IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Hulst et al.
`Attorney Docket No.: 39843-0005CP2
`U.S. Patent No.: 8,033,458
`Issue Date:
`October 11, 2011
`
`Appl. Serial No.: 12/943,847
`
`Filing Date:
`November 10, 2010
`
`Title:
`DATA STORAGE AND ACCESS SYSTEMS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,033,458 PURSUANT TO 35 U.S.C. § 321
`
`AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
`
`

`

`
`
`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`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
`REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ..................................... 2
`A.  Grounds for Standing Under 37 C.F.R. § 42.304(a) ................................... 2 
`B.  Challenge Under 37 C.F.R. § 42.304(b) and Relief .................................... 2 
`C.  Claim Constructions under 37 C.F.R. §§ 42.104(b)(3) .............................. 4 
`D.  The ‘458 Patent is a Covered Business Method Patent .............................. 5 
`E.  The ‘458 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. .. 8 
`SUMMARY OF THE ‘458 Patent ............................................................................ 10
`A.  Brief Description ............................................................................................ 10 
`B. 12 
`C.  Summary of the Prosecution History of the ‘458 Patent .......................... 12 
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`V.
`WHICH A CBM IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD
`THAT AT LEAST ONE CLAIM OF THE ‘458 PATENT IS UNPATENTABLE .................... 13
`A.  GROUND 1 – Ginter Anticipates Claims 11. ............................................ 14 
`1.  Overview of Ginter .............................................................................. 14 
`2.  Ginter Anticipates Claim 11 ............................................................... 24 
`CONCLUSION ......................................................................................................... 42
`
`II.
`III.
`
`IV.
`
`VI.
`
`
`i
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`

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`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`
`
`EXHIBITS
`
`SAMSUNG-1001 U.S. Patent No. 8,033,458 to Hulst et al. (“the ‘458 Patent” or
`“‘458”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ‘458 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re the ‘458 Patent (“Bloom”)
`
`SAMSUNG-1004 RESERVED
`
`SAMSUNG-1005 RESERVED
`
`SAMSUNG-1006 RESERVED
`
`SAMSUNG-1007 PCT Application PCT/GB00/04110 (“the ‘110 Appln.” or
`“‘110”)
`
`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “‘227.2”)
`
`SAMSUNG-1009 Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technolog-
`ical Invention, 77 Fed. Reg. 157 (August14, 2012)
`
`SAMSUNG-1010 A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
`
`SAMSUNG-1011 Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (July 27, 2010)
`
`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered October 8, 2013) at 11-13
`
`ii
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`

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`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Develop-
`ment Group, Inc., CBM2013-00017 Paper No. 8 (entered Octo-
`ber 24, 2013)
`
`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered November 19, 2013)
`
`SAMSUNG-1015 RESERVED
`
`SAMSUNG-1016 RESERVED
`
`SAMSUNG-1017 U.S. Patent No. 8,061,598
`
`SAMSUNG-1018 RESERVED
`
`SAMSUNG-1019 U.S. Patent No. 7,942,317
`
`SAMSUNG-1020 U.S. Patent Application No. 12/014,558 (“the ‘558 Appln.” or
`“’558”)
`
`SAMSUNG-1021 U.S. Patent No. 7,334,720 (“the ‘720 Patent” or “’720”)
`
`SAMSUNG-1022 RESERVED
`
`SAMSUNG-1023 U.S. Patent No. 5,915,019 (“Ginter”)
`
`SAMSUNG-1024 U.S. Patent Application Serial No. 12/943,847
`
`SAMSUNG-1025 U.S. Patent Application Serial No. 13/012,541a
`
`SAMSUNG-1026 RESERVED
`
`SAMSUNG-1027 RESERVED
`
`SAMSUNG-1028 RESERVED
`
`SAMSUNG-1029 RESERVED
`
`iii
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`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`SAMSUNG-1030 RESERVED
`
`SAMSUNG-1031 RESERVED
`
`SAMSUNG-1032 RESERVED
`
`SAMSUNG-1033 RESERVED
`
`SAMSUNG-1034 RESERVED
`
`SAMSUNG-1035 RESERVED
`
`SAMSUNG-1036 RESERVED
`
`SAMSUNG-1037 RESERVED
`
`SAMSUNG-1038 RESERVED
`
`
`
`iv
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`

