IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Racz et al.
`Attorney Docket No.: 39843-0007CP2
`U.S. Patent No.: 8,118,221
`Issue Date:
`February 21, 2012
`
`Appl. Serial No.: 12/943,872
`
`Filing Date:
`November 10, 2010
`
`Title:
`DATA STORAGE AND ACCESS SYSTEMS
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
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`CORRECTED PETITION FOR COVERED BUSINESS METHOD PATENT
`
`REVIEW OF UNITED STATES PATENT NO. 8,118,221 PURSUANT TO 35
`
`U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT
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`Attorney Docket No 39843-0007CP2
`CBM of U.S. Patent No. 8,118,221
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`TABLE OF CONTENTS
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`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) ..................... 3
`PAYMENT OF FEES ..................................................................................... 3
`II.
`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304 ......................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)................................. 3
`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief Requested ............... 3
`C. Claim Construction under 37 C.F.R. §§ 42.304(b)(3) .............................. 5
`1.
`CONSTRUCTION 1 – Payment data ............................................. 6
`D. The ‘221 Patent is a Covered Business Method Patent ............................ 8
`E. The ‘221 Patent Is Not Directed to a Technological Invention, And
`Thus, Should Not Be Excluded From the Definition of a CBM Patent. 11
`IV. SUMMARY OF THE ‘221 Patent ................................................................ 14
`A. Brief Description ..................................................................................... 14
`B. Summary of the Prosecution History of the ‘221 Patent ........................ 15
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH A CBM IS REQUESTED, THUS ESTABLISHING A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘221 Patent IS
`UNPATENTABLE .................................................................................................. 16
`A. GROUND 1 – Ginter Anticipates Claims 2, 11, and 32. ....................... 17
`2. Overview of Ginter ........................................................................ 17
`3. Ginter Anticipates Claims 2, 11, and 32. ...................................... 27
`VI. CONCLUSION .............................................................................................. 52
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`Attorney Docket No 39843-0007CP2
`CBM of U.S. Patent No. 8,118,221
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`EXHIBITS
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`SAMSUNG 1007
`
`SAMSUNG 1009
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`SAMSUNG 1001 U.S. Patent No. 8,118,221
`SAMSUNG 1002 Excerpts from the Prosecution History of the ‘221 Patent
`(“the Prosecution History”)
`SAMSUNG 1003 Declaration of Dr. Jeffrey Bloom (“Bloom”)
`SAMSUNG 1004 RESERVED
`SAMSUNG 1005 RESERVED
`SAMSUNG 1006 RESERVED
`PCT Application PCT/GB00/04110 (“the ‘110 Appln.” or
`“‘110”), which is the application as filed for U.S. Patent Ap-
`plication No. 11/336,758 (“the ‘758 Appln.” or “‘758”) and
`U.S. Patent Application No. 10/111,716 (“the ‘716 Appln.”
`or “‘716”)
`SAMSUNG 1008 United Kingdom Patent Application GB9925227.2 (“the
`‘227.2 Appln.” or “‘227.2”)
`Transitional Program for Covered Business Method Pa-
`tents—Definitions of Covered Business Method Patent and
`Technological 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
`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
`Volusion, Inc. v. Versata Software, Inc. and Versata Devel-
`opment Group, Inc., CBM2013-00017 Paper No. 8 (entered
`October 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 RESERVED
`
`SAMSUNG 1011
`
`SAMSUNG 1013
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`Attorney Docket No 39843-0007CP2
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`SAMSUNG 1018 RESERVED
`SAMSUNG 1019 U.S. Patent No. 7,942,317 (“the ‘317 Patent” or “’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 U.S. Patent Application No. 12/943,872 (“the ‘872 Appln.”
`or “872”)
`SAMSUNG 1023 U.S. Patent No. 5,915,019 (“Ginter”)
`SAMSUNG 1024 RESERVED
`SAMSUNG 1025 RESERVED
`SAMSUNG 1026 RESERVED
`SAMSUNG 1027 RESERVED
`SAMSUNG 1028
`RESERVED
`SAMSUNG 1029 RESERVED
`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
`SAMSUNG 1039
`RESERVED
`
`
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`Three sister companies, Samsung Electronics America, Inc., Samsung Elec-
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`Attorney Docket No 39843-0007CP2
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`tronics Co., Ltd., and Samsung Telecommunications America, LLC (“Petitioner”
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`or “Samsung”) petition for Covered Business Method Patent Review (“CBM”) un-
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`der 35 U.S.C. §§ 321 and § 18 of the Leahy-Smith American Invents Act of claims
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`2, 11, and 32 (“the Challenged Claims”) of U.S. Patent No. 8,118,221. As ex-
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`plained in this petition, there exists a reasonable likelihood that Samsung will pre-
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`vail in demonstrating unpatentability with respect to at least one of the Challenged
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`Claims based on teachings set forth in at least the references presented in this peti-
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`tion. Samsung respectfully submits that a CBM review should be instituted, and
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`that the Challenged Claims should be canceled as unpatentable.
