UNITED STATES PATENT AND TRADEMARK OFFICE
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
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`Case CBM2014-00199
`Patent 8,118,221
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
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`v.
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`SMARTFLASH LLC,
`Patent Owner
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`Case CBM2014-00199
`Patent 8,118,221
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
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`TABLE OF CONTENTS
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`I. Introduction ........................................................................................................... 1
`II. Testimony from Dr. Bloom Deserves Full Credit (POR §§ II & III) ................... 1
`A. Dr. Bloom’s testimony is grounded in underlying facts and data, and
`worthy of weight, despite PO’s unsupported suggestion that his
`declaration must state the evidentiary standard used in formulating his
`opinions (POR § II & III) ........................................................................... 1
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`B. The POR’s allegation of bias of Dr. Bloom is unfounded and purely
`speculative (POR § III) ............................................................................... 3
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`III. Claim Construction (POR § IV) ........................................................................... 6
`A. Petitioner’s proposed construction of “payment data” comports with
`ordinary and customary meaning, as imparted by the specification of the
`‘221 Patent. ................................................................................................. 6
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`IV. Claims 2 and 11 are anticipated by Ginter (POR § V) .................................... 8
`A. Ginter teaches claim 1, from which claims 2 and 11 depend ..................... 9
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`B. Ginter teaches claim 2: A data access terminal as claimed in claim 1,
`further comprising code to transmit at least a portion of the payment
`validation data to the data supplier or to a destination received from the
`data supplier. ............................................................................................. 20
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`C. Ginter teaches claim 11 ............................................................................ 25
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`i
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`Case CBM2014-00199
`Attorney Docket No: 39843-0007CP2
`EXHIBIT LIST
`SAMSUNG-1001 U.S. Patent No. 8,118,221 to Racz et al. (“the ‘221 Patent” or
`“’221”)
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`SAMSUNG-1002 Excerpts from the Prosecution History of the ‘221 Patent (“the
`Prosecution History”)
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`SAMSUNG-1003 Declaration of Dr. Jeffrey Bloom re the ‘221 Patent (“Bloom”)
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`SAMSUNG-1004 RESERVED
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`SAMSUNG-1005 RESERVED
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`SAMSUNG-1006 RESERVED
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`SAMSUNG-1007 PCT Application No. PCT/GB00/04110 (“the ‘110 Appln.” Or
`“‘110”)
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`SAMSUNG-1008 United Kingdom Patent Application GB9925227.2 (“the ‘227.2
`Appln.” or “‘227.2”)
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`SAMSUNG-1009 Transitional Program for Covered Business Method Pa-tents—
`Definitions of Covered Business Method Patent and
`Technological Invention, 77 Fed. Reg. 157 (August14, 2012)
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`SAMSUNG-1010 A Guide to the Legislative History of the America Invents Act;
`Part II of II, 21 Fed. Cir. Bar J. No. 4
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`SAMSUNG-1011 Interim Guidance for Determining Subject Matter Eligibility for
`Process Claims in View of Bilski v. Kappos (July 27, 2010)
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`SAMSUNG-1012 Apple Inc. v. Sightsound Technologies, LLC, CBM2013-00019
`Paper No. 17 (entered October 8, 2013) at 11-13
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`SAMSUNG-1013 Volusion, Inc. v. Versata Software, Inc. and Versata Devel-
`opment Group, Inc., CBM2013-00017 Paper No. 8 (entered
`October 24, 2013)
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`ii
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`SAMSUNG-1014 Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024
`Paper No. 16 (entered November 19, 2013)
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`SAMSUNG-1015 RESERVED
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`SAMSUNG-1016 RESERVED
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`SAMSUNG-1017 RESERVED
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`SAMSUNG-1018 RESERVED
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`SAMSUNG-1019 U.S. Patent No. 7,942,317 (“the ‘317 Patent” or “‘317”)
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`SAMSUNG-1020 U.S. Patent Application No. 12/014,558
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`SAMSUNG-1021 U.S. Patent No. 7,334,720 (“the ‘720 Patent” or “‘720”)
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`SAMSUNG-1022 U.S. Patent Application No. 12/943,872 (“the ‘872 Appln.” or
`“872”)
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`SAMSUNG-1023 U.S. Patent No. 5,915,019
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`SAMSUNG-1024 Affidavit in Support of Petitioner's Motion for Pro Hac Vice
`Admission of Ralph A. Phillips
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`SAMSUNG-1025 RESERVED
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`SAMSUNG-1026 RESERVED
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`SAMSUNG-1027 RESERVED
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`SAMSUNG-1028 RESERVED
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`SAMSUNG-1029 RESERVED
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`SAMSUNG-1030 RESERVED