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`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`Three sister companies, Samsung Electronics America, Inc., Samsung Elec-
`
`tronics Co., Ltd., and Samsung Telecommunications America, LLC (“Petitioner”
`
`or “Samsung”) petition for Covered Business Method Patent Review (“CBM”) un-
`
`der 35 U.S.C. §§ 321 and § 18 of the Leahy-Smith American Invents Act of claim
`
`11 (“the Challenged Claim”) of U.S. Patent No. 8,033,458. As explained in this
`
`petition, there exists a reasonable likelihood that Samsung will prevail in demon-
`
`strating unpatentability with respect to at least one of the Challenged Claim based
`
`on teachings set forth in at least the references presented in this petition. Samsung
`
`respectfully submits that a CBM should be instituted, and that the Challenged
`
`Claim should be canceled as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., and
`
`
`
`Samsung Telecommunications America, LLC are jointly filing this Petition, and
`
`are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Samsung is not aware of any disclaimers or reexamination certificates for
`
`the ‘458 Patent. The ‘458 Patent is the subject of a number of civil actions includ-
`
`ing: Smartflash LLC et al. v. Apple, Inc., Case No. 6:13-cv-00447 and Smartflash
`
`et al v. Samsung Electronics Co. Ltd. et al, Case No. 6:13-cv-00448. It is also the
`
`1
`
`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`subject of the following Petitions for Covered Business Method Review: Apple
`
`Inc. v. Smartflash LLC, CBM2014-00106 and CBM2014-00107. Petitioner is
`
`concurrently petitioning, in another petition assigned attorney docket number
`
`39843-0005CP1, for CBM review of the ‘458 Patent under grounds additional to
`
`those presented in this petition.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Samsung designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and
`
`Thomas Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available for ser-
`
`vice at 3200 RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-
`
`783-5070) or via electronic service by email at CBM39843-0005CP2@fr.com.
`
`PAYMENT OF FEES
`
`II.
`Samsung authorizes charges to Deposit Account No. 06-1050 for the fee set
`
`in 37 C.F.R. § 42.15(b) for this Petition and any related additional fees.
`
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
`
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Samsung certifies that the ‘458 Patent is available for CBM. Samsung is not
`
`barred or estopped from requesting this review of the Challenged Claim on the fol-
`
`lowing grounds.
`
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief
`
`2
`
`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`Samsung requests a CBM review of the Challenged Claim on the grounds
`
`set forth in the table shown below, and requests that each of the Challenged Claim
`
`be found unpatentable. An explanation of how these claims are unpatentable under
`
`the statutory grounds identified below is provided in the form of detailed descrip-
`
`tion that follows, indicating where each claim elements can be found in the cited
`
`prior art, and the relevance of that prior art. Additional explanation and support for
`
`each ground of rejection is set forth in Exhibit SAMSUNG-1003, the Declaration
`
`of Dr. Jeffrey Bloom (“Bloom”), referenced throughout this Petition.
`
`Ground
`
`‘458 Patent Claims
`
`Basis for Rejection
`
`Ground 1 11
`
`§ 102: Ginter
`
`The ‘458 Patent issued Oct. 11, 2011 from the ‘847 Appln. (SAMSUNG-
`
`1024), which was filed Nov. 10, 2010. The ‘847 Appln. is a continuation of the
`
`‘558 Appln. (SAMSUNG-1020) filed Jan. 15, 2008 (now the ‘317 Patent, Sam-
`
`sung-1019); which is a continuation of U.S. Patent Application No. 11/336,758
`
`(SAMSUNG-1007, “the ‘758 Appln.”) filed Jan. 19, 2006 (now U.S. Patent No.
`
`7,334,720, Samsung-1021), which is a continuation of U.S. Patent Appln. No.
`
`10/111,716 (SAMSUNG-1007, “the ‘716 Appln.”) filed Apr. 25, 2002. The ‘716
`
`3
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`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`Appln. is a National Stage Entry of PCT Appln. No. PCT/GB00/04110 (SAM-
`
`SUNG-1007, “the ‘110 Appln.”) filed Oct. 25, 2000.1
`
`Ginter (SAMSUNG-1023) qualifies as prior art under 35 U.S.C. § 102(b).