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`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
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`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd., and
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`
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`Samsung Telecommunications America, LLC are jointly filing this Petition, and
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`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
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`the ‘221 Patent. The ‘221 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
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`1
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`et al v. Samsung Electronics Co. Ltd. et al, Case No. 6:13-cv-00448. It is also the
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`Attorney Docket No 39843-0007CP2
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`subject of the following Petitions for Covered Business Method Review: Apple
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`Inc. v. Smartflash LLC, CBM2014-00102 and CBM2014-00103. Petitioner is
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`concurrently petitioning, in another petition assigned attorney docket number
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`39843-0007CP1, for CBM review of the ‘221 Patent under grounds additional to
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`those presented in this petition.
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`Petitioner respectfully submits that the grounds of rejection of the ‘221 Pa-
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`tent presented in this Petition are non-redundant of those presented by Apple Inc.
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`in its petition for CBM review of the ‘221 Patent that was filed on March 28, 2014
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`and that has been assigned case number CBM2014-00103. Petitioner notes, e.g.,
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`that the grounds of rejection presented in this Petition differ from the grounds of
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`rejection presented by Apple Inc. in its CBM2014-00103 petition. In more detail,
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`this Petition demonstrates anticipation of claims 2, 11, and 32 of the ‘221 Patent by
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`Ginter; Apple Inc. instead argues in its CBM2014-00103 petition that Ginter ren-
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`ders these claims obvious. Petitioner further notes that the evidence of anticipation
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`provided in the Declaration of Dr. Jeffrey Bloom is additional to the evidence of
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`invalidity advanced by Apple Inc. in the CBM2014-00103 proceeding, and would
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`further inform the Patent Trial and Appeal Board’s assessment of the validi-
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`ty/invalidity of the ‘221 Patent. Based on these and other differences between the
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`arguments and evidence presented by Petitioner and the arguments and evidence
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`presented by Apple Inc., Petitioner respectfully requests consideration by the Pa-
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`Attorney Docket No 39843-0007CP2
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`tent Trial and Appeal Board of the grounds of rejection of the ‘221 Patent set forth
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`in this Petition.
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`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
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`Thomas Rozylowicz, Reg. No. 50,620, as Backup Counsel, both available at 3200
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`RBC Plaza, 60 South Sixth Street, Minneapolis, MN 55402 (T: 202-783-5070) or
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`via electronic service by email at CBM39843-0007CP2@fr.com.
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`PAYMENT OF FEES
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`II.
`Samsung authorizes charge Deposit Account No. 06-1050 for the fee set in
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`37 C.F.R. § 42.15(b) and any additional related fees to be charged.
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`III. REQUIREMENTS FOR CBM UNDER 37 C.F.R. § 42.304
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`A. Grounds for Standing Under 37 C.F.R. § 42.304(a)
`Samsung certifies that the ‘221 Patent is eligible for CBM review. Samsung
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`is not barred or estopped from requesting this review challenging the Challenged
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`Claims on the below-identified grounds.
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`B. Challenge Under 37 C.F.R. § 42.304(b) and Relief Request-
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`ed
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`Samsung requests a CBM review of the Challenged Claims on the grounds
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`set forth in the table shown below, and requests that each of the Challenged Claims
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`be found unpatentable. An explanation of how these claims are unpatentable under
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`the statutory grounds identified below is provided in the form of detailed descrip-
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`tion and claim charts that follow, indicating where each element can be found in
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`the cited prior art, and the relevance of that prior art. Additional explanation and
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`support for each ground of rejection is set forth in Exhibit SAMSUNG-1003, the
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`Declaration of Dr. Jeffrey Bloom, referenced throughout this Petition.
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`Ground
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`‘221 Patent Claims
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`Basis for Rejection
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`Ground 1 2, 11, and 32
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`§ 102: Ginter
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`The ‘221 Patent issued from the ‘872 Appln. (SAMSUNG-1022) filed No-
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`vember 10, 2010, which is a continuation of the ‘558 Appln. (SAMSUNG-1020)
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`filed January 15, 2008 (now U.S. Patent No. 7,942,317), which is a continuation of
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`the ‘758 Appln. (SAMSUNG-1007) filed January 19, 2006 (now U.S. Patent No.