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`SAMSUNG-1031 RESERVED
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`SAMSUNG-1032 RESERVED
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`SAMSUNG-1033 RESERVED
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`SAMSUNG-1034 RESERVED
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`SAMSUNG-1035 RESERVED
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`SAMSUNG-1036 RESERVED
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`SAMSUNG-1037 RESERVED
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`SAMSUNG-1038 RESERVED
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`SAMSUNG-1039 RESERVED
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`SAMSUNG-1040 RESERVED
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`SAMSUNG-1041 RESERVED
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`SAMSUNG-1042 RESERVED
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`SAMSUNG-1043 Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`1381 (Fed. Cir. 2015)
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`SAMSUNG-1044 RESERVED
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`SAMSUNG-1045 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
`(2014)
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`SAMSUNG-1046 Markman v. Westview Instruments, Inc., 517 U.S.370 (1996)
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`SAMSUNG-1047 In re Am. Acad. Sci., 367 F.3d 1359, 1364 (Fed.Cir.2004)
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`SAMSUNG-1048 Microstrategy, Inc. v. Zillow, Inc, IPR2013-00034, Paper 42
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`I.
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`Introduction
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`Smartflash (“Patent Owner”) does not dispute that the claimed data access
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`terminal is used for data processing in the practice, administration, and
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`management of financial products and services; specifically, for processing
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`payments for data downloads. Petition at 8-11. Nor does the Patent Owner’s
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`response (POR) deny that the challenged claims are not directed to a technological
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`invention. Petition at 11-13.
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`Instead, Patent Owner alleges that Dr. Bloom’s testimony should be given
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`little or no weight. POR at 2-3. Patent Owner then attempts to advance that
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`particular passages from the prior art are without disclosure of the claimed
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`“payment data,” assuming an unduly narrow construction of “payment data” (See
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`POR at 4-6) and assuming that the prior art passages are read in isolation (See POR
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`at 6-41).
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`As demonstrated below, the Petitioner addresses POR’s arguments regarding
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`Dr. Bloom (POR § III) before delving into the substantive discussion (POR §§ IV
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`and V) on claim construction and anticipation.
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`II. Testimony from Dr. Bloom Deserves Full Credit (POR §§ II & III)
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`A. Dr. Bloom’s testimony is grounded in underlying facts and
`data, and worthy of weight, despite Patent Owner’s
`unsupported suggestion that his declaration must state the
`evidentiary standard used in formulating his opinions (POR §
`II & III)
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`The POR asserts that the Bloom Declaration (Exhibit 1003) is entitled to
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`little or no weight based on its observation that the Declaration stated no
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`evidentiary standard. See POR at 2-3 (citing 37 CFR 42.65). Yet, Patent Owner
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`bases this contention on its flawed and unsupported interpretation of 37 CFR
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`42.65, which requires only that a declarant “disclose the underlying facts or data
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`on which the opinion is based” and, notably, does not require a declarant to
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`expressly state an evidentiary basis on which the opinion is based. See POR at 2-3
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`(quoting 37 CFR 42.65) (emphasis added).
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`That decision was consistent with the Board’s earlier decision in the Vibrant
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`Media v. General Electric Company case, IPR2013-00172. Specifically, in the
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`Vibrant Media case, a party argued that 35 U.S.C. § 316(e) requires an expert
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`declaration to expressly recite or apply the preponderance of the evidence standard
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`in order for the expert testimony to be accorded weight. See Vibrant Media, Paper
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`50 at 42. The Board considered and decisively rejected that argument, concluding
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`that 35 U.S.C. § 316(e) makes no such requirement and finding that “[r]ather, it is
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`within our discretion to assign the appropriate weight to be accorded to evidence
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`based on whether the expert testimony discloses the underlying facts or data on
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`which the opinion is based.” Id. (emphasis added)(citing 37 C.F.R. § 42.64(a)).