`
`Specifically, Ginter issued June 22, 1999, more than one year before the earliest
`
`effective filing date of the Challenged Claim. Accordingly, Ginter is eligible under
`
`AIA § 18(a)(1)(C) as prior art for CBM review of the ‘458 Patent.
`
`C. Claim Constructions under 37 C.F.R. §§ 42.104(b)(3)
`A claim subject to CBM review is given its “broadest reasonable construc-
`
`tion in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`42.100(b). Thus the words of the claim are given their plain meaning unless that
`
`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed.
`
`Cir. 1989). Petitioner submits, for the purposes of the CBM review only, that the
`
`claim terms are presumed to take on their broadest reasonable interpretation in
`
`view of the specification of the ‘458 Patent. 2
`
`
`1 The ‘110 Appln. claims priority to the ‘227.2 Appln. (SAMSUNG-1008), which
`
`was filed Oct. 25, 1999. However, because the ‘227.2 disclosure fails to support
`
`the Challenged Claim, the effective filing date of the Challenged Claim is no earli-
`
`er than Oct. 25, 2000.
`
`2 Because the standards of claim interpretation applied in litigation differ from
`
`
`
`4
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`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`D. The ‘458 Patent is a Covered Business Method Patent
`The ‘458 Patent, which generally relates to systems and methods “for down-
`
`loading and paying for data” is a “covered business method patent” (“CBM pa-
`
`tent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘458 at Abstract.
`
`The AIA defines a CBM patent as “a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service” (empha-
`
`ses added). AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The USPTO recognizes
`
`that the AIA’s legislative history demonstrates that the term “financial product or
`
`service” should be “interpreted broadly,” encompassing patents “’claiming activi-
`
`ties that are financial in nature, incidental to a financial activity or complementary
`
`to a financial activity.’” SAMSUNG-1009 at 48735 (quoting 157 Cong. Rec.
`
`S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). Moreover, as the
`
`Guide to the Legislative History of the America Invents Act indicates, the language
`
`“practice, administration, or management” is “intended to cover any ancillary ac-
`
`tivities related to a financial product or service, including . . . marketing, customer
`
`
`PTO proceedings, any interpretation of claim terms in this CBM review is not
`
`binding upon Petitioner in any litigation related to the subject patent. See In re
`
`Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
`
`5
`
`

`

`interfaces [and] management of data . . .” (emphases added). SAMSUNG-1010 at
`
`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`635-36.
`
`Augmenting the statutory language with the above-referenced clarifications
`
`from the legislative history, and from the Guide to that legislative history, yields
`
`the following definition of a CBM patent: a patent that claims a method or corre-
`
`sponding apparatus for performing data processing or other operations used in ac-
`
`tivities that are financial in nature, incidental to a financial activity, or complemen-
`
`tary to a financial activity, including the management of data. See AIA § 18(d)(1);
`
`SAMSUNG-1009 at 48735; and SAMSUNG-1010 at 635-26.
`
`In the words of the Patent Owner, the claims of the ‘458 Patent are directed
`
`to a “portable data carrier for storing and paying for data and to computer systems
`
`for providing access to data to be stored.” See ‘458 at 1:21-28. Indeed, claim 6,
`
`for example (the limitations of which are incorporated into claim 11, which de-
`
`pends from claim 6), recites a “data access device for retrieving stored data from a
`
`data carrier” that includes “code to evaluate the use status data using the use rules
`
`data to determine whether access is permitted to the stored data.” See ‘458 at claim
`
`6; Bloom at, e.g., ¶ 23. Claim 11 similarly recites “use rules permit partial use of a
`
`data item stored on the carrier . . . .” See ‘458 at claim 11. As the specification
`
`explains, the claimed use rules pertain to “allowed use of stored data items,” and
`
`“[t]hese use rules may be linked to payments made from the card to provide pay-
`
`6
`
`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`ment 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 rent-
`
`al/purchase . . . .” ‘458 at 5:1-8. In other words, the claimed use rules are linked to
`
`payment data and are used to ensure that stored data is only accessible by paying
`
`customers. See also ‘458 at 5:17-28 (“In a debit mode, the additional storage of
`
`use rules facilitates the regulation of access to content data stored on the carrier
`
`without the need for further exchange of payment/use data with an external system
`
`to validate the use”); Bloom at, e.g., ¶¶ 23, 24.