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`7,334,720), which is a continuation of the ‘716 Appln. (SAMSUNG-1007) filed
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`September 17, 2002 (abandoned), which is a National Stage Entry of the ‘110 Ap-
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`pln. (SAMSUNG-1007) filed October 25, 2000.1
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`1 The ‘110 Appln. claims priority to the ‘227.2 Appln. (SAMSUNG-1008), which
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`was filed Oct. 25, 1999. However, because the ‘227.2 disclosure fails to support
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`Ginter (SAMSUNG-1023) qualifies as prior art under 35 U.S.C. § 102(b).
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`Specifically, Ginter issued June 22, 1999, more than one year before the earliest
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`effective filing date of the Challenged Claims. Accordingly, Ginter is eligible un-
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`der AIA § 18(a)(1)(C) as prior art to challenge the validity of the ‘221 Patent under
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`CBM.
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`C. Claim Construction under 37 C.F.R. §§ 42.304(b)(3)
`A claim subject to CBM review is given its “broadest reasonable construc-
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`
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`tion in light of the specification of the patent in which it appears.” 37 C.F.R. §
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`42.100(b). Thus the words of the claim are given their plain meaning unless that
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`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed.
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`Cir. 1989). Petitioner submits, for the purposes of the CBM review only, that the
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`claim terms are presumed to take on their broadest reasonable interpretation in
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`view of the specification of the ‘221 Patent. 2
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`the Challenged Claims, the effective filing date of the Challenged Claims is no ear-
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`lier than Oct. 25, 2000.
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`2 Because the standards of claim interpretation applied in litigation differ from
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`PTO proceedings, any interpretation of claim terms in this CBM review is not
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`binding upon Petitioner in any litigation related to the subject patent. See In re
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`Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
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`Attorney Docket No 39843-0007CP2
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`1. CONSTRUCTION 1 – Payment data
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`For purposes of this CBM review, “payment data” should be construed to
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`include and be met by data that relates to previous, present, and/or prospective
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`payment.
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`Claims 1, 12, and 32 of the ‘221 Patent each recite the term “payment data.”
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`Claim 32 of the ‘221 Patent, for example, recites the following – “code to read
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`payment data from the data carrier and to forward the payment data to a payment
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`validation system” and “and “at least one condition for accessing the retrieved data
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`written into the data carrier, the at least one condition being dependent upon the
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`amount of payment associated with the payment data forwarded to the payment
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`validation system.” A POSITA3 would understand that, as used in claims 1, 12,
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`and 32, the term “payment data” indicates and is met by data that relates to previ-
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`ous, present, and/or prospective payment. Bloom at, e.g., ¶ 28.
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`This interpretation is consistent with the relevant disclosure in the specifica-
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`tion of the ‘221 Patent. Bloom at, e.g., ¶ 28. The ‘221 Patent describes,
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`e.g., “[d]ata storage and access systems . . . for downloading and paying for data,”
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`including a payment validation system that “validate[s] payment with an external
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`3 The term “POSITA”, as used in this Petition, refers to a Person of Ordinary Skill
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`In the Art at the ‘221 Patent’s effective filing date.
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`authority such as a bank or building society,” such that “[t]he combination of the
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`Attorney Docket No 39843-0007CP2
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`payment validation means with the data storage means allows the access to the
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`downloaded data which is to be stored by the data storage means, to be made con-
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`ditional upon checked and validated payment being made for the data.” ‘221 at
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`Abstract, 2:1-11. The ‘221 Patent’s description of making access to downloaded
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`content data conditional upon checked and validated payment being made indicates
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`that “payment data” may relate previous, present, and/or prospective pay-
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`ment. Bloom at, e.g., ¶ 28. The ‘221 Patent also states, e.g., in the Abstract, that
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`“[d]ata storage and access systems are described for downloading a paying for data
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`such as audio and video data, text, software, games, and other types of data” – fur-
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`ther supporting that “payment data”, as used in the claims of the ‘221 Patent, can
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`relate to present payment. See also ‘221 at 4:50-57 (“the portable data carrier fur-
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`ther comprises a program store for storing code . . . wherein the code comprises
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`code to output payment data from the payment data memory”), 3:49-64, 4:36-38.
