UNITED STATES PATENT AND TRADEMARK OFFICE
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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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`PTAB Docket No. CBM2014-00200
`Patent 8,336,772 B2
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`Petitioner’s Request for Rehearing Under
`37 C.F.R. § 42.71(d)
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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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`PTAB Docket No. CBM2014-00200
`Patent 8,336,772 B2
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`Petitioner’s Request for Rehearing Under
`37 C.F.R. § 42.71(d)
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`PRECISE RELIEF REQUESTED .................................................................. 2
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`III. LEGAL STANDARDS ................................................................................... 2
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`IV. ARGUMENT ................................................................................................... 2
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`A. Petitioner has demonstrated Ginter’s disclosure of “use rules,” as
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`incorporated into claims 26 and 32 ................................................................................. 3
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`B. Petitioner has demonstrated Ginter’s disclosure of “code to request
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`identifier data,” as featured in claim 14 and incorporated into claims 5, 10, 26, 32 ...... 7
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`V.
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`CONCLUSION .............................................................................................. 10
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`i
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`Rules
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`TABLE OF AUTHORITIES
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`35 U.S.C. § 102(b) ................................................................................ 1
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`37 C.F.R. § 42.71(d) .............................................................................. 2
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`ii
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`I.
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`INTRODUCTION
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`The Institution Decision states that “Petitioner has failed to establish that,
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`more likely than not, it would prevail in demonstrating that claims [26 and 32] are
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`anticipated under 35 U.S.C. § 102(b) by Ginter,” due specifically to lack of
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`disclosure of (1) “use rules,” and, in the case of claims 5, 10, 14, 26 and 32, due
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`additionally to the lack of disclosure of (2) “code to request identifier data.” See
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`Institution Decision at 13-16. Yet, as detailed below, the Institution Decision cites
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`only to a subset of the portions of the Petition that address the purportedly
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`distinguishing features of claims 5, 10, 14, 26, and 32. As discussed below, almost
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`10 uncited pages of the Petition were provided to explain how referenced features
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`of Ginter come together to address the purportedly missing aspects of claims 5, 10,
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`14, 26, and 32. Indeed, with respect to “use rules,” Petitioner purposefully focused
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`much of the Petition’s overview of Ginter revealing its disclosure of control
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`information (e.g., billing method MDE and budget method UDE) and its
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`contemplated use of that control information to regulate access to requested
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`content.
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`As such, Petitioner respectfully submits that non-institution of claims 5, 10,
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`14, 26, and 32 in view of Ginter-based grounds resulted either from oversight or
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`misapprehension of aspects of the Petition that addressed the purportedly missing
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`1
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`features. With this in mind, Petitioner solicits reconsideration of the Petition, in its
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`entirety, including the explanations provided by Petitioner in uncited sections of
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`the Petition and evidence referenced therein, which demonstrates anticipation of
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`claims 5, 10, 14, 26, and 32 by Ginter.
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`II.
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`PRECISE RELIEF REQUESTED
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`Petitioner requests rehearing of the decision against institution in the
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`CBM2014-00200 proceeding with regard to the anticipation of claims 5, 10, 14,
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`26, and 32 by Ginter, because grounds advanced against claims 5, 10, 14, 26, and
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`32 were denied due to misapprehension or oversight of uncited Petition content
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`that addressed features said to distinguish claims 5, 10, 14, 26, and 32 from Ginter.
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`III. LEGAL STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). Such a
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`“request must specifically identify all matters the party believes the Board
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`misapprehended or overlooked, and the place where each matter was previously
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`addressed in a motion, an opposition, or a reply.” Id.
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`IV. ARGUMENT
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`The Institution Decision indicates the Board’s belief that Ginter fails to
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`anticipate claims 26 and 32, due specifically to lack of disclosure of “use rules”
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`2
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`and, in the case of claims 5, 10, 14, 26 and 32, due to the lack of disclosure of
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`“code to request identifier data.” See Institution Decision at 13-16.
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`A.
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`Petitioner has demonstrated Ginter’s disclosure of “use rules,” as
`incorporated into claims 26 and 32
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`As mentioned, the Institution Decision indicates the Board’s belief that
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`Ginter fails to anticipate claims 26 and 32 due to lack of disclosure of “use rules.”
