UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`
`SAMSUNG ELECTRONICS CO., LTD,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`Case CBM2014-00194
`
`_ Patent 8,118,221
`
`PATENT OWNER’S RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`
`SAMSUNG ELECTRONICS CO., LTD,
`
`Petitioner,
`
`V.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`Case CBM2014-00194
`
`_ Patent 8,118,221
`
`PATENT OWNER’S RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STATEMENT OF MATERIAL FACTS ........................................................ 3
`
`III.
`
`THE BLOOM DECLARATION SHOULD BE GIVEN LITTLE OR NO
`
`WEIGHT .......................................................................................................... 3
`
`A.
`
`B.
`
`No Evidentiary Standard Is Disclosed in the Bloom Declaration ......... 3
`
`Dr. Bloom Is Not a Disinterested Party ................................................4
`
`IV. OVERVIEW OF US. PATENT NO. 8,118,221 ............................................ 6
`
`A.
`
`Overview of the Technology of the Patent ........................................... 6
`
`B. .
`
`Claim Construction ............................................................................... 9
`
`V.
`
`THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`MATTER ....................................................................................................... l l
`
`A.
`
`B.
`
`The Two-Part Test for Statutory Subject Matter ................................ ll
`
`The Claims Are Statutory Under the Second Step of Mayo and Alice
`............................................................................................................. ll
`
`1.
`
`2.
`
`Claim 32 .................................................................................... l4
`
`Claims 2 and 11 ......................................................................... 20
`
`C.
`
`The Claims Do Not Result in Inappropriate Preemption .................... 25
`
`l.
`
`2.
`3.
`
`Preemption under DDR Holdings .............................................25 '
`
`Preemption under Mayo andAlzce28
`Y Non—Infringing Alternatives ShOW a Lack of Preemption........30
`
`Evidence Relied Upon by the Bloom Declaration Is Not from the
`Appropriate Timeframe ....................................................................... 3 5
`
`
`
`
`
`VI.
`
`PETITIONER HAS ALREADY LOST A CHALLENGE TO THE CLAIMS
`ON THE SAIVIE STATUTORY GROUNDS IN ITS LITIGATION WITH
`
`PATENT OWNER ........................................................................................ 3 6
`
`VII. THE USPTO IS ESTOPPED FROM REVISITING THE ISSUE OF
`WHETHER THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER ....................................................................................................... 37
`
`VIII. CONCLUSION .............................................................................................. 3 8
`
`-11-
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`Exhibit Description
`
`
`2001
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`
`
`2002
`Congressional Record - Senate, Sep. 8, 2011, 85402-5443
`
`
`Reserved
`
`2003—2023
`
`Reserved
`
`
`2024
`
`Samsung’s Motion To Stay Litigation Pending CBM Review
`
`2025—2048
`
`
`
`2051-2054
`
`Reserved
`
`
`Deposition Transcript of Jeffrey A. Bloom dated May 19,
`
`
`
`201 5
`
`-iii-
`
`2049
`
`Report and Recommendation (on Defendants’ Motions for
`
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`
`from Smartflash LLC et al. v. Apple, Inc, et al, Case No.
`
`6:13—CV—447 (ED. TeX.) and Smartflaslz LLC et al. v.
`
`Samsung Electronics Co. Ltd, et al., Case No. 6:13—CV-448
`
`(ED. Tex), dated Jan. 21, 2015
`
`
`2050
`
`Order adopting Report and Recommendation (on
`
`Defendants’ Motions for Summary Judgment of Invalidity ,
`
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`
`Apple, Inc, et al, Case No. 6:13—CV-447 (ED. Tex.) and
`
`Smartflaslz LLC et al. v. Samsung Electronics Co. Ltd, et al,
`
`Case No. 6:13—CV—448 (ED. Tex), dated Feb. 13, 2015
`
`
`
`
`
`
`2056
`
`r Non-Confidential Portion of Deposition Transcript of Jeffrey
`
`A. Bloom dated May 20, 2015
`
`2057
`
`Confidential Portion of Deposition Transcript of Jeffrey A.