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`In yet another example, the ‘221 Patent states that “[t]he carrier may also store
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`content use rules pertaining to allowed use of stored data items,” and that “these
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`use rules may be linked to payments made from [a] card . . .” – further supporting
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`that “payment data”, as used in the claims of the ‘772 Patent, can relate to previous
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`payment. ‘221 at 4:64-5:8; see also 5:4-11, 5:17-20.
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`As such, the disclosure in the specification of the ‘221 Patent is consistent
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`with the term “payment data,” as used in claims 1, 12, and 32, as it would be un-
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`derstood by a POSITA: data that relates to previous, present, and/or prospective
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`payment. Bloom at, e.g., ¶ 28. Thus, for purposes of this proceeding, “payment
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`data” should be construed to include and be met by data that relates to previous,
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`present, and/or prospective payment.
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`D. The ‘221 Patent is a Covered Business Method Patent
`The ‘221 Patent, which generally relates to systems and methods “for down-
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`loading and paying for data” is a “covered business method patent” (“CBM pa-
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`tent”) as defined under § 18 of the AIA and 37 C.F.R. § 42.301. ‘221 at Abstract.
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`The AIA defines a CBM patent as “a patent that claims a method or corre-
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`sponding apparatus for performing data processing or other operations used in the
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`practice, administration, or management of a financial product or service” (empha-
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`ses added). AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The AIA’s legislative
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`history demonstrates that the term “financial product or service” should be “inter-
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`preted broadly,” encompassing patents “’claiming activities that are financial in na-
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`ture, incidental to a financial activity or complementary to a financial activity.’”
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`SAMSUNG-1009 at 48735 (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8,
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`2011) (statement of Sen. Schumer)). Moreover, as the Guide to the Legislative His-
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`tory of the America Invents Act indicates, the language “practice, administration, or
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`management” is “intended to cover any ancillary activities related to a financial
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`product or service, including . . . marketing, customer interfaces [and] management
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`of data . . .” (emphases added). SAMSUNG-1010 at 635-36.
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`Augmenting the statutory language with the above-referenced clarifications
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`from the legislative history, and from the Guide to that legislative history, yields
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`the following definition of a CBM patent: a patent that claims a method or corre-
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`sponding apparatus for performing data processing or other operations used in ac-
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`tivities that are financial in nature, incidental to a financial activity, or complemen-
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`tary to a financial activity, including the management of data. See AIA § 18(d)(1);
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`SAMSUNG-1009 at 48735; and SAMSUNG-1010 at 635-26.
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`In the words of the Patent Owner, the claims of the ‘221 Patent are directed
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`to a “portable data carrier” for “storing and paying for data.” See ‘221 at 1:20-23.
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`Claim 32 of the ‘221 Patent, for example, recites a data access terminal for retriev-
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`ing data from a data supplier and providing the retrieved data to a data carrier,”
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`that includes “a program store storing code …the code comprising: code to read
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`payment data from a data carrier and to forward the payment data to a payment
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`validation system,” and “code responsive to the payment validation data to receive
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`at least one access rule from the data supplier and to write the at least one access
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`rule into the data carrier . . . dependent upon the amount of payment associated
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`with the payment data forwarded to the payment validation system.”
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`As an example, the data access terminal of claim 32 unquestionably is used
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`for data processing in the practice, administration, and management of financial
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`products and services; specifically, for processing payments for data downloads.
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`Bloom at, e.g., ¶ 23. Indeed, in a recent decision involving highly similar claims,
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`the Board determined that selling a desired digital audio signal to a user constitutes
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`financial activity. See SAMSUNG-1012 at 11-13 (“The cited entities may not
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`provide typical financial services, but . . . they do sell digital content, which is the
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`financial activity recited in claim 1”).
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`
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` The specification of the ‘221 Patent, moreover, is replete with examples of
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`financial activity, stating that payment data forwarded to a payment validation sys-
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`tem may be “data relating to an actual payment made to the data supplier, or . . . a
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`record of a payment made to an e-payment system” that can be “coupled to banks.”
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`See ‘221 at 6:59-63, 13:46-58. Even if claim 32 did not explicitly reference finan-
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`cial activity, and it does, this description alone would be sufficient to establish that
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`the claimed method is a method for performing data processing used in the prac-
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`tice, administration, or management of a financial product or service and that,
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`therefore, the ‘221 Patent is a CBM patent. See SAMSUNG-1012 at 5, 6 (deter-
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`mining, based on a specification statement that ‘embodiments of the present inven-
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`tion have application to a wide range of industries’ including ‘financial services,’
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`despite the apparent lack of financial-related language in the claims); see also
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`SAMSUNG-1013 at 9-15 (“Although claim 8 does not expressly refer to financial
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`activity . . . When applied to the activities listed [in the patent’s specification] . . .