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`42.65 does not undermine the authority rightly noted in the Vibrant Media
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`decision. It is instead consistent with that authority, setting forth requirements
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`having nothing to do with citation of an evidentiary standard.
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`Consistent with the requirements of 37 §§ CFR 42.65, Dr. Bloom’s
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`testimony disclosed underlying facts and data on which his opinions were based.
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`For example, Dr. Bloom’s declaration extensively referenced prior art disclosures,
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`and it also noted Dr. Bloom’s relevant and timely industry experience with digital
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`right management. See Exhibit 1003 at ¶¶ 5-22, ¶¶ 29-103.
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`Moreover, by attesting to facts set forth in his declaration, Dr. Bloom has
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`indicated his belief that those facts are correct, and, therefore, that those facts are
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`more likely true than not based on evidence known to him. See Exhibit 1003at ¶
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`138 (“I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be
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`true”). From this, Dr. Bloom’s statements are self-revealing of his satisfaction of
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`the preponderance of evidence standard.
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`Accordingly, Petitioner respectfully submits that Dr. Bloom’s declaration is
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`worthy of weight.
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`B. The POR’s allegation of bias of Dr. Bloom is unfounded and
`purely speculative (POR § III)
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`The POR contends bias by Dr. Bloom based on nothing more than his
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`employment by SiriusXM Radio, and alleged “similarity between his employer’s
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`products and the claims of the patent would provide Dr. Bloom with a bias against
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`the claims.” Id. at 6. This argument is unsustainable, as it is unproven and
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`illogical.
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`Substantively, while SiriusXM is Dr. Bloom’s employer, there is no
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`evidence that Dr. Bloom perceived similarities between his employer’s products
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`and the claims of the patent prior to his deposition. That is, whether alleged
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`similarities existed or not, an allegation of bias would require a showing that Dr.
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`Bloom did indeed perceive such similarities when rendering the opinions offered in
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`the instant case. The Patent Owner had the opportunity to question Dr. Bloom on
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`this point during his deposition, yet the record is without such evidence.
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`Logically, this argument is equally flawed. Without more, Patent Owner
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`seeks to establish bias based on mere affiliation of an expert with an operating
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`company. Surely, for an expert to have bias, it is necessary for the expert to have
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`knowledge of the facts giving rise to the same. Mere employment is not enough,
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`nor is knowledge of the products offered by one’s employer. It is instead
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`necessary to perceive infringement for bias to exist, and for such perception to
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`exist at the time of an opinion’s rendering. On a record that is without a showing
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`of either, this argument is logically flawed.
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`Equally flawed is the apparent suggestion by Patent Owner’s counsel that, to
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`avoid allegations of bias, Petitioner should have used a University professor in
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`place of Dr. Bloom. See Transcript at 232:5-35. Indeed, applying the POR’s logic
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`across the breadth of proceedings before the Board and asserting it as a general
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`basis for discrediting expert opinion would seem to foreclose consideration by the
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`Board of relevant testimony from experts (like Dr. Bloom) who have professional
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`experiences that inform opinions on technology to which they directed their
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`careers. Specifically, Patent Owner would deny the Board access to testimony by
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`engineers working for companies that develop related technologies since those
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`technologies might be accused of infringing a patent under review, even if such
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`engineers are (like Dr. Bloom) without knowledge of such offerings or prospective
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`infringement. Such an outcome would be absurd, yet it is precisely what Patent
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`Owner was advocating during Dr. Bloom’s deposition when counsel suggested
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`that, to avoid allegations of bias, Petitioner should have used a University
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`professor. See Transcript at 232:5-35.
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`The Petitioner, moreover, was free at the outset of this proceeding to provide
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`testimony from a qualified expert of the Petitioner’s choosing, and the selection of
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`Dr. Bloom reflects confidence that his opinions are objective and technically-
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`sound. Ultimately, Patent Owner has provided no reason to avoid taking Dr.
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`Bloom at his word – that he believes his testimony is true and objective, and that
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`he therefore believes in the positions that he has advanced. See Exhibit 1003 at ¶
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`138 (“I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be
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`true”).