`
`Bloom dated May 20, 2015
`
`v
`
`2058
`
`Memorandum Opinion and Order (on Defendants’ Motions ‘
`
`for Stay Pending the Outcome CBMs) from Smartflash LLC
`
`et al. v. Apple, Inc, et al, Case No. 6:13—CV-447 (E.D.
`
`TeX.), Smartflash LLC et al. v. Samsung Electronics Co. Ltd,
`
`et al, Case No. 6:13-CV-448 (E.D. TeX.), Smartflash LLC et
`
`al. v. Google, Inc, et al, Case No. 6:14—CV-435 (ED. TeX.),
`
`and Smartflash LLC et al. 12. Amazon, Inc, et al, Case No.
`
`6:14-CV-992 (E.D. Tex.) dated May 29, 2015
`
`
`
`2059-2062
`
`Reserved
`
`2063
`
`Civil Docket Report from Smartflash LLC et al. v, Samsung
`
`Electronics Co. Ltd, et al, Case No. 6:l3-CV-448 (E.D.
`
`TeX.)
`
`
`
`Reserved
`2064—2066
`
`
`2067
`
`Declaration of Emily E. Toohey in Support of Patent
`
`Owner’s Response
`
`
`-iv-
`
`
`
`I.
`
`INTRODUCTION
`
`Claims 2, 11, and 32 of US. Patent 8,118,221 (“the ‘221 Patent”) are
`
`directed to statutory subject matter because they claim a solution “necessarily
`
`rooted in computer technology in order to overcome a problem‘specifically arising
`
`in the realm of computer networks.” DDR Holdings, LLC v. Hotels. com, LP, 773
`
`F.3d 1245, 1257 (Fed. Cir. 2014). In particular, the challenged claims of the ‘221
`
`patent address problems of data content piracy on the Internet by providing for
`
`legitimate acquisition of content data and/or “[b]y combining digital rights
`
`management with content data storage using a single carrier” such that “the stored
`
`content data becomes mobile and can be accessed anywhere while retaining control
`
`over the stored data for the data content provider or data copyright owner.” EX.
`
`1001, ‘221 Patent at col. 5, lines 29—33. In other words, claims of the ‘221 Patent
`
`relate to systems that combine on the data carrier both the digital content and the
`
`use rules/use status data, so that access control to the digital content can be
`
`continuously enforced prior to each access to the digital content.
`
`Moreover, as demonstrated below, claims 2, 11, and 32 of the ‘221 Patent do
`
`not result in inappropriate preemption of “the general idea of enabling limited use
`
`of paid—for/licensed content” (Petition at 30), nor is there any evidence that a
`
`disproportionate amount of future innovation is foreclosed by claims 2, 11, and 32
`
`of the ‘221 Patent.
`
`
`
`As set out in detail below, by Order dated February 13, 2015, Petitioner
`
`already lost in Federal Court the exact same purely legal issue the Board is
`
`considering here — whether claims of the ‘221 Patent are directed to statutory
`
`subject matter under 35 U.S.C. § 101. See Exhibit 2049, Report and
`
`Recommendation (on Defendants’ Motions for Summary Judgment of Invalidity
`
`Pursuant to 35 U.S.C. 101) (hereinafter “Report and Recommendation”), from
`
`Smartflaslz LLC et al. v. Apple, Inc, et al, Case No. 6:13-CV—447 (E.D. Tex.) and
`
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al, Case No. 6:13-CV—
`
`448 (ED. Tex), dated Jan. 21, 2015, and Exhibit 2050, Order adopting Report and
`
`Recommendation (on Defendants’ Motions for Summary Judgment of Invalidity
`
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v. Apple, Inc, et al, Case
`
`No. 6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v. Samsung Electronics
`
`Co. Ltd, er al, Case No. 6:13-CV-448 (E.D. Tex), dated Feb. 13, 2015.