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`Institution Decision at 15. The Board construes a “use rule” as a “rule specifying a
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`condition under which access to content is permitted.” See Institution Decision at
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`7. Claims 26 and 32 depend, respectively, from claims 25 and 30, each of which
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`feature “use rules.” For ease of review, Petitioner reproduces the relevant portions
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`of claim 25 below:
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`code to read use status data and use rules from said non-volatile
`memory pertaining to said second selected one or more items of
`retrieved multimedia content; and code to evaluate said use status data
`and use rules to determine whether access is permitted to said second
`selected one or more items of retrieved multimedia content
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`In suggesting the absence of the “use rules” of claims 25 and 30 in Ginter,
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`the Institution Decision focuses exclusively on pages 71 and 79 of the Petition,
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`noting that at page 71 the Petition “argues the claimed ‘use rules’ correspond to
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`‘(e.g., billing method MDE and/or budget method UDE),’” and that “the same
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`argument” is repeated at page 79. See Institution Decision at 16.
`3
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`In doing so, the Institution Decision failed to address an earlier portion of
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`the Petition, which provided a fulsome explanation of how a comprehensive
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`reading of the Ginter disclosure fully addresses this “use rule” feature.
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`Specifically, in providing a more comprehensive review of the Ginter reference,
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`the Petition dedicates 10 pages of text to describing Ginter’s control information
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`(including billing method MDE and budget method UDE) and electronic
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`appliances, and to explaining conditions under which access to requested content is
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`regulated by Ginter therewith. See Petition at 16-26.
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`The Institution Decision criticizes the Petition for “not provid[ing] adequate
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`argument or explanation as to why Ginter’s billing method map MDE and/or
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`budget UDE satisfies the claimed ‘use rules,’” adding that the Petition “does not
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`explain sufficiently . . . why a price list (billing method map MDE) and/or
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`limitations on information content usage (budget method UDE), for example,
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`discloses, teaches, or suggests a rule specifying a condition under which access to
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`content is permitted.” Institution Decision at 16.
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`Yet, a portion of the Petition that was uncited in the Institution Decision
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`provides precisely such a showing. To illustrate, in the Overview spanning pages
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`16-26, with support from Dr. Bloom, the Petition explains how Ginter’s control
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`information (including its billing method MDE and its budget method UDE),
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`establishes conditions used to control access to content. See Petition at 16-26. For
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`instance, this section of the Petition explains that:
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`Ginter describes secure transaction management and electronic rights
`protection . . . that controls, using payment and other information,
`access to electronically disseminated and stored content objects . .
`which . . . contain both information content . . . and associated control
`information . . . .
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`Petition at 16-17 (citing Ginter at Abstract, 13:50-67, 43:24-30, 58:57-65; Bloom
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`at, e.g., ¶ 29). In addition, this portion of the Petition further explains that the
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`control information may include:
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`(i) permissions record 808, specifying, e.g., rights associated with
`content object 300; (ii) budgets 308, specifying, e.g., limitations on
`usage of in-formation content 304 and how usage will be paid for
`[e.g., budget method UDE]; and (iii) other methods 1000, specifying,
`e.g., how usage of information content 304 will be metered, billed,
`and audited [e.g., billing method MDE].”
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`Petition at 18-19 (citing Ginter at 58:66-59:35; Bloom at, e.g., ¶ 30).
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`At pages 25-27, the Petition even provides an example that involves the
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`billing method MDE and budget method UDE being used to specify and enforce a
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`condition under which access to content is permitted, namely an access limit that is
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`5
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`dependent upon an amount of payment associated with payment data forwarded to
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`a payment validation system. In more detail, this portion of the Petition explains:
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`[o]nce downloaded . . . responsive to the validated user purchase, a
`content object . . . may be accessed responsive to a user request,” but
`that “[p]roviding access . . . may involve, e.g., updating a meter
`method User Data Element (“meter method UDE”) that indicates
`usage of the content object, calculating a cost based on a cost per
`access of the content object stored in a billing Method Data Element
`(“billing MDE”) and then comparing the calculated cost with an
`aliased budget value stored in a budget method UDE to determine
`whether an access limit has been exceeded.
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`Petition at 25-26 (citing Ginter at 48:65-49:14, 136:7-19, 142:43-143:22, 172:32-
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`35, 183:24-30, 185:57-59, 186:15-24, 230:48-59, 264:62-265:16; Declaration at,
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`e.g., ¶ 41. Immediately thereafter, despite this reference to access limits, and the
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`suggestion that limits to access are indeed imposed based on comparisons between
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`billing/payments and budgets, the Petition overtly references access permissions.
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`See Petition at 26 (“If access is permitted, the content object is played or otherwise
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`accessed for the user”)(citing Ginter at 58:33-34; Declaration at, e.g., ¶ 42). In
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`other words, the Petition explains Ginter’s teaching of conditioning access to
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`content based on an access limit, using billing method MDE and budget method
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`UDE.
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`6
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`B.