`
`In a recent decision involving highly similar claims, the Board determined
`
`that selling/providing access to a desired digital audio signal to a user constitutes
`
`financial activity. See SAMSUNG-1012 at 11-13 (“The cited entities may not
`
`provide typical financial services, but . . . they do sell digital content, which is the
`
`financial activity recited in claim 1”). Indeed, the specification of the ‘458 Patent
`
`is replete with further examples of financial activity, stating e.g., that payment data
`
`forwarded to a payment validation system may be “data relating to an actual pay-
`
`ment made to the data supplier, or . . . a record of a payment made to an e-payment
`
`system” that can be “coupled to banks.” See ‘458 at 6:60-7:2, 13:35-55.
`
`Thus, for at least the reasons described above, the ‘458 Patent is a CBM pa-
`
`tent that is eligible for the review requested by Petitioner.
`
`7
`
`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`E.
`The ‘458 Patent Is Not Directed to a Technological Inven-
`tion, And Thus, Should Not Be Excluded From the Definition of a CBM Pa-
`tent.
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To determine when a patent covers a technologi-
`
`cal invention, “the following will be considered on a case-by-case basis: whether
`
`the claimed subject matter as a whole recites a technological feature that is novel
`
`and unobvious over the prior art; and solves a technical problem using a technical
`
`solution.” 37 C.F.R. § 42.301 (emphasis added); see also SAMSUNG-1009 at
`
`48736-37 (USPTO clarified that to qualify as a technological invention, a patent
`
`must have a novel, unobvious technological feature and a technical problem solved
`
`by a technical solution). “[A]bstract business concepts and their implementation,
`
`whether in computers or otherwise,” are not included in the definition of “techno-
`
`logical inventions.” SAMSUNG-1010 at 634. Indeed, Congress has explained that
`
`accomplishing a business process or method is not technological, whether or not
`
`that process or method is novel. See id. Finally, to institute a CBM, a patent need
`
`only have one claim directed to a covered business method, and not a technological
`
`invention. See, e.g., SAMSUNG-1009 at 48736-37.
`
`The claims of the ‘458 Patent fail to recite a novel and unobvious technolog-
`
`ical feature, and fail to recite a technical problem solved by a technical solution;
`
`thus, the patent is subject to Section 18 review. See Bloom at, e.g., ¶ 23. Although
`
`8
`
`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`the independent claims of the ‘458 Patent recite computer-related terms such as
`
`“non-volatile payment data memory”, “data access device”, and “data carrier”,
`
`Congress has explained that simply reciting words describing generic technology
`
`such as “computer hardware, . . .software, memory, computer-readable storage
`
`medium, [or] databases” does not make a patent a technological invention. SAM-
`
`SUNG-1010 at 634.
`
`The specification of the ‘458 Patent confirms that the computer-related
`
`terms recited in the ‘458 Patent’s claims do in fact relate to technology that is
`
`merely, in the words of the patentee, “conventional”: the specification states, e.g.,
`
`that “The data access terminal may be a conventional computer or, alternatively, it
`
`may be a mobile phone” that terminal memory “can comprise any conventional
`
`storage device,” and that a “data access device . . . such as a portable audio/video
`
`player . . . comprises a conventional dedicated computer system including a pro-
`
`cessor . . . program memory . . . and timing and control logic . . . coupled by a data
`
`and communications bus.” ‘458 at 4:4-5, 16:46-49, 18:24-30. Consequently, the
`
`‘458 Patent claims cannot be saved by the recitation of computer-related terms.