`
`Finally, Patent Owner submits that the USPTO has already adjudicated the
`
`threshold question of Whether the claims 2, 11, and 32 of the ‘221 Patent comport
`
`with 35 U.S.C. § 101, Which is a question of law, during the prosecution of the
`
`‘221 Patent. The USPTO is estopped from re-litigating this purely legal issue
`
`already considered and adjudicated by the USPTO.
`
`In support of this Patent Owner’s Response, reference Will be made to
`
`concurrently filed Exhibits 205 5-2057: (1) the non-confidential Deposition
`
`_2_
`
`
`
`Transcript of Jeffrey A. Bloom, PhD., dated May 19, 2015, (2) the non—
`
`confidential Deposition Transcript of Jeffrey A. Bloom, PhD., dated May 20, 2015,
`
`and (3) the confidential Deposition Transcript of Jeffrey A. Bloom, PhD., dated
`
`May 20, 2015, respectively. Those deposition transcripts refer to Exhibit 1003, the
`
`Declaration of Jeffrey A. Bloom, Ph.D. (hereinafter “the Bloom Declaration”).
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The Bloom Declaration does not state that Dr. Bloom’s opinions
`
`presented therein were based on a “preponderance of the evidence” standard.
`
`2.
`
`The Bloom Declaration does not state that Dr. Bloom’s opinions
`
`presented therein were based on a “more likely than not” evidentiary weight
`
`standard.
`
`III.
`
`THE BLOOM DECLARATION SHOULD BE GIVEN LITTLE OR NO
`
`WEIGHT
`
`A.
`
`No Evidentiary Standard Is Disclosed in the Bloom Declaration
`
`The Bloom Declaration does not disclose the underlying facts on which the
`
`opinions are based and is, therefore, entitled to little or no weight. 37 CFR 42.65
`
`(“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight”). More specifically, the Bloom
`
`-3-
`
`
`
`lE
`
`l 3
`
`;g.
`
`l zt3_
`
`.r
`
`l ii
`
`Declaration does not state the evidentiary weight standard (e. g., substantial
`
`evidence versus preponderance of the evidence) that Dr. Bloom used in arriving at
`
`his conclusions. Given that there is no evidence that Dr. Bloom even knows how
`
`much weight need be relied upon to show that a claim is nonstatutory, the PTAB
`
`can only afford little or no weight to the testimony therein. To do otherwise would
`
`be to accept his opinions without knowing “the underlying facts
`
`on which the
`
`opinion is based” (i.e., how much evidence he thinks shows any of his opinions
`
`discussed therein).
`
`For example, when Dr. Bloom opines that he believes a statement to be true
`
`or that he believes an element is inherently present, is that belief based on less than
`
`a preponderance of the evidence, or more? Without his having disclosed what
`
`evidentiary standard heused in forming his opinions, and given that there is no
`
`evidence that he even knew What evidentiary standard he was supposed to be
`
`using, the PTAB cannot rely on his statements. Thus, the PTAB should find that
`
`his declaration is entitled to little or no weight.
`
`B.
`
`Dr. Bloom Is Not a Disinterested Party
`
`Dr. Bloom has taken the position with respect to patents in the family of
`
`patents being challenged that “The! claims of the '221
`
`cover nothing more than
`
`the basic financial idea of enabling limited use of paid for and/or licensed content
`
`-4-
`
`
`
`using conventional computer systems and components.” Exhibit 2055, 81:4—8.
`
`.
`
`i,E
`
`iz
`
`iS lll
`
`i»:1
`
`
`
`
`
`li,.
`
`zE.giil
`
`However, as noted in paragraph 5 of the Bloom Declaration, Dr. Bloom is
`
`“currently Director of System Engineering and Software Development for
`
`Conditional Access and Identity Management Systems for SiriusXM radio.” Dr.
`
`Bloom further testified that SiriusXM radio has a product that enables paid for
`
`and/or licensed content to be stored locally and played back later in a disconnected
`
`fashion.
`
`Q. Does SiriusXM have a product or service that enables paid for
`
`and/or licensed content to be stored locally and played back later in a
`
`disconnected fashion from either the Internet or the satellite to which
`
`it received the inf— —- information?