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`the method of claim 8 represents a financial product or service”).
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`Thus, for at least the reasons described above, the ‘221 Patent is a CBM patent that
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`is eligible for the review requested by Petitioner.
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`E.
`The ‘221 Patent Is Not Directed to a Technological
`Invention, And Thus, Should Not Be Excluded From the Definition of a
`CBM Patent.
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`The AIA excludes “patents for technological inventions” from the definition
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`of CBM patents. AIA § 18(d)(2). To determine when a patent covers a technologi-
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`cal invention, “the following will be considered on a case-by-case basis: whether
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`the claimed subject matter as a whole recites a technological feature that is novel
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`and unobvious over the prior art; and solves a technical problem using a technical
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`solution.” 37 C.F.R. § 42.301 (emphasis added); see also SAMSUNG-1009 at
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`48736-37 (USPTO clarified that to qualify as a technological invention, a patent
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`must have a novel, unobvious technological feature and a technical problem solved
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`by a technical solution). “[A]bstract business concepts and their implementation,
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`whether in computers or otherwise,” are not included in the definition of “techno-
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`logical inventions.” SAMSUNG-1010 at 634. Indeed, Congress has explained that
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`accomplishing a business process or method is not technological, whether or not
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`that process or method is novel. See id. Finally, to institute a CBM review, a pa-
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`tent need only have one claim directed to a covered business method, and not a
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`technological invention. See, e.g., SAMSUNG-1009 at 48736-37.
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`The claims of the ‘221 Patent fail to recite a novel and unobvious technolog-
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`ical feature, and fail to recite a technical problem solved by a technical solution.
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`See Bloom at, e.g., ¶ 23. Thus, the patent is subject to Section 18 review. Alt-
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`hough the independent claims of the ‘221 Patent recite computer-related terms
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`such as “non-volatile memory”, “data terminal”, and “data carrier”, Congress has
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`explained that simply reciting words describing generic technology such as “com-
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`puter hardware, . . .software, memory, computer-readable storage medium, [or] da-
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`tabases” does not make a patent a technological invention. SAMSUNG-1010 at
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`634.
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`The specification of the ‘221 Patent confirms that the computer-related
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`terms recited in the ‘221 Patent’s claims relate to technology that is merely, in the
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`words of the Patent Owner, “conventional”: the specification states, for example,
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`that “[t]he data access terminal may be a conventional computer or, alternatively, it
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`may be a mobile phone” that terminal memory “can comprise any conventional
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`storage device,” and that a “data access device . . . such as a portable audio/video
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`player . . . comprises a conventional dedicated computer system including a pro-
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`cessor . . . program memory . . . and timing and control logic . . . coupled by a data
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`and communications bus.” 4:4-5, 16:46-50, 18:7-11. Consequently, the ‘221 Pa-
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`tent claim is not transformed into a technological invention by their recitation of
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`these computer-related terms.
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`The ‘221 Patent fails even to recite a technical problem, and instead address-
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`es the non-technical task of allowing “owners of . . . data to make the data availa-
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`ble themselves over the internet without fear of loss of revenue . . . undermining
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`the position of data pirates.” ‘221, at 1:29-39, 2:5-15, 5:29-33. The ‘221 Patent’s
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`solution to this non-technical problem is nothing more the combination of prior art
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`structures to achieve a normal, expected, and predictable result: the use of a data
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`supply system, content provision system, data terminal and data carrier to restrict
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`access to data based on payment. See, e.g., ‘221 at Abstract, 13:35-41. A teaching
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`of a combination of prior art structures that achieves a predictable result does not
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`“render a patent a technological invention.” SAMSUNG-1009 at 48755. Indeed, a
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`person having ordinary skill in the art at the time that the ‘221 Patent was filed
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`would not have considered the methods described and claimed by the ‘221 Patent
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`to be technical. Bloom at, e.g., ¶¶ 23, 24.
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`In sum, the AIA’s exclusion of “patents for technological inventions” from
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`the definition of CBM patents is not applicable here because the ‘221 Patent fails
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`to recite a novel and unobvious technological feature, and fails to recite a technical
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`problem solved by a technical solution. CBM review is therefore appropriate for
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`the ‘221 Patent.