`
`The ‘458 Patent fails even to recite a technical problem, and instead address-
`
`es the non-technical task of allowing “owners of . . . data to make the data availa-
`
`ble themselves over the internet without fear of loss of revenue . . . undermining
`
`the position of data pirates.” ‘458 at 2:11-15, 5:29-33. The ‘458 Patent’s solution
`
`9
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`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`to this non-technical problem is nothing more the combination of prior art struc-
`
`tures to achieve a normal, expected, and predictable result: the use of a data supply
`
`system, content provision system, data terminal and data carrier to restrict access to
`
`data based on payment. See e.g.,‘458 at Abstract, 13:60-14:6. A teaching of a
`
`combination of prior art structures that achieves a predictable result does not “ren-
`
`der a patent a technological invention.” SAMSUNG-1009 at 48755. Indeed, “[a]
`
`person having ordinary skill in the art at the time that the ‘458 Patent was filed
`
`would not have considered the methods described and claimed by the ‘458 Patent
`
`to be technical”. Bloom at, e.g., ¶¶ 23, 24.
`
`In sum, the AIA’s exclusion of “patents for technological inventions” from
`
`the definition of CBM patents is not applicable here because the ‘458 Patent fails
`
`to recite a novel and unobvious technological feature, and fails to recite a technical
`
`problem solved by a technical solution. CBM review is therefore appropriate for
`
`the ‘458 Patent.
`
`IV. SUMMARY OF THE ‘458 Patent
`A. Brief Description
`The ‘458 Patent includes 12 claims, of which claims 1, 3, 4, 5 and 6 are in-
`
`dependent.
`
`The claims of the ‘458 Patent generally relate to systems and methods “for
`
`downloading and paying for data such as audio and video data, text, software,
`
`10
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`

`

`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
`
`[and] games . . . .” ‘458 at Abstract. The ‘458 Patent purports to address a specific
`
`problem: “the growing prevalence of so-called data pirates” who “obtain data ei-
`
`ther by unauthorized or legitimate means and then make this data available essen-
`
`tially world-wide over the internet without authorization.” ‘458 at 1:31-33. With-
`
`in this context, the ‘458 Patent describes “combining digital right management
`
`with content data storage,” and states that “[b]inding the data access and payment
`
`together allows the legitimate owners of the data to make the data available them-
`
`selves over the internet without fear of loss of revenue, thus undermining the posi-
`
`tion of data pirates.” ‘458 at 2:11-15, 5:29-33.
`
`Specifically, the ‘458 Patent discloses a data supply system 120 (as shown
`
`in FIG. 6) coupled to a content provision system 100 (as shown in FIG. 5). ‘458 at
`
`13: 22-27. The data supply system includes content access terminals, e-payment
`
`systems, and a content access web server. See ‘458 at 13: 22-62, FIG. 6. The con-
`
`tent provision system 100 includes content providers and content publishers cou-
`
`pled to content databases. See ‘458 at 12:43-45; 14:63-65; and FIG. 5.
`
`The ‘458 Patent also discloses a “portable data carrier for storing and paying
`
`for data.” ‘458 at 1:20-25. In a parameter memory, the portable data carrier stores
`
`use status data and use rules leveraged by the data supply system to control access
`
`to content data, and, in a separate content memory, the portable data carrier stores
`
`content data acquired through the content provision system. See ‘458 at 9:32-39
`
`11
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`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
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`(“Use status data indicat[es] a use status of data stored on the carrier, and use rules
`
`data indicat[es] permissible use of data stored on the carrier”). This disclosure is
`
`reflected in the limitations of independent claim 6, which recites “use status data”
`
`and “use rules” for “determin[ing] whether access is permitted to the stored data.”
`
`Summary of the Prosecution History of the ‘458 Patent
`
`B.
`U.S. 8,033,458 issued on Oct. 11, 2011 from the ‘847 Appln. (SAMSUNG-
`
`1024) filed on Nov. 10, 2010 with 25 claims. During prosecution of the ‘847 Ap-
`
`pln., on Jan. 13, 2014, a Non-Final Office Action rejected claims 1,2, 5, 7-8,14-16,
`
`24 and 25 under 35 U.S.C. §102(b) as anticipated by U.S. Patent 4,697,073 to Hara
`
`(“Hara”). Claims 17-23 were allowed but an objection was raised regarding claims
`
`3-4, 6 and 9-13 based on their dependency from a rejected base claim. See Non-
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`Final Office Action of Jan. 13, 2014 at 3. The articulated reasons for allowing
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`claims 17-23 included “[t]he prior art fails to disclose a data access device com-
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`prising: a user interface, a data carrier interface, a program store, a processor, a
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`code having the functions and characteristics as recited in claim 17. The prior art
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`also fails to disclose a portable data carrier as recited in claim 1 further including
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`the limitations of claims 3-4,6 and 9-13.” Id.
