IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Racz et al.
`Attorney Docket No.: 39843-0006CP1
`U.S. Patent No.: 8,061,598
`Issue Date:
`November 22, 2011
`
`Appl. Serial No.: 13/012,541
`
`Filing Date:
`January 24, 2011
`
`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. 8,061,598 PURSUANT TO 35 U.S.C. § 321
`
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`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 § 42.304(b) and Relief Requested ............................. 2 
`C.  Claim Construction under 37 C.F.R. §§ 42.304(b)(3) ................................ 4 
`1. 
`CONSTRUCTION 1 – Payment data ............................................. 5 
`D.  The ‘598 Patent is a Covered Business Method Patent .............................. 7 
`E.  The ‘598 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. 10 
`IV.  SUMMARY OF THE ‘598 Patent ...................................................................... 12 
`A.  Brief Description ............................................................................................ 12 
`B.  Summary of the Prosecution History of the ‘598 Patent .......................... 14 
`C.  The Effective Priority Date of the Claims of the ‘598 Patent .................. 15 
`V.  DEMONSTRATION OF A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘598 PATENT IS UNPATENTABLE ....... 20 
`A.  GROUND 1 – Claim 7 is Patent-Ineligible under 35 U.S.C. § 101 For
`Abstractness ..................................................................................................... 20 
`1. 
`Legal Standard ............................................................................... 21 
`2. 
`Claim 7 of the ‘598 Patent Recites an Abstract Idea, as Each of the
`Limitations Can be Performed in the Human Mind and by a
`Human Using a Pen and Paper ...................................................... 23 
`Claim 7 of the ‘598 Patent Recites an Abstract Idea, as it Preempts
`All Effective Uses of the Abstract Idea of Enabling Limited Use
`of Paid-for/Licensed Content ........................................................ 27 
`Claim 7 of the ‘598 Patent is Not Tied to a Particular Machine in
`any Manner that Would Make Claim 7 Patent-Eligible ................ 29 
`Claim 7 of the ‘598 Patent Does Not Transform Anything in any
`Manner that Would Make it Patent-Eligible ................................. 31 
`B.  GROUND 2 – Gruse in view of Stefik Renders Obvious Claims 7 ....... 32 
`
`3. 
`
`4. 
`
`5. 
`
`i
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`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`1.  Overview of Gruse ........................................................................ 32 
`2.  Overview of Stefik ........................................................................ 37 
`3. 
`Combinability of Gruse with Stefik .............................................. 38 
`4.  Gruse In View of Stefik Renders Obvious Claim 7. ..................... 41 
`VI.  CONCLUSION ...................................................................................................... 57 
`
`
`ii
`
`

`

`
`SAMSUNG 1001
`SAMSUNG 1002
`SAMSUNG 1003
`
`SAMSUNG 1004
`
`SAMSUNG 1005
`SAMSUNG 1006
`
`SAMSUNG 1007
`
`SAMSUNG 1008
`
`SAMSUNG 1009
`
`SAMSUNG 1010
`
`SAMSUNG 1011
`
`SAMSUNG 1012
`
`SAMSUNG 1013
`
`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`
`EXHIBITS
`
`U.S. Patent No. 8,061.598 (“the ‘598 Patent” or “’598”)
`File history of U.S. Patent No. 8,061,598
`Declaration of Dr. Jeffrey Bloom (“Bloom”)
`U.S. Patent No. 5,530,235 (incorporating 5,629,980) (“Stefik
`‘235”)
`U.S. Patent No. 5,629,980 (“Stefik ‘980”)
`PCT Publication No. WO 00/08909 (“Gruse”)
`PCT Application PCT/GB00/04110 (“the ‘110 Appln.” or
`“‘110”), which is the application as filed for U.S. Patent Applica-
`tion No. 11/336,758 (“the ‘758 Appln.” or “‘758”) and U.S. Pa-
`tent Application No. 10/111,716 (“the ‘716 Appln.” or “‘716”)
`United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “‘227.2”)
`Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technologi-
`cal Invention, 77 Fed. Reg. 157 (August14, 2012)
`A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (July 27, 2010)
`Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered October 8, 2013) at 11-13
`Volusion, Inc. v. Versata Software, Inc. and Versata Development
`Group, Inc., CBM2013-00017 Paper No. 8 (entered October 24,
`2013)
`
`i
`
`

`

`SAMSUNG 1014
`
`SAMSUNG 1020
`
`SAMSUNG 1025
`
`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024 Pa-
`per No. 16 (entered November 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
`RESERVED
`SAMSUNG 1018 U.S. Patent No. 8,033,458 (“the ‘458 Patent” or “‘458”)
`SAMSUNG 1019 U.S. Patent No. 7,942,317 (“the ‘317 Patent” or “’317”)
`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
`RESERVED
`U.S. Patent Application No. 13/012,541 (“the ‘541 Appln.” or
`“541”)
`RESERVED
`RESERVED
`Weinstein “MasterCard Plans Point-of-Sale Product for Merchants
`Leery of Bank Cards”
`Mayo Collaborative Serv v. Prometheus Labs., Inc., 132 S. Ct.
`1289 (2012)
`Gottschalk v. Benson, 409 U.S. 63 (1972)
`Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed.
`Cir. 2011)
`Bilski v. Kappos, 130 S. Ct. 3218 (2010)
`Alice Corp. v. CLS Bank International,134 S.Ct. 2347 (2014)
`
`SAMSUNG 1026
`SAMSUNG 1027
`
`SAMSUNG 1028
`
`SAMSUNG 1029
`
`SAMSUNG 1030
`
`SAMSUNG 1031
`
`SAMSUNG 1032
`SAMSUNG 1033
`
`ii
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`Bancorp Serv., L.L.C. v. Sun Life Assur. Co. (U.S.) 687 F.3d
`1266 (Fed. Cir. 2012)
`Dealertrack, Inc. v. Huber, 674 F.3d 1323 (Fed. Cir. 2012)
`SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir.
`2010)
`In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008)
`Accenture Global Services, GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013)
`Keith, Michael C., The Radio Station Broadcast, Satellite and In-
`ternet, Eighth Edition, 2009
`
`SAMSUNG 1034
`
`SAMSUNG 1035
`
`SAMSUNG 1036
`
`SAMSUNG 1037
`
`SAMSUNG 1038
`
`SAMSUNG-1039
`
`
`
`
`
`iii
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`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
`
`7 (“the Challenged Claim”) of U.S. Patent No. 8,061,598. As explained in this pe-
`
`tition, there exists a reasonable likelihood that Samsung will prevail in demonstrat-
`
`ing unpatentability with respect to at least one of the Challenged Claims based on
`
`teachings set forth in at least the references presented in this petition. Samsung re-
`
`spectfully submits that a CBM should be instituted, and that the Challenged Claims
`
`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 ‘598 Patent. The ‘598 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. Petitioner is
`
`concurrently petitioning, in another petition assigned attorney docket number
`
`1
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`39843-0006CP2, for CBM review of the ‘598 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 CBM39843-0006CP1@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 ‘598 Patent is eligible for CBM. Samsung is not
`
`barred or estopped from requesting this review challenging the Challenged Claims
`
`on the below-identified grounds.
`
`B. Challenge Under 37 § 42.304(b) and Relief Requested
`Samsung requests a CBM review of the Challenged Claims on the grounds
`
`set forth in the table shown below, and requests that each of the Challenged Claims
`
`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
`
`2
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`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
`
`‘598 Patent Claims
`
`Basis for Rejection
`
`Ground 1 7
`
`Ground 2 7
`
`§ 101
`
`§ 103: Gruse in view of Stefik
`
`The ‘598 Patent issued Nov. 22, 2011 from the ‘541 Appln. (SAMSUNG
`
`1025), which was filed on Jan. 24, 2011. The ‘541 appln is a continuation of the
`
`‘558 Appln. (SAMSUNG 1020), which was filed Jan. 15, 2008 (now US Patent
`
`No. 7,942,317, SAMSUNG-1019), which is a continuation of the ‘758 Appln.
