing date,
`
`inventors or attorney docket number” (id. at 13) in order to form the basis
`
`for an obviousness combination.
`
`Petitioner argues that “there is explicit motivation to implement the
`
`repository disclosed by Stefik ’980 using the Document Card (DocuCard) of
`
`Stefik ’235.” ’102 Pet. 26–27, n.13 (citing Ex. 1013, 2:47–52; Ex. 1014,
`
`16:56–58; Ex. 1021 ¶ 56). Stefik ’980 teaches that “the repository could be
`
`embedded in a ‘card’ that is inserted into an available slot in a computer
`
`system” (Ex. 1014, 16:56–58), and Stefik ’235 teaches a repository
`
`embedded in a card (Ex. 1013, 2:47–52). On the record before us, we are
`
`persuaded that Petitioner has provided sufficiently an articulated reasoning
`
`with some rational underpinning to support the legal conclusion of
`
`obviousness. See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`15
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`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
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`We decline to proceed on the asserted grounds that claims 1, 11, and
`
`12 would have been obvious over Stefik combined with Poggio and/or Sato,
`
`as these grounds are redundant in light of the grounds on which we have
`
`decided to institute trial. See 37 C.F.R. § 42.208(a).
`
`2. Claims 2, 13, and 14
`
`Petitioner asserts that claims 2, 13, and 14 would have been obvious
`
`over Stefik combined with Poggio and/or Sato. ’102 Pet. 21, 31–40, 73–79.
`
`In light of the arguments and evidence, Petitioner has established that it is
`
`more likely than not that claims 2, 13, and 14 would have been obvious over
`
`the combination of Stefik ’235, Stefik ’980, and Poggio. On this record, we
`
`are persuaded that Petitioner’s citations support Petitioner’s contentions. Id.
`
`at 74–79.
`
`We are not persuaded by Patent Owner’s argument that because
`
`Petitioner has not proven that Stefik ’235 and Stefik ’980 qualify as a single
`
`reference, all combinations including those references fail. ’102 Prelim.
`
`Resp. 14–15. As described above, we are persuaded that Petitioner has
`
`provided sufficiently an articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness over a
`
`combination of Stefik ’235 and Stefik ’980. We further are persuaded that
`
`Petitioner has provided sufficiently an articulated reasoning with some
`
`rational underpinning to support the conclusion that a person of ordinary
`
`skill would also have included the teachings of Poggio. For example,
`
`Petitioner points to Poggio’s teaching that “facilitating the content
`
`transactions can advantageously be done with minimal action from the
`
`vendor, and payment validation processes that are automatically executed
`
`from stored code, as taught by Poggio, would contribute this additional
`
`16
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`Patent 8,118,221 B2
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`benefit to Stefik’s repository system.” ’102 Pet. 34 (citing Ex. 1014 2:66–
`
`3:1).
`
`For the reasons set forth above, Petitioner has established that it is
`
`more likely than not that it would prevail in demonstrating that claims 2, 13,
`
`and 14 would have been obvious over Stefik ’235, Stefik ’980, and Poggio.
`
`We decline to proceed on the asserted grounds that claims 2, 13, and 14
`
`would have been obvious over the Stefik references combined with Sato or
`
`with both Poggio and Sato, as these grounds are redundant in light of the
`
`grounds on which we have decided to institute trial. See 37 C.F.R.
`
`§ 42.208(a).
`
`3. Claim 32
`
`Petitioner asserts that independent claim 32 would have been obvious
`
`over Stefik alone or combined with Poggio and/or Sato. ’102 Pet. 21, 69–
`
`71.
`
`Claim 32 requires “at least one access rule,” which, as explained
`
`above, we construe as a rule specifying a condition under which access to
`
`content is permitted. Specifically, claim 32 recites
`
`code responsive to the payment validation data to receive at
`least one access rule from the data supplier and to write the at
`least one access rule into the data carrier, the at least one access
`rule specifying at least one condition for accessing the retrieved
`data written into the data carrier.
`
`Petitioner’s claim chart states that the claimed “access rule” corresponds to
`
`Stefik’s “(e.g., usage rights).” ’102 Pet. 70.
`
`Petitioner provides insufficient explanation as to how Stefik’s “usage
`
`rights” operate. Petitioner also does not show sufficiently why “usage
`
`rights” satisfy “access rule.” Even though “usage rights” may have
`
`17
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`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
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`“conditions,” they are not necessarily rules, and Petitioner has not persuaded
`
`us otherwise. For example, rights portion 504 is described as “a data
`
`structure, such as a look-up table, wherein the various information
`
`associated with a right is maintained.” ’102 Pet. 47 (citing Ex. 1013, 8:8–
`
`10); see Ex. 1014, 9:54–10:1. An exemplary data structure is illustrated in
`
`Figure 10 of Stefik ’980 and the information contained in such a data
`
`structure is indicated in Table 1. Ex. 1014, 10:28–32. Table 1 of Stefik ’980
`
`discloses, for example, a “Loan-Period” property with a value in “Time-
`
`Units” that is an “[i]ndicator of the maximum number of time-units that a
`
`document can be loaned out.” A data structure and the information within it,
`
`however, cannot be a rule. At best, a rule might use the information in the
`
`data structure—e.g., if the number of time-units that a document has been
`
`leased out is less than Loan-Period, then allow access—but the usage right
`
`itself (e.g., Loan-Period) is not “a rule specifying a condition under which
`
`access to content is permitted,” as we have construed “access rule.”
`
`In addition, claim 32 recites “code responsive to the payment
`
`validation data to receive at least one access rule from the data supplier and
`
`to write the at least one access rule into the data carrier.” Petitioner’s claim
`
`chart asserts that “Stefik discloses attaching at least one access rule (e.g.,
`
`usage rights) to retrieved data (e.g., digital works), and then transmitting the
`
`attached access rule (e.g., usage rights) with the content when the content is
`
`provided to a data carrier (e.g., requesting repository).” ’102 Pet. 70.
`
`Petitioner, however, does not explain why transmitting usage rights with the
`
`content when the content is provided to a data carrier teaches code that is
`
`responsive to payment validation data to receive an access rule. Petitioner’s
`
`claim chart further asserts that Stefik discloses an example in which the
`
`18
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`CBM2014-00102 and CBM2014-00103
`Patent 8,118,221 B2
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`receipt of payment validation data (e.g., acceptance of assigned fees) is a
`
`prerequisite to providing a user with options to select a document and a
`
`desired function for the document to perform, and the requested content and
`
`attached access rule (e.g., usage rights) is provided to the requester
`
`responsive to (e.g., only after) payment validation. Id. at 70–71. Petitioner,
`
`however, does not explain why a requesting repository providing a user with
`
`the usage rights in response to payment validation teaches code that is
`
`responsive to the payment validation system to receive an access rule from
`
`the data supplier and to w
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