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`III. Claim Construction (POR § IV)
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`Patent Owner contends “payment data” should be construed to mean “data
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`that can be used to make payment for content.” POR at 4-5. In particular, Patent
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`Owner wants “payment data” to be narrowly construed so that “payment data” is
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`not “data representing payment made for requested content data….” POR at 5-6.
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`(emphasis added). As demonstrated below, this construction is unduly narrow as
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`demonstrated by its disregard of even the explicit teachings of the ‘221 Patent
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`itself.
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`A. Petitioner’s proposed construction of “payment data” comports
`with ordinary and customary meaning, as imparted by the
`specification of the ‘221 Patent.
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`In a covered business method patent review, claim terms are given their
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`broadest reasonable interpretation in light of the specification in which they appear
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`and the understanding of others skilled in the relevant art. See 37 C.F.R. §
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`42.300(b); see also In re Cuozzo Speed Techs., LLC, 2015 WL 448667 at *7 (Fed.
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`Cir. Feb. 4, 2015) (“We conclude that Congress implicitly adopted the broadest
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`reasonable interpretation standard in enacting the AIA.”); In re Translogic Tech.,
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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (discussing that applying the BRI
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`standard, claim terms should be construed according to their ordinary and
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`customary meaning in the context of the patent’s written description).
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`Petitioner proposed to construe “payment data” to include and be met by
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`data that relates to previous, present, and/or prospective payment. Petition at 6. In
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`response, Patent Owner countered that “payment data” should be construed to
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`mean “data that can be used to make payment for content.” POR at 4-5.
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`Furthermore, Patent Owner argued that “payment data” should be read to exclude
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`“data representing payment made for requested content data.” POR at 5-6. Here,
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`Patent Owner seems to distinguish prospective payments (“can be used to make
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`payment”) from previous payments (“payment made for”), and it suggests that a
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`broadest reasonable construction of payment data includes data used for
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`prospective payments without including data used for previous payments. Such a
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`construction is simply unsustainable, as revealed through the support provided by
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`Patent Owner for the same.
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`Specifically, Patent Owner attempts to justify this position by turning to Fig.
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`12C of the ‘221 Patent, which it describes as showing payment data being used for
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`making a payment. POR at 5-6. Notably absent from the Fig. 12C example or
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`Patent Owner’s characterization of the same – any mention, much less preclusion
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`of data relating to previously payments.
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`By contrast, Samsung’s proposed construction comports with the ordinary
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`and customary meaning as imparted by the specification of the ‘221 Patent, which
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`specifically teaches that “[t]he payment data received may either be data relating to
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`an actual payment made to the data supplier, or it may be a record of a payment.”
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`‘221 Patent 6:60-63 (emphasis added). In this instance, a “record of a payment”
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`must represent a previous payment. Indeed, the notion of previous payment as a
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`credit is disclosed in other portions of the specification of the ‘221 Patent, which
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`purports to use both debit (pre-pay) or credit mode to facilitate download of
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`content. See ‘221 Patent 22:6-8. By ignoring the express teachings of the ‘221
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`Patent itself, Patent Owner’s proposed claim construction for “payment data” is
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`unduly narrow and does not comport with the BRI standard required for a CBM
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`review.
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`Moreover, this construction is not supported by even the stated objectives of
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`the ‘221 Patent, which include provision of a terminal for “reading payment
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`information from the payment validation means using the terminal; validating the
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`payment information; and downloading data into the portable storage device from
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`a data supplier.” ‘221 Patent at 1:64-67.
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`IV. Claims 2 and 11 are anticipated by Ginter (POR § V)
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`Patent Owner’s response attempts to show that Ginter does not anticipate
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`claims 2 and 11 by looking at limitations 1(f) and 1(g) of base claim 1, and by also
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`looking at claim 2’s recitation of code to transmit payment validation data. In
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`doing so, Patent Owner mischaracterized the challenged claims and interpreted
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`Ginter in a manner that is inconsistent with the interpretation afforded to its
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`teachings by those of skill, as demonstrated by Dr. Bloom.