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`In a response filed Feb. 10, 2014, Patent Owner cancelled the rejected claims
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`without addressing the rejection. Patent Owner also amended the objected to
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`claims to incorporate the subject matter of the rejected base claims. Patent Owner
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`Attorney Docket No 39843-0005CP2
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`further added claims 26 and 27.
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`In a Non-Final Office Action issued Apr. 29, 2014, claims 3, 4, 6, 9, 10, and
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`17-23 were allowed largely based on the reasoning expressed above. However,
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`claims 11-13, and 26 were rejected as anticipated by U.S. Patent 7,747,930 to
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`Weldon et al. (“Weldon”) and claim 27 was rejected as obvious over Weldon. See
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`Non-Final Office Action of Jan. 13, 2014 at 3-4.
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`On Jul. 7, 2011, Patent Owner cancelled claims 11-13, 26, and 27 without
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`addressing pending rejections. Subsequently, claims 3-4, 6, 9-10 and 17-23 were
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`allowed. See Notice of Allowance dated Aug. 9, 2014. In the reasons for allow-
`
`ance, earlier reasoning was repeated. Namely, “[t]he prior art fails to disclose a da-
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`ta access device comprising: a user interface, a data carrier interface, a program
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`store, a processor, a code having the functions and characteristics as recited in
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`claim 17. The prior art also fails to disclose a portable data carrier as recited in
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`claims 3-4,6 and 9-10. Id. at 2.
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`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH A CBM IS REQUESTED, THUS ES-
`TABLISHING A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE CLAIM OF THE ‘458 PATENT IS UNPATENTA-
`BLE
`
`Claim 11 is challenged. Claim 11 depends from claim 6 and, therefore, in-
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`corporates the subject matter of claim 6. As demonstrated below, claim 11is antic-
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`ipated by the prior art.
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`Attorney Docket No 39843-0005CP2
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` GROUND 1 – Ginter Anticipates Claims 11.
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`A.
`The features of claim 11 of the ‘458 Patent are anticipated by Ginter, render-
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`ing this claim unpatentable under 35 U.S.C. § 102(b).
`
`1. Overview of Ginter
`Ginter describes secure transaction management and electronic rights protec-
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`tion achieved through a virtual distribution environment (“VDE”) that controls, us-
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`ing payment and other information, access to electronically disseminated and
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`stored content objects. Ginter at Abstract3; Bloom at, e.g., ¶ 29. In some imple-
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`mentations, Ginter’s content objects are delivered to end users in “containers,”
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`3 Throughout this petition, citations are exemplary in nature and are not intended to
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`be fully comprehensive of relevant subject matter throughout the subject reference,
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`which is all incorporated into each citation. For instance, here, additional and rele-
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`vant subject matter is found at Ginter 1:11-19 (“this invention relates to systems
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`and techniques for secure transaction management. This invention also relates to
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`computer-based and other electronic appliance-based technologies that help to en-
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`sure that information is accessed and/or otherwise used only in authorized
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`ways, and maintains the integrity, availability, and/or confidentiality of such in-
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`formation and processes related to such use”), which is incorporated into the cita-
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`tion to Ginter, despite the absence of specific citation to that section.
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`which, as depicted in the following annotated version of FIG. 5B, contain both in-
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`formation content (which may include, e.g., textual, audio, video, and/or software
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`elements) and associated control information; in other implementations, Ginter’s
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`control information is delivered separately from the content with which it is asso-
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`ciated. Ginter at 13:50-67, 43:24-30, 58:57-65; Bloom at, e.g., ¶ 29; see also FIG.
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`5B ann. (a),(b).