`
`(SAMSUNG 1007) filed Jan. 19, 2006 (now US Patent No. 7,334,720, SAM-
`
`SUNG-1021), which is a continuation of the ‘716 Appln. (SAMSUNG-1007) filed
`
`Sep. 17, 2002 (now abandoned), which is a National Stage Entry of the ‘110 Ap-
`
`pln. (SAMSUNG-1007) filed Oct. 25, 2000. The ‘110 Appln. claimed priority to
`
`United Kingdom Patent Appln. GB9925227.2 (SAMSUNG-1008, “the 227.2 Ap-
`
`pln.” or “227.2”), which was filed Oct. 25, 1999. However, as noted in detail be-
`
`low in Section IV.C, because the ‘227.2 disclosure fails to support the Challenged
`
`Claims, the effective filing date of the Challenged Claims is no earlier than Oct.
`
`25, 2000.
`
`3
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`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 Claims.
`
`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
`
`‘598 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 ‘598 Patent.
`
`C. Claim Construction under 37 C.F.R. §§ 42.304(b)(3)
`A claim subject to CBM review is given its “broadest reasonable construc-
`
`
`
`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 only, that the claim
`
`terms are presumed to take on their broadest reasonable interpretation in view of
`
`4
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`
`the specification of the ‘598 Patent. 1
`
`1.
`For purposes of this CBM, “payment data” should be construed to include
`
`CONSTRUCTION 1 – Payment data
`
`and be met by data that relates to previous, present, and/or prospective payment.
`
`Claim 7 of the ‘598 Patent, for example, recites the following - “payment da-
`
`ta memory to store payment data and code to provide the payment data to a pay-
`
`ment validation system.” A POSITA2 at the effective filing date of the ‘598 Patent
`
`would understand that, as used in claim 7, the term “payment data” indicates and is
`
`met by data that can be used to make and/or audit payment for content. Bloom at,
`
`e.g., ¶ 30. (SAMSUNG 1003)
`
`This interpretation is consistent with the relevant disclosure in the specifica-
`
`tion of the ‘598 Patent. Bloom at, e.g., ¶30. Specifically, the ‘598 Patent describes
`
`a payment validation system that “validate[s] payment with an external authority
`
`
`1 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this CBM is not binding up-
`
`on Petitioner in any litigation related to the subject patent. See In re Zletz, 893 F.2d
`
`319, 321-22 (Fed. Cir. 1989).
`
`2 The term “POSITA”, as used in this Petition, refers to a Person of Ordinary Skill
`
`In the Art at the ‘598 Patent’s effective filing date.
`
`5
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`such as a bank or building society,” such that “[t]he combination of the payment
`
`validation means with the data storage means allows the access to the downloaded
`
`data which is to be stored by the data storage means, to be made conditional upon
`
`checked and validated payment being made for the data.” ‘598 at Abstract, 2:5-15.
`
`The ‘598 Patent’s description of making access to downloaded content data condi-
`
`tional upon checked and validated payment being made indicates that “payment
`
`data” may relate previous, present, and/or prospective payment. Bloom at, e.g., ¶
`
`30. The ‘598 Patent also states, e.g., in the Abstract, that “[d]ata storage and ac-
`
`cess systems are described for downloading a paying for data such as audio and
`
`video data, text, software, games, and other types of data” – further supporting that
`
`“payment data”, as used in the claims of the ‘598 Patent, can relate to present pay-
`
`ment. See also ‘598 at 4:50-61 (“the portable data carrier further comprises a pro-
`
`gram store for storing code . . . wherein the code comprises code to output payment
`
`data from the payment data memory”), 3:49-64, 4:36-38. In yet another example,
`
`the ‘598 Patent states that “[t]he carrier may also store content use rules pertaining
`
`to allowed use of stored data items,” and that “these use rules may be linked to
`
`payments made from [a] card . . .” – further supporting that “payment data”, as
`
`used in the claims of the ‘598 Patent, can relate to previous payment. ‘598 at 4:67-
`
`5:8; see also 5:4-11, 5:17-20.