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`A. Ginter teaches claim 1, from which claims 2 and 11 depend
`Patent Owner exhorted form over substance by proclaiming that evidence
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`relied upon by Petitioner – Dr. Bloom’s characterizations of Ginter – are not
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`supported by citations to Ginter that were provided by Dr. Bloom in his
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`declaration. Yet Patent Owner didn’t even address all of the citations provided by
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`Dr. Bloom. Moreover, a careful review of the extensively cited portions of Ginter
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`reveals that those sections (particularly when read in light of and in conjunction
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`with the entirety of Ginter’s disclosure) do indeed disclose each of the subject
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`claim limitations, including “payment validation data” and “responsive to payment
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`validation data.”
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`1. Ginter teaches 1(f): code to receive payment validation data from the
`payment validation system
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`The Petition demonstrated that this element was disclosed in Ginter. As pled
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`in the Petition, “[t]he payment validation system then replies with payment
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`validation data resulting from the analysis (in, e.g., an administrative response
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`object); the payment validation data is received by CPU 654 of electronic
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`appliance 600.” See Petition at 35-36, citing Ginter at 161:42-162:6 (“The clearing
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`house may, as a result of the analysis, generate one or more responsive
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`administrative objects that it then sends to the end user’s appliance 600”), 162:5-6
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`(“The end user’s electronic appliance 600 may process events that update its secure
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`database 610 and/or SPU 500 contents based on the administrative object
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`received”), and 162:38-64.
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`Patent Owner sought to address this limitation by focusing on Dr. Bloom’s
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`deposition testimony on the different configurations of administrative objects.
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`Specifically, and looking past Dr. Bloom’s other testimony, Patent Owner focused
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`on the following portion of the transcript, inferring that Dr. Bloom relied upon a
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`portion of Ginter that discloses administrative objects (i.e., administrative objects
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`returned responsive to budget requests) that do not necessarily include payment
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`validation data:
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`Q. Did you base your opinion on the fact that Ginter anticipates … the
`challenged claims of the ‘221 patent based on the fact that payment
`validation data is anything other than an administrative object which
`is communicated back to a user node as part of a budget request?
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`A. No
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`Q. So if I told you that Ginter described an administrative object in a
`particular portion of the specification and I didn't tell you what kind of
`administrative object it was, you wouldn't know what was in that
`administrative object, correct?
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`A. That's true.
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`See POR at 9, citing Transcript Exhibit 2055 at 21:8-14 and 54:3-10.
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`This argument is flawed for at least two reasons1. First, in the context of its
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`disclosure of a response to a budget request, Ginter provides sufficient disclosure
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`to meet the claimed receipt of payment validation data limitation. Therefore, even
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`if (improperly) overlooking the petition’s reference to other portions of Ginter,
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`such as the cited-to portions of Ginter that do not relate to the budget request
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`response example, this feature is met. Indeed, as is also suggested by Dr. Bloom,
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`in the context of a budget request, Ginter teaches administrative response objects
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`that include audit trails and records. See Petition at 25-27, and 35-36, Exhibit 1003
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`at¶¶ 38-42, 592, and 80-82, Ginter at Fig. 42c and 176:13-17(“Upon receiving the
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`1 However, the declaration unquestionably cited to sections of Ginter that were not
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`responsive to budget requests, revealing the confusing nature of the double
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`negative within this question.
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`2 While cross-examining Dr. Bloom regarding his Declaration (Exhibit 1003), the
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`Patent Owner never questioned paragraph 59 in which Dr. Bloom had already
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`opined:
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`SPU 500 and/or CPU 2616 implement code to receive, via a wireless
`interface, payment validation data defining if the payment validation system
`has validated payment for the selected item(s) of multimedia content. See
`Ginter at 163:38-61; 175:3-22; 176:13-33. In more detail, following receipt
`of forwarded audit information, the payment validation system processes the
`audit information to determine its validity. Ginter at 161:42-162:6, 175:3-22,
`175:47-176:1. The payment validation system then replies with an
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`administrative object, BUDGET method 2250 at the VDE financial provider site
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`may prime a budget communications and response audit trail (blocks 2306, 2308),
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`and may then unpack the administrative object and retrieve the budget request(s),
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`audit trail(s) and record(s) it contains (block 2310)”), 176: 29-37(“BUDGET
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`method 2250 may then write these Budget administrative response records into an
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`administrative object (blocks 2322, 2324), which it may then communicate back to
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`the user node that initiated the budget request. BUDGET method 2250 may then
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`save communications and response processing audit trail information into
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`appropriate audit trail UDE(s) (blocks 2326,2328) before terminating (at
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`termination point 2330.”).