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`In either case, controls on access to and/or the use of information content
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`may be enforced through budgeting, metering, and/or other methods that involve
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`use status data and use rules. Ginter at 14:49-15:9; Bloom at, e.g., ¶ 30. Control
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`information that is associated with one or more of these methods may, e.g., in-
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`clude: (i) permissions record 808, specifying, e.g., rights associated with content
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`object 300; (ii) budgets 308, specifying, e.g., limitations on usage of information
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`content 304 and how usage will be paid for; and (iii) other methods 1000, specify-
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`ing, e.g., how usage of information content 304 will be metered, billed, and audit-
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`ed. See Ginter at 58:66-59:35; Bloom at, e.g., ¶ 30; see also FIG. 5B ann. (c).
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`End users interface with Ginter’s VDE through electronic appliances, which
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`implement these methods to ensure that content is accessed and used only in au-
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`thorized ways; an electronic appliance “may be practically any kind of electrical or
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`electronic device,” including, e.g., a personal computer or smart card. Ginter at
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`Abstract, 60:19-30; Bloom at, e.g., ¶ 31; see also FIG. 8 ann. (a).
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`In the specific example depicted by annotated FIG. 8 below, the electronic
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`appliance 600 features a Secure Processing Unit (“SPU”) 500 that performs secure
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`data management processes including “governing usage of, auditing of, and where
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`appropriate, payment for VDE objects 300.” Ginter at 63:27-41. Performance of
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`these processes involves the use of control information (e.g., use status data and
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`use rules) that is maintained in a secure database 610, which may be stored in non-
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`volatile memory of the SPU itself; the control information may alternatively be
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`stored in a secondary storage 652 that stores content objects 300 to which the con-
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`trol information pertains. Ginter at 63:27-41, 65:61-67 (“Stored in each SPU 500
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`and/or electronic appliance secondary memory 652 may be, e.g. . . . objects 300 . . .
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`and management database 610 that stores both information associated with objects
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`and VDE control information”); Bloom at, e.g., ¶ 32; see also FIG. 8 ann. (b).
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`Attorney Docket No 39843-0005CP2
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`Ginter recognizes that its electronic appliances may be portable. Ginter at
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`228:37-38 (“Electronic appliance 600 provided by the present invention may be
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`portable”). Indeed, Ginter contemplates smart card implementations in the form of
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`portable electronic appliances that can dock with other electronic appliances, such
`
`as personal computers and merchant terminals. Ginter at 40:64-41:7 (“portable
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`VDEs [may be used] as transaction cards at retail and other establishments, where-
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`in such cards can ’dock’ with an establishment terminal that has a VDE secure sub-
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`system and/or an online connection to a VDE secure and/or otherwise secure and
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`compatible subsystem, such as a ‘trusted’ financial clearinghouse (e.g., VISA,
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`Mastercard)”), 41:13-16 (“Such a card can be used for transaction activities of all
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`sorts. A docking station, such as a PCMCIA connector on an electronic appliance,
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`such as a personal computer, can receive a consumer's VDE card at home”);
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`Bloom at, e.g., ¶ 33. When connected, a portable smart card electronic appliance
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`and a terminal “can securely exchange information related to a transaction, with
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`credit and/or electronic currency being transferred to a merchant and/or clearing-
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`house and transaction information flowing back to the card.” Ginter at 41:7-12;
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`Bloom at, e.g., ¶ 33.
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` With reference to FIG. 71, reproduced below with annotation, Ginter de-
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`scribes a specific example of a Portable Electronic Appliance (“PEA”) 2600 that
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`stores control information in a non-volatile memory of the PEA’s SPU 500, in ad-
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`dition to content objects that are separately stored in another non-volatile memory,
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`removable/replaceable memory 2622. See Ginter at 228:36-231:65; Bloom at, e.g.,
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`¶ 34.
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`SPU 500 includes a non-volatile memory that may store control information,
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`including use status data and use rules, in a secure database 610. See Ginter at
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`65:61-67; Bloom at, e.g., ¶ 35; see also FIG. 71 ann. (b). SPU 500 may, e.g., store
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`audit information indicating user payments for VDE content objects, in addition to
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`Attorney Docket No 39843-0005CP2
`CBM of U.S. Patent No. 8,033,458
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`control information used to determine whether a user is authorized to access con-
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`tent objects. See, e.g., Ginter at 65:61-67 (“Stored in each SPU 500 . . . may be,
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`e.g. . . . management database 610 that stores both information associated with ob-
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`jects a