`
`6
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`As such, the disclosure in the specification of the ‘598 Patent is consistent
`
`with the term “payment data,” as used in claims 7, 11, 12, and 17, as it would be
`
`understood by a POSITA: data that relates to previous, present, and/or prospective
`
`payment. Bloom at, e.g., ¶30. Thus, for purposes of this proceeding, “payment da-
`
`ta” should be construed to include and be met by data that relates to previous, pre-
`
`sent, and/or prospective payment.
`
`D. The ‘598 Patent is a Covered Business Method Patent
`The ‘598 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. ‘598 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 AIA’s legislative
`
`history demonstrates that the term “financial product or service” should be “inter-
`
`preted broadly,” encompassing patents “’claiming activities that are financial in na-
`
`ture, 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 His-
`
`tory of the America Invents Act indicates, the language “practice, administration, or
`
`7
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`management” is “intended to cover any ancillary activities 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 ‘598 Patent are directed
`
`to a “portable data carrier” for “storing and paying for data.” See ‘598 at 1:21-23.
`
`Claim 7 of the ‘598 Patent, for example, recites a “portable data carrier,” that in-
`
`cludes “payment data memory to store payment and code to provide the payment
`
`data to a payment validation system.”
`
`As an example, the purported data carrier and payment validation system of
`
`claim 7 unquestionably are used for data processing in the practice, administration,
`
`and management of financial products and services; specifically, for processing
`
`payments for data downloads. Bloom at, e.g., ¶23. Indeed, in a recent decision in-
`
`volving highly similar claims, the Board determined that selling a desired digital
`
`8
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`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”).
`
`
`
`The specification of the ‘598 Patent, moreover, is replete with examples of
`
`financial activity, stating that payment data forwarded to a payment validation sys-
`
`tem may be “data relating to an actual payment made to the data supplier, or . . . a
`
`record of a payment made to an e-payment system” that can be “coupled to banks.”
`
`See ‘598 at 6:60-64, 13:36-41. Even if claim 7 did not explicitly reference finan-
`
`cial activity, and it does, this description alone would be sufficient to establish that
`
`the claimed method is a method for performing data processing used in the prac-
`
`tice, administration, or management of a financial product or service and that,
`
`therefore, the ‘598 Patent is a CBM patent. See SAMSUNG-1012 at 5, 6 (deter-
`
`mining, based on a specification statement that ‘embodiments of the present inven-
`
`tion have application to a wide range of industries’ including ‘financial services,’
`
`despite the apparent lack of financial-related language in the claims); see also
`
`SAMSUNG-1013 at 9-15 (“Although claim 8 does not expressly refer to financial
`
`activity . . . When applied to the activities listed [in the patent’s specification] . . .
`
`the method of claim 8 represents a financial product or service”).
`
`Thus, for at least the reasons described above, the ‘598 Patent is a CBM pa-
`
`tent that is eligible for the review requested by Petitioner.
`
`9
`
`

`

`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`E.
`The ‘598 Patent Is Not Directed to a Technological Inven-
`tion, And Thus, Should Not Be Excluded From the Definition of a
`CBM Patent.
`
`The AIA excludes “patents for technological inventions” from the definition
`
`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
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`that process or method is novel. See id. Finally, to institute a CBM, a patent need
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`only have one claim directed to a covered business method, and not a technological
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`invention. See, e.g., SAMSUNG-1009 at 48736-37.