`
`A. Yes, it does.
`
`Q. Can you describe that product for me, please, without disclosing
`
`any confidential information?
`
`A. On-demand content can be downloaded and stored locally and then
`
`played at a later, off-line time.
`
`Q. What's the name of the product that performs that function?
`
`A. It's a feature in our Internet streaming product.
`
`Q. What's the name of the Internet streaming product?
`
`A. SiriusXM Internet Radio.
`
`
`
`See Exhibit 2056, 179:1-20.
`
`Moreover, when Dr. Bloom was questioned about the SiriusXM Internet
`
`Radio product
`
`Dr. Bloom refused to testify about its
`
`operation alleging that the information was confidential. See e.g., Exhibit 2057,
`
`193217-19428; 195:5-16. However, similarity between his employer’s products and
`
`the claims of the patent would provide Dr. Bloom with a motivation to be biased
`
`against the claims being found to be statutory subject matter under 35 U.S.C.
`
`§101.
`
`IV. OVERVIEW OF US. PATENT NO. 8,118,221
`
`A.
`
`Overview of the Technology of the Patent
`
`Although the claims define the actual scope of coverage of the patent, as
`
`described in the first paragraph of the BACKGROUND OF THE INVENTION,
`
`[the patent-at-issue, U.S. Patent No. 8,118,221 (hereinafter “the ‘221 patent”)
`
`generally describes “data storage and access systems
`
`[and] is particularly useful
`
`for managing stored audio and video data, but may also be applied to storage and
`
`access of text and software, including games, as well as other types of data.” Col.
`
`1, lines 20—28.
`
`Preferred embodiments described in the last full paragraph of col. l5
`
`illustrate this further: “FIG. 7
`
`shows a variety of content access terminals for
`
`-6-
`
`
`
`accessing data supply computer system 120 over internet 142. The terminals are
`
`provided with an interface to a portable data carrier or ‘smart Flash card’ (SFC) as
`
`generally described with reference to FIG. 2 and as described in more detail below.
`
`In most embodiments of the terminal the SFC interface allows the smart Flash card
`
`data carrier to be inserted into and removed from the terminal, but in some
`
`embodiments the data carrier may be integral with the terminal.” Exemplary
`
`terminals include, but are not limited to, set-top boxes 154, CD/DVD Players 170
`
`and mobile communications devices 152. Col. 16, lines 5-17.
`
`Referring to preferred embodiments, the ‘221 patent discloses that a data
`
`supply system may provide users with a seamless purchase and content delivery
`
`experience. Col. 23, lines 61-66. Users are able to purchase content from a variety
`
`of different content providers even if they do not know where the content providers
`
`are located or how the content is delivered. see id. The exemplary system is
`
`operated by a “content data supply ‘system owner,”’ who may act as an
`
`intermediary between a user seeking to purchase content and content providers,
`
`such as record labels, movie studios, and software providers. See col. 13, lines 60—
`
`67. When a user accesses the system, he or she is able to select content to purchase
`or rent from a variety of different content providers. See the paragraph crossing
`
`cols. 4 and 5. If the user finds a content item to buy, his or her device will transmit
`
`stored “payment data” to a “payment validation system” to validate the payment
`
`-7-
`
`
`
`ll E glEl t
`
`
`
` l l litzi ll
`
`data. See col. 8, lines 3—6. The payment validation system returns proof that the
`
`payment data has been validated, in the form of “payment validation data,” and the
`
`user is able to retrieve the purchased content from the content provider. See col. 8,
`
`lines 6-9.
`
`Col. 24, lines 14-16, discloses that “FIG. 13
`
`shows a flow chart for user
`
`access of stored data on a smart Flash card using a data access device such as the
`
`MP3 player of FIG.» 1,” Col. 9, lines 20-22, discloses “The data access device uses
`
`the use status data and use rules to determine What access is permitted to data
`
`stored on the data carrier.” The paragraph crossing cols. 4 and 5 discloses “The
`
`carrier may
`
`store content use rules pertaining to allowed use of stored data
`
`items. These use rules may be linked to payments made from the card to provide
`
`payment options such as access to buy content data outright; rental access to
`
`content data for a time period or for a specified number of access events; and/or
`
`rental/purchase, for example where rental use is provided together with an option
`
`to purchase content data at the reduced price after rental access has expired.”