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`Second, irrespective of whether Bloom’s testimony was limited to Ginter’s
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`budget request response example or not, the petition did not similarly narrow its
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`focus within Ginter. Therefore, even if Bloom’s testimony was discounted, which
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`it should not be (see immediately preceding paragraphs), POR’s argument fails to
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`address the petition’s mapping of Ginter to this claim element for the reasons set
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`administrative response object containing payment validation data resulting
`from the analysis, which is received by PEA 2600. Ginter at 161:42-162:6,
`162:5-6, 162:38-64.
`Exhibit 1003 at ¶ 59.
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`forth above. That is, the petition cites to various sections of Ginter that are distinct
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`and otherwise go beyond disclosure of Ginter’s budget request response example.
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`See, e.g., Petition at 25-27, citing Ginter at 38-42. And, the Petition additionally
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`references Ginter generally, making clear its position that Ginter’s extensive
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`disclosure of budget information was relied upon, including, e.g., disclosures made
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`by Figs. 35 and 44b. See, e.g., Petition at 17 (reproduced below):
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`In this manner, Ginter further expands to describe the generation of an
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`administrative response object, such as its illustration of processing that is applied
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`to administrative objects. See Ginter Fig. 35 at blocks 1158 and 1160 showing an
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`administrative response object being sent from a clearing house (block 1160) after
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`appliance has sent administrative objects containing audit information to the
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`clearing house (block 1158); see also Ginter Fig. 44b that shows an example of a
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`clearinghouse that processes an incoming administrative object containing audit
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`info, and that writes AUDIT administrative response records into administrative
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`Object (block 2566). Through these and various other sections, Ginter generally
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`and specifically discloses administrative objects that include payment validation
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`data, e.g., AUDIT records, and receipt of the same, consistent with 1(f). See POR
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`at 9 (citing Transcript Exhibit 2055 at 21:8-14 and 54:3-10).
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`2. Ginter teaches 1(g): code responsive to payment validation data to
`retrieve data from the data supplier and to write the retrieved data into
`the data carrier.
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`According to Patent Owner, Petitioner failed to demonstrate that Ginter
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`teaches the particular limitation of “responsive to payment validation data.”
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`However, in setting forth this argument, Patent Owner relies upon a deposition
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`transcript that improperly sought to have Dr. Bloom read various sections of Ginter
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`out of context, as if divorced from the full disclosure of Ginter. Read properly,
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`however, consistent with citation of those sections within the complete teaching of
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`Ginter, the subject and other cited sections of, Ginter does indeed disclose
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`limitation 1(g), and its recitation of “responsive to payment validation data.”
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`Initially, in the deposition and its POR, Patent Owner did not even account
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`for the full complement of Dr. Bloom’s extensive citations to Ginter, and instead
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`focused on a subset of such citations to Ginter. See, e.g., Petition at 36-38, Exhibit
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`1003 at ¶82 (citing Ginter at 289:41-290:23) and ¶ 83 (citing Ginter at 41:7-124).
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`As a result, even if Patent Owner’s argument were accepted, the failure of Patent
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`Owner’s cross examination and argument to account for the full testimony of Dr.
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`Bloom renders that argument moot. That is, even if Patent Owner were correct in
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`reading cross-examined sections of Ginter out of context, which it is not, Patent
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`Owner failed to address Dr. Bloom’s citation to other sections of Ginter that were
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`said by Dr. Bloom to teach this feature.
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`Moreover, as pled in the Petition at 36-39 and in addition to Dr. Bloom’s
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`declaration, Petitioner cited a variety of sections from Ginter that collectively teach
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`“responsive to payment validation data.” For example, page 37 of the Petition
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`cited to Ginter at 41:7-12, which recites:
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`
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`3 While cross-examining Dr. Bloom regarding whether Ginter teaches claim 1(g),
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`Patent Owner failed to address Dr. Bloom’s citation to Ginter 289:41-67. See POR
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`at 23 (challenging 289:67-290:2 only).