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`The claims of the ‘598 Patent fail to recite a novel and unobvious technolog-
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`ical feature, and fail to recite a technical problem solved by a technical solution.
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`See Bloom at, e.g., ¶24. Thus, the patent is subject to Section 18 review. Alt-
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`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`hough the independent claims of the ‘598 Patent recite computer-related terms
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`such as “non-volatile memory”, “data terminal”, and “data carrier”, Congress has
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`explained that simply reciting words describing generic technology such as “com-
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`puter hardware, . . .software, memory, computer-readable storage medium, [or] da-
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`tabases” does not make a patent a technological invention. SAMSUNG-1010 at
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`634.
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`The specification of the ‘598 Patent confirms that the computer-related
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`terms recited in the ‘598 Patent’s claims relate to technology that is merely, in the
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`words of the Patent Owner, “conventional”: the specification states, for example,
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`that “[t]he data access terminal may be a conventional computer or, alternatively, it
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`may be a mobile phone” that terminal memory “can comprise any conventional
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`storage device,” and that a “data access device . . . such as a portable audio/video
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`player . . . comprises a conventional dedicated computer system including a pro-
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`cessor . . . program memory . . . and timing and control logic . . . coupled by a data
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`and communications bus.” ‘598 at 4:4-5, 16:46-53, 18:7-11. Consequently, the
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`‘598 Patent claim is not transformed into a technological invention by their recita-
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`tion of these computer-related terms.
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`The ‘598 Patent fails even to recite a technical problem, and instead address-
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`es the non-technical task of allowing “owners of . . . data to make the data availa-
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`ble themselves over the internet without fear of loss of revenue . . . undermining
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`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`the position of data pirates.” ‘598 at 2:11-15, 5:17-19. The ‘598 Patent’s solution
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`to this non-technical problem is nothing more the combination of prior art struc-
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`tures to achieve a normal, expected, and predictable result: the use of a data supply
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`system, content provision system, data terminal and data carrier to restrict access to
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`data based on payment. See, e.g., ‘598 at Abstract, 13:25-34. A teaching of a
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`combination of prior art structures that achieves a predictable result does not “ren-
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`der a patent a technological invention.” SAMSUNG-1009 at 48755. Indeed, “[a]
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`person having ordinary skill in the art at the time that the ‘598 Patent was filed
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`would not have considered the methods described and claimed by the ‘598 Patent
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`to be technical”. Bloom at, e.g., ¶24.
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`In sum, the AIA’s exclusion of “patents for technological inventions” from
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`the definition of CBM patents is not applicable here because the ‘598 Patent fails
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`to recite a novel and unobvious technological feature, and fails to recite a technical
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`problem solved by a technical solution. CBM review is therefore appropriate for
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`the ‘598 Patent.
`
`IV. SUMMARY OF THE ‘598 Patent
`A. Brief Description
`The ‘598 Patent includes 41 claims, of which claims 1, 18, 21, 26, 27, 29, 31
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`and 35 are independent.
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`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`The claims of the ‘598 Patent generally relates to systems and methods “for
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`downloading and paying for data such as audio and video data, text, software,
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`[and] games . . . .” ‘598 at Abstract. The ‘598 Patent purports to address a specific
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`problem: “the growing prevalence of so-called data pirates” who “obtain data ei-
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`ther by unauthorized or legitimate means and then make this data available essen-
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`tially world-wide over the internet without authorization.” ‘598 at 1:31-33. With-
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`in this context, the ‘598 Patent describes “combining digital right management
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`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.” ‘598 at 2:7-11, 5:29-33.