`
`Further, as described in col. 9, lines 33-3 5, “use status data [is retrieved] from the
`
`data carrier [to] indicat[e] past use of the stored data.” Thus, as described in col. 5,
`
`lines 29—33, “[b]y combining digital rights management with content data storage
`
`using a single carrier, the stored content data becomes mobile and can be accessed
`
`
`
`iEi
`
`E is1 Z
`
`
`
`e,
`iili
`lI
`
`l it iiv
`
`anywhere while retaining control over the stored data for the data content provider
`
`or data copyright owner.”
`
`By using a system that combines on the data carrier both the digital content
`
`and the use rules/use status data, access control to the digital content can be
`
`continuously enforced prior to access to the digital content. By comparison, unlike
`
`a system that uses use rules/use status data as claimed, when a DVD was
`
`physically rented for a rental period, the renter could continue to play the DVD,
`
`even if the renter kept the DVD past the rental period because the use rules were
`
`not associated with thegDVD. Similarly, there was no way to track a use of the
`
`DVD such that a system could limit its playback to specific number of times (e.g.,
`
`three times) or determine that the DVD had only been partially used.
`
`B.
`
`Claim Construction
`
`Petitioner has alleged that “‘payment data’ should be construed to include
`
`and be met by data that relates to previous, present and/or prospective payment.”
`
`Petition at 5. However, “payment data” in the context of the claims of the ‘221
`
`patent should be interpreted to mean “data that can be used to make payment for
`
`content” when using a broadest reasonable interpretation.1
`
`’ Patent Owner’s use of the “broadest reasonable interpretation” (BRI)
`
`standard herein is not an admission that the BRI standard is the proper standard for
`
`-9-
`
`
`
`The ‘221 patent, col. 20, lines 59-62, states “payment data for making a
`
`payment
`
`is received from the smart Flash card by the content access terminal
`
`and forwarded to an e—payment system.” That is, the payment data is usedfor
`
`making a payment. Furthermore, as can be seen in Figure 120 of the ‘221 patent,
`
`step S54 reads “PAYMENT FOR SCHEME OWNER RECEIVED FROM CARD
`
`BY CONTENT ACCESS TERMINAL AND FORWARDED TO e-PAYMENT
`
`SYSTEM.” Step SSS then reads “PAYMENT RECORD DATA RECEIVED
`
`FROM e-PAYMENT SYSTEM BY CONTENT ACCESS TERMINAL AND
`
`FORWARDED TO CARD.” Both of those steps precede step SS6 which recites
`
`“PAYMENT RECORD DATA, PURCHASE REQUEST AND CARD
`
`REGISTRATION DATA TRANSMITTED TO SCHEME OWNER.” Thus, as
`
`payment has not yet been made when the payment data of step SS4 is sent,
`
`“payment data” should be interpreted to mean “datathat can be used to make
`
`payment for content.”
`
`CBM proceedings such as this one. However, for the purposes of this proceeding v
`
`based on the issues in the instituted proceeding, Patent Owner has presented its
`
`arguments utilizing the BRI standard for “payment data.” Patent Owner reserves
`
`its right to argue for a different standard at a later date or in a different proceeding.
`
`-10-
`
`
`
`V.
`
`THE CLAIMS ARE DIRECTED TO STATUTORY SUBJECT
`
`MATTER
`
`A.