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`4 Interestingly, Patent Owner never cross-examined Dr. Bloom regarding whether
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`Ginter 41:7-12, in connection with other cited portions to Ginter, teaches claim
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`1(g). See POR at 11, 14, and 27 (dismissing Ginter 41:7-12 without evidence from
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`deposition).
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`“[a PEA and connected electronic appliance] can securely exchange
`information related to a transaction, with . . . transaction information
`flowing back to the card.”
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`This passage provides the context for the exchange of information related to
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`transactions, such as data retrieval in response to payment validation data. Exhibit
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`1003 at ¶ 60. As set forth in Petition at 17, Ginter describes secure transaction
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`management and electronic rights protection achieved through a virtue distribution
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`environment (“VDE”) that controls, using payment and other information, access
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`to electronically disseminated and stored content objects. In this context, Ginter
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`289:41-67, as pled in the Petition at 36-38, provides further details on data retrieval
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`(“If the transaction is authorized . . . the container packager takes this package of
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`control information and the content and forms an appropriate container . . . the
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`container is transmitted across the network to the end user.”) (emphasis added).
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`Here, the condition that the transaction is “authorized” means that the transaction,
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`for example, retrieving a container object that includes content and access rules, is
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`premised on a proof of the request being valid and legitimate. See Petition at 25-
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`27 (describing framework of access rules). Such requirement has been amplified
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`through other cited passages of Ginter, also as pled. See Petition at 36-38 citing
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`Ginter 161: 42-162:6 (“The clearinghouse may receive the administrative object
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`and process its contents to determine whether the contents are ‘valid’ and
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`‘legitimate.’ E.g., the clearinghouse may analyze the contained audit information
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`to determine whether it indicates misuse of the applicable VDE object 300.) As
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`pled, the proof of “valid” and “legitimate” can be encoded as control information
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`and by an administrative object. See Petition at 17-27 citing Ginter at Fig. 5B ann.
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`(c) (quoted below).
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`As set forth in the Petition at 36-38, the collection of cited portions from
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`Ginter do teach that data retrieval is performed after exchange of information
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`related to the data retrieval transaction, for example, in response to a coded
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`administrative object.
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`Similarly, as pled in the Petition at 36-38, Ginter offers ample teachings on
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`data storage in the context of retrieved data. “Portable appliance 2600 may, in one
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`embodiment, comprise means to perform substantially all of the functions of a
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`VDE electronic appliance 600. Thus, e.g., portable appliance 2600 may include the
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`means for storing . . . information.” Ginter at 229:18-34 (cited in Petition at 36-38).
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`Ginter also discloses that “[s]tored in each electronic appliance secondary memory
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`652 may be, e.g., . . . objects 300 containing VDE controlled property content and
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`related information.” Ginter at 65:61-67 (cited in Petition at 36-38). Moreover,
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`“[r]emovable/replaceable memory 2622 may comprise a memory cartridge or
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`memory medium such as a bulk storage device, for providing additional long-term
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`or short-term storage.” Ginter at 230:15-19 (cited in Petition at 36-38). These
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`storage examples, along with the above discussion of data retrieval responsive to
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`payment validation data, demonstrate that Ginter teaches storing the retrieved data
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`at the data carrier such that end user is allowed to use and access downloaded
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`media data, as pled in the Petition at 36-38.
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`The Petitioner set forth an anticipation challenge based on a collection of
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`teachings from Ginter that include 41:1-27, which when read together with other
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`sections of Ginter, teach the purported limitation. In response, Patent Owner
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`attempted to discredit the collection by cross-examining Dr. Bloom in a piece-meal
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`manner without any consideration of the collective teachings. In particular, the
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`response attempted to show that Dr. Bloom conceded that each cited section from
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`Ginter, viewed on its own and divorced from the collective teaching of Ginter as a
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`whole, lacks the teaching for the entire claim limitation. Yet, Patent Owner failed
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`to cross examine Dr. Bloom on all citations to Ginter (e.g. Ginter 41:7-12) that Dr.
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`Bloom relied upon for this limitation of “responsive to payment validation data to
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`retrieve data from the data supplier and to write the retrieved data into the data
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`carrier.” POR at 14 (dismissing Ginter 41:7-12 without
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