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`Petitioner has demonstrated Ginter’s disclosure of “code to
`request identifier data,” as featured in claim 14 and incorporated
`into claims 5, 10, 26, 32
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`As mentioned, the Institution Decision indicates the Board’s belief that
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`Ginter fails to anticipate claims 5, 10, 14, 26, and 32 due to lack of disclosure of
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`“code to request identifier data.” Institution Decision at 13-16. Claims 5, 10, 26
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`and 32 depend, respectively, from claims 1, 8, 25, and 30, each of which feature
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`“code to request identifier data.”1
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`In suggesting the absence of the “code to request identifier data” of claims 1,
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`8, 14, 25, and 30 in Ginter, the Institution Decision focuses exclusively on three
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`1 More specifically, claim 1 features “code to request identifier data identifying one
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`or more items of multimedia content stored in the non-volatile memory,” claim 8
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`features “code to request identifier data identifying one or more content data items
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`stored on the data carrier,” claims 14 and 25 feature “code to request identifier data
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`identifying one or more items of multimedia content available for retrieving via
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`said wireless interface,” and claim 30 features “code to request identifier data
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`identifying one or more content data items available for retrieving.”
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`7
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`citations to Ginter provided at pages 35-37 of the Petition. See Institution Decision
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`Attorney Docket No: 39843-0008CP2
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`at 13-15 (citing Ginter at 238:50-64, 287:59-288:2, Fig. 72D).
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`In more detail, the Institution Decision acknowledges that “Figure 72D of
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`Ginter shows identifier information presented to a user,” that “[t]he cited portion of
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`column 238 discusses a user interface that allows flexible browsing [through]
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`libraries of content available for licensing or purchase,” and that “[c]olumn 287
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`describes generally a user interface for content available to end users.” Despite
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`acknowledging the relevance of this disclosure, the Institution Decision goes on to
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`state that Ginter’s column 287 “does not address requesting content” and that
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`“[w]e are not directed to any disclosure in Ginter that explicitly discloses code to
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`request identifier data.” Institution Decision at 13-14 (emphasis in original).
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`This conclusion overlooks explicit disclosure by Ginter, at portions cited by
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`the Petition, of use of code to request identifier data. At page 36, e.g., the Petition
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`provides an annotated version of Ginter’s Figure 72D, which is reproduced below
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`for ease of reference:
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`8
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`As the Institution Decision acknowledges, “Figure 72D of Ginter shows
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`identifier information presented to a user.” Institution Decision at 13. What may
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`have been overlooked with respect to this particular citation is that Ginter’s Figure
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`72D also clearly relates the presented identifier information to a request for
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`identifier information, through its depiction of the statement “YOU HAVE
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`REQUESTED THESE PROPERTIES.”
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`The annotation to Figure 72D provided in the Petition, moreover, repeats a
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`citation to Ginter at 289:27-35 that was quoted earlier in the Petition (at pages 23-
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`24), but that was not mentioned in the Institution Decision. At 289:27-35, Ginter
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`discloses:
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`9
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`Once an end user has connected to the VDE repository and
`authentication has occurred, the user may begin manipulating and
`directing their user interface software to browse through a repository
`content catalog 3322 (e.g. lists of publications, software, games,
`movies, etc.), use the search mechanism to help locate content of
`interest, schedule content for delivery, make inquiries of account
`status, availability of usage analysis information, billing information,
`registration and account profile information, etc. If a user is
`connecting to obtain content, the usage requirements for that content
`may be delivered to them.
`(emphases added). At the cited portion, in other words, Ginter discloses two
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`examples of use of “code to request identifier information,” neither of which were
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`addressed by the Institution Decision: (1) use of Ginter’s UI software to request a
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`browsable catalog of identifier information (such as the catalog of identifier
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`information depicted in Figure 72D as having been requested by a user), and (2)
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`use of Ginter’s UI software to submit, through a search mechanism, a request for
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`identifier information.
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`V. CONCLUSION
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`For at least these reasons, Petitioner respectfully requests that the Board
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`amend the Institution Decision to include review of claims 5, 10, 14, 26, and 32
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`based on anticipation by Ginter and authorizes any fees due in connection with this
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`filing, or credit any overpayment, to Deposit Account No. 06-1050.
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`10
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
`Respectfully submitted,
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`/Thomas A. Rozylowicz/
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`W. Karl Renner, Reg. No. 41,265
`Thomas Rozylowicz, Reg. No. 50,620
`Attorneys for Petitioner
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`4/29/2015
`Date:
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
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`11
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00200
`Attorney Docket No: 39843-0008CP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on April 29, 2015, a complete and entire copy of this Petitioner’s Request for
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`Rehearing was provided via email to the Patent Owner by serving the
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`correspondence email addresses of record as follows:
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`Michael R. Casey
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
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`Email:
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`mcasey@dbjg.com
`docket@dbjg.com
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`
` /Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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