`
`The Two—Part Test for Statutory Subject Matter
`
`The Supreme Court articulated a two-part test for patentability in Mayo
`
`Collaborative Services v. Prometheus Laboratories, Inc, 132 S. Ct. 1289 (2012),
`which has been followed by Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347
`
`(2014). The first step in the analysis is to determine Whether the claims at issue are
`
`directed to patent-ineligible concepts. If the claims at issue are directed to a
`
`patent-ineligible concept, the second step of the analysis is to determine whether
`
`the limitations of the claims, individually and as ordered combinations, contain an
`
`inventive concept that transforms the nature of the claims into patent-eligible
`
`subject matter. Mayo, 132 S. Ct. at 1294.
`
`B.
`
`The Claims Are Statutory Under the Second Step of Mayo and Alice
`
`Post Mayo and Alice, the Federal Circuit has provided guidance on how to
`
`distinguish statutory claims, like those of the ‘221 patent, from non-statutory
`
`claims. In DDR Holdings, the Federal Circuit analyzed claims, like the ‘221 patent
`
`claims at issue here, that have technological solutions to technological problems
`
`created by the nature of digital'content and the Internet. In DDR Holdings, the
`
`system of exemplary claim 19 included (a) a computer store containing the data
`
`needed to support operation of the system and (b) a computer server (or processor)
`
`that was coupled to the computer store, where the claimed system was
`
`-11_
`
`
`
`programmed to (by having code configured to) perform the solution to a network-
`
`specific problem. The computer server was “programmed to” perform four steps.
`
`The first two steps are “(i) receive from the web browser of a computer user a
`
`signal indicating activation of one of the links displayed by one of the first web
`
`pages; [and] (ii) automatically identify as the source page the one of the first web
`
`pages on which the link has been activated.” The third and fourth stepswere “(iii)
`
`in response to identification of the source page, automatically retrieve the stored
`
`data corresponding to the source page; and (iv) using the data retrieved,
`
`automatically generate and transmit to the web browser a second web page that
`
`displays: (A) information associated with the commerce object associated with the
`link that has been activated, and (B) the plurality of visually perceptible elements
`
`visually corresponding to the source page.” The Court found the claims to be
`
`statutory because “the claimed solution is necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the realm of
`
`computer networks.” Id. at 1257.
`
`Such is the case here too. Here, the claims are not directed to mental
`
`processes or processes performed using pen and paper, rather the claims are
`
`directed to particular devices that can download and store digital content into a
`
`data carrier. By using a system that combines on the data carrier both the digital
`
`content and payment data that can be forwarded to a payment validation system,
`
`-12-
`
`
`
`
`
`
`
`
`
`i iis
`
`,lI ll i
`
`i it l i lll
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`and by responding to payment validation data when obtaining digital content, the
`
`claimed data access terminals enable digital content to be obtained effectively and
`
`legitimately.
`
`In addition, the data access terminal of claim 32 also utilizes at least one
`
`access rule, also written to the data carrier. The at least one access ru1e specifies 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. By using a
`
`system that combines on the data carrier both the digital content and the access
`
`rule, access control to the digital content can be continuously enforced prior to
`
`access to the digital content and allowing subsequent use (e.g., playback) of the
`
`digital content to be portable and disconnected. By comparison, unlike a system
`
`that uses an access rule as claimed, when a DVD was physically rented, access
`
`conditions were not written to the DVD to define the rights based on an amount of
`
`amount of payment.
`
`Furthermore, the claims are rooted in computer technology in order to
`
`overcome a problem specifically arising in the realm of computer networks — that
`
`of digital data piracy, and, like in DDR Holdings, “address
`
`a challenge
`
`particular to the Internet.” Id. at 1257. The Report and Recommendation too ‘
`
`acknowledged this distinction, finding:
`
`-13-
`
`
`
`As in DDR Holdings, the patents here do not simply apply a known
`
`business practice from the pre—Internet world to computers or the
`
`Internet. “The claimed solution is necessarily rooted in computer
`
`technology in order to overcome a problem specifically arising in the
`
`realm of computer networks.” Digital Rights Management is a
`
`technology that was developed after widespread use of the Internet.
`
`Entry into the Internet Era presented new and unique problems for
`
`digital content providers in combatting unauthorized use and
`
`reproduction of protected media content.