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`Specifically, the ‘598 Patent also discloses a “portable data carrier for stor-
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`ing and paying for data.” ‘598 at 1:21-22. The portable data carrier stores, in a pa-
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`rameter memory, use rules that are used to control access to content data and, in a
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`content memory, the portable data carrier stores content data. See ‘598 at Figs. 5-
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`6, 13: 25-27. This disclosure is reflected in the limitations of independent claims 1
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`and 31, the latter of which recites “reading the use status data and one or more use
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`rules from parameter memory … evaluating the use status data using the one or
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`more use rules to determine whether access to the content data item is permit-
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`ted….” ‘598 at 28:22-27.
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`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`Summary of the Prosecution History of the ‘598 Patent
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`B.
`The ‘598 Patent issued Nov. 22, 2011 from the ‘541 Appln. (SAMSUNG
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`1025), which was filed on Jan. 24, 2011 with 41 claims.
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`During prosecution of the ‘541 Appln., a Non-Final Office Action rejected
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`claims 1, 21, and 31-37 on the ground of nonstatutory obviousness-type double pa-
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`tenting as being unpatentable over claims of U.S. Patent No. 7,334,720. See Non-
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`Final Office Action of April 14, 2011 at 3 and 7-8. Claims 9, 18, 23-30, 38-41
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`were rejected on the same double patenting ground over claims of the ‘720 patent
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`in view of U.S. Patent No. 6,415,156 to Stademann. Id. Dependent claims 10, 12-
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`14, and 19-20 were deemed to contain allowable subject matter. Id. Subsequently,
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`the Patent Owner filed a Terminal Disclaimer (TD) without substantive amend-
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`ments. See Patent Owner’s Response May 20, 2011 at 9. After the Power of At-
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`torney has been duly corrected, the Patent Office accepted the Terminal Disclaimer
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`and mailed a Notice of Allowance to allow all pending claims, noting that “the pri-
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`or art fails to disclose a portal data carrier comprising: (i) an interface for reading
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`and writing data; (ii) a content data memory; (iii) a use rule memory; (iv) a pro-
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`gram store; and having the functions and characteristics as recited in claim 1. The
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`prior art also fails to disclose the limitations of claims 18, 21, 26, 27, 29, 31 and
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`35.” See Notice of Allowance September 12, 2011 at 2. After allowance, formali-
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`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`ty errors in claims 26 and 29 were corrected. See Patent Owner’s Amendment un-
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`der Rule 312 Oct. 19, 2011.
`
`C. The Effective Priority Date of the Claims of the ‘598 Patent
`The ‘598 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-1007), which was filed Oct. 25, 2000 outside the U.S. The ‘110
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`Appln. claimed priority to the ‘227.2 Appln. filed Oct. 25, 1999 in U.K. 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 Claims, the effective filing date of the Challenged
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`Claims is no earlier than Oct. 25, 2000, the filing date of the ‘110 Appln. See
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`Bloom at, e.g., ¶109.
`
`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 Claims, the ‘227.2 Appln. fails to
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`provide the required support.
`
`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
`
`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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`Attorney Docket No 39843-0006CP1
`CBM of U.S. Patent No. 8,061,598
`processor. The four processors of the content access web server are, in turn, con-
`
`nected to various data stores.
`
`The ‘110 Appln. contains forty-seven (47) pages of subject matter disclosure
`
`with thirteen (13) accompanying figures. In contrast, the ‘227.2 Appln. contains
`
`only eight (8) pages of description accompanied by four (4) hand-drawn figures.
`
`And, for the subject matter of the Challenged Claims, the `227.2 Appln. fails to
`
`provide the required support.
`
`FIG. 5 of the ‘110 Appln. (reproduced below), which was not included in the
`
`‘227.2 Appln., depicts a network of content access terminals, e-payment systems
`
`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
`
`processor. The four processors of the content access web server are, in turn, con-
`
`nected to various data stores.
`
`As explained in detail below, however, because the specification of the
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`‘227.2 Appln. fails to support the Challenged Claims, the Challenged Claims do
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`not enjoy the priority date established by the ‘227.2 Appln. Rather, the effective
`
`filing date of the Challenged Clai