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`IV. SUMMARY OF THE ‘221 Patent
`A. Brief Description
`The ‘221 Patent includes 33 claims, of which claims 1, 12, 17, 28, and 32
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`are independent.
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`The technology claimed in the ‘221 Patent generally relates to systems and
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`methods “for downloading and paying for data such as audio and video data, text,
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`software, [and] games . . . .” ‘221 at Abstract. The ‘221 Patent purports to address
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`a specific problem: “the growing prevalence of so-called data pirates” who “obtain
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`data either by unauthorized or legitimate means and then make this data available
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`essentially world-wide over the internet without authorization.” ‘221 at 1:31-33.
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`Within this context, the ‘221 Patent describes “combining digital right manage-
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`ment with content data storage,” and states that “[b]inding the data access and
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`payment together allows the legitimate owners of the data to make the data availa-
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`ble themselves over the internet without fear of loss of revenue, thus undermining
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`the position of data pirates.” ‘221, at 2:7-11, 5: 29-33.
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`Specifically, the ‘221 Patent discloses a data supply system 120 (as shown
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`in Fig. 6) coupled to a content provision system 100 (as shown in Fig. 5). ‘221 at
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`13: 22-34. The ‘221 Patent also discloses a “portable data carrier for storing and
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`paying for data.” ‘221 at 1:21-23. The portable data carrier stores, in a parameter
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`memory, use status data and use rules that are used by the data supply system to
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`control access to content data and, in a separate content memory, the portable data
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`carrier stores content data acquired through the content provision system. This
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`disclosure is reflected in the limitations of independent claim 12, which recites “re-
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`trieving data from the data supplier; and writing the retrieved data into the data car-
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`rier.” ‘221 at 26:43-48.
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`In addition to the claimed features of “use status data” and “use rules,” inde-
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`pendent claim 32 of the ‘221 Patent recites an “access rule” for “specifying at least
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`one condition for accessing the retrieved content data written into the data carrier,
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`the at least one condition being dependent on the amount of payment associated
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`with the payment data forwarded to the payment validation system.” ‘221 at
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`26:59-67. According to the specification, “access rule data … links a content iden-
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`tifier with an access rule,” and are “typically based upon a required payment value
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`. . . .” See ‘221 at 7:29-35.
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`As described in detail in Section V, the references listed above demonstrate
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`a complete lack of patentability in the Challenged Claims. Bloom at, e.g., ¶ 25.
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`Summary of the Prosecution History of the ‘221 Patent
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`B.
`The ‘221 Patent issued on February 21, 2012 from U.S. Patent Application
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`No. 12/943,872 (Samsung 1022, “the ‘872 application) filed November 10, 2010
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`with 76 claims.
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`During the prosecution of the ‘872 application, on March 22, 2011, the Ex-
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`aminer issued a restriction requirement under 35 U.S.C § 121 noting non-
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`overlapping features of five (5) subcombinations. See Restriction Requirement
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`March 22, 2011 at 3. In response, the Patent Owner elected claims 35-65, 73, and
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`75. See Patent Owner’s Response May 20, 2011 at 9. Thereafter, the Examiner
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`rejected claims 35-55, 57-59, 62, 73 and 75 on the ground of nonstatutory obvi-
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`ousness-type double patenting as being unpatentable over claims of U.S. Patent
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`No. 7,334,720 while indicating allowable subject matter in claims 56, 60, and 61.
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`See Non-Final Office Action of July 29, 2011 at 3 and 9. Subsequently, the Patent
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`Owner filed a Terminal Disclaimer. See Patent Owner’s Response August 16,
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`2011 at 9. The Examiner then mailed a Notice of Allowance to allow pending
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`claims, noting that “the prior art fails to disclose a data access terminal comprising
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`the interface, the data carrier, the processor and the program store for storing the
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`codes in the manner as recited in claim 35. The prior art also fails to disclose the
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`limitations of claims 46, 51, 58, 62 and 73.” See Notice of Allowance 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 ‘221 Patent IS UNPATENTABLE
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`Claims 2, 11, and 32 are challenged. Claims 2 and 11 depend from claim 1
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`and, therefore, incorporate the subject matter of claim 1. As demonstrated below,
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`claims 2, 11, and 32 are anticipated by Ginter.
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`A. GROUND 1 – Ginter Anticipates Claims 2, 11, and 32.
`The features of claims 1-2, 11 and 32 of the ‘221 Patent are anticipated by
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`Ginter, rendering each of these claims unpatentable under 35 U.S.C. § 102(b).
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`2. Overview of Ginter
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`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 Abstract4; 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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`4 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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`cia