`
`Report and Recommendation at 19, lines 7-12 (quoting DDR Holdings, 773 F.3d at
`
`1257) (internal citation omitted).
`
`1.
`
`Claim 32
`
`As discussed above, claim 32 recites a data access terminal (a system) that
`
`parallels the structure of the statutory claim 19 in DDR Holdings and utilizes link-
`
`like access (using a user-stored data identifier) similar to DDR Holdings. The table
`
`below sets forth a mapping of claim 32 of the ‘221 patent to claim 19 of the patent
`
`in DDR Holdings and shows that claim 32 is directed to statutory subject matter.
`
`19. A system useful in an outsource
`
`Similar claim element from claim 32
`Claim element from DDR Holding
`
`
`“A data access terminal for retrieving
`
`
`
`E EE E E E i
`
`
`
`
`
`
`
`
`
`EEE E|
`
`Claim element from DDR Holding
`
`Similar claim element from claim 32
`
`provider serving web pages offering
`
`data from a data supplier and providing
`
`commercial opportunities, the system
`
`the retrieved data to a data carrier, the
`
`comprising:
`
`
`terminal comprising”
`
`“a data carrier” that is used to store
`
`payment data, data retrieved from a data
`
`supplier, and at least one access rule
`
`retrieved from the data supplier
`
`(a) a computer store containing data, for
`
`each of a plurality of first web pages,
`
`defining a plurality of visually
`
`perceptible elements, which visually
`
`perceptible elements correspond to the
`
`plurality of first web pages; (i) wherein
`
`each of the first web pages belongs to
`
`one of a plurality of web page owners;
`
`(ii) wherein each of the first web pages
`
`displays at least one active link
`
`associated with a commerce object
`
`associated with a buying opportunity of
`
`a selected one of a plurality of
`
`merchants; and (iii)
`
`
`
`(b) a computer server at the outsource
`
`“a processor coupled to the first
`
`provider, which computer server is
`
`interface, the data carrier interface, and
`
`-15-
`
`
`
`E E i iE i
`
`,
`
`1?
`2,
`
`l s
`
`,
`
`
`
`
`
`li
`
`Eg ii3 lt il
`
`Claim element from DDR Holding
`
`Similar claim element from claim 32
`
`coupled to the computer store and
`
`programmed to:
`
`(i) receive from the web browser of a
`
`computer user a signal indicating
`
`activation of one of the links displayed
`
`by one of the first web pages;
`
`(ii) automatically identify as the source
`
`
`
`the program store for implementing the
`
`stored code, the code comprisingz”
`
`“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
`
`
`
`page the one of the first web pages on
`
`data from the payment validation
`
`which the link has been activated;
`
`system; “
`
`(iii) in response to identification of the
`
`source page, automatically retrieve the
`
`stored data corresponding to the source
`
`page; and
`
`
`
`“code responsive to the payment
`
`validation data to retrieve data from the
`
`data supplier ...;”
`
`
`
`the web browser a second web page that
`
`identifier data and associated value data
`
`-16—
`
`
`
`(iv) using the data retrieved,
`
`automatically generate and transmit to
`
`
`
`
`“code to retrieve from the data supplier
`
`
`and output to a user-stored data
`
` and use rule data for a data item
`
`
`displays: (A) information associated
`
`
`with the commerce object associated
`
`
`
`Claim element from DDR Holding
`
`Similar claim element from claim 32 with the link that has been activated, and
`
`available from the data supplier.”
`
`
`
`
`
`l.
`l3
`
`r iE il
`
`(B) the plurality of visually perceptible
`
`elements visually corresponding to the
`
`“code responsive to the payment
`
`validation data to write the retrieved
`
`source page.
`
`
`
`
`
`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”
`
`
`
`-17-
`
`
`
`
`
`
`
`ti
`l
`t;
`
`g E l l
`
`Thus, like in DDR Holdings, when “the limitations of the
`
`claims are taken as [a]
`
`combination, the claims recite[] an invention that is not merely the routine or
`
`conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. Such a
`
`finding was further echoed by the Report and Recommendation when it held the
`
`“asserted claims
`
`recite specific ways of using distinct memories, data types, and
`
`use rules that amount to significantly more than the underlying abstract idea.
`
`Although in some claims the language is functional and somewhat generic, the
`
`claims contain significant limitations on the scope of the inventions.” Report and
`
`Recommendation at 19, lines 1-4.
`
`While it is the combination of elements that ultimately defines patentability,
`
`exemplary limitations show that the Petition has failed to show that claim 32 is
`
`non-statutory. For example, claim 32 expressly 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, the at least one condition being dependent upon the amount of
`
`payment associated with the payment data forwarded to the payment validation
`
`system.” Theat least one access rule is written into the data carrier that also stores
`
`data received from the data supplier, and the Petition has not shown that such
`
`limitations were known.
`
`-18—
`
`
`
`
`
`
`
`
`
` f l i l l
`
`The paragraph crossing pages 28 and 29 of the Petition alleges with respect
`
`to that limitation that “content must be paid for based on actual use, a concept
`
`established for many years by ASCAP.” This does not show that the at least one
`
`access rule specifies at least one condition for accessing the retrieved data written
`
`into the data carrier, and that the at least one condition is dependent upon the
`
`amount of payment associated with the payment data forwarded to the payment
`
`validation system. In fact, Dr. Bloom confirmed this when he testified:
`
`Exhibit 2057, 153 21-9. Likewise, the “eventual DMCA limitations” and The Radio
`
`
`Station cited in the Petition and Bloom’s declaration also do not disclose such an
`
`access rule and are, in fact, dated after the effective filing date of the ‘221 patent;
`
`Claim 32 also recites “code responsive to the payment validation data to
`
`retrieve data from the-data supplier and to write the retrieved data into the data
`
`carrier.” The paragraph crossing pages 26 and 27 of the Petition analogizes this
`
`limitation to “taking delivery of a good in a store after credit has been verified.
`
`-19-
`
`
`
`One example of a paper—and-ink payment form has been done for decades in order
`
`to retrieve oversized items from loading docks (i.e., at places like Toys—R—Us).”
`
`However, by relying on “oversized items,” it can be seen that the Petition is
`
`ignoring even the context of the problem -- that a technological solution is
`
`necessary to. address the technological problem created by the nature of digital
`
`content and the Internet. Moreover, such an assertion ignores that the claim
`
`language actually requires that the retrieved data be written into the data carrier
`
`from which the payment data was written -- something that definitely is not
`
`possible with an “oversized item” and a paper-and-ink payment form.
`
`Accordingly, claim 32 is directed to statutory subject matter under the two-part test
`
`of Mayo and Alice.
`
`2.
`
`Claims 2 and 11
`
`Claim 1 also recites a data access terminal (a system), and claims 2 and 11
`
`depend from claim 1. Claims 2 and ll also parallel the structure of the statutory
`claim 19 in DDR Holdings. The table below sets forth a mapping of the elements
`
`of claims 1 and 2 of the ‘221 patent to claim 19 of the patent in DDR Holdings and
`
`shows that claims 2 and 11 are directed to statutory subject matter.
`
`-20-
`
`
`
`Similar claim element from claims 1
`
`and 2 of the ‘221 patent
`
`19. A system useful in an outsource
`
`“A data access terminal for retrieving
`
`provider serving web pages offering
`
`data from a data supplier and providing
`
`
`
`
`Claim element from DDR Holding
`
`
`
`
`
`
`
`
`
`
`commercial opportunities, the system
`
`the retrieved data to a data carrier, the
`
`comprising:
`
`
`
`(a) a computer store containing data, for
`
`each of a plurality of first web pages,
`
`terminal comprisingz”
`
`
`
`
`“a data carrier” that is used to store
`
`
`payment data and data retrieved from a
`
`defining a plurality of visually
`
`data supplier
`
`perceptible elements, which visually
`
`perceptible elements correspond to the
`
`plurality of first web pages
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